UNITED STAT' DEPARTMENT OF COMMERCE
`Patent and Trademark Office
`Address: COMMISSIONER OF PATENTS AND TRADEMARKS
`Washington, D.C. 20231
`
`021967
`I HUNTON AND WILLIAMS
`1900 K STREET N W
`WASHINGTON DC 20006
`
`t!Jtr111/0321
`
`EXAMINER
`LUTHER,W
`I . PAPER NUMBER
`
`ART UNIT
`"..::.6':1':::1
`
`DATE MAILED:
`
`0:3/21/01
`
`Please find below and/or attached an Office communication concerning this application or
`proceeding.
`
`Commissioner of Patents and Trademarks
`
`PT0·90C (Rev. 2/95)
`
`1· Fne·copy
`
`APPLE EX. 1033
`Page 1
`
`

`

`•
`
`Application/Control Number: 08/485,507
`
`Art Unit: 2664
`
`•
`
`Page 2
`
`The reply filed on May 9, 2000, is not fully responsive to the prior Office action issued on July 7,
`
`1998, because of the following omission(s) or matter(s): the deficient May 9, 2000, reply failed
`
`to sufficiently supplement the deficient April 30, 1999, reply which failed to comply with the
`
`Administrative Requirement. See 3 7 CFR § 1.111.
`
`The applicants object strenuously to the Office's requirement that they review their hundred of
`
`applications, containing over ten thousand claims, and eliminate conflicting claims or else certify
`
`that there are no conflicting claims. The applicants argue that the USPTO requirement is
`
`"contrary to law" and constitutes substantive rulemaking absent notice and comment.
`
`In fact, under 37 C.F.R. § 1.63 and § 1.56, the applicants are required to 1) review and
`
`understand the contents of each specification, including all claims and amendments, and 2)
`
`eliminate conflicting claims or notify the Office of conflicting claims. Upon review by the
`
`Office of a sampling of the specifications and the thousands of claims, it is a fact that some of the
`
`claims are conflicting. Assuming the oaths made under 37 C.F.R. § 1.63, are sound, then the
`
`applicants must not be familiar with their own applications.
`
`These regulations do not shift the burden of examination onto the applicants, as the applicants
`
`have contended. The Office may examine each application regardless of the content of the
`
`applicants' certifications. However, the applicants must present claims properly. In re Ochiai et
`
`APPLE EX. 1033
`Page 2
`
`

`

`•
`
`Application/Control Number: 08/485,507
`
`Art Unit: 2664
`
`•
`
`Page 3
`
`al., 71 F.3d 1565, 1572 (Fed. Cir. 1995), citing In re Dillon, 919 F.2d 2d 688,695 (Fed. Cir.
`
`1990). The PTO regulations simply require that the applicants certify that they have reviewed
`
`and understand all of their own specifications, including claims and amendments, and that they
`
`either 1) cancel or withdraw unpatentable claims, or else 2) disclose to the Office all information
`
`material to the patentability of each claim. In short, the regulations require good faith filings by
`
`the applicants. The reiteration of these regulatory principles by the primary examiner, in the
`
`form of the Administrative Requirement, is not controversial. The Office merely asked for
`
`something the applicants have been and are required to do anyway, before being entitled to
`
`USPTO examination of their applications. Under the Administrative Requirement mailed in the
`
`Office action issued on July 7, 1998, the applicants are given reasonable choices:
`
`(1) file terminal disclaimers in each of the [related] applications terminally
`disclaiming each of the other ... applications, or;
`
`(2) provide an affidavit attesting to the fact that all claims in the [related]
`applications have been reviewed by [the applicants] and that no conflicting claims
`exists between the applications. [The applicants] should provide all relevant
`factual information including the specific steps taken to insure that no conflicting
`claims exist between the applications, or;
`
`(3) resolve all conflicts between claims in the [identified] applications by
`identifying how all the claims in the instant application are distinct and separate
`inventions from all the claims in the [related] applications. (Note: the five
`examples [i~ the Administrative Requirement Appendix] are merely illustrative of
`the overall problem. Only correcting the five identified conflicts would not
`satisfy the requirement.)
`
`It is not solely the burden of the Office, as the applicants imply, to review each of the over ten
`
`APPLE EX. 1033
`Page 3
`
`

`

`•
`
`Application/Control Number: 08/485,507
`
`Art Unit: 2664
`
`•
`
`Page 4
`
`thousand of the applicants' claims and determine, for each claim, whether the applicants are
`
`violating their regulatory duties of knowledge of claims and disclosure or elimination of
`
`conflicting material. Rather, the applicants have an initial and continuing burden to comply with
`
`37 C.F .R. § 1.56 and 1.63, regardless of whether the Office discovers that the applicants are in
`
`violation of the regulations under 3 7 C.F .R. § 1. 78(b ). Given documented evidence, through
`
`discovery of various conflicting claims, the applicants should review their compliance with 3 7
`
`C.F.R. § 1.56 and 1.63 (as well as§ 1.75, requiring that claims "differ substantially" and are not
`
`"unduly multiplied"). An Office requirement including a request for additional assurances is not
`
`only reasonable in view of the applicants own knowledge of over ten thousand claims, but
`
`advisable in the protection ofthe "public interest." 37 C.F.R. § 1.56(a).
`
`As the applicants assert, a substantive rule is one that "affects individual rights and obligations."
`
`Animal Legal Defense Fund. et al. v. Quigg. et al., 932 F.2d 920,927 (Fed. Cir. 1991). The
`
`applicants identify no statutory "right" that the Administrative Requirement abrogates. The
`
`applicants cannot credibly argue they have a "right" to file conflicting claims, or to be unaware
`
`of the contents of their own specifications, amendments, or claims. The applicants have no
`
`"right" to fail to remove conflicting claims from co-pending applications, and certainly, the
`
`applicants have no "right" to fail to notify the Office of conflicting claims. The applicants also
`
`have no "right" to shop among the USPTO examiners for conflicting interpretations of the
`
`applicants' claims, as implied by the petition under 37 C.F.R. § 1.181, filed on March 7, 2000, in
`
`APPLE EX. 1033
`Page 4
`
`

`

`•
`
`Application/Control Number: 08/485,507
`
`Art Unit: 2664
`
`•
`
`Page 5
`
`co-pending application no. 08/470,571, which demands an exercise of the supervisory authority
`
`of the Commissioner. See the co-pending application no. 08/470,571, Petition at page 32lines
`
`10-12.
`
`To the contrary, the applicants have an initial and continuing obligation to understand the
`
`contents of their own claims, and either eliminate conflicts or notify the Office of the conflicts.
`
`In fact, the additional option of terminal disclaimer, given the applicants in the Administrative
`
`Requirement, allows the applicants an option the USPTO is not required to offer. The USPTO
`
`could simply have required the applicants to review their over ten thousand of claims and either
`
`eliminate conflicts or certify that no conflicts exist.
`
`The Commissioner has the right to conduct "orderly proceedings within his office so long as he
`
`does not violate the statute." Ethicon. Inc .. v. Quigg, 849 F.2d 1422, 1428 (Fed. Cir. 1988). As
`
`The applicants have alleged no statutory rights that the Requirement abrogates, the
`
`Commissioner is well within his discretion to impose this procedural Administrative
`
`Requirement.
`
`APPLE EX. 1033
`Page 5
`
`

`

`,.
`
`•
`
`Application/Control Number: 08/485,507
`
`Art Unit: 2664
`
`•
`
`Page 6
`
`The applicants are given a TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS from
`
`the mailing date of this notice, whichever is longer, within which to supply the omission or
`
`correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE
`
`GRANTED UNDER 37 CFR § 1.136(a).
`
`Primary Examiner
`William Luther
`A.U. 2664
`
`APPLE EX. 1033
`Page 6
`
`

`

`•
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`•
`
`COMMISSIONER FOR PATENTS
`UNITED STATES PATENT AND TRADEMARK OFFICE
`WASHINGTON, D.C. 20231
`www.uspto.gov
`
`HUNTON & WILLIAMS
`1900 K STREET, N.W.
`12TH FLOOR
`WASHINGTON, D.C. 20006
`
`In re Application of
`John C. Harvey et al.
`Application No. 08/485,507
`Filed: June 7, 1995
`Attorney Docket No. 05634.0304
`
`Paper No. 27
`
`COPY MAILED
`
`MAY 1 6 2001
`OFFICE OF PETITIONS
`A/CPATENTS
`
`NOTICE
`
`This is a notice regarding your request for acceptance of a fee deficiency submission under 3 7
`CFR 1.28. On September 1, 1998, the Court of Appeals for the Federal Circuit held that 37 CFR
`1. 28( c) is the sole provision governing the time for correction of the erroneous payment of the
`issue fee as a small entity. See DH Technology v. Synergystex International. Inc. 154 F.3d
`1333, 47 USPQ2d 1865 (Fed. Cir. Sept. 1, 1998).
`
`The Office no longer investigates or rejects original or reissue applications under 3 7 CFR 1. 56.
`1098 Off. Gaz. Pat. Office 502 (January 3, 1989). Therefore, nothing in this Notice is intended
`to imply that an investigation was done.
`
`Inquiries related to this communication should be directed to the Office of Petitions Staff at (703)
`305-9285
`.
`
`This file is being forwarded to Technology Center 2600.
`
`~fl;/
`
`Irvin Dingle
`Petitions Examiner
`Office of Petitions
`Office of the Deputy Commissioner
`for Patent Examination Policy
`
`APPLE EX. 1033
`Page 7
`
`