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. This explanation is more corroborating witnesses,” whereas Interferences (Board). One of the required to refer to the specification by § 1.131 does not. Compare Kistler v. committee’s recommendations was that page and line number, and, if there is a Weber, 412 F2.d 260,162 USPQ 214 § 1.192 be amended to require that the drawing, to the drawing by reference (CCPA 1969). appellant’s brief include certain items. characters. Where applicable, it would One commenter asserted that an Items (3), (4), (5) and (6) of § 1.192(c) are be preferable to read the appealed applicant should be able to “pursue the based upon the committee’s claims on the specification and any swearing back of a reference while not recommendations. The committee drawing. restricting the PTO in declaring an indicated that the inclusion of those Two commenters felt that the interference.” However, the PTO is not items in the brief would crystallize the requirement that the specification be restricted from declaring an interference issues involved in the appeal. By referred to by page and line should be if an affidavit or declaration under eliminating inadequate briefs, the Board optional; another, that referring to the § 1.131 is filed. The purpose of the rule will not need to engage in what might be specification and drawings might limit change is to more clearly define when called “de novo" examination of a the claims; and others, that reference to such an affidavit or declaration can be patent application, but rather can page and line of the specification would used.. : ’ : \ confine its activities to review of the make the explanation less concise. Section 1.131(b), as amended, inserts appealed rejections. Nevertheless, while reference to page in the first sentence thereof the The committee also recommended and line of the specification, may require language, "prior to” before the words that certain items be required to be somewhat more detail than simply “said date.” This amendment makes included in the examiner’s answer. The summarizing the invention, it is clear that the showing of facts under Manual of Patent Examining Procedure considered important to enable the § 1.131(b) must establish due diligence will be amended to require that the Board to more quickly determine where from a date prior to the effective date of examiner’s answer contain these and the claimed subject matter is described the reference to affiant’s subsequent other items, substantially as indicated in in the application. Since the claims are reduction to practice or to the filing of Appendix A. read in light of the disclosure, it is not his application as set forth in In re In addition to the committee’s apparent how compliance with this Mulder, 716 F.2d 1542, 219TJSPQ 189 recommendations, some of the items are requirement would limit the claims. (Fed. Cir. 1983). supported by the evaluation of selected practices conducted as a part of the (4) A concise statement of the issues (2) Appellant’s Brief and Reply Brief PTO’s Quality Reinforcement Program. presented for review. Each stated issue should correspond to a separate ground A. Limitation on Length A summary of the results of that evaluation is published at 1078 O fficial of rejection which appellant wishes the The proposed limitations on briefs Gazette 22 (May 19,1987). Board to review. While the statement of and reply briefs to 30 and 15 pages, The specific items required by the issues must be concise, it should not respectively, together with the proposal § 1.192(c) are: be so concise as to omit the basis of that non-complying briefs and reply (1) A statement of the status of all the each issue. For example, the statement briefs be returned to the appellant, are claims in the application, or patent of an issue as “Whether claims 1 and 2 not being adopted, in view of the under reexamination, i.e., for each claim are unpatentable” would not comply overwhelming opposition of the majority in the case, appellant should state with § 1.192(c)(4). Rather, the basis of of the commenters. While the PTO is whether it is cancelled, allowed, the alleged unpatentability must be still concerned about the filing of rejected, etc. Each claim on appeal must stated, e.g., "Whether claims 1 and 2 are excessively lengthy briefs, it is hoped be identified. unpatentable under 35 U.S.C. 103 over that the effect of the proposed rules in (2) A statement of the status of any Smith in view of Jones,” or “Whether focusing the attention'of the patent bar amendment filed subsequent to final claims 1 and 2 are unpatentable under on this issue, together with the newly- rejection, i.e., whether or not the 35 U.S.C. 112, first paragraph, as being adopted requirements of § 1.192(c), will amendment has been acted upon by the based on a non-enabling disclosure.” help to alleviate the problem. examiner, and if so, whether it was The statement should be limited to the B. Contents of the Main Brief entered, denied entry, or entered in part. issues presented, and should not include In response to one comment, it is noted any argument concerning the merits of Section 1.192, as amended, adds that this statement will of course be of those issues. paragraphs (c) and (d). Paragraph (c) the status of the amendment as Two commenters suggested that the remains as proposed, except that item understood by the appellant. term “issues” in § 1.192(c)(4) be replaced (5) has been revised and the title of item Items (1) and (2) are included in by “rejections,” as being more in (7) has been changed. The first sentence § 1.192(c) because in the past confusion agreement with the explanation in the of proposed paragraph (d) has been has sometimes arisen as to which claims preceding paragraph. However, the term rewritten in response to numerous are on appeal, and the precise wording "issues” is considered preferable, comments to the effect that dismissal of of those claims, particularly where the because some rejections may the appeal for failure to include any of appellant has sought to amend claims encompass multiple issues. For example, the items required by paragraph (c), in after final rejection. The inclusion of a rejection for failure to comply with 35 the order specified in paragraph (c), items (1) and (2) in the brief will advise U.S.C. 112, first paragraph, might include would be too harsh a penalty. the examiner of what the appellant the issues of no written description, Paragraph (c) requires that the brief considers the status of the claims and nonenabling disclosure, and lack of best contain, in order, seven specific items. post-final rejection amendments to be, mode. Specifying each of these as a This requirement arose from the allowing any disagreement on these separate issue would be more recommendations of a committee which questions to be resolved before the informative than including them all in a was appointed by the Commissioner of appeal is taken up for decision by the single statement of the rejection. Patents and Trademarks in 1986 to study Board. (5) If an appealed ground of rejection and report on alternatives for reducing (3) A concise explanation of the applies to more than one claim and ex parte the backlog of appeals at the invention defined in the claims involved appellant considers the rejected claims Federal Register / Vol. 53, No. 121 / Thursday, June 23, 1988 / Riiles and Regulations 23730 wa& to be separately patentable, § 1.192(c)(5) separate patentability. The requirement the rules is to require appellants to come requires appellant to state that the of “reasons" has therefore been to grips with the fundamental questions claims do not stand or fall together, and retained, but § 1.192(c)(5) now specifies involved in determining patentability to present in the appropriate part or that they be included in the appropriate under 35 U.S.C. 102,103 and 112. To parts of the argument under § 1.192(c)(6) portion of the “Argument” section of the make these provisions optional would the reasons why they are considered brief. For example, if claims 1 to 4 are defeat that purpose. Although parts (i) to separately patentable. The absence of rejected under 35 U.S.C. 102 and * (v) may, in the words of another such a statement will be taken by the appellant considers claim 4 to be commenter, “in essence merely parrot PTO as a concession by the appellant separately patentable from claims 1 to 3, the relevant section of Title 35,” that, if the ground of rejection is he should so state in the “Grouping of experience of the PTO suggests that sustained as to any one of the rejected claims" section of the brief, and then including them in the requirements for claims, it will be equally applicable to give the reasons for separate ex p a rte briefs is not “completely all of them. Section 1.192(c)(5) continues patentability in the 35 U.S.C. 102 portion unnecessary.” For similar reasons, the the current practice of the Board, and is of the "Argument” section (i.e., under PTO does not favor the adoption of consistent with the practice of the Court § 1.192(c)(6)(iii)). . appropriate portions of Rule 13 of the of Appeals for the Federal Circuit (6) The appellant’s contentions with United States Court of Appeals for the indicated in such cases as In re respect to each of the issues presented Federal Circuit and Rule 28 of the S ern aker, 702 F.2d 989, 217 USPQ 1 (Fed. for review in § 1.192(c)(4), and the basis Federal Rules of Appellate Procedure, as Cir. 1983), and In re King, 80Ï F.2d 1324, for those contentions, including citations this commenter proposed. 231 USPQ 136 (Fed. Cir. 1986). of authorities, statutes, and parts of the The latter commenter proposed as an One commenter recommended that record relied on. Included in this alternative that parts (i) to (v) should be this provision be deleted, because the paragraph are five subparagraphs, (i) to amended to, in effect, provide that the grouping of claims would be “redundant (v). Subparagraphs (i) to (iv) concern the appellant must either specify the errors in view of the arguments presented in grounds of rejection most commonly in the rejection or explain how the the Brief and/or prior prosecution,” and involved in ex p a rte appeals, namely, 35 claims comply with the relevant section such grouping may estop the patentee in U.S.C. 112, first and second paragraphs, of the statute, rather than doing both, subsequent litigation from showing the 35 U.S.C. 102, and 35 U.S.C. 103. which may be unnecessary and create patentable distinctness of claims within Subparagraph (v) is a general provision “harmful and unnecessary prosecution a group. Another commenter suggested concerning grounds of rejection not history estoppel” by requiring a that the rule be modified to state that covered by subparagraphs (i) to (iv). discussion of issues not raised by the appellant can waive arguments for The purpose of subparagraphs (i) to examiner. This proposal has not been patentability as to claims solely for the (iv) is to ensure that the appellant's adopted. Giving an appellant the option purpose of simplifying issues for appeal, argument concerning each appealed of not explaining how the claims comply without giving rise to any permanent ground of rejection will include a with the statute would perpetuate one of inference therefrom. These discussion of the questions relevant to the problems the rule is designed to recommendations are not adopted. One that ground. It is believed that solve. reason for incorporating § 1.192(c)(5) is compliance with the requirements of the One commenter contended that that it is often not clear whether or not particular subparagraphs which are § 1.192(c)(6) (i) and (ii) improperly place appellant is urging that certain rejected pertinent to the grounds of rejection on an appellant the burden of showing claims are separately patentable. It is involved in an appeal will be beneficial how the rejected claims comply with 35 not apparent why any estoppel which both to the PTO and to appellants. It U.S.C. 112. It should be remembered, may result from requiring a clear will not only facilitate a decision by the however, that in the rejection from statement of appellant’s position should Board by enabling the Board to which the appeal is taken the examiner or would differ from that which may determine more quickly and precisely has already stated why the claims are presently result from a failure to argue the appellant’s position on the relevant considered unpatentable. Once this has that claims are separately patentable. issues, but also will help appellants to been done, the appellant must Another commenter asserted that focus their arguments on those issues. demonstrate to the Board that the § 1.192(c)(5) elevates form over For each rejection not falling under rejection is erroneous. The requirements substance, and improperly tries to subparagraphs (i) to (iv), subparagraph of § 1.192(c)(6) (i) and (ii) are therefore resolve the patentability of claims on (v) provides that the argument should not improper of unreasonable. formal grounds, rather than on the specify the specific limitations in the Another commenter suggested that merits of the individual claims. What rejected claims, if appropriate, or other item (B) of § 1.192(c)(6)(i) should be this comment seems to say is that the reasons, which cause the rejection to be divided into two parts: “how-to-make" patentability of each claim should be in error. This language recognizes that and “how-to-use.” This is not determined separately, even if not for some grounds of rejection, it may not considered necessary. Section argued separately. This is, however, not be necessary to specify particular claim 1.192(c)(6)(i) states that the argument the current practice, as discussed above. limitations; for example, a rejection include, “as appropriate,” items (A), (B) Two commenters suggested either that under 35 U.S.C. 101, as in Ex p a rte and (C). If the rejection were for failure the requirement for “reasons” be deleted H ibberd, 227 USPQ 443 (BPAI1985), or a of the disclosure to enable one skilled in from 11.192(c)(5), or that the subsection rejection for violation of the duty of the art to make the claimed subject be deleted entirely. They contended that disclosure under 37 CFR 1.56(d), as in Ex matter, then the argument would not any such "reasons" should appear in the parte Harita, 1 USPQ2d 1887 (BPAI have to specify how the disclosure “Argument” section (§ 1.192(c)(6)), and 1986). enabled use of the subject matter, and their repetition in § 1.192(c)(5) is One commenter proposed that the vice versa. redundant. These suggestions have been provisions of parts (i) to (iv) should be A commenter suggested that the adopted in part. Proposed § 1.192(c)(5) optional, rather than mandatory. The language of the first sentence of required the inclusion of “reasons” in PTO does not agree. One of the primary § 1.192(c)(6)(iv) is misleading, and that order to avoid unsupported assertions of purposes of the present amendment of the second and third sentences should Federal Register / VoL 53, No. 121 / Thursday, June 23, 1988 / Rules and Regulations 23731

be deleted. The commented asserts that non-compliance of which he or she was The new points of argument shall be for a valid rejection the subject matter notified. specifically identified in the reply brief. If the of the invention as a whole must be Several commenters proposed that the examiner determines that the reply brief is rendered obvious, in accordance with Board, rather than the examiner, should not directed only to new points of argument the test set forth in Graham v. John be the arbiter of whether a brief raised in the examiner’s answer, the Deere Co., 383 U.S. 1,148 USPQ 459 complies with § 1.192(c). These examiner may refuse entry of the reply brief (1966), and suggests that § 1.192(c)(6)(iv) proposals have not been adopted. The and will so notify the appellant. be modified to require that the argument question of whether a brief complies Since the reply brief must be limited follow the analysis method of the with a rule is a matter within the Graham decision. These proposals have jurisdiction of the examiner. Moreover, to any new points of argument raised in not been adopted. The language of adoption of these proposals would the examiner’s answer, compliance with § 1.192(c)(6)(iv) is based on the statute. require the application file to be sent to the requirement of the second sentence Nothing therein is intended to change the Board to review the brief, then should facilitate both preparation of the the law, or to preclude an appellant from returned to the examiner for the reply brief by appellant and basing arguments on the case law. The examiner’s answer. Such a procedure consideration of the reply brief of the purpose of the language is to attempt to would not only cause unnecessary PTO. The reply brief is appropriately focus the argument on the specific issues delays, but would contravene one of the limited to new points of argument raised of the particular case at hand, and to purposes of § 1.192(c) by increasing the in the examiner’s answer because avoid arguments based entirely on workload of the Board. Under § 1.192(d), appellants have an obligation to present broad generalities. The third sentence is as adopted, the appellant may file an arguments supporting their positions in fncluded because it has been observed amended brief to correct any their opening briefs. Considering an that in a number of cases appellants deficiencies in the original. Moreover, if argument advanced for the first time in a Ignore the secondary references applied appellant disagrees with the examiner’s reply brief would not only delay the by the examiner, and argue a rejection holding of non-compliance, a petition proceeding, but also would entail the under 35 U.S.C. 103 as though it were a under 37 CFR 1.181 may be filed. risk of an improvident or ill-advised Rejection under 35 U.S.C. 102. Paragraph (d) also adds the following opinion on the legal issues tendered. (7) An appendix containing a copy of sentence: Von Brimer v. Whirpool Corp., 536 F.2d the claims involved in the appeal. Any arguments or authorities not included 838, 846,190 USPQ 528,534 (9th Cir. I Pursuant to one comment, the title of in the brief may be refused consideration by 1976). § 1.192(c)(7) has been changed to the Board of Patent Appeals and ‘Appendix.” Interferences. The final sentence of § 1.193(b), as amended, provides that the reply may One commenter urged that the rule This sentence emphasizes that all should not require that the copy of the be accompanied by, rather than include, arguments and authorities which an any amendment or material appropriate Claims be located at any particular place appellant wishes the Board to consider in the brief. This proposal is not to the new ground of rejection. This should be included in the brief. It should adopted, as it is considered desirable change in the rule makes clear that the be noted that arguments not presented the examiner and the Board be able amendment or other material must be that in the brief and made for the first time at to locate the copy of the claims quickly presented in a separate paper, rather oral hearing are not normally entitled to than in the reply itself. by placing it in a common position in all In re Chiddix, briefs. consideration. 209 USPQ 78 (Comr. 1980); Rosenblum v. A number of commenters proposed Two commenters expressed the Hiroshima, 220 USPQ 383 (Comr. 1983). that the Board, not the examiner, should concern that § 1.192(c) does not permit A number of commenters were determine whether or not the reply brief the inclusion in a brief of any items concerned that this sentence of is directed only to new points raised in ather than the seven items specified. § 1.192(d) would preclude the filing of a the examiner’s answer. In essence they Other commenters suggested that other supplemental paper if a new argument feel that the examiner is not in a items be included, such as a list of the or authority should become available or position to fairly judge whether a reply references, table of contents, table of relevant after the brief was filed. No brief complies with the rule. These . bases, etc. It should be emphasized that such result is intended. The sentence in proposals have not been adopted. 11.192(c) merely specifies the minimum question uses the word “may" to leave Section 1.193(b) requires that the requirements for a brief, and does not open the possibility that the Board has appellant be notified if the reply brief is prohibit the inclusion of any other leeway to consider arguments or not entered because of non-compliance hiaterial which an appellant may authorities not included in the brief with the rule, and an appellant who consider necessary or desirable. A brief under circumstances where the failure disagrees with that ruling may seek is in compliance with § 1.192(c) as long to include them can be justified. as it includes items (1) to (7) in the order review by way of a petition under 37 Examples of such circumstances would Bet forth (with the appendix, item (7), at CFR 1.181. This is essentially no the end). be where a pertinent decision of a court different than the procedure currently or other tribunal was not published until followed (see Manual o f Patent Paragraph (d) provides that if a brief after the brief was filed, or where a Is filed which does not comply with all Examining Procedure, § 1208.01, p. 1200- particular argument or authority was not 9, 5th Ed., Rev. 7 (Dec. 1987)). the requirements of paragraph (c), the applicable to any of the grounds of One commenter suggested that the appellant will be notified of the reasons rejection in the final rejection, but was for non-compliance and given a period relevant to a new point of argument examiner’s answer be eliminated; pf one month within which to file an raised in the examiner’s answer. another, that the examiner should have Amended brief. The appeal will be to file the examiner’s answer first. These pismissed if the appellant does not file C. Contents of Reply Brief are both beyond the scope of the present pn amended brief within the one-month Section 1.193(b), as amended, inserts proposal, and have not been adopted. Period, or files an amended brief which the following as the second and third Poes not overcome all the reasons for sentences: 23732 Federal Register / Vol. 53, No. 121 / Thursday, June 23, 1988 / Rules and Regulations

(3) Time Period for Requesting an Oral (4) Procedure Following Final Rejection, subsequent rejection by the examiner H earing Remand Under § 1.196(b) would be an entirely new appeal involving a different ground and would Section 1.194(b), as amended, adds the Section 1.196(b)(1), as amended, adds the following sentence as the require a new notice of appeal and the following sentence after the first payment of another fee. sentence: penultimate sentence of the section: Should the examiner repeat the rejection i (5) Request for Access by Interference If the examiner’s answer states a new the applicant may again appeal to the Board P arty ground of rejection and if appellant files a of Patent Appeals and Interferences. reply as provided by § 1.193(b), then the Section 1.612(a), as amended, adds the Under § 1.196(b), the Board may, in its written request must be made within three following sentence as the last sentence decision on an ex p a rte appeal, make a months after the date of the filing of the reply. of the section: new rejection of one or more appealed The present rule does not provide the claims, in which case the appellant has A party seeking access to any abandoned appellant with an additional time period the option of (1) submitting an or pending application referred to in the for requesting an oral hearing in the appropriate amendment of the rejected opposing party’s involved application or event that the examiner’s answer states claims, and/or a showing of facts, (2) access to any pending application referred to a new ground of rejection. If the answer requesting reconsideration, or (3) in the opposing party’s patent must file a states a new ground of rejection, treating the decision as a final decision. motion under § 1.635. § 1.193(b) provides that appellant’s reply If the appellant elects option (1), the The amendment requires an interference may also include any amendment or case is remanded to the examiner for party seeking access either to a pending material appropriate to the new ground consideration. If the examiner does not or abandoned application referred to in of rejection. However, under § 1.194(b) consider that the amendment and/or an opposing party’s involved application appellant must file the request for oral showing of facts overcome the rejection, or to a pending application referred to in hearing within one month after the date he or she will again reject the claims; if an opposing party’s involved patent to of the answer whereas the reply thereto appropriate, the rejection will be made file a motion under 37 CFR 1.635. Such a must be filed within two months, from final. motion is decided by an examiner-in­ the date of the answer. Consequently, An applicant in whose application appellant must file a request for oral such a final rejection has been made by chief (§ 1.640(b)). hearing before having the benefit of the the examiner may mistakenly believe Under the present practice, access can examiner’s views, if any, with respect to that he or she is entitled to review by only be obtained by filing an ex p arte the reply. the Board of the rejection by virtue of petition to the Commissioner Although the examiner does not the fact that the application was accompanied by the petition fee set normally issue a supplemental answer previously on appeal. The amendment forth in § 1.17(i) and normally no corrects this belief by making clear that in response to a reply, see M anual o f decision is rendered on the petition until Patent Examining Procedure, supra, after such a rejection, an applicant who after the opposing party has had an desires further review of the matter § 1208.01, the amendment to § 1.194(b) opportunity to respond to the petition. must file a new appeal to the Board. The permits the appellant to postpone filing The amendment expedites the language of the amendment is similar to a request for an oral hearing until three interference proceeding by eliminating the fourth sentence of § 1.196(d). the delays inherent in the petition months after the date the reply is filed. The proposed amendment to This will give the appellant time to process. By requiring the party seeking § 1.196(b)(1) began “Should the access to file a motion under § 1.635, receive the examiner’s response, if any, examiner make the rejection final,” but to the reply before the appellant has to that party will first have to confer with as one commenter pointed out, 35 U.S.C. the opposing party in an effort to resolve decide whether to request an oral 134 permits an appeal to the Board of hearing. the issue of access as required by claims which have been twice rejected. § 1.637(b). The examiner-in-chief will One commenter suggested that Since the claims referred to in whenever the examiner makes a new not have to decide the issue unless it § 1.196(b)(1) would have been twice cannot be resolved by the parties. ground of rejection in the examiner’s rejected (once by the Board and once by answer and appellant files a reply brief, the examiner), the examiner’s rejection (6) Access to Applications a supplemental examiner’s answer could be appealed even if not made should be required, and appellant then final. The beginning of the amendment Section 1.14(e), as amended, deletes be permitted to file a supplemental reply has therefore been changed to "Should the word “o f’ from the phrase "or of any thereto. This suggestion has not been the examiner again reject the papers relating thereto” and adds a adopted. Under present practice (see application.’’ reference to § 1.612(a) by adding the Manual o f Patent Examining Procedure, This commenter also asserted that following sentence as the last sentence su pra) the examiner includes a new § 1.196(b)(1) is ambiguous, in that it thereof: ground of rejection in the examiner’s implies that a separate fee would be due See § 1.612(a) for access by an interference answer, rather than reopening ex p a rte for the subsequent appeal, "an party to a pending or an abandoned prosecution, only under circumstances interpretation contrary to 35 U.S.C. 134.” application. where the PTO has determined that the The PTO considers that the statute appellant will not be unfairly requires a separate fee for such an Section 1.14(e) as presently worded prejudiced, e.g., where the reference is appeal. In the § 1.196(b) situation, the appears to limit a request by a member not basic and materially better in appellant has already filed an appeal, of the public to copies of, but not access meeting all the claims, and the paid the fee, and received a decision to, any papers relating to any pending or requirements for making an action final thereon by the Board. Any rejection abandoned application. Any such are met. This sufficiently protects the under § 1.196(b) included in the Board’s limitation was unintentional. The rights of the appellant, while at the same decision would be, according to the rule, amended language will permit a member time preventing the addition of a further on "any grounds not involved in the of the public to request both access to round of papers to the file. appeal." Thus, an appeal from the and copies of those papers. Federal Register / Vol. 53, No. 121 / Thursday, June 23, 1988 / Rules and Regulations 23733

(7) Request for Interference with an would not be appropriate. For example, expedite the disposition of appeals and Application or Patent the patentee might file a reissue to simplify by clarification and Sections 1.604(a) and 1.607(a), as application for the purpose of amending amplification certain of the rules amended, provide for the situation in claims of the patent which are directed governing the conduct of an which a patent applicant requests an to an invention which is patentably interference. The expedited disposition interference with another application or distinct from the issue of the of appeals will permit the small entity to patent, respectively, on the basis of one interference and which is not disclosed make earlier business decisions which or more claims which are already by the opposing party. In such a may be affected by a pending appeal. present in his or her application. The situation, addition of the reissue The effect of the clarification and present rules require that when an application to the interference would be amplification of the rules relating to applicant seeks an interference with unnecessary. The amendment of interferences will be to reduce the costs another application or an unexpired § 1.662(b) accommodates this third associated with involvement in an patent, he or she must present a claim possibility by providing that, instead of interference. corresponding to the proposed count. filing a motion under § 1.633(h) to add The Patent and Trademark Office has The amended rules eliminate this the reissue application to the determined that this rule change is not a requirement if a claim or claims interference, a patentee can show good major rule under Executive Order 12291. corresponding to the proposed count are cause why such a motion would not be The annual effect on the economy will already in the application, and the appropriate under the particular be less than $100 million. There will be applicant identifies them as such. circumstances involved. no major increase in costs or prices for (10) Applications Under Secrecy Order consumers, individual industries, (8) Motion to D eclare A dd ition al Federal, state or local government Interference Section 5.3(b), as amended, deletes agencies, or geographic regions. There the language “under secrecy order Section 1.637(e)(l)(vi), as amended, copies claims from an issued patent” will be no significant adverse effects on requires that a motion to declare an competition, employment, investment, and inserts in its place the language “is additional interference under 37 CFR productivity, innovation, or on the under secrecy order seeks to provoke an 1.633(e)(1) between an additional interference with an issued patent” to ability of United States-based application not involved in the make the section’s language consistent enterprises to compete with foreign- interference and owned by a party and with that of § 1.607(d). In addition, the based enterprises in domestic or export an opponent’s application or patent markets. reference to “§ 1.205(c)” is corrected to involved in the interference either (1) read “§ 1.607(d)”. The Patent and Trademark Office has designate the claims of the opponent’s also determined that this notice has no application or patent which define the Postponement of Amendment of Federalism implications affecting the same patentable invention defined by Interference Estoppel Rule relationship between the national the proposed count, or (2), if the The notice of proposed rulemaking government and the states as outlined in opponent’s application does not contain included proposed amendments of 37 Executive Order 12612. any such claim, the moving party must CFR 1.658(c) concerning the effect of a This rule does not contain a collection propose a claim to be added to the judgment in an interference. In response of information subject to the Paperwork opponent’s application. The present to requests by a number of commenters Reduction Act of 1980,44 U.S.C. 3501 et § 1.637(e)(2)(vi) includes requirement (1), for further time to study the effect of the seq . but only infers alternative requirement proposed amendments, the proposal will List of Subjects in 37 CFR Parts 1 and 5 (2). The amended section specifically not be implemented at this time. A includes both requirements. proposed amendment of § 1.658(c) will Administrative practice and (9) Filing o f Reissue Application During be published later; in the meantime, procedure, Authority delegations Interference interested parties are invited to submit (government agencies), Conflict of their comments and suggestions. interests, Courts, Inventions and Section 1.662(b), as amended, inserts a Accordingly, present § 1.658(c) patents, Lawyers. comma after “§ 1.633(h)” and adds the remains in effect. Pursuant to the authority granted to language “or would not be appropriate” the Commissioner of Patents and at the end of the last sentence. The Environmental, Energy and Other Considerations Trademarks by 35 U.S.C. 6» Parts 1 and 5 present rule contemplates that a reissue of Title 37 of the Code of Federal application may be filed by a patentee This rule change will not have a Regulations are amended as set forth involved in an interference only for one significant impact on the quality of the below. of two reasons: Either for the purpose of human environment or conservation of avoiding the interference, or for some energy resources. PART 1—RULES OF PRACTICE IN other purpose relating to the The rule change is in conformity with PATENT CASES interference, e.g., to add claims the requirements of the Regulatory corresponding to a proposed new count. Flexibility Act, 5 U.S.C. 0)1 e t seq., 1. The authority citation for 37 CFR In the first case, judgment would be Executive Orders 12291 and 12812, and Part 1 continues to read as follows: entered against the patentee, and in the the Paperwork Reduction Act of 1980, 44 Authority: 35 U.S.C. 0, unless otherwise second case, a motion under § 1.633(h) U.S.C 3501 e t seq. noted. to add the reissue application to the The General Counsel of the interference would be appropriate. 2. Section 1.14 is amended by revising Department of Commerce certified to paragraph (e) to read as follows: However, it has been found that a the Small Business Administration that patentee involved in an interference the rule change will not have a § 1.14 Patent applications preserved in may file a reissue application for some significant adverse economic impact on secrecy. other reason not contemplated by the a substantial number of small entities ***** , e, and for which the entry of (Regulatory Flexibility Act, 5 U.S.C (e) Any request by a member of the judgment or a motion under § 1.633(h) 605(b)), because it is intended to public seeking access to, or copies of, 23734 Federal Register / Vol. 53, No. 121 / Thursday, June 23, 1988 / Rules and Regulations any pending or abandoned application §1.192 Appellant’s brief. defined by each of the rejected claims, preserved in secrecy pursuant to (а) The appellant shall, within 2 and paragraphs (a) and (b) of this section, or months from the date of the notice of (C) Set forth the best mode any papers relating thereto, must (1) be appeal under § 1.191 in an application, contemplated by the inventor of in the form of a petition and be reissue application, or patent under carrying out his or her invention, accompanied by the petition fee set reexamination, or within the time i (ii) For each rejection under 35 U.S.C. forth in § 1.17(i) or (2) include written allowed for response to the action 112, second paragraph, the argument authority granting access to the member appealed from, if such time is later, file a shall specify the errors in the rejection of the public in that particular brief in triplicate. The brief must be and how the claims particularly point application from the applicant or the accompanied by the requisite fee set out and distinctly claim the subject applicant’s assignee or attorney or agent forth in § 1.17(f) and must set forth the matter which applicant regards as the of record. See § 1.612(a) for access by an authorities and arguments on which the invention. interference party to a pending or appellant will rely to maintain the (iii) For each rejection under 35 U.S.C. abandoned application. appeal. 102, die argument shall specify the 3. Section 1.131 is amended by ***** errors in the rejection and why the rejected claims are patentable under 35 revising paragraphs (a) and (b) to read (c) The brief shall contain the U.S.C. 102, including any specific as follows: following items under appropriate limitations in the rejected claims which headings and in the order here are not described in the prior art relied §1.131 Affidavit or declaration of prior indicated: invention to overcome cited patent or upon in the rejection. (1) Status o f Claims. A statement of publication. (iv) For each rejection under 35 U.S.C. the status of all the claims, pending or 103, the argument shall specify the (a) When any claim of an application cancelled, and identifying the claims errors in the rejection and, if or a patent under reexamination is appealed. appropriate, the specific limitations in rejected on reference to a domestic (2) Status o f Amendments. A patent which substantially shows or the rejected claims which are not statement of the status of any described in the prior art relied on in the describes but does not claim the same amendment filed subsequent to final patentable invention, as defined in rejection, and shall explain how such rejection. limitations render the claimed subject § 1.601(n), as the rejected invention, or (3) Summary o f Invention. A concise matter unobvious over the prior art. If on reference to a foreign patent or to a explanation of the invention defined in the rejection is based upon a printed publication, and the inventor of the claims involved in the appeal, which combination of references, the argument the subject matter of the rejected claim, shall refer to the specification by page shall explain why the references, taken the owner of the patent under and line number, and to the drawing, if as a whole, do not suggest the claimed reexamination, or the person qualified any, by reference characters. subject matter, and shall include, as under §§ 1.42,1.43 or 1.47, shall make (4) Issues. A concise statement of the may be appropriate, an explanation of oath or declaration as to facts showing a issues presented for review. why features disclosed in one reference completion of the invention in this (5) Grouping o f Claims. For each may not properly be combined with country before the filing date of the ground of rejection which appellant features disclosed in another reference. application on which the domestic contests and which applies to more than A general argument that all the patent issued, or before the date of the one claim, it will be presumed that the limitations are not described in a single foreign patent, or before the date of the rejected claims stand or fall together reference does not satisfy the printed publication, then the patent or unless a statement is included that the requirements of this paragraph. publication cited shall not bar the grant rejected claims do not stand or fall (v) For any rejection other than those of a patent to the inventor or the together, and in the appropriate part or referred to in paragraphs (c)(6) (i) to (iv) confirmation of the patentability of the parts of the argument under of this section, the argument shall claims of the patent, unless the date of subparagraph (c)(6) of this section specify the errors in the rejection and such patent or printed publication is appellant presents reasons as to why the specific limitations in the rejected more than one year prior to the date on appellant considers the rejected claims claims, if appropriate, or other reasons, which the inventor’s or patent owner’s to be separately patentable. which cause the rejection to be in error. application was filed in this country. (б) Argument. The contentions of the (7) Appendix. An appendix containing (b) The showing of facts shall be such, appellant with respect to each of the a copy of the claims involved in the in character and weight, as to establish issues presented for review in appeal. reduction to practice prior to the subparagraph (c)(4) of this section, and (d) If a brief is filed which does not effective date of the reference, or the basis therefor, with citations of the comply with all the requirements of conception of the invention prior to the authorities, statutes, and parts of the paragraph (c) of this section, the effective date of the reference coupled record relied on. Each issue should be appellant will be notified of the reasons with due diligence from prior to said treated under a separate heading. for non-compliance and provided with a date to a subsequent reduction to (i) For each rejection under 35 U.S.C. period of one month within which to file practice or to the filing of the 112, first paragraph, the argument shall an amended brief. If the appellant does application. Original exhibits of specify the errors in the rejection and not file an amended brief during the drawings or records, or photocopies how the first paragraph of 35 U.S.C. 112 one-month period, or files an amended thereof, must accompany and form part is complied with, including, as brief which does not overcome all the of the affidavit or declaration of their appropriate, how the specification and reasons for non-compliance stated in the absence satisfactorily explained. drawings, if any, notification, the appeal will be 4. Section 1.192 is amended by (A) Describe the subject matter dismissed. Any arguments or authorities revising paragraph (a) and adding new defined by each of the rejected claims, not included in the brief may be refused paragraphs (c) and (d) to read as (B) Enable any person skilled in .the consideration by the Board of Patent follows: art to make and use the subject matter Appeals and Interferences. Federal Register / Vol. 53, No. 121 / Thursday, June 23, 1988 / Rules and Regulations 23735

5. Section 1.193 is amended by previously of record be made which, in § 1.612 Access to applications. revising paragraph (b) to read as the opinion of the examiner, overcomes (a) After an interference is declared, follows: the new ground for rejection stated in each party shall have access to and may the decision. Should the examiner again §1.193 Examiner’s answer. obtain copies of the files of any * - * * * * reject the application the applicant may application set out in the notice again appeal to the Board of Patent declaring the interference, except for (b) The appellant may file a reply Appeals and Interferences. When brief directed only to such new points of affidavits filed under § 1.131 and any appropriate, upon conclusion of evidence and explanation under § 1.608 argument as may be raised in the proceedings on remand before the examiner’s answer, within one month filed separate from an amendment. A examiner, the Board of Patent Appeals party seeking access to any abandoned from the date of such answer. The new and Interferences may enter an order points of argument shall be specifically or pending application referred to in the otherwise making its decision final. opposing party’s involved application or identified in the reply brief. If the * * * fr * examiner determines that the reply brief access to any pending application is not directed only to new points of 8. Section 1.604(a) is revised to read as referred to in the opposing party’s follows: patent must file a motion under § 1.635. argument raised in the examiner’s ***** answer, the examiner may refuse entry § 1.6C4 Request for interference between of the reply brief and will so notify the applications by an applicant. 11. Paragraph (e)(l)(vi) of § 1.637 is revised to read as follows: appellant. If the examiner’s answer (a) An applicant may seek to have an states a new ground of rejection interference declared with an § 1.637 Content of motions. appellant may file a reply thereto within application of another by, ***** two months from the date of such (1) Suggesting a proposed count and answer; such reply may be accompanied (e) * * * presenting at least one claim by any amendment or material (1) * * * corresponding to the proposed count or appropriate to the new ground. (vi) Identify all claims in the identifying at least one claim in his or 6. Section 1.194 is amended by opponent’s application or patent which her application that corresponds to the revising paragraph (b) to read a should be designated to correspond to 3 proposed count, follows: each proposed count* if the opponent’s (2) Identifying the other application application does not contain any such § 1.194 Oral hearing. and, if known, a claim in the other claim, the motion shall propose a claim * * * * * application which corresponds to the to be added to the opponent’s (b) If appellant desires an oral proposed count, and application. hearing, appellant must file a written (3) Explaining why an interference * * * * * request for such hearing accompanied should be declared. by the fee set forth in § 1.17(g) within ★ * * * * 12. Paragraph (b) of § 1.662 is revised to read as follows: one month after the date of the 9. Section 1.607(a) is revised to read as examiner’s answer. If the examiner’s follows: § 1.662 Request for entry of adverse answer states a new ground of rejection judgment; reissue filed by patentee. and if appellant files a reply as provided § 1.607 Request by applicant for * * * . * * interference with patent. for by § 1.193(b), then the written (b) If a patentee involved in an request must be made within three (a) An applicant may seek to have «n interference files an application for months after the date of the filing of the interference declared between an reissue during the interference and replay. If appellant requests an oral application and an unexpired patent by, omits all claims of the patent hearing and submits therewith the fee (1) Identifying the patent, corresponding to the counts of the set forth in § 1.17(g), an oral argument (2) Presenting a proposed count, interference for the purpose of avoiding maybe presented by, or on behalf of, (3) Identifying at least one claim in the the interference, judgment may be the primary examiner if considered patent corresponding to the proposed entered against the patentee. A patentee desirable by either the primary count, who files an application for reissue examiner or the Board. (4) Presenting at least one claim ***** other than for the purpose of avoiding corresponding to the proposed count or the interference shall timely file a 7. Section 1.196(b)(1) is revised to read identifying at least one claim already preliminary motion under § 1.633(h), or as follows: pending in his or her application that show good cause why the motion could § 1.196 Decision by the Board of Patent corresponds to the proposed count, and, not have been timely filed or would not Appeals and interferences. if any claim of the patent or application be appropriate. * * * * * identified as corresponding to the * * * * * (b) * * * proposed count does not correspond (1) The appellant may submit an exactly to the proposed count, PART 5—SECRECY OF CERTAIN appropriate amendment of the claims so explaining why each such claim INVENTIONS AND LICENSES TO rejected or a showing of facts, or both, corresponds to the proposed count, and EXPORT AND FILE APPLICATIONS IN and have the matter reconsidered by the (5) Applying the terms of any FOREIGN COUNTRIES examiner in which event the application application claim, (i) Identified as corresponding to the 13. The authority citation for 37 CFR will be remanded to the examiner and Part 5 is revised to read as follows: the decision of the Board of Patent court, and Appeals and Interferences shall not be (ii) Not previously in the application Authority: 35 U.S.C. 6, 41,181-188, the considered final for the purpose of to the disclosure of the application. Export Administration Act of 1979, as * * * k * amended, 50 U.S.C. App. 2401 et seq., the judicial review. The statement shall be Arms Export Control Act, as amended, 22 ' binding upon the examiner unless an 10. Section 1.612(a) is revised to read U.S.C. 2751 et seq., the Atomic Energy Act of amendment or showing of facts not as follows: 1954, a s amended, 42 U.S.C. 2011 et sea:, and 23736 Federal Register / Vol. 53, No. 121 / Thursday, June 23, 1988 / Rules and Regulations the Nuclear Non-Proliferation Act of 1978, 22 are petitionable rather than appealable, particularly point out and distinctly U.S.C. 3201 e t s e q and the delegations in the and claim the subject matter which applicant regulations under these acts to the (ii) Identification of any issues or regards as the invention. Commissioner (15 CFR 370.10(jj, 22 CFR grounds of rejection on appeal which the (iii) For each rejection under 35 U.S.C, 125.04, and 10 CFR 810.7). examiner no longer considers *102, the examiner’s answer, or single 14. Paragraph (b) of § 5.3 is revised to applicable. prior action, shall explain why the read as follows: (5) Grouping of Claims rejected claims are anticipated or not patentable under 35 U.S.C. 102, pointing § 5.3 Prosecution of application under A statement of whether the examiner out where all of the specific limitations secrecy orders; withholding patent disagrees with any statement in the recited in the rejected claims are found ***** brief that certain claims do not stand or in the prior art relied upon in the fall together, and, if the examiner rejection. (b) An interference will not be disagrees, an explanation as to why (iv) For each rejection under 35 U.S.C. declared involving national applications those claims are not separately 103, the examiner’s answer, or single under secrecy order. However, if an patentable. applicant whose application is under prior action, shall state the ground of secrecy order seeks to provoke an (6) Claims Appealed rejection and point out where each of interference with an issued patent, a A statement of whether the copy of the specific limitations recited in the notice of that fact will be placed in the the appealed claims contained in the rejected claims is found in the prior art file wrapper of the patent. (See appendix to the brief is correct and if relied on in the rejection, shall identify § 1.607(d).) not, a correct copy of any incorrect any difference between the rejected * * * * * claim. claims and the prior art relied on and shall explain how the claimed subject Note: This Appendix A will not appear in (7) References of Record the Code of Federal Regulations. matter is rendered unpatentable over A listing of the references of record the prior art. If the rejection is based Appendix A—Requirements for relied on, and in the case of non-patent upon a combination of references, the Examiner’s Answer references, the relevant page or pages. examiner’s answer, or single prior Chapter 1200 of the Manual of Patent (8) N ew R eferen ces action, shall explain the rationale for Examining Procedure will be amended making the combination. A statement of whether or not any to require that the examiner’s answer new reference is being applied and a (v) For each rejection under 35 U.S.C. include, in the order indicated, the listing of each such reference being cited 102 or 103 where there may be questions following items: for a new ground o f rejection in the as to how limitations in the claims (1) Status o f C laim s examiner’s answer, and in the case of correspond to features in the prior art, non-patent references, the relevant page the examiner, in addition to the A statement of whether the examiner or pages. requirements of paragraphs (9) (iii) and disagrees with the statement of the (iv) of this appendix, should compare at status of claims contained in the brief (9) Grounds o f Rejection least one of the rejected claims feature and a correct statement of the status of For each ground of rejection by feature with the prior art relied on in all the claims pending or cancelled, if applicable to the appealed claims, an the rejection. The comparison shall align necessary. explanation of the ground of rejection, the language of the claim side by side (2) Status o f Amendments or reference to a final rejection or other with a reference to the specific page, single prior action for a clear exposition line number, drawing reference number A statement of whether the examiner of the rejection. disagrees with the statement of the and quotation from the prior art, as (i) For each rejection under 35 U.S.C. appropriate. status of amendments contained in the 112, first paragraph, the examiner’s brief, and an explanation of any answer, or the single prior action, shall (vi) For each rejection, other than disagreement. explain how the first paragraph of 35 those referred to in paragraphs (i) to (v) (3) Summuary o f In vention U.S.C. 112 is not complied with, of this appendix, the examiner’s answer, including, as appropriate, how the or single prior action, shall specifically A statement of whether the examiner specification and drawings, if any, (a) explain the basis for the particular disagrees with the summary of invention do not describe the subject matter rejection. contained in the brief, an explanation of defined by each of the rejected claims, why the examiner disagrees, and a (b) would not enable any person skilled (10) New Ground of Rejection correct summary of invention, if in the art to make and use the subject necessary. matter defined by each of the rejected A statement of whether or not any new ground of rejection is being made in (4) Issu es claims, and fc) do not set forth the best mode contemplated by the appellant of the examiner’s answer and a complete A statement of whether the examiner carrying out his or her invention. statement and explanation of any such disagrees with the statement of the (ii) For each rejection under 35 U.S.C. new ground. The requirements of issues in the brief and an explanation of 112, second paragraph, the examiner’s paragraph (9) of this appendix shall be why the examiner disagrees, including: answer, or single prior action, shall complied with for any new ground of (i) Identification of any issues which explain how the claims do not rejection. Federal Register / Vol. 53, No. 121 / Thursday, June 23, 1988 / Rules and Regulations 23737

(11) Response to Argument A statement of whether the examiner disagrees with each of the contentions of appellant in the brief with respect to the issues presented and an explanation of the reasons for disagreement with any such contention. If any ground of rejection is not argued and responded to by appellant, the response shall point out each claim affected. (12) Period of Response to New Ground of Rejection A statement setting the period for appellant to file a reply to any new ground of rejection, if necessary. Dated: May 3,1988. Donald }. Quigg, A ssistant S ecretary an d C om m ission er o f Patents and Trademarks. [FR Doc. 88-14160 Filed 6-22-88; 8:45 am] BILLING CODE 3510-16-M

Thursday June 23, 1988

Part

Department of the Interior

Fish and Wildlife Service

50 CFR Part 17 Endangered and Threatened Wildlife and Plants; Daphnopsis helierana, Hymenoxys acaulis, and Arenenaria cumberlandensis; Final Rules 23740 Federal Register / Voi. 53, No. 121 / Thursday, June 23, 1988 / Rules and Regulations

DEPARTMENT OF THE INTERIOR Department of Health and Human 4(b)(3)(A) of the Act, as amended in Services) and leased to the University of 1982. The Service subsequently found in Fish and Wildlife Seryice Puerto Rico School of Medicine. The October of 1983,1984, and 1985, that Dorado population is on Commonwealth listing Daphnopsis hellerana was 50 CFR Part 17 public land. These 14 individuals are thè warranted but precluded by other Endangered and Threatened Wiidfife only plants of this species known to pending listing actions, in accordance and Plants; Determination of exist. with Section 4(b)(3)(B)(iii) of the Act. is an evergreen Endangered Status for the Plant Daphnopsis hellerana The Service proposed listing Daphnopsis Hellerana shrub or small tree reaching 20 feet (6 Daphnopsis hellerana on July 6,1987 (52 meters) in height, with a stem diameter FR 25265). a g en c y: Fish and Wildlife Service, of 2 inches (5 centimeters). The leaves Summary of Comments and Interior. are simple, alternate, elliptic to obovate Recommendations a c t io n : Final rule. in shape, and blunt or rounded at the apex. Both leaves and twigs are golden In the July 6,1987, proposed rule and s u m m a r y : The Service determines hairy when young. Male and female associated notifications, all interested Daphnopsis hellerana to be an flowers are borne on separate plants parties were requested to submit factual endangered species. D aphnopsis (dioecious), and terminally clustered. report of information that might h ellera n a is a small tree or large shrub The male flowers are small, tubular, and contribute to the development of a final endemic to evergreen and semi­ finely hairy; the female flowers are rule. Appropriate agencies of the evergreen seasonal forests on limestone smaller, less than one-fourth inch (one- Commonwealth of Puerto Rico, Federal hills of the karst region of northern half centimeter) long, bell-shaped, and agencies, scientific organizations, and Puerto Rico. The species has been also finely hairy. The fruit is an elliptic, other interested parties were contacted seriously impacted by agriculture, one-seeded, white berry that is less than and requested to comment. A newpaper urbanization, and limestone quarrying. three fourths of an inch (2 centimeters) notice inviting general public comment This final rule will implement for long. The species is endemic to low was published in El Nuevo Dia on July Daphnopsis hellerana the Federal elevation evergreen and semi-evergreen 21,1987. Two letters of comment were protection and recovery provisions forests (subtropical moist forests) on received and are discussed below. A afforded by the Endangered Species Act limestone hills in the karst region of public hearing was neither requested of 1973, as amended. northern Puerto Rico. nor held. EFFECTIVE DATE: July 25, 1988. Nearly all of the known populations of Comments were received from the ADDRESSES: The complete file for this Daphnopsis hellerana have been U.S. Environmental Protection Agency rule is available for inspection, by located near Puerto Rico’s principal and Lorin I. Nevling of the Illinois appointment, during normal business population center (the San Juan/ Department of Energy and Natural hours at the Caribbean Field Office, U.S. Bayamon area). As a result, urban and Resources. industrial expansion have eliminated Fish and Wildlife Service, P.O. Box 491, Administrators of the U.S. known and potential habitat. In Boqueron, Puerto Rico 00622 and at the Environmental Protection Agency stated particular, construction of dwellings and Service’s Southeast Regional Office, that they knew of no ongoing or roads, limestone quarrying for this Suite 1282, 75 Spring Street SW., proposed actions that would affect the construction, landfills, and clearing by Atlanta, Georgia 30303. species and that they had no yam planters have together reduced the information on the status of the species. FOR FURTHER INFORMATION CONTACT: species to its present low numbers. In Ms. Susan R. Silander at the Caribbean addition, the extreme rarity of the Mr. Lorin Nevling, the author of a Field Office address (809/851-7297) or species and its dioecious habit lower the monograph of the genus Daphnopsis, Mr. Tommy Tumipseed at the Atlanta probability of successful seed supported the listing but commented on Regional Office address (404/331-3583 production and dispersal. the spelling of the species name. The or FTS 242-3583). Daphnopsis hellerana was name has been spelled both as SUPPLEMENTARY INFORMATION: recommended for Federal listing by the h elleria n a and h elleran a. In this final rule the spelling h ellera n a has been Background Smithsonian Institution (Ayensu and Defilipps 1978). The species was retained in accordance with the rules of Daphnopsis hellerana was first included among the plants being nomenclature. discovered and collected by Amos considered as endangered or threatened The Caribbean Primate Research Arthur Heller in 1900 on a limestone hill species by the Fish and Wildlife Service, Center, in a telephone conversation, near Bayamon, Puerto Rico. The species as published in the Federal Register (45 expressed interest in cooperating with was not seen again until 1958, when Roy FR 82479) dated December 15,1980. The the U.S. Fish and Wildlife Service in the O. Woodbury found it in Toa Baja, near species was designated category 1 conservation of this species. the type locality (Nevling and (species for which the Service has Summary of Factors Affecting the Woodbury 1966). Since 1958, three other substantial information supporting the Species populations have been located in the appropriateness of proposing to list karst region of Puerto Rico, two in the them as endangered or threatened), and After a thorough review and Toa Baja /Dorado area, and the third was retained in category 1 in the consideration of all information near Isabela in northwestern Puerto November 28,1983, update (48 FR 53640) available, the Service has determined Rico (Vivaldi and Woodbury 1981). The of the 1980 notice, and the September 27, that Daphnopsis hellerana should be Isabela population and the plants 1985, revised notice (50 FR 39526). classified as an endangered species. rediscovered by Woodbury have since In a notice published in the Federal Procedures found at section 4(a)(1) of been destroyed, leaving two small Register on February 15,1983 (48 FR the Endangered Species Act (16 U.S.C. populations of seven trees in Toa Baja 6752), the Service reported the earlier 1531 et seq .) and regulations (50 CFR and Dorado. The Toa Baja population is acceptance of the new taxa in the Part 424) promulgated to implement the on Federal land under the jurisdiction of Smithsonian’s 1978 book as under listing provisions of the Act were the National Institutes of Health (U.S. petition within the context of section followed. A species may be determined Federal Register / VoL 53, No. 121 / Thursday, June 23, 1988 / Rules and Regulations 23741 wmma to be an endangered or threatened and maintenance of a minimum of Federal agencies and the prohibitions species due to one or more of the five population size. against taking are discussed, in part, factors described in section 4(a)(1). The Service has carefully assessed the below. These factors and their application to best scientific and commercial Section 7(a) of the Act, as amended, Daphnopsis hellerana Urban (no information available regarding the past, requires Federal agencies to evaluate common name) are as follows: present, and future threats faced by this their actions with respect to any species A. The present or threatened species in determining to make this rule that is listed as endangered or destruction, modification, or curtailment final. Based on this evaluation, the threatened and with respect to its of its habitat or range. Modification of preferred action is to list D aphnopsis critical habitat, if any is being habitat and direct destruction of plants hellerana as endangered. Since there designated. Regulations implementing have been significant factors reducing are so few individuals remaining and a this interagency cooperation provision the number of Daphnopsis hellerana. continuing risk of damage to the plants of the Act are codified at 50 CFR Part Deforestation for construction and yam and/or their habitat, endangered status 402. Section 7(a)(4) requires Federal cultivation, the leveling of limestone seems an accurate assessment of the agencies to ensure that activities they hills for construction material, and species’ condition. The reasons for not authorize, fund, or carry out are not random cutting have all contributed to proposing critical habitat for this species likely to jeopardize the continued the species’ decline. The Commonwealth are discussed below in the “Critical existence of such a species or to destroy (Autoridad de Tierras) land is not in any Habitat” section. or adversely modify its critical habitat. protection status, and maybe subject to Critical Habitat If a Federal action may affect a listed construction of roads and powerlines species or its critical habitat, the and to quarrying for construction Section 4(a)(3) of the Act, as amended, responsible Federal agency must enter material. The population on Federal requires that to the maximum extent into formal consultation with the land is not recognized or protected by prudent and determinable, the Secretary Service. No critical habitat is being any existing management plan. designate critical habitat at the time the proposed for Daphnopsis hellerana, as B. Overutilization for commercial, species is determined to be endangered discussed above. Federal involvement is recreational, scientific, or educational or threatened. The Service finds that expected only if there is a change in the purposes. Taking for these purposes has designation of critical habitat is not not been a documented factor in the prudent for this species at this time. The present status of National Institutes of Health lands in the Toa Baja area. decline of this species. However, any number of individuals of D aphnopsis take by curiosity seekers could be h ellera n a is sufficiently small that The Act and its implementing extremely detrimental. collecting or vandalism could serious regulations found at 50 CFR 17.61,17.62, C. Disease or predation. Disease and affect the survival of the species. and 17.63 set forth a series of general predation have not been documented as Publication of critical habitat trade prohibitions and exceptions that factors in the decline of this species. descriptions and maps in the Federal apply to all endangered plants. All trade D. The inadequacy o f existing Register would increase the likelihood prohibitions of section 9(a)(2) of the Act, regulatory mechanisms. The of such activities. The Service believes implemented by 50 CFR 17.61, apply. Commonwealth of Puerto Rico has that Federal involvement in the areas These prohibitions, in part, make it recently adopted a regulation that where this plant occurs can be identified illegal for any person subject to the recognizes and provides protection for without the designation of critical jurisdiction of the United States to certain Commonwealth listed species. habitat. All involved parties and import or export any endangered plant, However, Daphnopsis hellerana is not landowners will be notified of the transport it in interstate or foreign yet on the Commonwealth list. Federal location and importance of protecting commerce in the course of a commercial listing would provide interim protection this species’ habitat. Protection of this activity, sell or offer it for sale in and, if the species Is ultimately placed species’ habitat would also be interstate or foreign commerce, or on the Commonwealth list, enhance its addressed through the recovery process remove it from areas under Federal protection and possibilities for funding and through the Section 7 jeopardy jurisdiction and reduce it to possession. needed research. standard. Therefore, it would not be Certain exceptions can apply to agents E. Other natural or manmade factors prudent to determine critical habitat for of the Service and Commonwealth affecting its continued existence. Since Daphnopsis hellerana at this time. conservation agencies. The Act and 50 Daphnopsis hellerana is dioecious, and CFR 17.62 and 17.63 also provide for the only two, populations of seven plants Available Conservation Measures issuance of permits to carry out each are known to exist, rarity and the Conservation measures provided to otherwise prohibited activities involving resulting effects on reproduction and species listed as endangered or endangered species under certain genetic diversity are factors that could threatened under the Endangered circumstances. It is anticipated that few eventually lead to the species’ Species Act include recognition, trade permits for Daphnopsis hellerana extinction. Seedlings have been recovery actions, requirements for will ever be sought or issued since the observed in the past, but there is no Federal protection, and prohibitions species is not known to be in cultivation evidence at any site that they survived against certain practices. Recognition and is uncommon in the wild. Requests to maturity. Furthermore, there has been through listing encourages and results in for copies of the regulations on plants a steady decline in the number of conservation actions by Federal, and inquiries regarding them may be mature plants at sites that have Commonwealth, and private agencies, addressed to the Office of Management otherwise remained undisturbed. These group?, and individuals. The Authority, U.S. Fish and Wildlife observations suggest that recruitment is Endangered Species Act provides for Service, Hamilton Building, Room 400, not adequate to sustain the remaining possible land acquisition and Washington, DC 20240 (202/343-1968). populations.. There is also no evidence cooperation with the Commonwealth National Environmental Policy Act of vegetative reproduction by and requires that recovery actions be Daphnopsis hellerana, and, thus, the carried out for all listed species. Such The Fish and Wildlife Service has species’ continued existence may actions are initiated by the Service determined that an Environmental depend upon reproduction from seed following listing. The protection required Assessement, as defined under the 23742 Federal Register / Vol. 53, No. 121 / Thursday, June 23, 1988 / Rules and Regulations M E âS M M H f authority of the National Environmental U.S. Fish and Wildlife Service, Atlanta. Regulations, is amended as set forth Policy Act of 1969, need not be prepared Georgia. 56 pp. below: in connection with regulations adopted Author 1. The authority citation for Part 17 prusuant to section 4(a) of the continues to read as follows Endangered Species Act of 1973, as The primary author of this final rule is amended. A notice outlining the Ms. Susan Silander, Caribbean Field Authority: Pub. L. 93-205, 87 Stat. 884; Pub. I L. 94-359, 90 Stat. 911; Pub. L. 95-632,92 Siat. I Service’s reasons for this determination Office, U.S. Fish and Wildlife Service, 3751; Pub. L. 96-159, 93 Stat. 1225; Pub. L. 97-1 wa3 published in the Federal Register on P.O. Box 491, Boqueron Puerto Rico October 25,1983 (48 FR 49244) 304, 96 Stat. 1411 (16 U.S.C. 153J et seq.)\ Pub.l 00622 (809/851-7297). L. 99-625,100 Stat. 3500 (1986), unless References Cited List of Subjects in 50 CFR Part 17 otherwise noted. Ayensu, E.S., and R.A. DeFilipps. 1978. Endangered and Threatened Plants of the Endangered and threatened wildlife, 2. Amend § 17.12(h) by adding the United States. Smithsonian Institution and Fish, Marine mammals, Plants following, in alphabetical order under World Wildlife Fund, Washington, DC (agriculture). Thymelaeaceae, to the List of xv -f 403 pp. Endangered and Threatened Plants: Neviing, L.I., and R.O. Woodbury. 1968. Regulation Promulgation Rediscovery of Daphnopsis hellerana. J. § 17.12 Endangered and threatened plants.! Arnold Arbor. 47:262-265. PART 17—[ AMENDED] * * * * * Vivaldi, J.L., and R.O. Woodbury. 1981. Status fUT * * * report on Daphnopsis hellerana Urban. Accordingly, Part 17, Subchapter B of Unpublished status report submitted to the Chapter I, Title 50 of the Code of Federal

Species Historic range Status When listed “ g I Scientific name Common name

Thymelaeaceae—Mezereum family: Daphnopsis Hellerana...... None U.S.A. (PR)...... E 309 NA NaI *

Dated: June 3,1988. Federal protection provided by the Act scape-like peduncle 5-25 centimeters (2-H Susan Recce, for Hymenoxys acauiis var. g labra. 10 inches) high, which bears a solitary I Acting Assistant Secretary for Fish and EFFECTIVE DATE: July 28,1988. head with 10-30 radiating yellow rays. I Wildlife and Parks. Most individuals in a population tend to I a d d r e s s e s : The complete file for this [FR Doc. 88-14245 Filed 6-22-88; 8:45 amj bloom at the same time in late April to I rule is available for inspection, by BILLING CODE 4310-55-M mid -May, producing radiant mass of appointment, during normal business yellow flowers. After flowering the hours at the Service’s Regional Office of plants become light gray in color and Endangered Species, Federal Building, 50 CFR Part 17 quite inconspicuous and easily Fort Snelling, Twin Cities, Minnesota • overlooked; in a few weeks the rich 55111. Endangered and Threatened Wildlife green color returns (R.E. Moseley, Ohio and Plants; Determination of FOR FURTHER INFORMATION CONTACT: Department of Natural Resources, pers. Threatened Status for Hymenoxys James M. Engel, Endangered Species comm. September 1985). DeMauro (Will acauiis var. glabra (Lakeside daisy) Coordinator (see ADDRESSES section) at County Illinois, Forest Preserve District, 612/725-3276 or FTS 725-3276. a g e n c y : Fish and Wildlife Service, pers. comm. 1987) reports observing a Interior. SUPPLEMENTARY INFORMATION: gray color and flattening of leaves of H. a c t io n : Final rule. acau iis var. g la b ra when the plant is Background water stressed; the dark green color SUMMARY: The Service determines Hymenoxys acauiis var. g la b ra returns several hours after watering. threatened status for H ym enoxys (Lakeside daisy) is a member of the In the United States H ym enoxys acau iis var. g la b ra (Lakeside daisy), family Asteraceae. It has previously acau iis var. g la b ra is currently known under authority of the Endangered been recognized as Actinea herbacea from one fragmented population on the Species Act (Act) of 1973, as amended. (Greene) Robins, and Actinea acauiis Marblehead Peninsula in Ottawa This plant is known only from (Pursh) Spring var. g la b ra (Gray) Parker. County, Ohio, where it occurs on dry Manitoulin Island and the Bruce While conducting taxonomic research rocky prairie habitat, much of which has Peninsula in Ontario, Canada, where it on the western species of A ctinea, been altered by limestone quarrying is considered rare, and one fragmented Parker (1950) demonstrated that activities (Weed 1890, Wunderlin 1971, population in Ottawa County, Ohio. It Hymenoxys acauiis var. g la b ra is the Cusick and Burns 1984). The plant has has apparently been extirpated from correct name for the plant. also been recorded from Will and two counties in Illinois. The Ohio A perennial with a taproot and Tazewell Counties in Illinois (Wunderlin population occurs on private land, branching caudex, Hymenoxys acauiis 1971, John Schwegman, Illinois where its continued existence is var. g la b ra is characterized by densely Department of Conservation, pers. threatened by habitat alteration caused tufted, thick spatulate to nearly linear comm. April 1986). The Illinois by limestone quarrying activities and basal leaves 1-8 centimeters (0.4-3.1 populations, however, are considered to the unmanaged succession of woody inches) long and up to 1 centimeter (0.4 be extirpated (Schwegman, pers. comm- overgrowth. This action will implement inches) wide, strongly punctuate with a April 1986). In Canada, where the plant