Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications, 46716-46843 [E7-15565]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 72, Number 161 (Tuesday, August 21, 2007)]
[Rules and Regulations]
[Pages 46716-46843]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E7-15565]



[[Page 46715]]

-----------------------------------------------------------------------

Part II





Department of Commerce





-----------------------------------------------------------------------



Patent and Trademark Office



-----------------------------------------------------------------------



37 CFR Part 1



 Changes To Practice for Continued Examination Filings, Patent 
Applications Containing Patentably Indistinct Claims, and Examination 
of Claims in Patent Applications; Final Rule

Federal Register / Vol. 72, No. 161 / Tuesday, August 21, 2007 / 
Rules and Regulations

[[Page 46716]]


-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket Nos.: PTO-P-2005-0022; PTO-P-2005-0023]
RINs 0651-AB93; 0651-AB94


Changes To Practice for Continued Examination Filings, Patent 
Applications Containing Patentably Indistinct Claims, and Examination 
of Claims in Patent Applications

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (Office) is 
revising the rules of practice in patent cases relating to continuing 
applications and requests for continued examination practices, and for 
the examination of claims in patent applications. The Office is 
revising the rules of practice to require that any third or subsequent 
continuing application that is a continuation application or a 
continuation-in-part application, and any second or subsequent request 
for continued examination in an application family, be filed to obtain 
consideration of an amendment, argument, or evidence, and be supported 
by a showing as to why the amendment, argument, or evidence sought to 
be entered could not have been previously submitted. The Office is also 
revising the rules of practice to provide that an applicant must 
provide an examination support document that covers all of the claims 
in an application if the application contains more than five 
independent claims or more than twenty-five total claims. The Office is 
also revising the rules of practice with respect to multiple 
applications that have the same claimed filing or priority date, 
substantial overlapping disclosure, a common inventor, and common 
ownership. These changes will allow the Office to conduct a better and 
more thorough and reliable examination of patent applications.

DATES: Effective Date: November 1, 2007. For applicability and 
compliance dates see SUPPLEMENTARY INFORMATION.

FOR FURTHER INFORMATION CONTACT: The Office of Patent Legal 
Administration, by telephone at (571) 272-7704, by mail addressed to: 
Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450, 
Alexandria, VA 22313-1450, or by facsimile to (571) 273-0100, marked to 
the attention of the Office of Patent Legal Administration.

SUPPLEMENTARY INFORMATION: The Office is revising the rules of practice 
in patent cases relating to continued examination filings (continuing 
applications and requests for continued examination), multiple 
applications containing patentably indistinct claims, and the 
examination of claims in applications.
    The Office is revising the rules of practice for continuation 
applications, continuation-in-part applications and requests for 
continued examination. Under these revisions, an applicant may file two 
continuation applications (or continuation-in-part applications), plus 
a request for continued examination in the application family, without 
any justification. An application family includes the initial 
application and its continuation or continuation-in-part applications. 
Applicant may file any additional continuation application, 
continuation-in-part application, or request for continued examination 
with a justification. Specifically, the Office is revising the rules of 
practice to require a justification for any third or subsequent 
continuing application that is a continuation application or a 
continuation-in-part application, and any second or subsequent request 
for continued examination in an application family. The third or 
subsequent continuing application or request for continued examination 
must be filed with a petition showing why the amendment, argument, or 
evidence sought to be entered could not have been previously submitted.
    The Office is also revising the rules of practice for divisional 
applications. Under these revisions, an applicant is permitted to file 
a divisional application of an application for the claims to a non-
elected invention that has not been examined if the application was 
subject to a requirement for restriction. The divisional application 
need not be filed during the pendency of the application subject to a 
requirement for restriction, as long as the copendency requirement of 
35 U.S.C. 120 is met. Thus, applicant may file the divisional 
application during the pendency of the application that was subject to 
a requirement for restriction or the pendency of any continuing 
application of such an application. Applicant may also file two 
continuation applications of the divisional application plus a request 
for continued examination in the divisional application family, without 
any justification. A divisional application family includes the 
divisional application and its continuation applications. In addition, 
applicant may file any additional continuation application or request 
for continued examination in the divisional application family with a 
petition and adequate justification.
    The Office is also revising the rules of practice for the 
examination of claims in an application to provide that if the number 
of independent claims is greater than five or the number of total 
claims is greater than twenty-five, the Office will require the 
applicant to help focus examination by providing additional information 
to the Office in an examination support document covering all of the 
claims (whether in independent or dependent form) in the application.
    The Office is also revising the rules of practice with respect to 
multiple applications that have patentably indistinct claims and a 
common assignee by either requiring that all patentably indistinct 
claims in such applications be submitted in a single application or 
effectively treating the multiple applications as a single application.
    These changes will mean more effective and efficient examination 
for the typical applicant without any additional work on the part of 
most applicants. However, in the applications that place an extensive 
burden on the Office, the applicant will be required to help focus 
examination by providing additional information to the Office.
    Applicability Dates: The changes to 37 CFR 1.75, 1.142(c), and 
1.265 are applicable to any nonprovisional application filed under 35 
U.S.C. 111(a) on or after November 1, 2007, and to any nonprovisional 
application entering the national stage after compliance with 35 U.S.C. 
371 on or after November 1, 2007. The changes to 37 CFR 1.75, 1.142(c), 
and 1.265 are also applicable to any nonprovisional application filed 
before November 1, 2007, in which a first Office action on the merits 
was not mailed before November 1, 2007.
    The changes to 37 CFR 1.117 are applicable to any nonprovisional 
application filed before, on, or after November 1, 2007, with respect 
to any fee under 37 CFR 1.16(h), (i), or (j) or 1.492(d), (e), or (f) 
paid on or after December 8, 2004.
    The changes to 37 CFR 1.78(a), 1.78(d)(1), 1.495 and 1.704(c)(11) 
are applicable only to any application, including any continuing 
application, filed under 35 U.S.C. 111(a) on or after November 1, 2007, 
or any application entering the national stage after compliance with 35 
U.S.C. 371 on or after November 1, 2007. Except as otherwise indicated 
in this final rule, any application filed under 35 U.S.C. 111(a) on or 
after November 1, 2007, or any application entering the national stage 
after compliance with 35 U.S.C.

[[Page 46717]]

371 on or after November 1, 2007, seeking to claim the benefit under 35 
U.S.C. 120, 121, or 365(c) and 37 CFR 1.78 of a prior-filed 
nonprovisional application or international application must either: 
(1) Meet the requirements specified in one of 37 CFR 1.78(d)(1)(i) 
through (d)(1)(v); or (2) include a grantable petition under 37 CFR 
1.78(d)(1)(vi).
    With respect to applications that claim the benefit under 35 U.S.C. 
120, 121, or 365(c) only of nonprovisional applications or 
international applications filed before August 21, 2007: an application 
is not required to meet the requirements set forth in 37 CFR 1.78(d)(1) 
if: (1) The application claims the benefit under 35 U.S.C. 120, 121, or 
365(c) only of nonprovisional applications filed before August 21, 2007 
or applications entering the national stage after compliance with 35 
U.S.C. 371 before August 21, 2007; and (2) there is no other 
application filed on or after August 21, 2007 that also claims the 
benefit under 35 U.S.C. 120, 121, or 365(c) of such prior-filed 
nonprovisional applications or international applications.
    The changes to 37 CFR 1.114 are applicable to any application in 
which a request for continued examination is filed on or after November 
1, 2007. Specifically, a petition under 37 CFR 1.114(g) must accompany 
any request for continued examination filed on or after November 1, 
2007, in an application in which a request for continued examination 
has previously been filed, or in a continuation application or 
continuation-in-part application of an application in which a request 
for continued examination has previously been filed, or in an 
application whose benefit is claimed in a continuation application or 
continuation-in-part application in which a request for continued 
examination has previously been filed.
    The changes to 37 CFR 1.17, 1.26, 1.52, 1.53, 1.76, 1.78 (except 
1.78(a) and 1.78(d)(1)), 1.104, 1.105, 1.110, 1.136, 1.142(a), and 
1.145 are applicable to any nonprovisional application pending on or 
after November 1, 2007.
    Compliance Date: For applications filed before November 1, 2007, 
applicants must comply with the requirements in 37 CFR 1.78(f)(1) 
within the time periods specified in 37 CFR 1.78(f)(1)(ii), or by 
February 1, 2008, whichever is later, and applicants must comply with 
the requirements in 37 CFR 1.78(f)(2) within the time periods specified 
in 37 CFR 1.78(f)(2)(iii), or by February 1, 2008, whichever is later.

Table of Contents

I. Background
    A. Changes to Practice for Continued Examination Filings
    B. Changes to Practice for Examination of Claims in Patent 
Applications
    C. Changes to Practice for Patent Applications Containing 
Patentably Indistinct Claims
    D. Retention of First Action Final Practice and Changes in 
Second Action Final Practice
II. Discussion of Specific Rules
    This final rule amends the following sections in title 37 of the 
Code of Federal Regulations (CFR): Sec. Sec.  1.17, 1.26, 1.52, 
1.53, 1.75, 1.76, 1.78, 1.104, 1.105, 1.110, 1.114, 1.136, 1.142, 
1.145, 1.495, and 1.704. This final rule adds Sec. Sec.  1.117, and 
1.265 to title 37 of the CFR.
III. Response to Comments
    A. Changes to Continuing Application Practice
    B. Treatment of Third and Subsequent Continuation or 
Continuation-In-Part Applications
    C. Treatment of Second and Subsequent Requests for Continued 
Examination
    D. Petitions Related to Additional Continuation Applications, 
Continuation-In-Part Applications, and Requests for Continued 
Examination
    E. Treatment of Multiple Applications
    F. Changes to Practice for Examination of Claims
    G. Number of Independent and Total Claims Permitted Without an 
Examination Support Document
    H. Examination Support Document Requirements
    I. The Office's Authority to Promulgate the Changes in this 
Final Rule
    J. Changes to Internal Practice
    K. Suggestions Relating to Legislative Changes
    L. Effective Date of the Changes in this Final Rule
    M. Miscellaneous
IV. Rule Making Considerations
    A. Administrative Procedure Act
    B. Regulatory Flexibility Act
    C. Executive Order 13132 (Federalism)
    D. Executive Order 12866 (Regulatory Planning and Review)
    E. Executive Order 13175 (Tribal Consultation)
    F. Executive Order 13211 (Energy Effects)
    G. Executive Order 12988 (Civil Justice Reform)
    H. Executive Order 13045 (Protection of Children)
    I. Executive Order 12630 (Taking of Private Property)
    J. Congressional Review Act
    K. Unfunded Mandates Reform Act of 1995
    L. National Environmental Policy Act
    M. National Technology Transfer and Advancement Act
    N. Paperwork Reduction Act

I. Background

    In view of the need for a better focused and effective examination 
process to reduce the large and growing backlog of unexamined 
applications while maintaining or improving the quality of issued 
patents, the Office published two notices in January of 2006 proposing 
changes to the practice for continuing applications, requests for 
continued examination, multiple applications containing patentably 
indistinct claims, and the examination of claims in applications. See 
Changes to Practice for Continuing Applications, Requests for Continued 
Examination Practice, and Applications Containing Patentably Indistinct 
Claims, 71 FR 48 (Jan. 3, 2006), 1302 Off. Gaz. Pat. Office 1318 (Jan. 
24, 2006) (proposed rule) (hereinafter ``Continuing Applications 
Proposed Rule'') and Changes to Practice for the Examination of Claims 
in Patent Applications, 71 FR 61 (Jan. 3, 2006), 1302 Off. Gaz. Pat. 
Office 1329 (Jan. 24, 2006) (proposed rule) (hereinafter ``Claims 
Proposed Rule'').
    Both the Continuing Applications Proposed Rule and the Claims 
Proposed Rule requested public comments and provided a comment period 
of four months to give the public an opportunity to submit written 
comments. The Office provided this extended comment period to ensure 
that the public would have sufficient time to submit written comments 
on the proposed changes to the rules of practice and to ensure that the 
Office would receive comments from all interested persons and 
organizations. In addition to the notices and requests for written 
comments, the Office conducted public meetings including town hall 
meetings and presentations at various locations in the United States to 
discuss the proposed changes and obtain feedback from the public. The 
Office received over five hundred written comments from government 
agencies, universities, intellectual property organizations, industry, 
law firms, individual patent practitioners, and the general public. The 
Office has spent nearly one year carefully analyzing and considering 
all of the written comments that were received. The comments and the 
Office's responses to the comments are provided in Section III, 
Response to Comments. In response to the comments, the Office has made 
appropriate modifications to the proposed changes to balance the 
interests of the public, patent owners, applicants, practitioners, and 
other interested parties with the need to reduce the large and growing 
backlog of unexamined patent applications, improve the quality of 
issued patents, and make the patent examination process more effective.
    Under the proposed changes, applicants would have been permitted to 
file one of the following without any

[[Page 46718]]

justification: A continuation application, a continuation-in-part 
application, or a request for continued examination. By contrast, this 
final rule permits applicants to file two continuation applications or 
continuation-in-part applications, plus a single request for continued 
examination in an application family, without any justification. 
Applicant may file any additional continuing application or request for 
continued examination with a justification. Under the proposed changes, 
about eleven percent of the applications and requests for continued 
examination filed in fiscal year 2006 would have required a 
justification, where under the changes being adopted in this final rule 
less than three percent of the applications and requests for continued 
examination filed in fiscal year 2006 would have required a 
justification.
    The proposed changes would have permitted applicants to file a 
divisional application of an application for the claims to a non-
elected invention if the application is subject to a requirement for 
restriction and the divisional application is filed during the pendency 
of that application. However, this final rule permits applicant to file 
a divisional application of an application if the application is 
subject to a requirement for restriction and the divisional application 
meets the copendency requirement of 35 U.S.C. 120. Thus, this final 
rule allows applicants to file divisional applications in series 
whereas the proposed rule would have required applicants to file 
divisional applications in parallel. This final rule also permits 
applicant to file two continuation applications of a divisional 
application, plus a request for continued examination in the divisional 
application family, without any justification. Under the proposed 
changes, about thirteen percent of divisional applications filed in 
fiscal year 2006 would need to have been filed earlier, where the 
changes being adopted in this final rule would not have required any of 
the divisional applications filed in fiscal year 2006 to have been 
filed earlier.
    The proposed changes would have required applicant to provide an 
examination support document before the first Office action on the 
merits if applicant designated more than ten representative claims 
including all of the independent claims in the application for initial 
examination. The Office received a substantial number of comments from 
the public opposing this ``representative claims'' examination approach 
and suggesting that the Office should simply adopt a threshold to 
invoking the examination support document requirement based upon 
whether an application contains more than a given number of independent 
and total claims. The Office took those comments into consideration and 
adopted a similar approach. This final rule requires an applicant to 
submit an examination support document before the issuance of a first 
Office action on the merits of an application to assist in the 
patentability determination when the applicant presents more than five 
independent claims or more than twenty-five total claims in an 
application. This final rule also encourages applicant to submit all of 
the claims that are patentably indistinct in one single application and 
requires applicant to identify multiple applications that contain 
patentably indistinct claims (same as the proposed rule). Therefore, 
for each invention, an applicant is permitted to present up to fifteen 
independent claims and seventy-five total claims via an initial 
application and two continuation or continuation-in-part applications 
without providing either an examination support document or 
justification, as long as those applications are either prosecuted 
serially or contain patentably distinct claims. An examination support 
document must include a preexamination search statement, a listing of 
references deemed most closely related to the subject matter of each of 
the claims, an identification of all of the claim limitations that are 
disclosed in the references, a detailed explanation particularly 
pointing out how each of the independent claims is patentable over the 
cited references, and a showing of where each claim limitation finds 
support under 35 U.S.C. 112, ] 1, in the application and any prior-
filed application. The examination support document will assist the 
Office in the examination process and the determination of 
patentability of the invention by providing the most relevant prior art 
and other useful information.
    Under the proposed changes, about one percent of the applications 
filed in fiscal year 2006 would have required either the cancellation 
of one or more independent claims or an examination support document. 
Furthermore, about eighty percent of the applications filed in fiscal 
year 2006 would have required either a designation of dependent claims 
for initial examination or an examination support document. Under the 
changes being adopted in this final rule, less than eight percent of 
the applications filed in fiscal year 2006 would have required either 
the cancellation of one or more independent claims or an examination 
support document. In addition, less than twenty-five percent of the 
applications filed in fiscal year 2006 would have required either the 
cancellation of one or more dependent claims or an examination support 
document. However, by prosecuting an initial application and two 
continuation applications serially, about ninety-five percent of the 
applications filed in fiscal year 2006 would not have required either 
the cancellation of any claims or an examination support document.

A. Changes to Practice for Continued Examination Filings

    The volume of continued examination filings (including both 
continuing applications and requests for continued examination) and 
duplicative applications that contain ``conflicting'' or patentably 
indistinct claims, is having a crippling effect on the Office's ability 
to examine ``new'' (i.e., non-continuing) applications. Continued 
examination filings, other than divisional applications, as a 
percentage of overall filings, has increased from about 11.4 percent in 
fiscal year 1980, to about 18.9 percent in fiscal year 1990, to 21.9 
percent in fiscal year 2000, to 29.4 percent in fiscal year 2006. The 
cumulative effect of these continued examination filings is too often 
to divert patent examining resources from the examination of new 
applications disclosing new technology and innovations, to the 
examination of applications that are a repetition of prior applications 
that have already been examined and have either issued as patents or 
become abandoned. In addition, when the continued examination process 
fails to reach a final resolution, and when multiple applications 
containing claims to patentably indistinct inventions are filed, the 
public is left with an uncertainty as to what the set of patents 
resulting from the initial application will cover. Thus, these 
practices impose a burden on innovation both by retarding the Office's 
ability to examine new applications and by undermining the function of 
claims to notify the public as to what technology is or is not 
available for use.
    Commentators have noted that an applicant's use of the unrestricted 
continuing application and request for continued examination practices 
may preclude the Office from ever finally rejecting an application or 
even from ever finally allowing an application. See Mark A. Lemley and 
Kimberly A. Moore, Ending Abuse of Patent

[[Page 46719]]

Continuations, 84 B.U. L. Rev. 63, 64 (2004). The burden imposed by the 
repetitive filing of applications (as continuing applications) on the 
Office (as well as on the public) is not a recent predicament. See To 
Promote the Progress of Useful Arts, Report of the President's 
Commission on the Patent System, at 17-18 (1966) (recommending changes 
to prevent the repetitive filing of dependent (i.e., continuing) 
applications). Unrestricted continued examination filings and multiple 
applications containing patentably indistinct claims, however, are now 
having such an impact on the Office's ability to examine new 
applications that it is appropriate for the Office to clarify the 
applicant's duty to advance applications to final action by placing 
some conditions on the filing of multiple continuing applications, 
requests for continued examination, and other multiple applications to 
the same invention. See 35 U.S.C. 2(b) (authorizes the Office to 
establish regulations, not inconsistent with law, which shall govern 
the conduct of proceedings in the Office, and shall facilitate and 
expedite the processing of patent applications). The changes in this 
final rule will permit the Office to apply the patent examining 
resources otherwise consumed by these applications to the examination 
of new applications and thereby reduce the backlog of unexamined 
applications.
    The Office also notes that not every application as filed 
particularly points out and distinctly claims what the applicant 
regards as his or her invention. For example, this may occur where the 
applicant's attorney or agent has not adequately reviewed or revised 
the application documents received from the applicant. Applicants 
frequently file literal translations of foreign documents as 
applications, resulting in problems with compliance with U.S. patent 
law, such as the written description requirement, as well as problems 
with formatting and presentation of the claims. In these situations, 
examination of what applicants actually regard as their invention may 
not begin until after one or more continued examination filings. 
Applicants should not rely on an unlimited number of continued 
examination filings to correct deficiencies in the claims and 
disclosure that applicant or applicant's representative could have 
corrected earlier. In addition, while only a small minority of 
applications are a third or subsequent continuing application, it 
appears that some applicants and practitioners have used multiple 
continued examination filings as a strategy to delay the conclusion of 
examination. The Office, however, considers such a strategy to be a 
misuse of continued examination practice. Specifically, the Office 
considers such a strategy to be inconsistent with an applicant's and 
practitioner's duty under 37 CFR 10.18(b)(2)(i) not to submit an 
application or other filing to cause unnecessary delay or needless 
increase in the cost of prosecution before the Office. This misuse of 
continued examination practice also prejudices the public by keeping 
applications in pending status while awaiting developments in similar 
or parallel technology and then later amending their applications to 
cover these developments. The courts have permitted the addition of 
claims, when supported under 35 U.S.C. 112, ] 1, to encompass products 
or processes later discovered in the marketplace. See PIN/NIP, Inc. v. 
Platt Chemical Co., 304 F.3d 1235, 1247, 64 U.S.P.Q.2d 1344, 1352 (Fed. 
Cir. 2002). However, the practice of maintaining continuing 
applications to delay the conclusion of examination for the purpose of 
adding claims after such discoveries is inconsistent with the duty 
under 37 CFR 10.18(b)(2)(i) not to submit filings to cause unnecessary 
delay or needless increase in the cost of prosecution before the 
Office.
    The Office, in light of its backlog and anticipated continued 
increase in application filings, is making every effort to become more 
efficient. Achieving greater efficiency requires the cooperation of 
those who provide the input into the examination process, the 
applicants and their representatives.
    In the Continuing Applications Proposed Rule, the Office proposed 
to change the rules of practice to require that: (1) Any second or 
subsequent continued examination filing (continuation or continuation-
in-part application or request for continued examination) include a 
showing that the amendment, argument, or evidence could not have been 
submitted prior to the close of prosecution after a single continuation 
or continuation-in-part application or request for continued 
examination; and (2) multiple applications that have the same claimed 
filing or priority date, substantial overlapping disclosure, a common 
inventor, and a common assignee include either an explanation of how 
the claims are patentably distinct, or a terminal disclaimer and 
explanation of why patentably indistinct claims have been filed in 
multiple applications.
    In response to the comments on the proposed changes to the 
practices for continued examination filings, the Office has modified 
these provisions relative to proposed changes. Under this final rules, 
an applicant may instead file two continuation applications (or two 
continuation-in-part applications, or one continuation application and 
one continuation-in-part application), plus a request for continued 
examination in any one of the initial application or two continuation 
or continuation-in-part applications, without any justification. Any 
additional continuation application, continuation-in-part application, 
or request for continued examination, however, must be filed to obtain 
consideration of an amendment, argument, or evidence, and be supported 
by a showing as to why the amendment, argument, or evidence sought to 
be entered could not have been previously submitted. This final rule 
would also ease the burden of examining multiple applications that have 
the same claimed filing or priority date, substantial overlapping 
disclosure, a common inventor, and common assignee by requiring that 
all patentably indistinct claims in such applications be submitted in a 
single application absent good and sufficient reason.
    As discussed previously, the unrestricted continued examination 
practice and the filing of multiple applications containing patentably 
indistinct claims are impairing the Office's ability to examine new 
applications without real certainty that these practices effectively 
advance prosecution, improve patent quality, or serve the typical 
applicant or the public. These changes to the rules in title 37 of the 
CFR are intended to ensure that continued examination filings are used 
efficiently to move applications forward. The Office expects that the 
changes to the rules of practice in this final rule will: (1) Lead to 
more focused and efficient examination, improve the quality of issued 
patents, result in patents that issue faster, and give the public 
earlier notice of what the patent claims cover; and (2) address the 
growing practice of filing (by a common applicant or assignee) multiple 
applications containing patentably indistinct claims.
    35 U.S.C. 111(a) and 120, respectively, permit an applicant to file 
a nonprovisional application and to claim the benefit of a prior-filed 
nonprovisional application. Similarly, 35 U.S.C. 363 and 365(c), 
respectively, permit an applicant to file an international application 
under Patent Cooperation Treaty (PCT) Article 11 and 35 U.S.C. 363 and, 
if the international application designates the United States of 
America, to claim the benefit of a prior-filed international 
application

[[Page 46720]]

designating the United States of America or a prior-filed 
nonprovisional application. Similarly again, 35 U.S.C. 111(a) and 
365(c) permit an applicant to file a nonprovisional application (filed 
under 35 U.S.C. 111(a)) and to claim the benefit of a prior-filed 
international application designating the United States of America 
(under 35 U.S.C. 365(c)).
    35 U.S.C. 120 is generally considered the statutory basis for 
continuing application practice. See Symbol Techs., Inc. v. Lemelson 
Med., 277 F.3d 1361, 1365, 161 U.S.P.Q.2d 1515, 1518 (Fed. Cir. 2002) 
(35 U.S.C. 120 and 121 form the backbone of modern continuation and 
divisional application practice) (Symbol I). Nothing in 35 U.S.C. 120 
or its legislative history suggests that the Office must or even should 
permit an applicant to file an unlimited number of continuing 
applications without any justification.
    The practice of filing ``continuation applications'' arose early in 
Office practice mainly as a procedural device to effectively permit the 
applicant to amend an application after a rejection and receive an 
examination of the ``amended'' (or new) application. See In re Bogese, 
22 U.S.P.Q.2d 1821, 1824 (Comm'r Pats. 1991) (Bogese I). The concept of 
a continuation application per se was first recognized in Godfrey v. 
Eames, 68 U.S. (1 Wall.) 317, 325-26 (1864). See Bogese I, 22 
U.S.P.Q.2d at 1824. 35 U.S.C. 120 is a codification of the continuation 
application practice recognized in Godfrey v. Eames. See id. (citing In 
re Hogan, 559 F.2d 595, 603, 194 U.S.P.Q. 527, 535 (C.C.P.A. 1977)).
    An applicant should understand, however, that he or she does not 
have an unfettered right to file multiple continuing applications 
without making a good faith attempt to claim the applicant's invention. 
35 U.S.C. 2(b) gives the Director the inherent authority to promulgate 
regulations to ensure that applicants prosecute applications in good 
faith. Moreover, by assuming that an unlimited number of continuations 
are available, applicants have slipped into unfocused practices in 
prosecution that impede the Office's ability to conduct effective 
examination. Such practices likewise cause delays in prosecution and 
increase the cost of examination, both of which are contrary to an 
applicant's duties under the rules of conduct before the Office set 
forth in 37 CFR Part 10.
    The changes in this final rule do not set a per se limit on the 
number of continuing applications. Nor are the changes intended to 
address extreme cases of prosecution laches or to codify In re Bogese, 
303 F.3d 1362, 1369, 64 U.S.P.Q.2d 1448, 1453 (Fed. Cir. 2002) (Bogese 
II). Rather, the rules require that applicants who file multiple 
continuing applications from the same initial application show that the 
third and following applications, and any second or subsequent request 
for continued examination in an application family, be filed to obtain 
consideration of an amendment, argument, or evidence that could not 
have been previously submitted.
    Likewise, the Office is putting conditions on request for continued 
examination practice. 35 U.S.C. 132(b) provides for the request for 
continued examination practice set forth in Sec.  1.114. Unlike 
continuation application practice, the request for continued 
examination practice was recently added to title 35, United States 
Code, in section 4403 of the American Inventors Protection Act of 1999 
(AIPA). See Public Law 106-113, 113 Stat. 1501, 1501A-560 (1999). 35 
U.S.C. 132(b) provides, inter alia, that the Office ``shall prescribe 
regulations to provide for the continued examination of applications 
for patent at the request of the applicant.'' Nothing in 35 U.S.C. 
132(b) or its legislative history suggests that the Office must or even 
should permit an applicant to file an unlimited number of requests for 
continued examination in an application. Therefore, this final rule 
allows applicants to file their first request for continued examination 
in an application family without any justification, but requires 
applicants to justify the need for any further requests for continued 
examination in light of the past prosecution.
    The Office appreciates that appropriate continued examination 
practice permits an applicant to obtain further examination and advance 
an application to final action. The unrestricted continued examination 
practice, however, does not provide adequate incentives to assure that 
the exchanges between an applicant and the examiner during the 
examination process are efficient. The marginal value vis-[agrave]-vis 
the patent examination process as a whole of exchanges between an 
applicant and the examiner during the examination process tends to 
decrease after each additional continued examination filing. The Office 
resources absorbed by the examination of additional continued 
examination filings are diverted away from the examination of new 
applications, thus increasing the backlog of unexamined applications.
    The Office also appreciates that applicants sometimes use continued 
examination practice to obtain further examination rather than file an 
appeal to avoid the delays that historically have been associated with 
the appeal process. The Office, however, has taken major steps to 
eliminate such delays. First, the Board of Patent Appeals and 
Interferences (BPAI) has radically reduced the inventory of pending 
appeals and appeal pendency during the last five fiscal years. Second, 
the Office has adopted an appeal conference program to review the 
rejections in applications in which an appeal brief has been filed. See 
Manual of Patent Examining Procedure (MPEP) Sec.  1207.01 (8th ed. 
2001) (Rev. 5, August 2006). Third, the Office has also adopted a pre-
appeal brief conference program to permit an applicant to request that 
a panel of examiners review the rejections in his or her application 
prior to the filing of an appeal brief. See New Pre-Appeal Brief 
Conference Program, 1296 Off. Gaz. Pat. Office 67 (July 12, 2005), and 
Extension of the Pilot Pre-Appeal Brief Conference Program, 1303 Off. 
Gaz. Pat. Office 21 (Feb. 7, 2006). These changes provide for a 
relatively expeditious review of rejections in an application under 
appeal. Thus, for an applicant faced with a rejection that he or she 
feels is improper, the appeal process offers a more effective 
resolution than seeking continued examination before the examiner.
    This final rule also provides that an applicant may file a 
divisional application directed to each non-elected invention that has 
not been examined if the prior-filed application is subject to a 
requirement for restriction. The divisional application need not be 
filed during the pendency of the application subject to a requirement 
for restriction, as long as the copendency requirement of 35 U.S.C. 120 
is met. This final rule also permits applicant to file two continuation 
applications of a divisional application plus a request for continued 
examination in the divisional application family, without any 
justification. This final rule, however, does not permit a 
``divisional'' application to be filed if it is not the result of a 
requirement for restriction in the prior-filed application (a so-called 
``voluntary'' divisional application). Such a ``voluntary'' divisional 
application would be a continuation application, and subject to the 
requirements for continuation applications, under the changes in this 
final rule.

B. Changes to Practice for Examination of Claims in Patent Applications

    A number of patent applications contain a large number of claims, 
which makes efficient and effective

[[Page 46721]]

examination of such applications problematic. The Office previously 
requested comments in 1998 on a proposal to limit the number of 
independent and total claims that would be examined in an application. 
See Changes to Implement the Patent Business Goals, 63 FR 53497, 53506-
08 (Oct. 5, 1998), 1215 Off. Gaz. Pat. Office 87, 95-97 (Oct. 27, 
1998). Specifically, in 1998, the Office requested comments on a 
proposal to change the rules of practice to: (1) Limit the number of 
total claims that will be examined (at one time) in an application to 
forty; and (2) limit the number of independent claims that will be 
examined (at one time) in an application to six. See Changes to 
Implement the Patent Business Goals, 63 FR at 53506, 1215 Off. Gaz. 
Pat. Office at 95. Under the 1998 proposal, if the applicant presented 
more than forty total claims or six independent claims for examination 
at one time, the Office would withdraw the excess claims from 
consideration, and require the applicant to cancel those claims. See 
id. The Office, however, ultimately decided not to proceed with a 
proposed change to Sec.  1.75 to place an absolute limit on the number 
of total and independent claims that would be examined in an 
application. See Changes to Implement the Patent Business Goals, 64 FR 
53771, 53774-75 (Oct. 4, 1999), 1228 Off. Gaz. Pat. Office 15, 17-18 
(Nov. 2, 1999).
    Applications which contain a large number of claims, however, 
continue to absorb an inordinate amount of patent examining resources, 
as they are extremely difficult to properly process and examine. As a 
result, contrary to the proposal under consideration in 1998, the 
Claims Proposed Rule sought a change to the practice for examination of 
claims that would not place a limit on the number of total or 
independent claims that may be presented for examination in an 
application. The Office proposed in the Claims Proposed Rule to revise 
the practice for the examination of claims in an application as 
follows: (1) The Office would give an initial examination only to the 
representative claims, namely, all of the independent claims and only 
the dependent claims that are expressly designated for initial 
examination; and (2) if the number of representative claims is greater 
than ten, the Office would require the applicant to help focus 
examination by submitting an examination support document covering all 
of the representative claims. See Changes to Practice for the 
Examination of Claims in Patent Applications, 71 FR at 61-69, 1302 Off. 
Gaz. Pat. Office at 1329-35.
    The Office received a substantial number of comments from the 
public opposing the proposed ``representative claims'' examination 
approach and suggesting that the Office should simply adopt a strategy 
based upon whether an application contains more than a given number of 
independent and total claims. As a result of the public comments on the 
Claims Proposed Rule, the Office is not adopting the ``representative 
claims'' examination approach.
    Instead, this final rule provides that if the number of independent 
claims is greater than five or the number of total claims is greater 
than twenty-five, the applicant must help focus examination by 
providing an examination support document covering all of the claims in 
the application (whether in independent or dependent form) before the 
issuance of a first Office action on the merits of an application. An 
applicant may present up to five independent claims and twenty-five 
total claims in an initial application and each continuation or 
continuation-in-part application without providing either an 
examination support document or justification, as long as those 
applications are either prosecuted serially or contain patentably 
distinct claims. Thus, an applicant may present up to fifteen 
independent claims and seventy-five total claims to a single patentably 
distinct invention via an initial application and two continuation or 
continuation-in-part applications that are filed and prosecuted 
serially without providing either an examination support document or a 
justification. Furthermore, an applicant may present up to fifteen 
independent claims and seventy-five total claims via a divisional 
application and its two continuation applications without providing 
either an examination support document or a justification, if the 
Office issues a restriction requirement in the prior-filed application. 
Thus, the change to the practice for examination of claims adopted in 
this final rule avoids placing a limit on the number of total or 
independent claims that may be presented for examination in an 
application, but does require an applicant who presents more than five 
independent claims or more than twenty-five total claims in an 
application to help focus examination by providing additional 
information to the Office in an examination support document.
    If an applicant thinks fifteen independent claims or seventy-five 
total claims to an invention is not sufficient, or if applicant wishes 
to present more than five independent claims or twenty-five total 
claims in any one application, then applicant has the option of 
presenting as many independent and total claims as desired by providing 
an examination support document. The examination support document will 
assist the examiner in examining the application and determining the 
patentability of a claimed invention by providing the most relevant 
prior art and other useful information. Specifically, the examination 
support document will assist the examiner in understanding the 
invention and interpreting the claims before conducting a prior art 
search. The examination support document will also assist the examiner 
in evaluating the prior art cited by the applicant and in determining 
whether a claim limitation has support in the original disclosure and 
in any prior-filed application. An examination support document must be 
filed before the issuance of a first Office action on the merits of an 
application. This is so that the information concerning the invention 
will be available when the Office begins the examination process, and 
thus avoids the piecemeal examination that would result if the 
examination support document were not provided until after the first 
Office action on the merits in the application.

C. Changes to Practice for Patent Applications Containing Patentably 
Indistinct Claims

    The changes in this final rule also require that applicants provide 
additional information to the Office when they file multiple 
applications containing ``conflicting'' or patentably indistinct 
claims. The rules of practice provided that ``[w]here two or more 
applications filed by the same applicant contain conflicting claims, 
elimination of such claims from all but one application may be required 
in the absence of good and sufficient reason for their retention during 
pendency in more than one application.'' See 37 CFR 1.78(b) (2006).
    This final rule provides that an applicant must identify other 
pending applications or patents that are commonly owned, have a common 
inventor, and have a claimed filing or priority date within two months 
of the claimed filing or priority date of the application. This 
requirement does not supplant an applicant's duty to bring other 
applications that are ``material to patentability'' of an application 
(e.g., applications containing patentably indistinct claims) to the 
attention of the examiner. See Dayco Prod., Inc. v. Total

[[Page 46722]]

Containment, Inc., 329 F.3d 1358, 1365-69, 66 U.S.P.Q.2d 1801, 1806-08 
(Fed. Cir. 2003); see also MPEP Sec.  2001.06(b). Thus, applicants are 
cautioned against intentionally filing related applications outside of 
this two-month window in an attempt to avoid the requirement to 
identify other applications that are material to the patentability of 
the application at issue. See Cargill, Inc. v. Canbra Foods, Ltd., 476 
F.3d 1359, 1367-68, 81 U.S.P.Q.2d 1705, 1711 (Fed. Cir. 2007) (there is 
no such thing as a good faith intent to deceive).
    This final rule provides that if there are other pending 
applications or patents that are commonly owned and have a common 
inventor, substantial overlapping disclosures, and the same claimed 
filing or priority date, the Office will presume that the applications 
contain patentably indistinct claims. In such a situation, the 
applicant must either rebut this presumption by explaining how the 
applications contain patentably distinct claims, or submit the 
appropriate terminal disclaimers and explain why two or more pending 
applications containing ``conflicting'' or patentably indistinct claims 
should be maintained.
    The Office proposed a provision that if an application contains at 
least one claim that is patentably indistinct from at least one claim 
in one or more other applications or patents, the Office would (if 
certain conditions were met) treat the independent claims and the 
dependent claims designated for initial examination in the first 
application and in each of such other applications or patents as 
present in each of the applications for purposes of determining whether 
the applicant would be required to submit an examination support 
document. See Changes to Practice for the Examination of Claims in 
Patent Applications, 71 FR at 64, 68, 1302 Off. Gaz. Pat. Office at 
1331, 1334. This final rule provides that if multiple applications, 
including applications having a continuity relationship, contain 
patentably indistinct claims, the Office will treat the multiple 
applications as a single application for purposes of determining 
whether each of the multiple applications exceeds the five independent 
claim and twenty-five total claim threshold. This provision is to 
preclude an applicant from submitting multiple applications with claims 
that are patentably indistinct, each with five or fewer independent 
claims or twenty-five or fewer total claims, for the purposes of 
avoiding the requirement to submit an examination support document in 
compliance with Sec.  1.265. The Office, however, will not count the 
claims in issued patents that contain patentably indistinct claims in 
determining whether a pending application exceeds the five independent 
claim and twenty-five total claim threshold. Nevertheless, those 
patentably indistinct claims would still be subject to a double 
patenting rejection.

D. Retention of First Action Final Practice and Changes in Second 
Action Final Practice

    The Office has a first action final rejection practice under which 
the first Office action in a continuing application, or in the 
prosecution of a request for continued examination, may be made final 
under certain circumstances. See MPEP Sec.  706.07(b) and 706.07(h), 
paragraph VIII. The Office proposed to eliminate this practice in 
continuing applications under 35 U.S.C. 120, 121, or 365(c) and in 
requests for continued examination under 35 U.S.C. 132(b) as 
unnecessary in view of the proposed changes to continuing applications 
and requests for continued examination practice that would permit an 
applicant to file only one continuing application or request for 
continued examination without any justification. See Changes to 
Practice for Continuing Applications, Requests for Continued 
Examination Practice, and Applications Containing Patentably Indistinct 
Claims, 71 FR at 51, 1302 Off. Gaz. Pat. Office at 1321. This final 
rule, however, provides that an applicant may file a request for 
continued examination in either the initial application or either of 
the two continuing applications without any justification. Therefore, 
the Office is retaining its first action final rejection practice. 
Applicants, however, are reminded that it would not be proper for the 
Office to make a first Office action final in a continuing application 
or after a request for continued examination if the application 
contains material which was presented after final rejection or the 
close of prosecution but was denied entry because: (1) new issues were 
raised that required further consideration and/or search; or (2) the 
issue of new matter was raised. See MPEP Sec.  706.07(b) and 706.07(h). 
Thus, applicants may guard against first action final rejection in a 
continuing application or after a request for continued examination by 
first seeking entry of the amendment, argument, or new evidence under 
Sec.  1.116.
    The Office is also not changing the final action practice for the 
Office action following a submission under Sec.  1.129(a). See Changes 
to the Transitional Procedures for Limited Examination After Final 
Rejection in Certain Applications Filed Before June 8, 1995, 70 FR 
24005 (May 6, 2005), 1295 Off. Gaz. Pat. Office 22 (Jun. 7, 2005) 
(notice).
    The Office is revising second action final practice as it pertains 
to second or subsequent Office actions that include a new double 
patenting rejection (either statutory or obviousness-type double 
patenting). Double patenting can arise when a party (or parties to a 
joint research agreement under the Cooperative Research and Technology 
Enhancement Act of 2004 (CREATE Act), Public Law 108-453, 118 Stat. 
3596 (2004)) has filed multiple patent applications containing 
patentably indistinct claims. The applicant (or the owner of the 
application) is in a far better position than the Office to determine 
whether there are one or more other applications or patents containing 
patentably indistinct claims. For this reason, when an applicant files 
multiple applications that are substantially the same, the applicant is 
responsible for assisting the Office in resolving potential double 
patenting situations, rather than taking no action until faced with a 
double patenting rejection. Thus, if an Office action must include a 
double patenting rejection, it is because the applicant has not met his 
or her responsibility to resolve the double patenting situation. 
Therefore, the inclusion of a new double patenting rejection in a 
second or subsequent Office action will not preclude the Office action 
from being made final.
    The Office is also revising second action final practice as it 
pertains to second or subsequent Office actions that include a new 
ground of rejection necessitated by a showing that a claim element that 
does not use the phrase ``means for'' or ``step for'' is nevertheless a 
means- (or step-) plus-function claim element under 35 U.S.C. 112, ] 6. 
The Office revised the examination guidelines for means- (or step-) 
plus-function claim elements under 35 U.S.C. 112, ] 6, in June of 2000. 
See Supplemental Examination Guidelines for Determining the 
Applicability of 35 U.S.C. 112,  6, 65 FR 38510 (June 21, 
2000), 1236 Off. Gaz. Pat. Office 98 (July 25, 2000) (2000 Examination 
Guidelines); see also Interim Supplemental Examination Guidelines for 
Determining the Applicability of 35 U.S.C. 112,  6, 64 FR 
41392 (July 30, 1999). The 2000 Examination Guidelines for means- (or 
step-) plus-function claim elements under 35 U.S.C. 112, ] 6, have been 
incorporated into the MPEP. See MPEP sections 2181-2184 (8th ed. 2001) 
(Rev. 5, August 2006). The 2000 Examination

[[Page 46723]]

Guidelines set forth a three-prong procedure for determining whether a 
claim element is a means- (or step-) plus-function claim element under 
35 U.S.C. 112, ] 6. See Supplemental Examination Guidelines for 
Determining the Applicability of 35 U.S.C. 112,  6, 65 FR at 
38514, 1236 Off. Gaz. Pat. Office at 101. The 2000 Examination 
Guidelines provide that if a claim element does not include the phrase 
``means for'' or ``step for'' as provided in the first prong of the 
three-prong procedure and the applicant wishes to have the claim 
element treated under 35 U.S.C. 112, ] 6, in a proceeding before the 
Office, the applicant has two options: (1) Amend the claim to include 
the phrase ``means for'' or ``step for''; or (2) show that even though 
the phrase ``means for'' or ``step for'' is not used, the claim element 
is written as a function to be performed and does not recite sufficient 
structure, material, or acts which would preclude application of 35 
U.S.C. 112, ] 6. See Supplemental Examination Guidelines for 
Determining the Applicability of 35 U.S.C. 112,  6, 65 FR at 
38514, 1236 Off. Gaz. Pat. Office at 101. To avoid any unnecessary 
delay in the prosecution of the application, an applicant who wishes to 
have a claim element treated under 35 U.S.C. 112, ] 6, should either 
use the phrase ``means for'' or ``step for'' in the claim element or 
provide the necessary showing before the examination of the application 
begins so that the examiner can properly interpret the claims in the 
application and make a patentability determination. Furthermore, 
because submitting a showing is tantamount to an amendment of the claim 
to include the phrase ``means for'' or ``step for,'' a showing will be 
treated as an amendment of the claim for second action final purposes. 
Thus, the inclusion of a new rejection in a second or subsequent Office 
action necessitated by a showing submitted by applicant will not 
preclude the Office from making the second or subsequent Office action 
final.
    This final rule requires applicant to identify any claims in a 
continuation-in-part application for which the subject matter is 
disclosed in the manner provided by 35 U.S.C. 112, ] 1, in the prior-
filed application. See Sec.  1.78(d)(3) and the discussion of Sec.  
1.78(d)(3). Any claim in the continuation-in-part application for which 
the subject matter is not identified as being disclosed in the manner 
provided by 35 U.S.C. 112, ] 1, in the prior-filed application will be 
treated as entitled only to the actual filing date of the continuation-
in-part application, and will be subject to prior art based on the 
actual filing date of the continuation-in-part application. To avoid 
any unnecessary delay in the prosecution of the application, applicant 
should provide the identification before the examiner begins to conduct 
a prior art search. If the failure to identify the claims for which the 
subject matter is disclosed in the manner provided by 35 U.S.C. 112, ] 
1, in the prior-filed application causes the examiner to include a new 
prior art rejection in a second or subsequent Office action, the 
inclusion of the new prior art rejection will not preclude the Office 
action from being made final.
    Therefore, the Office is revising second action final practice to 
provide that a second or any subsequent Office action on the merits may 
be made final, except when the Office action contains a new ground of 
rejection that is not: (1) Necessitated by applicant's amendment of the 
claims, including amendment of a claim to eliminate unpatentable 
alternatives; (2) necessitated by applicant's providing a showing that 
a claim element that does not use the phrase ``means for'' or ``step 
for'' is written as a function to be performed and does not otherwise 
preclude application of 35 U.S.C. 112, ] 6; (3) based on information 
submitted in an information disclosure statement filed during the 
period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 
1.17(p); (4) based upon double patenting (statutory or obviousness-type 
double patenting); or (5) necessitated by applicant's identification of 
the claim or claims in a continuation-in-part application for which the 
subject matter is disclosed in the manner provided by 35 U.S.C. 112, ] 
1, in the prior-filed application. The provision in MPEP Sec.  904.02 
that a search should cover the claimed subject matter and should also 
cover the disclosed features which might reasonably be expected to be 
claimed does not preclude an examiner from making the second or any 
subsequent Office action on the merits final if the Office action 
contains a new ground of rejection that was necessitated solely by 
applicant's amendment of the claims to eliminate an unpatentable 
alternative. An examiner cannot be expected to foresee whether or how 
an applicant will amend a claim to overcome a rejection except in very 
limited circumstances (e.g., where the examiner suggests how applicant 
can overcome a rejection under 35 U.S.C. 112, ] 2).

II. Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, part 1, is amended as 
follows:
    Section 1.17 (patent application and reexamination processing 
fees): Section 1.17(f) is amended to include a reference to: (1) 
Petitions under Sec.  1.78(d)(1)(vi) for a continuing application not 
provided for in Sec. Sec.  1.78(d)(1)(i) through (d)(1)(v); and (2) 
petitions under Sec.  1.114(g) for a request for continued examination 
not provided for in Sec.  1.114(f). See discussion of Sec. Sec.  1.78 
and 1.114.
    Section 1.26 (refunds): Section 1.26(a) is amended to add the 
phrase ``[e]xcept as provided in Sec.  1.117 or Sec.  1.138(d)'' to the 
sentence ``[a] change of purpose after the payment of a fee, such as 
when a party desires to withdraw a patent filing for which the fee was 
paid, including an application, an appeal, or a request for an oral 
hearing, will not entitle a party to a refund of such fee.'' The 
``change of purpose'' provision of Sec.  1.26(a) is directed to the 
provision in 35 U.S.C. 42(d) authorizing a refund of ``any fee paid by 
mistake or any amount paid in excess of that required.'' 35 U.S.C. 
42(d). Sections 1.117 and 1.138(d), however, are directed to the 
provisions in 35 U.S.C. 41(a)(2) and (d)(1)(D) as amended by the 
Consolidated Appropriations Act, 2005 (Consolidated Appropriations Act) 
that permit the Office to develop procedures to refund search fees or 
excess claims fees under certain limited conditions. See Public Law 
108-447, 118 Stat. 2809 (2004). Section 1.26(b) is amended to change 
``except as otherwise provided in this paragraph or in Sec.  1.28(a)'' 
to ``except as otherwise provided in this paragraph, or in Sec.  
1.28(a), Sec.  1.117(b), or Sec.  1.138(d)''. This change is for 
consistency with Sec.  1.117(b) and Sec.  1.138(d), which also specify 
time periods within which certain refunds must be requested.
    Section 1.52 (language, paper, writing, margins, compact disc 
specifications): Section 1.52(d)(2) is amended to refer to Sec.  
1.78(b) concerning the requirements for claiming the benefit of a 
provisional application in a nonprovisional application. Section 
1.52(d)(2) is also amended to provide that if a provisional application 
is filed in a language other than English and the benefit of such 
provisional application is claimed in a nonprovisional application, an 
English language translation of the non-English language provisional 
application will be required in the provisional application. This 
change conforms Sec.  1.52(d)(2) to the September 2005 revision to the 
provisions in Sec.  1.78 for claiming the benefit of a provisional 
application. See Provisions for Claiming the Benefit of a Provisional 
Application With a Non-English Specification and Other Miscellaneous 
Matters, 70 FR 56119,

[[Page 46724]]

56121, 56128 (Sept. 26, 2005), 1299 Off. Gaz. Pat. Office 142, 143-44, 
150 (Oct. 25, 2005) (final rule). With respect to claiming the benefit 
of a provisional application that was filed in a language other than 
English, Sec.  1.78(b)(5) now provides that: (1) If the prior-filed 
provisional application was filed in a language other than English and 
both an English-language translation of the prior-filed provisional 
application and a statement that the translation is accurate were not 
previously filed in the prior-filed provisional application, applicant 
will be notified and given a period of time within which to file the 
translation and the statement in the prior-filed provisional 
application; (2) if the notice is mailed in a pending nonprovisional 
application, a timely reply to such a notice must include the filing in 
the nonprovisional application of either a confirmation that the 
translation and statement were filed in the provisional application, or 
an amendment or supplemental application data sheet withdrawing the 
benefit claim, or the nonprovisional application will be abandoned; and 
(3) the translation and statement may be filed in the provisional 
application, even if the provisional application has become abandoned.
    Section 1.53 (application number, filing date, and completion of 
application): Section 1.53(b) and (c)(4) are amended to refer to Sec.  
1.78, rather than specific paragraphs of Sec.  1.78. Section 1.53(b)(1) 
is also amended to provide that continuation or divisional applications 
naming an inventor not named in the prior application must be filed 
under Sec.  1.53(b) (this provision was formerly in Sec.  1.53(b)(2)), 
and to reference Sec.  1.78(a)(2) for the definition of a divisional 
application and Sec.  1.78(a)(3) for the definition of a continuation 
application. Section 1.53(b)(2) is amended to reference Sec.  
1.78(a)(4) for the definition of a continuation-in-part application.
    Section 1.75 (claims): Section 1.75(b) is amended to provide for 
the revised practice for the examination of claims in an application. 
Section 1.75(b) (introductory text) provides for the requirements of a 
dependent claim. Section 1.75(b)(1) provides for the five independent 
claim and twenty-five total claim threshold for invoking the 
examination support document requirement. Section 1.75(b)(2) provides 
for claims in dependent form that are effectively independent claims. 
Section 1.75(b)(3) provides for situations in which an examination 
support document has not been provided in an application that exceeds 
the five independent claim and twenty-five total claim threshold. 
Section 1.75(b)(4) provides that the total number of claims present in 
all of the copending commonly owned applications that contain 
patentably indistinct claims may not exceed the five independent claim 
and twenty-five total claim threshold. Section 1.75(b)(5) provides that 
claims withdrawn from consideration will not, unless they are 
reinstated or rejoined, be taken into account in determining whether an 
application exceeds the five independent claim and twenty-five total 
claim t