IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT APPLICATION
`
`In re the Application of:
`
`EWING et al.
`
`Application No.: 111548,471
`
`Filed: October 11, 2006
`
`Atty. Docket No.: 7273-70199-03
`
`Title: "ELECTRICAL POWER
`DISTRIBUTION DEVICE HAVING
`A CURRENT DISPLAY"
`
`) Art Unit: 2154
`)
`) Examiner: Patel, Ashokkumar B.
`)
`) Confirmation No.: 5426
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Mail Stop Amendment
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPLY AFTER NON-FINAL ACTION
`
`Dear Sir:
`
`In response to the Non-Final Office Action having a mailing date of July
`
`14, 2008, please reconsider the above-identified application as follows:
`
`Remarks begin on page 2 of this paper.
`
`IPR Page 1
`
`Raritan v. Server Technology
`
`RARITAN EXHIBIT 1007
`
`

`
`Patent Application No. 11/548,471
`Reply dated October 7, 2008
`Office Action of July 14, 2008
`
`REMARKS
`
`Claims 1-23 are currently pending in the application. No claims have been
`
`added or canceled. Accordingly, claims 1-23 will be pending following the entry
`
`of this paper. Reconsideration of the present application is respectfully requested
`
`in view of the following remarks.
`
`The Obviousness-Type Double Patenting Rejections
`
`Claims 1-23 have been rejected on the ground of nonstatutory obviousness(cid:173)
`
`type double patenting as being unpatentable over claims 1-23 of U.S. Patent No.
`
`7,043.543. Claims 1-23 also have been rejected on the ground of nonstatutory
`
`obviousness-type double patenting as being unpatentable over claims 1-21 of U.S.
`
`Patent No. 7,171,461. Further, Claims 1-23 have been rejected on the ground of
`
`nonstatutory obviousness-type double patenting as being unpatentable over claims
`
`1-24 of co-pending U.S. Patent Application No. 111548,187.
`
`Submitted herewith is a terminal disclaimer with respect to the noted
`
`patents and co-pending application. Therefore, it is respectfully requested that the
`
`double patenting rejections be withdrawn from claims 1-23.
`
`Authorization to Charge Fees
`
`No additional fees are believed to be due with this response. In the event
`
`any such fees are due, please debit Deposit Account 08-2623.
`
`In the event that a petition for extension oftime under 37 CFR §1.136(a) is
`
`required to have this reply considered and such a petition does not otherwise
`
`accompany this reply, please consider this a petition for an extension of time for
`
`the required number of months and authorization to debit Deposit Account 08-2623
`
`for the required fee.
`
`- 2 -
`
`IPR Page 2
`
`

`
`Patent Application No. 11/548,471
`Reply dated October 7, 2008
`Office Action of July 14, 2008
`
`Conclusion
`
`The application now appearing to be in form for allowance, reconsideration
`
`and allowance thereof is respectfully requested. If a telephone conversation will
`
`further the prosecution and/or expedite allowance, the examiner is invited to
`
`contact the undersigned attorney.
`
`Respectfully submitted,
`
`HOLLAND & HART LLP
`
`By:~4~
`
`Kenneth C. Winterton
`Registration No. 48,040
`P.O. Box 8749
`Denver, Colorado 80201-8749
`(303) 473-2700, x2717
`
`Date:
`
`3935158_l.DOC
`
`- 3 -
`
`IPR Page 3
`
`

`
`PTO/SB/25 (09-08)
`Approved for use through 10/31/2008. OMB 0651-0031
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no p_ersons are required to respond to a collection of information unless it displays a valid OMB control number.
`
`TERMINAL DISCLAIMER TO OBVIATE A PROVISIONAL DOUBLE PATENTING I Docket Number (Optional)
`
`REJECTION OVER A PENDING "REFERENCE" APPLICATION
`
`7273-70199-03
`
`In reApplication of: Ewing et al.
`
`Application No.: 11/548,471
`
`Filed: October 11, 2006
`
`For ELECTRICAL POWER DISTRIBUTION DEVICE HAVING A CURRENT DISPLAY
`
`percent interest in the instant application hereby disclaims,
`100
`, of
`The owner*, Server Technology, Inc.
`except as provided below, the terminal part of the statutory term of any patent granted on the instant application which would extend beyond
`the expiration date of the full statutory term of any patent granted on pending reference Application Number 11/548 187
`, filed
`, as such term is defined in 35 U.S.C. 154 and 173, and as the term of any patent granted on said reference
`on October 10 2006
`application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application. The owner
`hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and any patent
`granted on the reference application are commonly owned. This agreement runs with any patent granted on the instant application and is
`binding upon the grantee, its successors or assigns.
`
`In making the above disclaimer, the owner does not disclaim the terminal part of any patent granted on the instant application that would
`extend to the expiration date of the full statutory term as defined in 35 U.S.C. 154 and 173 of any patent granted on said reference
`application, "as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the
`grant of any patent on the pending reference application," in the event that: any such patent: granted on the pending reference application:
`expires for failure to pay a maintenance fee, is held unenforceable, is found invalid by a court of competent jurisdiction, is statutorily disclaimed
`in whole or terminally disclaimed under 37 CFR 1.321, has all claims canceled by a reexamination certificate, is reissued, or is in any manner
`terminated prior to the expiration of its full statutory term as shortened by any terminal disclaimer filed prior to its grant.
`
`Check either box 1 or 2 below, if appropriate.
`1. 0 For submissions on behalf of a business/organization (e.g., corporation, partnership, university, government agency,
`etc.), the undersigned is empowered to act on behalf of the business/organization.
`
`I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information and
`belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so
`made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false
`statements may jeopardize the validity of the application or any patent issued thereon.
`2. [2] The undersigned is an attorney or agent of record. Reg. No. _4'-'8'-'-,0"-4-"0::.._ ____ _
`
`Kennef~ C.
`
`Signature
`
`V,;,fer/o,..
`
`Typed or printed name
`
`[2] Terminal disclaimer fee under 37 CFR 1.20{d) is included.
`
`Telephone Number
`
`WARNING: Information on this form may become public. Credit card information should not
`be included on this form. Provide credit card information and authorization on PT0-2038.
`
`*Statement under 37 CFR 3.73(b) is required if terminal disclaimer is signed by the assignee (owner).
`Form PTO/SB/96 may be used for making this statement. See MPEP §-324.
`This collect1on of mformat1on 1s reqUired by 37 CFR 1.321. The mformat1on IS reqUired to obtam or retain a benefit by the public Which 1s to f1le (and by the USPTO
`to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 12 minutes to complete,
`including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on
`the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and
`Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS
`ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`
`If you need assistance in completing the form, caii1-800-PT0-9199 and select option 2.
`
`IPR Page 4
`
`

`
`Privacy Act Statement
`
`The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection
`with your submission of the attached form related to a patent application or patent. Accordingly,
`pursuant to the requirements of the Act, please be advised that: (1) the general authority for the
`collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary;
`and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark
`Office is to process and/or examine your submission related to a patent application or patent. If you do
`not furnish the requested information, the U.S. Patent and Trademark Office may not be able to
`process and/or examine your submission, which may result in termination of proceedings or
`abandonment of the application or expiration of the patent.
`
`The information provided by you in this form will be subject to the following routine uses:
`
`1. The information on this form will be treated confidentially to the extent allowed under the
`Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from
`this system of records may be disclosed to the Department of Justice to determine whether
`disclosure of these records is required by the Freedom of Information Act.
`2. A record from this system of records may be disclosed, as a routine use, in the course of
`presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to
`opposing counsel in the course of settlement negotiations.
`3. A record in this system of records may be disclosed, as a routine use, to a Member of
`Congress submitting a request involving an individual, to whom the record pertains, when the
`individual has requested assistance from the Member with respect to the subject matter of the
`record.
`4. A record in this system of records may be disclosed, as a routine use, to a contractor of the
`Agency having need for the information in order to perform a contract. Recipients of
`information shall be required to comply with the requirements of the Privacy Act of 197 4, as
`amended, pursuant to 5 U.S.C. 552a(m).
`5. A record related to an International Application filed under the Patent Cooperation Treaty in
`this system of records may be disclosed, as a routine use, to the International Bureau of the
`World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty.
`6. A record in this system of records may be disclosed, as a routine use, to another federal
`agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to
`the Atomic Energy Act (42 U.S.C. 218(c)).
`7. A record from this system of records may be disclosed, as a routine use, to the Administrator,
`General Services, or his/her designee, during an inspection of records conducted by GSA as
`part of that agency's responsibility to recommend improvements in records management
`practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall
`be made in accordance with the GSA regulations governing inspection of records for this
`purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not
`be used to make determinations about individuals.
`8. A record from this system of records may be disclosed, as a routine use, to the public after
`either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent
`pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37
`CFR 1.14, as a routine use, to the public if the record was filed in an application which
`became abandoned or in which the proceedings were terminated and which application is
`referenced by either a published application, an application open to public inspection or an
`issued patent.
`9. A record from this system of records may be disclosed, as a routine use, to a Federal, State,
`or local law enforcement agency, if the USPTO becomes aware of a violation or potential
`violation of law or regulation.
`
`IPR Page 5
`
`

`
`PTO/SB/26 (09-08)
`Approved for use through 10/31/2008. OMB 0651-0031
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`TERMINAL DISCLAIMER TO OBVIATE A DOUBLE PATENTING
`REJECTION OVER A "PRIOR" PATENT
`
`I Docket Number (Optional)
`
`7273-70199-03
`
`In re Application of: Ewing et al.
`
`Application No.: 111548,471
`
`Filed: October 11, 2006
`
`For: ELECTRICAL POWER DISTRIBUTION DEVICE HAVING A CURRENT DISPLAY
`
`percent interest in the instant application hereby disclaims,
`100
`, of
`The owner*, Server Technoloay Inc
`except as provided below, the terminal part of the statutory term of any patent granted on the instant application which would ex1end beyond
`as the term of said prior patent is defined in 35 U.S.C. 154
`the expiration date of the full statutory term prior patent No. 7 171 461
`and 173, and as the term of said prior patent is presently shortened by any terminal disclaimer. The owner hereby agrees that any patent so
`granted on the instant application shall be enforceable only for and during such period that it and the prior patent are commonly owned. This
`agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.
`
`In making the above disclaimer, the owner does not disclaim the terminal part of the term of any patent granted on the instant application that
`would extend to the expiration date of the full statutory term as defined in 35 U.S.C. 154 and 173 of the prior patent, "as the term of said prior
`patent is presently shortened by any terminal disclaimer," in the event that said prior patent later:
`expires for failure to pay a maintenance fee;
`is held unenforceable;
`is found invalid by a court of competent jurisdiction;
`is statutorily disclaimed in whole or terminally disclaimed under 37 CFR 1.321;
`has all claims canceled by a reexamination certificate;
`is reissued; or
`is in any manner terminated prior to the expiration of its full statutory term as presently shortened by any terminal disclaimer.
`
`Check either box 1 or 2 below, if appropriate.
`
`1. D For submissions on behalf of a business/organization (e.g., corporation, partnership, university, government agency,
`
`etc.), the undersigned is empowered to act on behalf of the business/organization.
`
`I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information and
`belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so
`made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false
`statements may jeopardize the validity of the application or any patent issued thereon.
`
`2. 0 The undersigned is an attorney or agent of record. Reg. No._4.:.:8::.c•::..04.:.:0::..._ ____ _
`
`Signature
`
`C. w,·nt~'la"
`
`Typed or printed name
`
`J6]- 't'?J-,2..;>~
`Telephone Number
`
`0
`
`Terminal disclaimer fee under 37 CFR 1.20(d) included.
`
`WARNING: Information on this form may become public. Credit card information should not
`be included on this form. Provide credit card information and authorization on PT0-2038.
`
`*Statement under 37 CFR 3. 73(b) is required if terminal disclaimer is signed by the assignee (owner).
`Form PTO/SB/96 may be used for making this certification. See MPEP § 324.
`
`ThiS collection of mformat1on 1s requ1red by 37 CFR 1.321. The 1nformat1on IS requ1red to obta1n or reta1n a benef1t by the public wh1ch 1s to f1le (and by the USPTO
`to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 12 minutes to complete,
`including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments
`on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent
`and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS
`ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`
`If you need assistance in completing the form, call 1-800-PT0-9199 and select option 2.
`
`IPR Page 6
`
`

`
`Privacy Act Statement
`
`The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection
`with your submission of the attached form related to a patent application or patent. Accordingly,
`pursuant to the requirements of the Act, please be advised that: (1) the general authority for the
`collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary;
`and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark
`Office is to process and/or examine your submission related to a patent application or patent. If you do
`not furnish the requested information, the U.S. Patent and Trademark Office may not be able to
`process and/or examine your submission, which may result in termination of proceedings or
`abandonment of the application or expiration of the patent.
`
`The information provided by you in this form will be subject to the following routine uses:
`
`1. The information on this form will be treated confidentially to the extent allowed under the
`Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from
`this system of records may be disclosed to the Department of Justice to determine whether
`disclosure of these records is required by the Freedom of Information Act.
`2. A record from this system of records may be disclosed, as a routine use, in the course of
`presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to
`opposing counsel in the course of settlement negotiations.
`3. A record in this system of records may be disclosed, as a routine use, to a Member of
`Congress submitting a request involving an individual, to whom the record pertains, when the
`individual has requested assistance from the Member with respect to the subject matter of the
`record.
`4. A record in this system of records may be disclosed, as a routine use, to a contractor of the
`Agency having need for the information in order to perform a contract. Recipients of
`information shall be required to comply with the requirements of the Privacy Act of 197 4, as
`amended, pursuant to 5 U.S.C. 552a(m).
`5. A record related to an International Application filed under the Patent Cooperation Treaty in
`this system of records may be disclosed, as a routine use, to the International Bureau of the
`World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty.
`6. A record in this system of records may be disclosed, as a routine use, to another federal
`agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to
`the Atomic Energy Act (42 U.S.C. 218(c)).
`7. A record from this system of records may be disclosed, as a routine use, to the Administrator,
`General Services, or his/her designee, during an inspection of records conducted by GSA as
`part of that agency's responsibility to recommend improvements in records management
`practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall
`be made in accordance with the GSA regulations governing inspection of records for this
`purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not
`be used to make determinations about individuals.
`8. A record from this system of records may be disclosed, as a routine use, to the public after
`either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent
`pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37
`CFR 1.14, as a routine use, to the public if the record was filed in an application which
`became abandoned or in which the proceedings were terminated and which application is
`referenced by either a published application, an application open to public inspection or an
`issued patent.
`9. A record from this system of records may be disclosed, as a routine use, to a Federal, State,
`or local law enforcement agency, if the USPTO becomes aware of a violation or potential
`violation of law or regulation.
`
`IPR Page 7
`
`

`
`PTO/SB/26 (09-08)
`Approved for use through 10/31/2008. OMB 0651-0031
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`TERMINAL DISCLAIMER TO OBVIATE A DOUBLE PATENTING
`REJECTION OVER A "PRIOR" PATENT
`
`I Docket Number (Optional)
`
`7273-70199-03
`
`In reApplication of: Ewing et al.
`
`Application No.: 111548,471
`
`Filed: October 11, 2006
`
`For: ELECTRICAL POWER DISTRIBUTION DEVICE HAVING A CURRENT DISPLAY
`
`percent interest in the instant application hereby disclaims,
`1 oo
`, of
`The owner*, Server Technoloay Inc
`except as provided below, the terminal part of the statutory term of any patent granted on the instant application which would extend beyond
`as the term of said prior patent is defined in 35 U.S.C. 154
`the expiration date of the full statutory term prior patent No. 7 043 543
`and 173, and as the term of said prior patent is presently shortened by any terminal disclaimer. The owner hereby agrees that any patent so
`granted on the instant application shall be enforceable only for and during such period that it and the prior patent are commonly owned. This
`agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.
`
`In making the above disclaimer, the owner does not disclaim the terminal part of the term of any patent granted on the instant application that
`would extend to the expiration date of the full statutory term as defined in 35 U.S.C. 154 and 173 of the prior patent, "as the term of said prior
`patent is presently shortened by any terminal disclaimer," in the event that said prior patent later:
`expires for failure to pay a maintenance fee;
`is held unenforceable;
`is found invalid by a court of competent jurisdiction;
`is statutorily disclaimed in whole or terminally disclaimed under 37 CFR 1.321;
`has all claims canceled by a reexamination certificate;
`is reissued; or
`is in any manner terminated prior to the expiration of its full statutory term as presently shortened by any terminal disclaimer.
`
`Check either box 1 or 2 below, if appropriate.
`
`1. D For submissions on behalf of a business/organization (E!.g., corporation, partnership, university, government agency,
`
`etc.), the undersigned is empowered to act on behalf of the business/organization.
`
`I hereby declare that all statements made herein of rny own knowledge are true and that all statements made on information and
`belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so
`made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false
`statements may jeopardize the validity of the application or any patent issued thereon.
`2. [ZJ The undersigned is an attorney or agent of record. REig. No._4_:_8=..•c::0-..:4.::.0 _____ _
`
`Signature
`
`Typed or printed name
`
`OGI. 2-l~p
`
`Date
`
`'Jd$ .. 1(71".1..,.
`
`Telephone Number
`
`[2] Terminal disclaimer fee under 37 CFR 1.20(d) included.
`
`WARNING: Information on this form may become public. Credit card information should not
`be included on this form. Provide credit card information and authorization on PT0-2038.
`
`*Statement under 37 CFR 3.73(b) is required if terminal disclaimer is signed by the assignee (owner).
`Form PTO/SB/96 may be used for making this certification. See MPEP § 324.
`
`Th1s collect1on of ~nformat1on 1s requ1red by 37 CFR 1.321. The 1nformal1on IS reqUired to obtain or retain a benefit by the public wh1ch IS to f1le (and by the USPTO
`to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 12 minutes to complete,
`including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments
`on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent
`and Trademark Office, U.S. Department of Commerce, P 0. Box 1450, Alexandria, VA 22313-1450 DO NOT SEND FEES OR COMPLETED FORMS TO THIS
`ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`
`If you need assistance in completing the form, call 1-800-PT0-9199 and select option 2.
`
`IPR Page 8
`
`

`
`Privacy Act Statement
`
`The Privacy Act of 197 4 (P .L. 93-579) requires that you be given certain information in connection
`with your submission of the attached form related to a patent application or patent. Accordingly,
`pursuant to the requirements of the Act, please be advised that: (1) the general authority for the
`collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary;
`and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark
`Office is to process and/or examine your submission related to a patent application or patent. If you do
`not furnish the requested information, the U.S. Patent and Trademark Office may not be able to
`process and/or examine your submission, which may result in termination of proceedings or
`abandonment of the application or expiration of the patent.
`
`The information provided by you in this form will be subject to the following routine uses:
`
`1. The information on this form will be treated confidentially to the extent allowed under the
`Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from
`this system of records may be disclosed to the Department of Justice to determine whether
`disclosure of these records is required by the Freedom of Information Act.
`2. A record from this system of records may be disclosed, as a routine use, in the course of
`presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to
`opposing counsel in the course of settlement negotiations.
`3. A record in this system of records may be disclosed, as a routine use, to a Member of
`Congress submitting a request involving an individual, to whom the record pertains, when the
`individual has requested assistance from the Member with respect to the subject matter of the
`record.
`4. A record in this system of records may be disclosed, as a routine use, to a contractor of the
`Agency having need for the information in order to perform a contract. Recipients of
`information shall be required to comply with the requirements of the Privacy Act of 197 4, as
`amended, pursuant to 5 U.S.C. 552a(m).
`5. A record related to an International Application filed under the Patent Cooperation Treaty in
`this system of records may be disclosed, as a routine use, to the International Bureau of the
`World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty.
`6. A record in this system of records may be disclosed, as a routine use, to another federal
`agency for purposes of National Security review (35 U .S.C. 181) and for review pursuant to
`the Atomic Energy Act (42 U.S.C. 218(c)).
`7. A record from this system of records may be disclosed, as a routine use, to the Administrator,
`General Services, or his/her designee, during an inspection of records conducted by GSA as
`part of that agency's responsibility to recommend improvements in records management
`practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall
`be made in accordance with the GSA regulations governing inspection of records for this
`purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not
`be used to make determinations about individuals.
`8. A record from this system of records may be disclosed, as a routine use, to the public after
`either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent
`pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37
`CFR 1.14, as a routine use, to the public if the record was filed in an application which
`became abandoned or in which the proceedings were terminated and which application is
`referenced by either a published application, an application open to public inspection or an
`issued patent.
`9. A record from this system of records may be disclosed, as a routine use, to a Federal, State,
`or local law enforcement agency, if the USPTO becomes aware of a violation or potential
`violation of law or regulation.
`
`IPR Page 9