Procedure for Treating Rejected Claims That Are Not Being Appealed, 66097-66098 [E9-29641]

Download as PDF Federal Register / Vol. 74, No. 238 / Monday, December 14, 2009 / Notices the Deputy Commissioner for Patent Examination Policy, directly by United States Patent and Trademark telephone to (571) 272–7720, or by mail Office addressed to: Mail Stop Comments— Patents, Commissioner for Patents, P.O. [Docket No.: PTO–P–2009–0020] Box 1450, Alexandria, VA 22313–1450. Procedure for Treating Rejected SUPPLEMENTARY INFORMATION: The Claims That Are Not Being Appealed USPTO is considering changes to the procedure for handling notices of appeal AGENCY: United States Patent and and appeal briefs that identify fewer Trademark Office, Commerce. than all of the rejected claims as being ACTION: Request for comments. appealed, in view of Ex parte Ghuman, 88 USPQ2d 1478 (Bd. Pat. App. & Int. SUMMARY: The United States Patent and 2008) (precedential) (provides for Trademark Office (USPTO) is remand by the Board of Patent Appeals considering changes to the procedure and Interferences (BPAI) if the examiner for handling notices of appeal and appeal briefs that identify fewer than all does not cancel claims identified as of the rejected claims as being appealed. being not on appeal; the non-appealed rejected claims were considered Under the proposed procedure, if withdrawn from the appeal where appellant files a notice of appeal, or an appeal brief, that clearly identifies fewer appellant limited the appeal to fewer than all of the pending rejected claims than all of the rejected claims as being in the appeal brief). The USPTO is appealed, the non-appealed rejected requesting comments from the public claims would be deemed canceled by regarding the proposed procedure set operation of this action on the part of forth in this notice because the USPTO the appellant as of the date on which desires the benefit of public comment. such a notice of appeal, or appeal brief, The USPTO will consider and address is filed, regardless of whether the any relevant comments received. appellant also files an amendment Background: After receiving a canceling the non-appealed rejected notification of an Office action that claims. The USPTO is requesting comments from the public regarding the contains one or more rejections, applicant must file a reply to the Office proposed procedure set forth in this action within the time period for reply notice. set forth in the Office action to avoid COMMENT DEADLINE DATE: To be ensured abandonment of the application. See 35 of consideration, written comments U.S.C. 133. Pursuant to 35 U.S.C. 134, must be received on or before January applicant may appeal the examiner’s 13, 2010. No public hearing will be decision to the BPAI by filing a notice held. of appeal under 37 CFR 41.31 if at least ADDRESSES: Written comments should one claim has been twice rejected. 37 be sent by electronic mail message over CFR 1.113(c) provides that a reply to a the Internet addressed to final Office action is required to include PatentPractice@uspto.gov. Comments cancellation of each rejected claim or may also be submitted by mail appeal from the rejection of each addressed to: Mail Stop Comments— rejected claim. For a reply to a non-final Patents, Commissioner for Patents, P.O. Office action, the applicant must Box 1450, Alexandria, VA 22313–1450, address every ground of rejection set marked to the attention of Joni Y. forth in the non-final action or cancel Chang. Although comments may be each rejected claim subject to any submitted by mail, the Office prefers to ground of rejection not addressed in the receive comments via the Internet. reply. See 37 CFR 1.111(b). The written comments will be There is no provision in 35 U.S.C. 134 available for public inspection at the or 37 CFR 1.113 for an applicant to Office of the Commissioner for Patents, appeal only a part of the examiner’s located in Madison East, Tenth Floor, decision. An appeal under 37 CFR 41.31 600 Dulany Street, Alexandria, Virginia, must be taken from the rejection of all and will be available via the Office’s claims under rejection which the Internet Web site (address: http:// applicant proposes to contest. See 37 www.uspto.gov). Because comments will CFR 41.31(c). In order to treat a notice be made available for public inspection, of appeal as a proper reply to the Office information that is not desired to be action, the notice of appeal is made public, such as an address or considered an appeal to the entire phone number, should not be included examiner’s decision, provided that the in the comments. notice of appeal is accompanied by the required fee set forth in 37 CFR FOR FURTHER INFORMATION CONTACT: Joni 41.20(b)(1) and is filed within the time Y. Chang, Senior Legal Advisor, Office of Patent Legal Administration, Office of period for reply set forth in the Office mstockstill on DSKH9S0YB1PROD with NOTICES DEPARTMENT OF COMMERCE VerDate Nov<24>2008 17:54 Dec 11, 2009 Jkt 220001 PO 00000 Frm 00014 Fmt 4703 Sfmt 4703 66097 action. Therefore, if appellant does not wish to contest one of the rejected claims, appellant must file an amendment canceling that claim. The amendment must be filed separately from the notice of appeal and appeal brief. Notwithstanding the provisions of 35 U.S.C. 133 and 134, and 37 CFR 1.111(b) and 1.113(c), some appellants file notices of appeal or appeal briefs that attempt to limit the appeal to fewer than all of the rejected claims without filing an amendment to cancel the nonappealed rejected claims. It has long been USPTO practice that an appellant must either appeal from the rejection of all of the rejected claims or cancel those claims not being appealed. See Ex parte Benjamin, 1903 Dec. Comm. Pat. 132, 134 (1903). Thus, attempts to limit an appeal to fewer than all of the rejected claims, either by filing a notice of appeal or appeal brief that attempts to limit the appeal to fewer than all of the rejected claims, operates to withdraw the appeal as to the non-appealed rejected claims and operates as a cancellation of those claims from the application. See Manual of Patent Examining Procedure (MPEP) § 1215.03. Proposed Procedure: Under the proposed procedure, if appellant clearly limits the appeal to fewer than all of the rejected claims in a notice of appeal, or an appeal brief, the non-appealed rejected claims would be deemed canceled by operation of this action on the part of the appellant as of the date on which such a notice of appeal, or appeal brief, is filed. The examiner should note in the examiner’s answer that the non-appealed rejected claims are deemed canceled. However, a failure to note the cancellation of non-appealed rejected claims will not affect the canceled status of these claims because the non-appealed rejected claims are deemed canceled as of the date on which the notice of appeal, or appeal brief, is filed. Therefore, an application will not be returned or remanded by the BPAI for correction merely due to a failure of an examiner’s answer to note the cancellation of non-appealed rejected claims. After the decision by the BPAI and the jurisdiction is transferred back to the examiner for further action, or the prosecution is reopened without a decision by the BPAI, the examiner will notify appellant of the cancellation of the non-appealed rejected claims in the next Office action, unless the application is abandoned. For example, the examiner may include the following statement in the examiner’s answer or in the next Office action after a BPAI decision: ‘‘Claims 4–5 are deemed canceled because appellant E:\FR\FM\14DEN1.SGM 14DEN1 66098 Federal Register / Vol. 74, No. 238 / Monday, December 14, 2009 / Notices attempted to limit the appeal to fewer than all of the rejected claims by submitting an identification of claims being appealed that did not include these rejected claims in the notice of appeal or the appeal brief.’’ 37 CFR 41.31 does not provide for an identification of the claims whose rejection is being appealed. A notice of appeal that does not identify any claims would be accepted as an appeal of all of the rejected claims, unless the appeal brief indicates otherwise. Therefore, if appellant files a notice of appeal and appeal brief that do not clearly limit the appeal to fewer than all of the rejected claims, all of the rejected claims would be considered to be on appeal. The BPAI will have the jurisdiction to review the examiner’s decision as to all of the rejected claims and all of the grounds of rejection set forth by the examiner. If a notice of appeal does not identify the claims on appeal and its appeal brief contains inconsistency regarding whether all of the rejected claims are being appealed (e.g., appellant lists fewer than all of the rejected claims in the status of claims section of the appeal brief and then lists all of the rejected claims in the grounds of rejection to be reviewed on appeal section, or other sections, of the appeal brief), all of the rejected claims would be considered to be on appeal. If a notice of appeal does not identify the claims on appeal and all of the sections of its appeal brief consistently identify fewer than all of the rejected claims being appealed, then the appeal brief has clearly limited the appeal to fewer than all of the rejected claims and the non-appealed rejected claims will be deemed canceled by operation of the filing of such an appeal brief as of the date on which the appeal brief is filed. The proposed procedure will apply to notices of appeal and appeal briefs filed under 37 CFR 41.31 and 41.37. Similarly, the proposed procedure will also apply to notices of appeal or cross appeal and appeal briefs filed by patent owners in ex parte and inter partes reexamination proceedings. Dated: December 8, 2009. David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. E9–29641 Filed 12–11–09; 8:45 am] BILLING CODE 3510–16–P DEPARTMENT OF COMMERCE International Trade Administration Quarterly Update to Annual Listing of Foreign Government Subsidies on Articles of Cheese Subject to an In– Quota Rate of Duty AGENCY: Import Administration, International Trade Administration, Department of Commerce. EFFECTIVE DATE: December 14, 2009. FOR FURTHER INFORMATION CONTACT: Gayle Longest, AD/CVD Operations, Office 3, Import Administration, International Trade Administration, U.S. Department of Commerce, 14th Street and Constitution Ave., NW, Washington, DC 20230, telephone: (202) 482–3338. SUPPLEMENTARY INFORMATION: Section 702 of the Trade Agreements Act of 1979 (as amended) (‘‘the Act’’) requires the Department of Commerce (‘‘the Department’’) to determine, in consultation with the Secretary of Agriculture, whether any foreign government is providing a subsidy with respect to any article of cheese subject to an in–quota rate of duty, as defined in section 701(c)(1) of the Act, and to publish an annual list and quarterly updates to the type and amount of those subsidies. We hereby provide the Department’s quarterly update of subsidies onarticles of cheese that were imported during the period July 1, 2009, through September 30, 2009. The Department has developed, in consultation with the Secretary of Agriculture, information on subsidies (as defined in section 702(h)(2) of the Act and section 771(5) of the Tariff Act of 1930, as amended (‘‘Tariff Act’’)), being provided either directly or indirectly by foreign governments on articles of cheese subject to an in–quota rate of duty. The appendix to this notice lists the country, the subsidy program or programs, and the gross and net amounts of each subsidy for which information is currently available. The Department will incorporate additional programs which are found to constitute subsidies, and additional information on the subsidy programs listed, as the information is developed. The Department encourages any person having information on foreign government subsidy programs which benefit articles of cheese subject to an in–quota rate of duty to submit such information in writing to the Assistant Secretary for Import Administration, U.S. Department of Commerce, 14th Street and Constitution Ave., NW, Washington, DC 20230. This determination and notice are in accordance with section 702(a)(2) of the Act. Dated: December 3, 2009. Ronald K. Lorentzen, Deputy Assistant Secretary for Import Administration. APPENDIX SUBSIDY PROGRAMS ON CHEESE SUBJECT TO AN IN–QUOTA RATE OF DUTY Country Gross1 Subsidy($/lb) Program(s) 27 European Union Member States 3 .. Canada ................................................ Norway ................................................. .............................................................. .............................................................. Switzerland .......................................... European Union Restitution Payments Export Assistance on Certain Types of Cheese Indirect (Milk) Subsidy Consumer Subsidy Total Deficiency Payments $0.00 $ 0.32 $ 0.00 $ 0.00 $ 0.00 $ 0.00 1 Defined $0.00 $0.32 $0.00 $ 0.00 $ 0.00 $ 0.00 in 19 U.S.C. 1677(5). in 19 U.S.C. 1677(6). 3 The 27 member states of the European Union are: Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, and the United Kingdom. 2 Defined mstockstill on DSKH9S0YB1PROD with NOTICES Net 2 Subsidy($/lb) VerDate Nov<24>2008 17:54 Dec 11, 2009 Jkt 220001 PO 00000 Frm 00015 Fmt 4703 Sfmt 4703 E:\FR\FM\14DEN1.SGM 14DEN1

Agencies

[Federal Register Volume 74, Number 238 (Monday, December 14, 2009)]
[Notices]
[Pages 66097-66098]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E9-29641]



[[Page 66097]]

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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No.: PTO-P-2009-0020]


Procedure for Treating Rejected Claims That Are Not Being 
Appealed

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.

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

SUMMARY: The United States Patent and Trademark Office (USPTO) is 
considering changes to the procedure for handling notices of appeal and 
appeal briefs that identify fewer than all of the rejected claims as 
being appealed. Under the proposed procedure, if appellant files a 
notice of appeal, or an appeal brief, that clearly identifies fewer 
than all of the rejected claims as being appealed, the non-appealed 
rejected claims would be deemed canceled by operation of this action on 
the part of the appellant as of the date on which such a notice of 
appeal, or appeal brief, is filed, regardless of whether the appellant 
also files an amendment canceling the non-appealed rejected claims. The 
USPTO is requesting comments from the public regarding the proposed 
procedure set forth in this notice.

COMMENT DEADLINE DATE: To be ensured of consideration, written comments 
must be received on or before January 13, 2010. No public hearing will 
be held.

ADDRESSES: Written comments should be sent by electronic mail message 
over the Internet addressed to PatentPractice@uspto.gov. Comments may 
also be submitted by mail addressed to: Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, 
marked to the attention of Joni Y. Chang. Although comments may be 
submitted by mail, the Office prefers to receive comments via the 
Internet.
    The written comments will be available for public inspection at the 
Office of the Commissioner for Patents, located in Madison East, Tenth 
Floor, 600 Dulany Street, Alexandria, Virginia, and will be available 
via the Office's Internet Web site (address: http://www.uspto.gov). 
Because comments will be made available for public inspection, 
information that is not desired to be made public, such as an address 
or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Joni Y. Chang, Senior Legal Advisor, 
Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patent Examination Policy, directly by telephone to 
(571) 272-7720, or by mail addressed to: Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: The USPTO is considering changes to the 
procedure for handling notices of appeal and appeal briefs that 
identify fewer than all of the rejected claims as being appealed, in 
view of Ex parte Ghuman, 88 USPQ2d 1478 (Bd. Pat. App. & Int. 2008) 
(precedential) (provides for remand by the Board of Patent Appeals and 
Interferences (BPAI) if the examiner does not cancel claims identified 
as being not on appeal; the non-appealed rejected claims were 
considered withdrawn from the appeal where appellant limited the appeal 
to fewer than all of the pending rejected claims in the appeal brief). 
The USPTO is requesting comments from the public regarding the proposed 
procedure set forth in this notice because the USPTO desires the 
benefit of public comment. The USPTO will consider and address any 
relevant comments received.
    Background: After receiving a notification of an Office action that 
contains one or more rejections, applicant must file a reply to the 
Office action within the time period for reply set forth in the Office 
action to avoid abandonment of the application. See 35 U.S.C. 133. 
Pursuant to 35 U.S.C. 134, applicant may appeal the examiner's decision 
to the BPAI by filing a notice of appeal under 37 CFR 41.31 if at least 
one claim has been twice rejected. 37 CFR 1.113(c) provides that a 
reply to a final Office action is required to include cancellation of 
each rejected claim or appeal from the rejection of each rejected 
claim. For a reply to a non-final Office action, the applicant must 
address every ground of rejection set forth in the non-final action or 
cancel each rejected claim subject to any ground of rejection not 
addressed in the reply. See 37 CFR 1.111(b).
    There is no provision in 35 U.S.C. 134 or 37 CFR 1.113 for an 
applicant to appeal only a part of the examiner's decision. An appeal 
under 37 CFR 41.31 must be taken from the rejection of all claims under 
rejection which the applicant proposes to contest. See 37 CFR 41.31(c). 
In order to treat a notice of appeal as a proper reply to the Office 
action, the notice of appeal is considered an appeal to the entire 
examiner's decision, provided that the notice of appeal is accompanied 
by the required fee set forth in 37 CFR 41.20(b)(1) and is filed within 
the time period for reply set forth in the Office action. Therefore, if 
appellant does not wish to contest one of the rejected claims, 
appellant must file an amendment canceling that claim. The amendment 
must be filed separately from the notice of appeal and appeal brief.
    Notwithstanding the provisions of 35 U.S.C. 133 and 134, and 37 CFR 
1.111(b) and 1.113(c), some appellants file notices of appeal or appeal 
briefs that attempt to limit the appeal to fewer than all of the 
rejected claims without filing an amendment to cancel the non-appealed 
rejected claims. It has long been USPTO practice that an appellant must 
either appeal from the rejection of all of the rejected claims or 
cancel those claims not being appealed. See Ex parte Benjamin, 1903 
Dec. Comm. Pat. 132, 134 (1903). Thus, attempts to limit an appeal to 
fewer than all of the rejected claims, either by filing a notice of 
appeal or appeal brief that attempts to limit the appeal to fewer than 
all of the rejected claims, operates to withdraw the appeal as to the 
non-appealed rejected claims and operates as a cancellation of those 
claims from the application. See Manual of Patent Examining Procedure 
(MPEP) Sec.  1215.03.
    Proposed Procedure: Under the proposed procedure, if appellant 
clearly limits the appeal to fewer than all of the rejected claims in a 
notice of appeal, or an appeal brief, the non-appealed rejected claims 
would be deemed canceled by operation of this action on the part of the 
appellant as of the date on which such a notice of appeal, or appeal 
brief, is filed. The examiner should note in the examiner's answer that 
the non-appealed rejected claims are deemed canceled. However, a 
failure to note the cancellation of non-appealed rejected claims will 
not affect the canceled status of these claims because the non-appealed 
rejected claims are deemed canceled as of the date on which the notice 
of appeal, or appeal brief, is filed. Therefore, an application will 
not be returned or remanded by the BPAI for correction merely due to a 
failure of an examiner's answer to note the cancellation of non-
appealed rejected claims. After the decision by the BPAI and the 
jurisdiction is transferred back to the examiner for further action, or 
the prosecution is reopened without a decision by the BPAI, the 
examiner will notify appellant of the cancellation of the non-appealed 
rejected claims in the next Office action, unless the application is 
abandoned. For example, the examiner may include the following 
statement in the examiner's answer or in the next Office action after a 
BPAI decision: ``Claims 4-5 are deemed canceled because appellant

[[Page 66098]]

attempted to limit the appeal to fewer than all of the rejected claims 
by submitting an identification of claims being appealed that did not 
include these rejected claims in the notice of appeal or the appeal 
brief.''
    37 CFR 41.31 does not provide for an identification of the claims 
whose rejection is being appealed. A notice of appeal that does not 
identify any claims would be accepted as an appeal of all of the 
rejected claims, unless the appeal brief indicates otherwise. 
Therefore, if appellant files a notice of appeal and appeal brief that 
do not clearly limit the appeal to fewer than all of the rejected 
claims, all of the rejected claims would be considered to be on appeal. 
The BPAI will have the jurisdiction to review the examiner's decision 
as to all of the rejected claims and all of the grounds of rejection 
set forth by the examiner.
    If a notice of appeal does not identify the claims on appeal and 
its appeal brief contains inconsistency regarding whether all of the 
rejected claims are being appealed (e.g., appellant lists fewer than 
all of the rejected claims in the status of claims section of the 
appeal brief and then lists all of the rejected claims in the grounds 
of rejection to be reviewed on appeal section, or other sections, of 
the appeal brief), all of the rejected claims would be considered to be 
on appeal. If a notice of appeal does not identify the claims on appeal 
and all of the sections of its appeal brief consistently identify fewer 
than all of the rejected claims being appealed, then the appeal brief 
has clearly limited the appeal to fewer than all of the rejected claims 
and the non-appealed rejected claims will be deemed canceled by 
operation of the filing of such an appeal brief as of the date on which 
the appeal brief is filed.
    The proposed procedure will apply to notices of appeal and appeal 
briefs filed under 37 CFR 41.31 and 41.37. Similarly, the proposed 
procedure will also apply to notices of appeal or cross appeal and 
appeal briefs filed by patent owners in ex parte and inter partes 
reexamination proceedings.

    Dated: December 8, 2009.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E9-29641 Filed 12-11-09; 8:45 am]
BILLING CODE 3510-16-P