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Federal Register / Vol, 53, No. 121 / Thursday, June 23, 1988 / Proposed Rules 23725

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Federal Register / Vol, 53, No. 121 / Thursday, June 23, 1988 / Proposed Rules 23725 Federal Register / Vol, 53, No. 121 / Thursday, June 23, 1988 / Proposed Rules 23725 4. In § 642.10, paragraph (b) and the may select one or more of the following (14) Project evaluation. authority citation are revised to read as subjects as training priorities: (15) Budget management. follows: (1) Basic skills instruction in reading, (16) Personnel management. mathematics, written and oral § 642.10 Activities the Secretary assists (17) Reporting student and project under the Training Program. communication, and study skills. * * ★ * * (2) Counseling. performance. (18) Coordinating project activities (b) The grants may provide support (3) Assessment of student needs. (4) Academic tests and testing. with other available resources and for conferences, seminars, internships, activities. workshops, and the publication of (5) College and university admissions manuals designed to improve the policies and procedures. (19) General project management for operations of the Special Programs. (6) Student financial aid. new directors. (7) Cultural enrichment programs. (b) The Secretary may consider an (Authority: 20 U.S.C. 1070-ld) (8) Career planning. application for a Training Program 5. Section 642.34 is revised to read as (9) Tutorial programs. project that does not address one of the follows: (10) Retention and graduation established priorities if the applicant strategies. § 624.34 Priorities for funding. addresses another significant training (11) Support services for persons of need in the local area being served hy (a) The Secretary, after consultation limited proficiency in English. the Special Programs. with regional and State professional (12) Support services for physically associations of persons having special handicapped persons. (Authority: 20 U.S.C. 1070d, 1070d-ld) knowledge with respect to the training (13) Strategies for preparing students [FR Doc. 88-14196 Filed 6-22-88; 8:45 am] needs of Special Programs personnel, for doctoral studies. BILLING CODE 4000-01-M Thursday June 23, 1983 Part IV Department of Commerce Patent and Trademark Office 37 CFR Parts 1 and 5 Miscellaneous Amendments of Patent Rules; Final Rule 23728 Federal Register / Vol. 53, No. 121 / Thursday, June 23, 1988 / Rules and Regulations DEPARTMENT OF COMMERCE comments were received, and four F.2d 954,133 USPQ 650 (CCPA 1962); In persons testified at the oral hearing. re Teague, 254 F.2d 145,117 USPQ 284 Patent and Trademark Office Responses to these comments are (CCPA 1958); and In re Ward, 236 F.2d incorporated in the following discussion 428, 111 USPQ 101 (CCPA 1956). In In re 37 CFR Parts 1 and 5 of specific rules. Hidy, supra, 303 F.2d at 957,133 USPQ at 652, the Court stated: [Docket No. 70754-8056] Discussion of Specific Rules * A Rule 131 affidavit is ineffective to Miscellaneous Amendments of Patent (1) Swearing Back o f a Reference overcome a United States patent, not only Rules The Patent and Trademark Office where there is a verbatim correspondence between claims of the application and of the published the final rule amending the a g e n c y : Patent and Trademark Office, patent, but also where there is no patentable Commerce. rules of practice in patent interference distinction between the respective claims. In cases in the Federal Register at 49 FR ACTION: Final rule. re Wagenhorst, 20 CCPA 829,62 F.2d 831,16 48416-48471 (December 12,1984) and at USPQ 126; In re Teague, 45 CCPA 877, 254 SUMMARY: The Patent and Trademark 1050 Official Gazette 385-440 (January F.2d 145,117 USPQ 284. 29,1985). Included in the rules adopted Office is amending its rules of practice If the application (or patent under was § 1.601(n), which defines “same in patent cases, Parts 1 and S'of Title 37, reexamination) and the domestic patent Code of Federal Regulations, (1) to bring patentable invention.” contain claims which are identical, or Section 1.131(a), as amended, inserts the rule relating to swearing back of a which are not patentably distinct, then “the same patentable invention, as reference into conformity with current the application and patent are claiming defined in § l„601(n) as” before the interference practice; (2) to require that the “same patentable invention,” phrase “the rejected invention.” The the appellant’s brief in an ex parte defined by § 1.601(n) as follows: appeal contain certain specific items; (3) amendment does not change the present to reset the time period for requesting an practice where the inventor of the Invention “A” is the “same patentable invention” as an invention “B” when oral hearing in ex parte appeals where rejected claim, the owner of a patent under reexamination, or the person invention “A” is the same as (35 U.S.C. 102) the examiner’s answer states a new or is obvious (35 U.S.C. 103) in view of ground of rejection; (4) to clarify the qualified under §§1.42,1.43 or 1.47 can invention "B” assuming invention “B" is prior procedure following a rejection after a swear behind a domestic patent which art with respect to invention “A”. remand to the examiner under discloses but does not claim the same As provided in § 1.601(i), an § 1.196(b)(1); (5) to give the examiner-in­ invention as the rejected invention, a interference may be declared whenever chief the authority to decide certain foreign patent or a printed publication. an examiner is of the opinion that an requests for access by an interference Rather, the amendment is necessary to application and a patent contain claims party; (6) to clarify the rule relating to define precisely the term “does not for the “same patentable invention.” access to pending or abandoned claim the rejected invention.” See In re The purpose of the amendment to applications; (7) to modify the rules Eickmeyer, 602 F.2d 974, 979, 202 USPQ § 1.131(a) is to ensure that an applicant concerning requests for interference 655, 661 (CCPA 1979) where the Court who is claiming an invention which is with an application or patent; (8) to stated: identical to, or obvious in view of, i.e., amplify the rule concerning the * * * we conclude that the phrase “does the same patentable invention as requirements of a motion to declare an not claim the rejected invention’’ should be claimed in a domestic patent, cannot additional interference; (9) to make more construed favorably to an applicant, if employ an affidavit under § 1.131 as a comprehensive the rule concerning the possible, so that unless the applicant is means for avoiding an interference with filing of a reissue application by a clearly claiming the same invention as the U.S. patent reference, he will not lose his the patent. To allow an applicant to do patentee involved in an interference; rights under Rule 131. [Emphasis added.] so would result in the issuance of two and (10) to conform the rule concerning patents to the same invention. applications under secrecy order to and also expressed its dissatisfaction Two commenters suggested that current interference practice. with the PTO for § 1.131 be amended to require that an EFFECTIVE DATE: September 12,1988. * * * leaving an applicant in a position interference be declared if an affidavit Amended §§1.191,1.192 and 1.193 apply where he cannot overcome the reference claims by a 131 affidavit because the PTO or declaration under the rule cannot be to ex parte appeals in which the notice used; another suggested that the of appeal under § 1.191 was filed on or has decided that the reference claims his invention, while at the same time, he is examiner be required to consider the after September 12,1988. denied an interference because the PTO has § 1.131 affidavit or declaration if an FOR FURTHER INFORMATION CONTACT: decided that the claims of his application and interference is not declared. These Saul I. Serota by telephone at (703) 557- those of the reference are not for suggestions are not being adopted. As 4072 or Ian A. Calvert by telephone at substantially the same invention. discussed above, an affidavit or (703) 557-4000 or by mail marked to the Possibly because of this decision, some declaration under § 1.131 may be used attention of either and addressed to Box patent practitioners may have been of whenever the inventions claimed by the Interference, Commissioner of Patents the opinion that an affidavit under 37 reference patent (not a statutory bar) and Trademarks, Washington, DC 20231. CFR 1.131 can be used to overcome a and the application would not interfere. SUPPLEMENTARY INFORMATION: rejection on a domestic patent so long as However, the rule could not properly be there is no verbatim correspondence amended to require that an interference Background between the claims of the application or always be declared if the patent and A notice of proposed rulemaking was the patent under reexamination rejected application claims interfere, because published in the Federal Register at 52 on that domestic patent and the claims even if the claims interfere an FR 36739-36743 (September 30,1987) of the domestic patent. interference will not be declared unless and at 1083 Official Gazette 19-26 Such an opinion would not be in the applicant first meets the (October 13,1987). accord with the law expressed in cases requirements of 37 CFR 1.608 (a) or (b). An oral hearing was held on such as In re Clark, 457 F.2d 1004,173 Section 1.608(b) requires an applicant December 9,1987. Twenty-nine written USPQ 359 (CCPA 1972); In re Hidy, 303 whose showing is based on priority of Federal Register / Voi. 53, No. 121 / Thursday, June 23, 1988 / Rules and Regulations 23729 invention to file affidavits by “one or Board of Patent Appeals and in the appeal.
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