52686 Federal Register / Vol. 74, No. 197 / Wednesday, October 14, 2009 / Rules and Regulations 

DEPARTMENT OF HOMELAND 

SECURITY 

Coast Guard 

33 CFR Part 165 

[Docket No. USCG–2009–0842] 

RIN 1625–AA00 

Safety Zone, Chicago Harbor, Navy 

Pier Southeast, Chicago, IL 

AGENCY: Coast Guard, DHS. 

ACTION: Notice of enforcement of 

regulation. 

SUMMARY: The Coast Guard will enforce 

the Navy Pier Southeast Safety Zone in 

Chicago Harbor from October 2, 2009, 

through October 31, 2009. This action is 

necessary and intended to ensure safety 

of life on the navigable waters 

immediately prior to, during, and 

immediately after fireworks events. This 

rule will establish restrictions upon and 

control movement of vessels in the 

specified area immediately prior to, 

during, and immediately after the 

fireworks events. During the 

enforcement period, no person or vessel 

may enter the safety zone without 

permission of the Captain of the Port 

Lake Michigan. 

DATES: The regulations in 33 CFR 

165.931 will be enforced during the 

times listed in the SUPPLEMENTARY

INFORMATION from October 2, 2009, to 

October 31, 2009. 

FOR FURTHER INFORMATION CONTACT: If 

you have questions on this notice, call 

or e-mail BM1 Adam Kraft, Prevention 

Department, Coast Guard Sector Lake 

Michigan, Milwaukee, WI; telephone 

414–747–7154, e-mail 

Adam.D.Kraft@uscg.mil. 

SUPPLEMENTARY INFORMATION: 

The Coast Guard will enforce the 

safety zone, Chicago Harbor, Navy Pier 

Southeast, Chicago, IL, as listed in 33 

CFR 165.931, for the following events, 

dates, and times: 

(1) Navy Pier Friday Fireworks: on 

October 2, 2009, from 8:45 p.m. through 

9:30 p.m.; on October 9, 2009, from 8:45 

p.m. through 9:30 p.m.; on October 16, 

2009, from 8:45 p.m. through 9:30 p.m.; 

on October 23, 2009, from 8:45 p.m. 

through 9:30 p.m.; on October 30, 2009, 

from 8:45 p.m. through 9:30 p.m.; 

(2) Navy Pier Saturday Fireworks: on 

October 3, 2009, from 8:45 p.m. through 

9:30 p.m.; on October 10, 2009, from 

8:45 p.m. through 9:30 p.m.; on October 

17, 2009, from 8:45 p.m. through 9:30 

p.m.; on October 24, 2009, from 8:45 

p.m. through 9:30 p.m.; on October 31, 

2009, from 8:45 p.m. through 9:30 p.m. 

All vessels must obtain permission 

from the Captain of the Port or a 

designated representative to enter, move 

within, or exit the safety zone. Vessels 

and persons granted permission to enter 

the safety zone shall obey all lawful 

orders or directions of the Captain of the 

Port or the designated representative. 

While within a safety zone, all vessels 

shall operate at the minimum speed 

necessary to maintain a safe course. 

This notice is issued under authority 

of 33 CFR 165.931 Safety Zone, Chicago 

Harbor, Navy Pier Southeast, Chicago, 

IL and 5 U.S.C. 552(a). In addition to 

this notice in the Federal Register, the 

Coast Guard will provide the maritime 

community with advance notification of 

these enforcement periods via broadcast 

Notice to Mariners or Local Notice to 

Mariners. The Captain of the Port will 

issue a Broadcast Notice to Mariners 

notifying the public when enforcement 

of the safety zone established by this 

section is suspended. If the Captain of 

the Port determines that the safety zone 

need not be enforced for the full 

duration stated in this notice, he or she 

may use a Broadcast Notice to Mariners 

to grant general permission to enter the 

safety zone. The Captain of the Port or 

the designated representative may be 

contacted via VHF–FM Channel 16. 

Dated: September 29, 2009. 

L. Barndt, 

Captain, U.S. Coast Guard, Captain of the 

Port Lake Michigan. 

[FR Doc. E9–24657 Filed 10–13–09; 8:45 am] 

BILLING CODE 4910–15–P 

DEPARTMENT OF COMMERCE 

Patent and Trademark Office 

37 CFR Part 1 

[Docket No.: PTO–P–2009–0049] 

RIN 0651–AC36 

Changes to Practice for Continued 

Examination Filings, Patent 

Applications Containing Patentably 

Indistinct Claims, and Examination of 

Claims in Patent Applications 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Final rule. 

SUMMARY: The United States Patent and 

Trademark Office (Office) published a 

final rule in the Federal Register in 

August of 2007 to revise the rules of 

practice for patent cases pertaining to 

continuing applications and requests for 

continued examination practices, and 

for the examination of claims in patent 

applications (Claims and Continuations 

Final Rule). The Office is revising the 

rules of practice in this final rule to 

remove the changes in the Claims and 

Continuations Final Rule from the Code 

of Federal Regulations. 

DATES: Effective Date: October 14, 2009. 

FOR FURTHER INFORMATION CONTACT: 

Robert W. Bahr, Senior Patent Counsel, 

Office of the Deputy Commissioner for 

Patent Examination Policy, by telephone 

at (571) 272–8800; or by mail addressed 

to: Mail Stop Comments Patents, 

Commissioner for Patents, P.O. Box 

1450, Alexandria, VA 22313–1450. 

SUPPLEMENTARY INFORMATION: The Office 

published the Claims and Continuations 

Final Rule in the Federal Register in 

August of 2007, which revised the rules 

of practice in title 37 of the Code of 

Federal Regulations for patent cases 

pertaining to continuing applications 

and requests for continued examination 

practices, and for the examination of 

claims in patent applications. See 

Changes to Practice for Continued 

Examination Filings, Patent 

Applications Containing Patentably 

Indistinct Claims, and Examination of 

Claims in Patent Applications, 72 FR 

46716 (Aug. 21, 2007), 1322 Off. Gaz. 

Pat. Office 76 (Sept. 11, 2007). The 

United States District Court for the 

Eastern District of Virginia (District 

Court) issued an injunction, enjoining 

the Office from implementing the 

changes in the Claims and 

Continuations Final Rule. See Tafas v. 

Dudas, 541 F. Supp. 2d 805, 86 

U.S.P.Q.2d 1623 (E.D. Va. 2008) 

(permanent injunction), and Tafas v. 

Dudas, 511 F. Supp. 2d 652, 86 

U.S.P.Q.2d 1548 (E.D. Va. 2007) 

(preliminary injunction). The Office 

appealed this decision to the United 

States Court of Appeals for the Federal 

Circuit (Federal Circuit). The Federal 

Circuit issued a panel decision holding 

that all of the changes in the Claims and 

Continuations Final Rule fall within the 

Office’s rule making authority to govern 

the conduct of proceedings before the 

Office, but that the provisions 

pertaining to continuing applications 

were inconsistent with 35 U.S.C. 120. 

See Tafas v. Doll, 559 F.3d 1345, 90 

U.S.P.Q.2d 1129 (Fed. Cir. 2009). The 

Federal Circuit en banc then issued an 

order granting a petition for rehearing 

en banc and vacating the panel 

decision. See Tafas v. Doll, 2009 U.S. 

App. LEXIS 14611, 91 U.S.P.Q. 2d 1153 

(Fed. Cir., July 6, 2009). 

The changes in the Claims and 

Continuations Final Rule were added to 

the Code of Federal Regulations, but 

have been the subject of litigation since 

August of 2007 and have never taken 

effect. See Clarification of Patent 


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Federal Register / Vol. 74, No. 197 / Wednesday, October 14, 2009 / Rules and Regulations 52687 

Regulations Currently in Effect, and 

Revision in Applicability Date of 

Provisions Relating to Patent 

Applications Containing Patentably 

Indistinct Claims, 73 FR 45999 (Aug. 7, 

2008) (notice). The changes in the 

Claims and Continuations Final Rule 

addressed the Office’s patent 

application pendency and quality 

issues, but did so with provisions that 

were objectionable to a large segment of 

the patent user community. In addition, 

the circumstances have changed since 

the Office published the Claims and 

Continuations Final Rule in August of 

2007, and the Office is now considering 

other initiatives that would garner more 

of a consensus with the patent user 

community to address the challenges it 

currently faces. Thus, the Office has 

decided that it is no longer interested in 

pursuing the changes in the Claims and 

Continuations Final Rule that were the 

subject of the District Court’s decision 

in Tafas. Therefore, the Office is 

revising the rules of practice in title 37 

of the Code of Federal Regulations for 

patent cases to remove the changes in 

the Claims and Continuations Final 

Rule from the Code of Federal 

Regulations. 

Discussion of Specific Rules 

This final rule amends title 37, part 1, 

of the Code of Federal Regulations, as 

follows: 

Sections 1.17(f), 1.26(a) and (b), 

1.52(d)(2), 1.53(b) and (c)(4), 1.75(b) and 

(c), 1.76(b)(5), 1.78, 1.104(a)(1) and (b), 

1.110, 1.114(a) and (d), 1.136(a)(1), 

1.142(a), 1.145, and 1.495(g) are 

amended to remove the changes in these 

provisions in the Claims and 

Continuations Final Rule. 

Sections 1.105(a)(1)(ix), 1.114(f), (g), 

and (h), 1.117, 1.142(c), and 1.265, and 

1.704(c)(11) are removed. These 

provisions were added in the Claims 

and Continuations Final Rule. 

Section 1.704(c)(12) is redesignated as 

§ 1.704(c)(11). 

Rule Making Considerations 

A. Administrative Procedure Act: The 

Under Secretary of Commerce for 

Intellectual Property and Director of the 

United States Patent and Trademark 

Office finds good cause under 5 U.S.C. 

553(b)(B) to waive any requirement to 

provide prior notice and opportunity for 

public comment as such procedures are 

unnecessary. The changes in this final 

rule revise the rules of practice as 

published in title 37 of the Code of 

Federal Regulations to reflect the rules 

of practice that are currently in effect. 

The changes in this final rule will not 

result in any changes in the 

requirements with which applicants, 

patentees, or other members of the 

public must comply during proceedings 

before the Office. Therefore, prior notice 

and an opportunity for public comment 

are not required pursuant to 5 U.S.C. 

553(b)(A) or (B) or any other law. In 

addition, thirty-day advance publication 

is not required under 5 U.S.C. 553(d) for 

this final rule as it merely relieves 

restrictions contained in the rules of 

practice as published in title 37 of the 

Code of Federal Regulations. 

B. Regulatory Flexibility Act: As prior 

notice and an opportunity for public 

comment are not required pursuant to 

5 U.S.C. 553 or any other law, neither 

a regulatory flexibility analysis nor a 

certification under the Regulatory 

Flexibility Act (5 U.S.C. 601 et seq.) is 

required. See 5 U.S.C. 603. 

C. Executive Order 12866 (Regulatory 

Planning and Review): This rule making 

has been determined to be significant 

for purposes of Executive Order 12866 

(Sept. 30, 1993). 

D. Executive Order 13132 

(Federalism): This rule making does not 

contain policies with federalism 

implications sufficient to warrant 

preparation of a Federalism Assessment 

under Executive Order 13132 (Aug. 4, 

1999). 

E. Executive Order 13175 (Tribal 

Consultation): This rule making will 

not: (1) Have substantial direct effects 

on one or more Indian Tribes; (2) 

impose substantial direct compliance 

costs on Indian Tribal governments; or 

(3) preempt Tribal law. Therefore, a 

Tribal summary impact statement is not 

required under Executive Order 13175 

(Nov. 6, 2000). 

F. Executive Order 13211 (Energy 

Effects): This rule making is not a 

significant energy action under 

Executive Order 13211 because this rule 

making is not likely to have a significant 

adverse effect on the supply, 

distribution, or use of energy. Therefore, 

a Statement of Energy Effects is not 

required under Executive Order 13211 

(May 18, 2001). 

G. Executive Order 12988 (Civil 

Justice Reform): This rule making meets 

applicable standards to minimize 

litigation, eliminate ambiguity, and 

reduce burden as set forth in sections 

3(a) and 3(b)(2) of Executive Order 

12988 (Feb. 5, 1996). 

H. Executive Order 13045 (Protection 

of Children): This rule making does not 

concern an environmental risk to health 

or safety that may disproportionately 

affect children under Executive Order 

13045 (Apr, 21, 1997). 

I. Executive Order 12630 (Taking of 

Private Property): This rule making will 

not effect a taking of private property or 

otherwise have taking implications 

under Executive Order 12630 (Mar. 15, 

1988). 

J. Congressional Review Act: Under 

the Congressional Review Act 

provisions of the Small Business 

Regulatory Enforcement Fairness Act of 

1996 (5 U.S.C. 801 et seq.), the United 

States Patent and Trademark Office will 

submit a report containing this final rule 

and other required information to the 

U.S. Senate, the U.S. House of 

Representatives and the Comptroller 

General of the Government 

Accountability Office. The changes in 

this final rule will not result in an 

annual effect on the economy of 100 

million dollars or more, a major increase 

in costs or prices, or significant adverse 

effects on competition, employment, 

investment, productivity, innovation, or 

the ability of United States-based 

enterprises to compete with foreignbased enterprises in domestic and 

export markets. Therefore, this final rule 

is not a ‘‘major rule’’ as defined in 

5 U.S.C. 804(2). 

K. Unfunded Mandates Reform Act of 

1995: The changes proposed in this 

notice do not involve a Federal 

intergovernmental mandate that will 

result in the expenditure by State, local, 

and Tribal governments, in the 

aggregate, of 100 million dollars (as 

adjusted) or more in any one year, or a 

Federal private sector mandate that will 

result in the expenditure by the private 

sector of 100 million dollars (as 

adjusted) or more in any one year, and 

will not significantly or uniquely affect 

small governments. Therefore, no 

actions are necessary under the 

provisions of the Unfunded Mandates 

Reform Act of 1995. See 2 U.S.C. 1501 

et seq. 

L. National Environmental Policy Act: 

This rule making will not have any 

effect on the quality of environment and 

is thus categorically excluded from 

review under the National 

Environmental Policy Act of 1969. See 

42 U.S.C. 4321 et seq. 

M. National Technology Transfer and 

Advancement Act: The requirements of 

section 12(d) of the National 

Technology Transfer and Advancement 

Act of 1995 (15 U.S.C. 272 note) are 

inapplicable because this rule making 

does not contain provisions which 

involve the use of technical standards. 

N. Paperwork Reduction Act: This 

final rule involves information 

collection requirements which are 

subject to review by the Office of 

Management and Budget (OMB) under 

the Paperwork Reduction Act of 1995 

(44 U.S.C. 3501 et seq.). The collection 

of information involved in this final rule 

has been reviewed and approved by 

OMB under OMB control number 0651– 


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52688 Federal Register / Vol. 74, No. 197 / Wednesday, October 14, 2009 / Rules and Regulations 

0031. The United States Patent and 

Trademark Office is not submitting an 

information collection package to OMB 

for its review and approval because the 

changes in this notice do not affect the 

information collection requirements 

associated with the information 

collection under OMB control number 

0651–0031. 

Notwithstanding any other provision 

of law, no person is required to respond 

to nor shall a person be subject to a 

penalty for failure to comply with a 

collection of information subject to the 

requirements of the Paperwork 

Reduction Act unless that collection of 

information displays a currently valid 

OMB control number. 

List of Subjects in 37 CFR Part 1 

Administrative practice and 

procedure, Courts, Freedom of 

information, Inventions and patents, 

Reporting and recordkeeping 

requirements, Small businesses. 

■ For the reasons set forth in the 

preamble, 37 CFR part 1 is amended as 

follows: 

PART 1—RULES OF PRACTICE IN 

PATENT CASES 

■ 1. The authority citation for 37 CFR 

part 1 continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2). 

■ 2. Section 1.17 is amended by revising 

paragraph (f) to read as follows: 

§ 1.17 Patent application and 

reexamination processing fees. 

* * * * * 

(f) For filing a petition under one of 

the following sections which refers to 

this paragraph: $400.00. 

§ 1.36(a)—for revocation of a power of 

attorney by fewer than all of the 

applicants. 

§ 1.53(e)—to accord a filing date. 

§ 1.57(a)—to accord a filing date. 

§ 1.182—for decision on a question 

not specifically provided for. 

§ 1.183—to suspend the rules. 

§ 1.378(e)—for reconsideration of 

decision on petition refusing to accept 

delayed payment of maintenance fee in 

an expired patent. 

§ 1.741(b)—to accord a filing date to 

an application under § 1.740 for 

extension of a patent term. 

* * * * * 

■ 3. Section 1.26 is amended by revising 

paragraphs (a) and (b) to read as follows: 

§ 1.26 Refunds. 

(a) The Director may refund any fee 

paid by mistake or in excess of that 

required. A change of purpose after the 

payment of a fee, such as when a party 

desires to withdraw a patent filing for 

which the fee was paid, including an 

application, an appeal, or a request for 

an oral hearing, will not entitle a party 

to a refund of such fee. The Office will 

not refund amounts of twenty-five 

dollars or less unless a refund is 

specifically requested, and will not 

notify the payor of such amounts. If a 

party paying a fee or requesting a refund 

does not provide the banking 

information necessary for making 

refunds by electronic funds transfer (31 

U.S.C. 3332 and 31 CFR part 208), or 

instruct the Office that refunds are to be 

credited to a deposit account, the 

Director may require such information, 

or use the banking information on the 

payment instrument to make a refund. 

Any refund of a fee paid by credit card 

will be by a credit to the credit card 

account to which the fee was charged. 

(b) Any request for refund must be 

filed within two years from the date the 

fee was paid, except as otherwise 

provided in this paragraph or in 

§ 1.28(a). If the Office charges a deposit 

account by an amount other than an 

amount specifically indicated in an 

authorization (§ 1.25(b)), any request for 

refund based upon such charge must be 

filed within two years from the date of 

the deposit account statement indicating 

such charge, and include a copy of that 

deposit account statement. The time 

periods set forth in this paragraph are 

not extendable. 

* * * * * 

■ 4. Section 1.52 is amended by revising 

paragraph (d)(2) to read as follows: 

§ 1.52 Language, paper, writing, margins, 

compact disc specifications. 

* * * * * 

(d) * * * 

(2) Provisional application. If a 

provisional application is filed in a 

language other than English, an English 

language translation of the non-English 

language provisional application will 

not be required in the provisional 

application. See § 1.78(a) for the 

requirements for claiming the benefit of 

such provisional application in a 

nonprovisional application. 

* * * * * 

■ 5. Section 1.53 is amended by revising 

paragraphs (b) and (c)(4) to read as 

follows: 

§ 1.53 Application number, filing date, and 

completion of application. 

* * * * * 

(b) Application filing requirements— 

Nonprovisional application. The filing 

date of an application for patent filed 

under this section, except for a 

provisional application under paragraph 

(c) of this section or a continued 

prosecution application under 

paragraph (d) of this section, is the date 

on which a specification as prescribed 

by 35 U.S.C. 112 containing a 

description pursuant to § 1.71 and at 

least one claim pursuant to § 1.75, and 

any drawing required by § 1.81(a) are 

filed in the Patent and Trademark 

Office. No new matter may be 

introduced into an application after its 

filing date. A continuing application, 

which may be a continuation, 

divisional, or continuation-in-part 

application, may be filed under the 

conditions specified in 35 U.S.C. 120, 

121 or 365(c) and § 1.78(a). 

(1) A continuation or divisional 

application that names as inventors the 

same or fewer than all of the inventors 

named in the prior application may be 

filed under this paragraph or paragraph 

(d) of this section. 

(2) A continuation-in-part application 

(which may disclose and claim subject 

matter not disclosed in the prior 

application) or a continuation or 

divisional application naming an 

inventor not named in the prior 

application must be filed under this 

paragraph. 

(c) * * * 

(4) A provisional application is not 

entitled to the right of priority under 35 

U.S.C. 119 or 365(a) or § 1.55, or to the 

benefit of an earlier filing date under 35 

U.S.C. 120, 121 or 365(c) or § 1.78 of any 

other application. No claim for priority 

under 35 U.S.C. 119(e) or § 1.78(a)(4) 

may be made in a design application 

based on a provisional application. No 

request under § 1.293 for a statutory 

invention registration may be filed in a 

provisional application. The 

requirements of §§ 1.821 through 1.825 

regarding application disclosures 

containing nucleotide and/or amino 

acid sequences are not mandatory for 

provisional applications. 

* * * * * 

■ 6. Section 1.75 is amended by revising 

paragraphs (b) and (c) to read as follows: 

§ 1.75 Claim(s). 

* * * * * 

(b) More than one claim may be 

presented provided they differ 

substantially from each other and are 

not unduly multiplied. 

(c) One or more claims may be 

presented in dependent form, referring 

back to and further limiting another 

claim or claims in the same application. 

Any dependent claim which refers to 

more than one other claim (‘‘multiple 

dependent claim’’) shall refer to such 

other claims in the alternative only. A 

multiple dependent claim shall not 


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Federal Register / Vol. 74, No. 197 / Wednesday, October 14, 2009 / Rules and Regulations 52689 

serve as a basis for any other multiple 

dependent claim. For fee calculation 

purposes under § 1.16, a multiple 

dependent claim will be considered to 

be that number of claims to which direct 

reference is made therein. For fee 

calculation purposes also, any claim 

depending from a multiple dependent 

claim will be considered to be that 

number of claims to which direct 

reference is made in that multiple 

dependent claim. In addition to the 

other filing fees, any original 

application which is filed with, or is 

amended to include, multiple 

dependent claims must have paid 

therein the fee set forth in § 1.16(j). 

Claims in dependent form shall be 

construed to include all the limitations 

of the claim incorporated by reference 

into the dependent claim. A multiple 

dependent claim shall be construed to 

incorporate by reference all the 

limitations of each of the particular 

claims in relation to which it is being 

considered. 

* * * * * 

■ 7. Section 1.76 is amended by revising 

paragraph (b)(5) to read as follows: 

§ 1.76 Application data sheet. 

* * * * * 

(b) * * * 

(5) Domestic priority information. 

This information includes the 

application number, the filing date, the 

status (including patent number if 

available), and relationship of each 

application for which a benefit is 

claimed under 35 U.S.C. 119(e), 120, 

121, or 365(c). Providing this 

information in the application data 

sheet constitutes the specific reference 

required by 35 U.S.C. 119(e) or 120, and 

§ 1.78(a)(2) or § 1.78(a)(5), and need not 

otherwise be made part of the 

specification. 

* * * * * 

■ 8. Section 1.78 is revised to read as 

follows: 

§ 1.78 Claiming benefit of earlier filing date 

and cross-references to other applications. 

(a)(1) A nonprovisional application or 

international application designating 

the United States of America may claim 

an invention disclosed in one or more 

prior-filed copending nonprovisional 

applications or international 

applications designating the United 

States of America. In order for an 

application to claim the benefit of a 

prior-filed copending nonprovisional 

application or international application 

designating the United States of 

America, each prior-filed application 

must name as an inventor at least one 

inventor named in the later-filed 

application and disclose the named 

inventor’s invention claimed in at least 

one claim of the later-filed application 

in the manner provided by the first 

paragraph of 35 U.S.C. 112. In addition, 

each prior-filed application must be: 

(i) An international application 

entitled to a filing date in accordance 

with PCT Article 11 and designating the 

United States of America; or 

(ii) Entitled to a filing date as set forth 

in § 1.53(b) or § 1.53(d) and have paid 

therein the basic filing fee set forth in 

§ 1.16 within the pendency of the 

application. 

(2)(i) Except for a continued 

prosecution application filed under 

§ 1.53(d), any nonprovisional 

application or international application 

designating the United States of 

America claiming the benefit of one or 

more prior-filed copending 

nonprovisional applications or 

international applications designating 

the United States of America must 

contain or be amended to contain a 

reference to each such prior-filed 

application, identifying it by application 

number (consisting of the series code 

and serial number) or international 

application number and international 

filing date and indicating the 

relationship of the applications. Cross 

references to other related applications 

may be made when appropriate (see 

§ 1.14). 

(ii) This reference must be submitted 

during the pendency of the later-filed 

application. If the later-filed application 

is an application filed under 35 U.S.C. 

111(a), this reference must also be 

submitted within the later of four 

months from the actual filing date of the 

later-filed application or sixteen months 

from the filing date of the prior-filed 

application. If the later-filed application 

is a nonprovisional application which 

entered the national stage from an 

international application after 

compliance with 35 U.S.C. 371, this 

reference must also be submitted within 

the later of four months from the date 

on which the national stage commenced 

under 35 U.S.C. 371(b) or (f) in the laterfiled international application or sixteen 

months from the filing date of the priorfiled application. These time periods are 

not extendable. Except as provided in 

paragraph (a)(3) of this section, the 

failure to timely submit the reference 

required by 35 U.S.C. 120 and paragraph 

(a)(2)(i) of this section is considered a 

waiver of any benefit under 35 U.S.C. 

120, 121, or 365(c) to such prior-filed 

application. The time periods in this 

paragraph do not apply if the later-filed 

application is: 

(A) An application for a design patent; 

(B) An application filed under 35 

U.S.C. 111(a) before November 29, 2000; 

or 

(C) A nonprovisional application 

which entered the national stage after 

compliance with 35 U.S.C. 371 from an 

international application filed under 35 

U.S.C. 363 before November 29, 2000. 

(iii) If the later-filed application is a 

nonprovisional application, the 

reference required by this paragraph 

must be included in an application data 

sheet (§ 1.76), or the specification must 

contain or be amended to contain such 

reference in the first sentence(s) 

following the title. 

(iv) The request for a continued 

prosecution application under § 1.53(d) 

is the specific reference required by 35 

U.S.C. 120 to the prior-filed application. 

The identification of an application by 

application number under this section is 

the identification of every application 

assigned that application number 

necessary for a specific reference 

required by 35 U.S.C. 120 to every such 

application assigned that application 

number. 

(3) If the reference required by 35 

U.S.C. 120 and paragraph (a)(2) of this 

section is presented after the time 

period provided by paragraph (a)(2)(ii) 

of this section, the claim under 35 

U.S.C. 120, 121, or 365(c) for the benefit 

of a prior-filed copending 

nonprovisional application or 

international application designating 

the United States of America may be 

accepted if the reference identifying the 

prior-filed application by application 

number or international application 

number and international filing date 

was unintentionally delayed. A petition 

to accept an unintentionally delayed 

claim under 35 U.S.C. 120, 121, or 

365(c) for the benefit of a prior-filed 

application must be accompanied by: 

(i) The reference required by 35 U.S.C. 

120 and paragraph (a)(2) of this section 

to the prior-filed application, unless 

previously submitted; 

(ii) The surcharge set forth in § 1.17(t); 

and 

(iii) A statement that the entire delay 

between the date the claim was due 

under paragraph (a)(2)(ii) of this section 

and the date the claim was filed was 

unintentional. The Director may require 

additional information where there is a 

question whether the delay was 

unintentional. 

(4) A nonprovisional application, 

other than for a design patent, or an 

international application designating 

the United States of America may claim 

an invention disclosed in one or more 

prior-filed provisional applications. In 

order for an application to claim the 

benefit of one or more prior-filed 


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52690 Federal Register / Vol. 74, No. 197 / Wednesday, October 14, 2009 / Rules and Regulations 

provisional applications, each priorfiled provisional application must name 

as an inventor at least one inventor 

named in the later-filed application and 

disclose the named inventor’s invention 

claimed in at least one claim of the 

later-filed application in the manner 

provided by the first paragraph of 35 

U.S.C. 112. In addition, each prior-filed 

provisional application must be entitled 

to a filing date as set forth in § 1.53(c), 

and the basic filing fee set forth in 

§ 1.16(d) must be paid within the time 

period set forth in § 1.53(g). 

(5)(i) Any nonprovisional application 

or international application designating 

the United States of America claiming 

the benefit of one or more prior-filed 

provisional applications must contain or 

be amended to contain a reference to 

each such prior-filed provisional 

application, identifying it by the 

provisional application number 

(consisting of series code and serial 

number). 

(ii) This reference must be submitted 

during the pendency of the later-filed 

application. If the later-filed application 

is an application filed under 35 U.S.C. 

111(a), this reference must also be 

submitted within the later of four 

months from the actual filing date of the 

later-filed application or sixteen months 

from the filing date of the prior-filed 

provisional application. If the later-filed 

application is a nonprovisional 

application which entered the national 

stage from an international application 

after compliance with 35 U.S.C. 371, 

this reference must also be submitted 

within the later of four months from the 

date on which the national stage 

commenced under 35 U.S.C. 371(b) or 

(f) in the later-filed international 

application or sixteen months from the 

filing date of the prior-filed provisional 

application. These time periods are not 

extendable. Except as provided in 

paragraph (a)(6) of this section, the 

failure to timely submit the reference is 

considered a waiver of any benefit 

under 35 U.S.C. 119(e) to such priorfiled provisional application. The time 

periods in this paragraph do not apply 

if the later-filed application is: 

(A) An application filed under 35 

U.S.C. 111(a) before November 29, 2000; 

or 

(B) A nonprovisional application 

which entered the national stage after 

compliance with 35 U.S.C. 371 from an 

international application filed under 35 

U.S.C. 363 before November 29, 2000. 

(iii) If the later-filed application is a 

nonprovisional application, the 

reference required by this paragraph 

must be included in an application data 

sheet (§ 1.76), or the specification must 

contain or be amended to contain such 

reference in the first sentence(s) 

following the title. 

(iv) If the prior-filed provisional 

application was filed in a language other 

than English and both an Englishlanguage translation of the prior-filed 

provisional application and a statement 

that the translation is accurate were not 

previously filed in the prior-filed 

provisional application, applicant will 

be notified and given a period of time 

within which to file, in the prior-filed 

provisional application, the translation 

and the statement. If the notice is 

mailed in a pending nonprovisional 

application, a timely reply to such a 

notice must include the filing in the 

nonprovisional application of either a 

confirmation that the translation and 

statement were filed in the provisional 

application, or an amendment or 

Supplemental Application Data Sheet 

withdrawing the benefit claim, or the 

nonprovisional application will be 

abandoned. The translation and 

statement may be filed in the 

provisional application, even if the 

provisional application has become 

abandoned. 

(6) If the reference required by 35 

U.S.C. 119(e) and paragraph (a)(5) of 

this section is presented in a 

nonprovisional application after the 

time period provided by paragraph 

(a)(5)(ii) of this section, the claim under 

35 U.S.C. 119(e) for the benefit of a prior 

filed provisional application may be 

accepted during the pendency of the 

later-filed application if the reference 

identifying the prior-filed application by 

provisional application number was 

unintentionally delayed. A petition to 

accept an unintentionally delayed claim 

under 35 U.S.C. 119(e) for the benefit of 

a prior-filed provisional application 

must be accompanied by: 

(i) The reference required by 35 U.S.C. 

119(e) and paragraph (a)(5) of this 

section to the prior-filed provisional 

application, unless previously 

submitted; 

(ii) The surcharge set forth in § 1.17(t); 

and 

(iii) A statement that the entire delay 

between the date the claim was due 

under paragraph (a)(5)(ii) of this section 

and the date the claim was filed was 

unintentional. The Director may require 

additional information where there is a 

question whether the delay was 

unintentional. 

(b) Where two or more applications 

filed by the same applicant contain 

conflicting claims, elimination of such 

claims from all but one application may 

be required in the absence of good and 

sufficient reason for their retention 

during pendency in more than one 

application. 

(c) If an application or a patent under 

reexamination and at least one other 

application naming different inventors 

are owned by the same person and 

contain conflicting claims, and there is 

no statement of record indicating that 

the claimed inventions were commonly 

owned or subject to an obligation of 

assignment to the same person at the 

time the later invention was made, the 

Office may require the assignee to state 

whether the claimed inventions were 

commonly owned or subject to an 

obligation of assignment to the same 

person at the time the later invention 

was made, and if not, indicate which 

named inventor is the prior inventor. 

Even if the claimed inventions were 

commonly owned, or subject to an 

obligation of assignment to the same 

person, at the time the later invention 

was made, the conflicting claims may be 

rejected under the doctrine of double 

patenting in view of such commonly 

owned or assigned applications or 

patents under reexamination. 

■ 9. Section 1.104 is amended by 

revising paragraphs (a)(1) and (b) to read 

as follows: 

§ 1.104 Nature of examination. 

(a) Examiner’s action. (1) On taking 

up an application for examination or a 

patent in a reexamination proceeding, 

the examiner shall make a thorough 

study thereof and shall make a thorough 

investigation of the available prior art 

relating to the subject matter of the 

claimed invention. The examination 

shall be complete with respect both to 

compliance of the application or patent 

under reexamination with the 

applicable statutes and rules and to the 

patentability of the invention as 

claimed, as well as with respect to 

matters of form, unless otherwise 

indicated. 

* * * * * 

(b) Completeness of examiner’s 

action. The examiner’s action will be 

complete as to all matters, except that in 

appropriate circumstances, such as 

misjoinder of invention, fundamental 

defects in the application, and the like, 

the action of the examiner may be 

limited to such matters before further 

action is made. However, matters of 

form need not be raised by the examiner 

until a claim is found allowable. 

* * * * * 

§ 1.105 [Amended] 

■ 10. Section 1.105 is amended by 

removing paragraph (a)(1)(ix). 

■ 11. Section 1.110 is revised to read as 

follows: 


cprice-sewell on DSK2BSOYB1PROD with RULES
Federal Register / Vol. 74, No. 197 / Wednesday, October 14, 2009 / Rules and Regulations 52691 

§ 1.110 Inventorship and date of invention 

of the subject matter of individual claims. 

When more than one inventor is 

named in an application or patent, the 

Patent and Trademark Office, when 

necessary for purposes of an Office 

proceeding, may require an applicant, 

patentee, or owner to identify the 

inventive entity of the subject matter of 

each claim in the application or patent. 

Where appropriate, the invention dates 

of the subject matter of each claim and 

the ownership of the subject matter on 

the date of invention may be required of 

the applicant, patentee or owner. See 

also §§ 1.78(c) and 1.130. 

■ 12. Section 1.114 is amended by 

removing paragraphs (f), (g), and (h) and 

by revising paragraphs (a) and (d) to 

read as follows: 

§ 1.114 Request for continued 

examination. 

(a) If prosecution in an application is 

closed, an applicant may request 

continued examination of the 

application by filing a submission and 

the fee set forth in § 1.17(e) prior to the 

earliest of: 

(1) Payment of the issue fee, unless a 

petition under § 1.313 is granted; 

(2) Abandonment of the application; 

or 

(3) The filing of a notice of appeal to 

the U.S. Court of Appeals for the 

Federal Circuit under 35 U.S.C. 141, or 

the commencement of a civil action 

under 35 U.S.C. 145 or 146, unless the 

appeal or civil action is terminated. 

* * * * * 

(d) If an applicant timely files a 

submission and fee set forth in § 1.17(e), 

the Office will withdraw the finality of 

any Office action and the submission 

will be entered and considered. If an 

applicant files a request for continued 

examination under this section after 

appeal, but prior to a decision on the 

appeal, it will be treated as a request to 

withdraw the appeal and to reopen 

prosecution of the application before the 

examiner. An appeal brief (§ 41.37 of 

this title) or a reply brief (§ 41.41 of this 

title), or related papers, will not be 

considered a submission under this 

section. 

* * * * * 

§ 1.117 [Removed and Reserved] 

■ 13. Section 1.117 is removed and 

reserved. 

■ 14. Section 1.136 is amended by 

revising paragraph (a)(1) to read as 

follows: 

§ 1.136 Extensions of time. 

(a)(1) If an applicant is required to 

reply within a nonstatutory or shortened 

statutory time period, applicant may 

extend the time period for reply up to 

the earlier of the expiration of any 

maximum period set by statute or five 

months after the time period set for 

reply, if a petition for an extension of 

time and the fee set in § 1.17(a) are filed, 

unless: 

(i) Applicant is notified otherwise in 

an Office action; 

(ii) The reply is a reply brief 

submitted pursuant to § 41.41 of this 

title; 

(iii) The reply is a request for an oral 

hearing submitted pursuant to § 41.47(a) 

of this title; 

(iv) The reply is to a decision by the 

Board of Patent Appeals and 

Interferences pursuant to § 1.304 or to 

§ 41.50 or § 41.52 of this title; or 

(v) The application is involved in a 

contested case (§ 41.101(a) of this title). 

* * * * * 

■ 15. Section 1.142 is amended by 

removing paragraph (c) and by revising 

paragraph (a) to read as follows: 

§ 1.142 Requirement for restriction. 

(a) If two or more independent and 

distinct inventions are claimed in a 

single application, the examiner in an 

Office action will require the applicant 

in the reply to that action to elect an 

invention to which the claims will be 

restricted, this official action being 

called a requirement for restriction (also 

known as a requirement for division). 

Such requirement will normally be 

made before any action on the merits; 

however, it may be made at any time 

before final action. 

* * * * * 

■ 16. Section 1.145 is revised to read as 

follows: 

§ 1.145 Subsequent presentation of claims 

for different invention. 

If, after an Office action on an 

application, the applicant presents 

claims directed to an invention distinct 

from and independent of the invention 

previously claimed, the applicant will 

be required to restrict the claims to the 

invention previously claimed if the 

amendment is entered, subject to 

reconsideration and review as provided 

in §§ 1.143 and 1.144. 

§ 1.265 [Removed] 

■ 17. Section 1.265 is removed. 

■ 18. Section 1.495 is amended by 

revising paragraph (g) to read as follows: 

§ 1.495 Entering the national stage in the 

United States of America. 

* * * * * 

(g) The documents and fees submitted 

under paragraphs (b) and (c) of this 

section must be clearly identified as a 

submission to enter the national stage 

under 35 U.S.C. 371. Otherwise, the 

submission will be considered as being 

made under 35 U.S.C. 111(a). 

* * * * * 

§ 1.704 [Amended] 

■ 19. Section 1.704 is amended by 

removing existing paragraph (c)(11) and 

redesignating paragraph (c)(12) as 

paragraph (c)(11). 

Dated: October 7, 2009. 

David J. Kappos, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. E9–24667 Filed 10–13–09; 8:45 am] 

BILLING CODE 3510–16–P 

ENVIRONMENTAL PROTECTION 

AGENCY 

40 CFR Part 52 

[EPA–R05–OAR–2007–0908; FRL–8958–1] 

Approval and Promulgation of Air 

Quality Implementation Plans; Ohio 

Administrative Code Rule 3745–21–17 

Portable Fuel Containers 

AGENCY: Environmental Protection 

Agency (EPA). 

ACTION: Direct final rule. 

SUMMARY: The Ohio Environmental 

Protection Agency (Ohio EPA) 

submitted a revision to its State 

Implementation Plan (SIP) under the 

Clean Air Act (CAA) in order to reduce 

air pollution in Ohio. The SIP revision 

consists of a new regulation entitled 

Ohio’s Administrative Code Rule 3745– 

21–17 ‘‘Control of VOC Emissions from 

Portable Fuel Containers.’’ This rule 

impacts sale, use, and manufacture of 

Portable Fuel Containers (PFC) in the 

State of Ohio. Ohio EPA submitted this 

request for approval of this rule on 

August 7, 2007. EPA is approving this 

rule. 

DATES: This direct final rule will be 

effective December 14, 2009, unless EPA 

receives adverse comments by 

November 13, 2009. If adverse 

comments are received, EPA will 

publish a timely withdrawal of the 

direct final rule in the Federal Register 

informing the public that the rule will 

not take effect. 

ADDRESSES: Submit your comments, 

identified by Docket ID No. EPA–R05– 

OAR–2007–0908, by one of the 

following methods: 

1. www.regulations.gov: Follow the 

on-line instructions for submitting 

comments. 


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