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`
`Federal Register / Vol. 61, No. 161 / Monday, August 19, 1996 / Rules and Regulations
`
`Paperwork Reduction Act
`This rule does not contain
`information collections requirements
`that require approval by OMB under the
`Paperwork Reduction Act (44 U.S.C.
`3507 et seq.).
`Regulatory Flexibility Act
`The Department of the Interior has
`determined that this rule will not have
`a significant economic impact on a
`substantial number of small entities
`under the Regulatory Flexibility Act (5
`U.S.C. 601 et seq.). The State submittal
`which is the subject of this rule is based
`upon counterpart Federal regulations for
`which an economic analysis was
`prepared and certification made that
`such regulations would not have a
`significant economic effect upon a
`substantial number of small entities.
`Accordingly, this rule will ensure that
`existing requirements previously
`promulgated by OSM will be
`implemented by the State. In making the
`determination as to whether this rule
`would have a significant economic
`impact, the Department relied upon the
`data and assumptions for the
`counterpart Federal regulations.
`Unfunded Mandates
`This rule will not impose a cost of
`$100 million or more in any given year
`on any governmental entity or the
`private sector.
`List of Subjects in 30 CFR Part 946
`Intergovernmetal relations, Surface
`mining, Underground mining.
`Dated: July 30, 1996.
`Allen D. Klein,
`Regional Director, Appalachian Regional
`Coordinating Center.
`For the reasons set out in the
`preamble, title 30, chapter VII,
`subchapter T of the Code of Federal
`Regulations is amended as set forth
`below:
`PART 946—VIRGINIA
`1. The authority citation for part 946
`continues to read as follows:
`Authority: 30 U.S.C. 1201 et seq.
`2. In § 946.15, paragraph (kk) is added
`to read as follows:
`§ 946.15 Approval of regulatory program
`amendments
`*
`*
`*
`*
`*
`(kk) The amendment to the Virginia
`program concerning the sudden release
`of accumulated water from underground
`coal mine voids as submitted to OSM on
`April 17, 1996, is approved effective
`August 19, 1996.
`[FR Doc. 96–21083 Filed 8–16–96; 8:45 am]
`BILLING CODE 4310–05–M
`
`DEPARTMENT OF COMMERCE
`Patent and Trademark Office
`37 CFR Part 1
`[Docket No: 950620162–6014–02]
`RIN 0651–AA75
`Miscellaneous Changes in Patent
`Practice
`AGENCY: Patent and Trademark Office,
`Commerce.
`ACTION: Final rule.
`SUMMARY: The Patent and Trademark
`Office (Office) is amending the rules of
`practice in patent cases to implement a
`number of miscellaneous changes
`proposed in the rulemaking entitled
`‘‘Changes to Implement 18-Month
`Publication of Patent Applications’’
`(Notice of Proposed Rulemaking),
`published in the Federal Register at 60
`FR 42352 (August 15, 1995), and in the
`Patent and Trademark Office Official
`Gazette 1177 Off. Gaz. Pat. Office 61
`(August 15, 1995), that are not directly
`related to the 18-month publication of
`patent applications. While the proposed
`rule changes in the Notice of Proposed
`Rulemaking were designed primarily to
`implement the changes in practice
`related to the publication of patent
`applications provided for in H.R. 1733,
`these miscellaneous proposed changes
`clarify current rules of practice, without
`regard to the publication of patent
`applications.
`DATES: Effective Date: September 23,
`1996.
`Applicability Date: Sections 1.52 (a)
`and (b), 1.58, 1.72 (b), 1.75 (g), (h) and
`(i), 1.77, 1.84 (c), (f), (g) and (x), 1.96,
`1.154, and 1.163 of 37 CFR apply to
`applications filed on or after September
`23, 1996.
`FOR FURTHER INFORMATION CONTACT:
`Stephen G. Kunin by telephone at (703)
`305–8850, by facsimile at (703) 305–
`8825, by electronic mail at
`rbahr@uspto.gov, or Jeffrey V. Nase by
`telephone at (703) 305–9285, or by mail
`marked to the attention of Stephen G.
`Kunin, addressed to the Assistant
`Commissioner for Patents, Washington,
`D.C. 20231. For copies of the forms
`discussed in this final rule package,
`contact the Customer Service Center of
`the Office of Initial Patent Examination
`at (703) 308–1214.
`SUPPLEMENTARY INFORMATION: This final
`rule package is designed to implement
`the miscellaneous changes set forth in
`the proposed rulemaking entitled
`‘‘Changes to Implement 18-Month
`Publication of Patent Applications’’
`(Notice of Proposed Rulemaking) that
`are not directly related to 18-month
`
`publication of patent applications and
`that are considered desirable even in the
`absence of an 18-month publication
`system.
`The Notice of Proposed Rulemaking
`indicated that, in addition to
`implementing the 18-month publication
`of patent applications, the Office also
`proposed to: (1) Clarify which
`applications claiming the benefit of
`prior applications, or which prior
`applications for which a benefit is
`claimed in a later application, will be
`preserved in confidence; (2) amend the
`rules pertaining to the format and
`standards for application papers and
`drawings to improve the standardization
`of patent applications; (3) provide for
`those instances in which inventions of
`a pending application or patent under
`reexamination and inventions of a
`patent held by a single party are not
`identical, but not patentably distinct; (4)
`clarify the practice for the delivery or
`mailing of patents; (5) expedite the entry
`of international applications into the
`national stage; and (6) amend a number
`of rules for consistency and clarity. The
`Notice of Proposed Rulemaking stated
`that these proposed rule changes may be
`adopted as final rules even in the
`absence of an 18-month publication
`system, and advised interested persons
`to comment on any proposed rule
`change, regardless of whether H.R. 1733
`is enacted.
`To avoid delays in the
`implementation of rule changes
`considered desirable even in the
`absence of an 18-month publication
`system, this final rule package provides
`for changes to 37 CFR 1.12(c), 1.14, 1.52
`(a) and (b), 1.54, 1.58, 1.62 (e) and (f),
`1.72(b), 1.75(g), 1.77, 1.78 (a) and (c),
`1.84 (c), (f), (g) and (x), 1.96, 1.97, 1.107,
`1.110, 1.131, 1.132, 1.154, 1.163, 1.291,
`1.292, 1.315, 1.321 and 1.497, and adds
`new §§ 1.5(f), 1.75 (h) and (i), and 1.130,
`all of which are based upon the changes
`proposed in the Notice of Proposed
`Rulemaking.
`Implementation of 18-Month
`Publication Held in Abeyance Pending
`Congressional Action on H.R. 1733
`
`The Notice of Proposed Rulemaking
`also proposed changes to 37 CFR 1.4,
`1.5(a), 1.9, 1.11, 1.12 (a) and (b), 1.13,
`1.16, 1.17, 1.18, 1.19, 1.20, 1.24, 1.51,
`1.52(d), 1.53, 1.55, 1.60, 1.78(a), 1.84(j),
`1.85, 1.98, 1.108, 1.136, 1.138, 1.492,
`1.494, 1.495, 1.701, 1.808, 3.31, 5.1, new
`§§ 1.5(g), 1.306 through 1.308 and 5.9,
`
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`and further changes to §§ 1.14, 1.54,
`1.62, 1.107, 1.131, 1.132, 1.291 and
`1.292 to implement the 18-month
`publication of patent applications as
`contained in H.R. 1733 and provide
`procedures for the treatment of national
`security classified applications. The
`adoption of changes to these rules is
`held in abeyance pending Congressional
`action on H.R. 1733.
`The proposed rule changes in the
`Notice of Proposed Rulemaking to
`provide new procedures for the
`treatment of national security classified
`applications are also being held in
`abeyance. These proposed rule changes
`are separable from the implementation
`of 18-month publication; however, they
`are sufficiently related to the
`implementation of 18-month
`publication that they are also being held
`in abeyance pending Congressional
`action on H.R. 1733.
`In the event that H.R. 1733 is enacted,
`a final rule package to implement this
`legislation will be published. Final rules
`to implement 18-month publication of
`patent applications based upon the
`Notice of Proposed Rulemaking and the
`comments received in response to the
`Notice of Proposed Rulemaking may be
`adopted without either an additional
`public hearing or an additional proposal
`being published for comment.
`Implementation of the Miscellaneous
`Changes Proposed in the Notice of
`Proposed Rulemaking
`The following paragraphs of this
`section include: (1) A discussion of the
`rules being added or amended in this
`final rule package, (2) the reasons for
`those additions and amendments, and
`(3) an analysis of the comments received
`in response to the Notice of Proposed
`Rulemaking.
`Changes to Proposed Rules
`These final rules contain a number of
`changes to the text of the rules as
`proposed for comment. The significant
`changes are discussed below.
`Familiarity with the Notice of Proposed
`Rulemaking is assumed.
`Sections 1.14 (a) and (b) have been re-
`written for clarity. Section 1.14(a)(1)
`provides that patent applications are
`generally preserved in confidence.
`Section 1.14(a)(2) sets forth the
`circumstances under which status
`information concerning an application
`may be supplied, and § 1.14(a)(3) sets
`forth the circumstances under which
`access to, or copies of, an application
`may be provided. Section 1.14(b)
`provides that abandoned applications
`may be destroyed after 20 years from
`their filing date. The reference to
`paragraph (b) in § 1.14(e) has been
`
`deleted for consistency with the changes
`to paragraphs (a) and (b) of § 1.14.
`Section 1.52(a) is being changed to
`provide that all papers which are to
`become a part of the permanent records
`of the Patent and Trademark Office must
`be legibly ‘‘written either by a
`typewriter or mechanical printer in
`permanent dark ink or its equivalent,’’
`rather than ‘‘typed in permanent dark
`ink.’’ This change will permit the filing
`of papers printed by any computer
`operated printer, such as a laser printer
`which uses toner rather than ink, and
`will avoid a conflict between § 1.52(a)
`and Patent Cooperation Treaty (PCT)
`Rule 11.9. The phrase ‘‘when required
`by the Office’’ was also added to
`§ 1.52(a).
`Section 1.52(b) is being changed to
`provide that: (1) The application papers
`must be plainly written with each page
`printed on only one side of a sheet of
`paper, with the claim or claims
`commencing on a separate sheet and the
`abstract commencing on a separate
`sheet; (2) the lines of the specification,
`and any amendments to the
`specification, must be 11⁄2 or double
`spaced; and (3) the pages of the
`specification including claims and
`abstract must be numbered
`consecutively, starting with 1, the
`numbers being centrally located above
`or preferably, below, the text. This
`change will clarify: (1) The separate
`sheet requirement for both the claims
`and abstract, (2) that the lines of the
`papers not comprising the specification
`and amendments thereto need not be
`11⁄2 or double spaced, and (3) that the
`specification, and not the transmittal
`sheets or other forms, must be
`numbered.
`Section 1.58 is being changed to
`provide that chemical and mathematical
`formulae and tables must be presented
`in compliance with §§ 1.52 (a) and (b),
`except that chemical and mathematical
`formulae or tables may be placed in a
`landscape orientation if they cannot be
`presented satisfactorily in a portrait
`orientation. This replaces the
`requirement that ‘‘[t]o facilitate camera
`copying when printing, the width of
`formulas and tables as presented should
`be limited normally to 12.7 cm. (5
`inches) so that it may appear as a single
`column in the printed patent.’’
`However, chemical and mathematical
`formulae and tables must still otherwise
`comply with §§ 1.52 (a) and (b). This
`change will avoid a conflict between
`§ 1.58 and PCT Rule 11.10(d). Section
`1.58 is also being changed to require
`‘‘0.21 cm.’’ rather than ‘‘2.1 mm.’’ to
`ensure consistency.
`Section 1.72 is being changed to
`provide that the abstract must
`
`commence on a separate sheet,
`preferably following the claims. This
`change will avoid renumbering pages of
`a specification submitted in the
`arrangement set forth in § 1.77 when
`filing the application as an international
`application.
`Section 1.75(h) is being changed to
`provide that the claim or claims must
`commence on a separate sheet. This
`change will clarify that § 1.75 requires
`that the claim or claims commence or
`begin on a separate sheet, rather than
`requiring that all of the claims must be
`on a single separate sheet or that each
`claim must be on a separate sheet.
`Section 1.77 is being changed to
`position the abstract as element ‘‘(12)’’
`following the claims, rather than
`element ‘‘(3)’’ prior to the first page of
`the specification to conform to § 1.72.
`Section 1.78(a)(2) is being changed to
`replace the reference to § 1.14(b) with a
`reference to § 1.14(a).
`Section 1.78(c) is being changed to
`replace the phrase ‘‘[w]here an
`application or a patent under
`reexamination and an application or a
`patent’’ with the phrase ‘‘[w]here an
`application or a patent under
`reexamination and at least one other
`application,’’ since conflicting claims
`between an application or a patent
`under reexamination and a patent will
`be provided for in new § 1.130. Section
`1.78(c) is also being changed to delete
`the sentence ‘‘[i]n addition to making
`said statement, the assignee may also
`explain why an interference should or
`should not be declared,’’ since the
`Office will not, unless good cause is
`shown, declare or continue an
`interference when the application(s) and
`patent are owned by a single party.
`Section 1.78(d) is removed. The
`provisions of § 1.78(d), as proposed, are
`in new § 1.130(b), since § 1.130 provides
`for conflicting claims between an
`application or a patent under
`reexamination and a patent.
`Section 1.84(x) is being changed from
`‘‘[n]o holes should be provided in the
`drawings sheets’’ to ‘‘[n]o holes should
`be made by the applicant in the drawing
`sheets’’ to clarify that the application
`papers, including drawings, should be
`submitted by the applicant without
`holes provided therein, but that the
`Office will drill holes through the
`application papers during the pre-
`examination processing of the
`application.
`Section 1.96(b) is being changed to
`provide that a listing submitted as part
`of the specification ‘‘must be direct
`printouts (i.e., not copies) from the
`computer’s printer’’ for clarity.
`Section 1.96(c) is being changed to
`substitute a reference to 36 CFR Part
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`
`1230 (Micrographics) for the
`enumerated American National
`Standards Institute (ANSI) and National
`Micrographics Association (NMA)
`standards. As 36 CFR Part 1230 sets
`forth the micrographic requirements for
`government records, it is appropriate to
`reference this provision, rather than
`promulgate separate standards for
`micrographics employed in patent
`applications.
`Section 1.97 is being changed to
`delete any reference to a reexamination
`proceeding or a patent owner. The
`submission of an information disclosure
`statement during a reexamination
`proceeding is governed by § 1.555(a).
`Section 1.97(a) is being changed from
`‘‘[i]n order for an applicant for patent or
`for reissue of a patent to have
`information considered by the Office
`during the pendency of a patent
`application, an information disclosure
`statement in compliance with § 1.98
`should be filed in accordance with this
`section’’ to ‘‘[i]n order for an applicant
`for a patent or for a reissue of a patent
`to have an information disclosure
`statement in compliance with § 1.98
`considered by the Office during the
`pendency of the application, it must
`satisfy paragraph (b), (c), or (d) of this
`section’’ for clarity. Sections 1.97 (c)
`and (d) are also being changed to clarify
`the conditions in § 1.97(c) under which
`a certification as specified in § 1.97(e) or
`the fee set forth in § 1.17(p) is required,
`and the conditions in § 1.97(d) under
`which a certification as specified in
`§ 1.97(e), a petition, and the petition fee
`set forth in § 1.17(i) are required.
`Section 1.110 is amended to change
`the reference to § 1.78(d) to a reference
`to § 1.130 for consistency.
`The proposed addition of a new
`§ 1.131(a)(3) is being withdrawn in this
`final rule package. This proposed
`change, as well as the provisions of
`former § 1.78(d), has been re-written as
`a new § 1.130. New § 1.130(a) will
`provide a procedure for the
`disqualification of a commonly owned
`patent claiming a patentably indistinct
`but not identical invention. New
`§ 1.130(b) will include the provisions of
`former § 1.78(d).
`Section 1.131(a) is being changed to
`replace the phrase ‘‘U.S. patent to
`another’’ with ‘‘U.S. patent to another or
`others.’’
`Section 1.154(a)(7) is being changed
`to add ‘‘[f]eature’’ prior to
`‘‘[d]escription,’’ and § 1.154(a)(8) is
`being changed to add ‘‘a single’’ prior to
`‘‘claim.’’
`Section 1.163 is being changed to
`position the abstract as element ‘‘(11)’’
`following the claims, rather than
`element ‘‘(3)’’ prior to the first page of
`
`the specification. This change will
`parallel the change to § 1.77. In
`addition, § 1.163(c)(10) is being changed
`to add ‘‘a single’’ prior to ‘‘claim.’’
`Section 1.497(b)(2) is being changed
`to provide that ‘‘[i]f the person making
`the oath or declaration is not the
`inventor, the oath or declaration shall
`state the relationship of the person to
`the inventor, the facts required by
`§§ 1.42, 1.43 or 1.47, and, upon
`information and belief, the facts which
`the inventor would have been required
`to state’’ to better set forth the
`requirements of an oath or declaration
`by a person who is not the inventor.
`Section 1.497(c) is being changed to
`delete the initial phrase ‘‘[t]he oath or
`declaration must comply with the
`requirements of § 1.63; however,’’ since
`it is unnecessary.
`Discussion of Specific Rules
`Title 37 of the Code of Federal
`Regulations, Part 1 is amended as
`follows:
`Section 1.5(f) is added to provide that
`a paper concerning a provisional
`application must identify the
`application as such and by the
`application number.
`Section 1.12 is amended to revise
`paragraph (c) to read ‘‘preserved in
`confidence under § 1.14’’ for
`consistency with § 1.14.
`Section 1.14 is amended to revise the
`title and paragraphs (a) and (e) to read
`‘‘preserved in confidence’’ for
`consistency with the language in 35
`U.S.C. 122.
`Section 1.14(a) is amended to add a
`paragraph (a)(1) to provide that patent
`applications are generally preserved in
`confidence pursuant to 35 U.S.C. 122,
`and that no information will be given
`concerning the filing, pendency, or
`subject matter of any application for
`patent, and no access will be given to,
`or copies furnished of, any application
`or papers relating thereto, except as set
`forth in § 1.14.
`Section 1.14(a) is also amended to add
`a paragraph (a)(2) to provide that status
`may be supplied: (1) Concerning an
`application or any application claiming
`the benefit of the filing date of the
`application, if the application has been
`identified by application number or
`serial number and filing date in a
`published patent document; (2)
`concerning the national stage
`application or any application claiming
`the benefit of the filing date of a
`published international application, if
`the United States of America has been
`indicated as a Designated State in the
`international application; or (3) when it
`has been determined by the
`Commissioner to be necessary for the
`
`proper conduct of business before the
`Office. Status information includes
`information such as whether the
`application is pending, abandoned, or
`patented, as well as the application
`number and filing date. The inclusion of
`applications claiming the benefit of the
`filing date of applications so identified
`is to avoid misleading the public in
`instances in which the application
`identified as set forth in § 1.14(a)(2) is
`abandoned, but an application claiming
`the benefit of the filing date of the
`identified application (e.g., a continuing
`application) is pending.
`Section 1.14(a) is also amended to add
`a new paragraph (a)(3) to provide that
`access to, or copies of, an application
`may be provided: (1) When the
`application is open to the public as
`provided in § 1.11(b); (2) when written
`authority in that application from the
`applicant, the assignee of the
`application, or the attorney or agent of
`record has been granted; (3) when it has
`been determined by the Commissioner
`to be necessary for the proper conduct
`of business before the Office, or (4) to
`any person on written request, without
`notice to the applicant, when the
`application is abandoned and available
`and is: (a) Referred to in a U.S. patent,
`(b) referred to in an application open to
`public inspection, (c) an application
`which claims the benefit of the filing
`date of an application open to public
`inspection, or (d) an application in
`which the applicant has filed an
`authorization to lay open the complete
`application to the public.
`Section 1.14(b) is amended to provide
`that complete applications (§ 1.51(a))
`which are abandoned may be destroyed
`and hence may not be available for
`access or copies as permitted by
`paragraph (a)(3)(iv) of this section after
`20 years from their filing date, except
`those to which particular attention has
`been called and which have been
`marked for preservation. The sentence
`in § 1.14(b) concerning the non-return of
`abandoned applications is deleted as
`duplicative of the provision in § 1.59,
`which provides that papers in an
`application which has received a filing
`date will not be returned, and is
`unrelated to the preservation of
`applications in confidence under § 1.14.
`Section 1.52(a) is amended to provide
`that all papers which are to become a
`part of the permanent records of the
`Office must be legibly written by a
`typewriter or mechanical printer in
`permanent dark ink or its equivalent in
`portrait orientation on flexible, strong,
`smooth, non-shiny, durable and white
`paper. Section 1.52(a) is further
`amended to provide that the application
`papers must be presented in a form
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`having sufficient clarity and contrast
`between the paper and the writing
`thereon to permit electronic
`reproduction by use of digital imaging
`and optical character recognition, as
`well as the direct photocopy
`reproduction currently provided for.
`Section 1.52(a) is further amended to
`provide that substitute typewritten or
`mechanically printed papers ‘‘will’’ be
`required if the original application
`papers are not of the required quality.
`As any substitute typewritten or
`mechanically printed papers containing
`the subject matter of the originally filed
`application papers would constitute a
`substitute specification, the provisions
`of § 1.125 governing the entry of a
`substitute specification would be
`applicable, and § 1.52(a) is amended to
`include a specific reference to § 1.125.
`Section 1.52(b) is amended to provide
`that the claim or claims must commence
`on a separate sheet and the abstract
`must commence on a separate sheet.
`Section 1.72(b) provides that the
`abstract must commence on a separate
`sheet, and § 1.75(h) provides that the
`claim or claims must commence on a
`separate sheet. Section 1.52(b) is
`amended to provide that the sheets of
`paper must all be the same size and
`either 21.0 cm. by 29.7 cm. (DIN size
`A4) or 21.6 cm. by 27.9 cm. (81⁄2 by 11
`inches), with a top margin of at least 2.0
`cm. (3⁄4 inch), a left side margin of at
`least 2.5 cm. (1 inch), a right side
`margin of at least 2.0 cm. (3⁄4 inch), and
`a bottom margin of at least 2.0 cm. (3⁄4
`inch), and that no holes should be made
`in the submitted paper sheets. Section
`1.52(b) is further amended to provide
`that the lines of the specification, and
`any amendments to the specification,
`‘‘must’’ be 11⁄2 or double spaced, and
`that the pages of the specification
`‘‘must’’ be numbered consecutively,
`starting with page one, with the
`numbers being centrally located above
`or below the text. Finally, § 1.52(b) is
`amended to specifically reference
`drawings to clarify that drawings are
`part of the application papers, but that
`the standards for drawings are set forth
`in § 1.84.
`The proposed changes to §§ 1.52 (a)
`and (b), 1.58, 1.72(b), 1.75 (g), (h), and
`(i), 1.77, 1.84 (c), (f), (g), and (x), 1.96,
`1.154, and 1.163 pertaining to the
`format and standards for application
`papers and drawings in the Notice of
`Proposed Rulemaking are considered
`desirable, regardless of whether H.R.
`1733 is enacted.
`While the vast majority of
`applications currently comply with
`§§ 1.52 (a) and (b), 1.58, 1.72(b), 1.75(h),
`1.84 (c), (f), (g), and (x), and 1.96 as
`adopted in this final rule, those
`
`applications which do not comply with
`§§ 1.52 (a) and (b), 1.58, 1.84 (c), (f), (g),
`and (x), and 1.96 as adopted in this final
`rule (e.g., applications containing hand-
`written papers) create an inordinate
`administrative burden on the Office
`during the initial processing,
`examination, and publishing of the
`application as a patent. In addition, the
`Office plans to replace or augment the
`current microfilming process with
`electronic data capture of at least the
`technical content (i.e., the specification,
`abstract, claims and drawings) of the
`application-as-filed for internal Office
`use, regardless of whether H.R. 1733 is
`enacted. Therefore, the Office will no
`longer permit these relatively few
`applicants to submit application papers
`and drawings that do not meet the
`standards set forth in §§ 1.52 (a) and (b),
`1.58, 1.84 (c), (f), (g), and (x), and 1.96
`as adopted in this final rule.
`The application format set forth in
`§§ 1.75 (g) and (i), 1.77, 1.154, and 1.163
`as adopted in this final rule merely
`expresses the Office’s preferences for
`format of utility, design and plant
`applications. They do not set forth
`mandatory requirements for application
`papers and drawings.
`Section 1.54(b) is amended to change
`‘‘application serial number’’ to
`‘‘application number’’ for consistency
`with § 1.5(a).
`Section 1.58(b) is removed and is
`reserved as unnecessary in view of the
`amendments to §§ 1.52 (a) and (b).
`Section 1.58(c) is amended to provide
`that chemical and mathematical
`formulae and tables must be presented
`in compliance with §§ 1.52 (a) and (b),
`except that chemical and mathematical
`formulae or tables may be placed in a
`landscape orientation if they cannot be
`presented satisfactorily in a portrait
`orientation. Section 1.58(c) is further
`amended to delete the following
`sentences to conform to the writing and
`paper size and orientation limitations in
`§§ 1.52 (a) and (b): (1) ‘‘[t]o facilitate
`camera copying when printing, the
`width of formulas and tables as
`presented should be limited normally to
`12.7 cm. (5 inches) so that it may appear
`as a single column in the printed
`patent’’; (2) ‘‘[i]f it is not possible to
`limit the width of a formula or table to
`5 inches (12.7 cm.), it is permissible to
`present the formula or table with a
`maximum width of 103⁄4 inches (27.3
`cm.) and to place it sideways on the
`sheet’’; and (3) ‘‘[h]and lettering must be
`neat, clean, and have a minimum
`character height of 0.08 inch (2.1 mm.).’’
`Section 1.58(c) is further amended to
`insert ‘‘chosen’’ between ‘‘must be’’ and
`‘‘from a block (nonscript) type font.’’
`Section 1.58(c) is further amended to
`
`provide metric dimensions with English
`equivalents in parentheticals, rather
`than vice versa.
`Section 1.62(e) is amended to change
`‘‘application serial number’’ to
`‘‘application number’’ for consistency
`with § 1.5(a).
`Section 1.62(f) is amended to change
`‘‘secrecy’’ to ‘‘confidence’’ as is found in
`35 U.S.C. 122 and § 1.14, and change
`‘‘37 CFR 1.14’’ to ‘‘§ 1.14’’ for
`consistency.
`Section 1.72(b) is amended to provide
`that the abstract must ‘‘commence,’’
`rather than ‘‘be set forth,’’ on a separate
`sheet. This change will conform the
`‘‘separate sheet’’ requirement for the
`abstract with that for the claims.
`Section 1.75 is amended to include an
`amendment to paragraph (g), and would
`add two new paragraphs. Section 1.75(g)
`is amended to add the phrase ‘‘[t]he
`least restrictive claim should be
`presented as claim number 1’’ to the
`beginning of the paragraph. Section
`1.75(h) is added to provide that the
`claim or claims must commence on a
`separate sheet. Section 1.75(i) is added
`to provide that where a claim sets forth
`a plurality of elements or steps, each
`element or step of the claim should be
`separated by a line indentation.
`Section 1.77 is amended to provide
`that the elements of the application, if
`applicable, should appear in the
`following order: (1) Utility Application
`Transmittal Form; (2) Fee Transmittal
`Form; (3) title of the invention; or an
`introductory portion stating the name,
`citizenship, and residence of the
`applicant, and the title of the invention;
`(4) cross-reference to related
`applications; (5) statement regarding
`federally sponsored research or
`development; (6) reference to a
`‘‘Microfiche appendix; (7) background
`of the invention; (8) brief summary of
`the invention; (9) brief description of
`the several views of the drawing; (10)
`detailed description of the invention;
`(11) claim or claims; (12) abstract of the
`disclosure; (13) drawings; (14) executed
`oath or declaration; and (15) sequence
`listing.
`The phrase ‘‘if applicable’’ is inserted
`in the heading, rather than associated
`with any particular listed element, to
`clarify that § 1.77 does not per se require
`that an application include all of the
`listed elements, but merely provides
`that any listed element included in the
`application should appear in the order
`set forth in § 1.77. Section 1.77 is further
`amended to provide that the (1) title of
`the invention; (2) cross-reference to
`related applications; (3) statement
`regarding federally sponsored research
`or development; (4) background of the
`invention; (5) brief summary of the
`
`IPR2023-00939
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`42794
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`Federal Register / Vol. 61, No. 161 / Monday, August 19, 1996 / Rules and Regulations
`
`invention; (6) brief description of the
`several views of the drawing; (7)
`detailed description of the invention; (8)
`claim or claims; (9) abstract of the
`disclosure; and (10) sequence listing,
`should appear in upper case, without
`underlining or bold type, as section
`headings, and if no text follows the
`section heading, the phrase ‘‘Not
`Applicable’’ should follow the section
`heading. Finally, § 1.77 is amended to
`change the reference to § 1.96(b) in
`§ 1.77(a)(6) to § 1.96(c) for consistency
`with § 1.96.
`Section 1.78(a)(2) is amended to
`replace the reference to § 1.14(b) with a
`reference to § 1.14(a) for consistency
`with §§ 1.14 (a) and (b) as amended.
`Section 1.78(c) is amended to change
`‘‘two or more applications, or an
`application and a patent’’ to ‘‘an
`application or a patent under
`reexamination and at least one other
`application’’ such that the provisions of
`§ 1.78(c) will also be applicable to a
`patent under reexamination. Section
`1.78(c) is also amended to correct
`‘‘inventors and owned by the same party
`contain conflicting claims’’ to read
`‘‘inventors are owned by the same party
`and contain conflicting claims.’’ Section
`1.78(c) is also amended to delete the
`sentence ‘‘[i]n addition to making said
`statement, the assignee may also explain
`why an interference should or should
`not be declared.’’
`Section 1.78(d) is removed. The
`provisions of former § 1.78(d), as
`proposed, are in new § 1.130(b).
`Section 1.84(c) is amended to provide
`that a reference to the application
`number, or, if an application number
`has not been assigned, the inventor’s
`name, may be included in the left-hand
`corner of the drawing sheet, provided
`that reference appears within 1.5 cm.
`(9⁄16 inch) from the top of the sheet.
`Section 1.84(f) is amended to provide
`that the size of all drawing sheets in an
`application must be either 21.0 cm. by
`29.7 cm. (DIN size A4) or 21.6 cm. by
`27.9 cm. (81⁄2 by 11 inches) to conform
`to the requirement in § 1.52(b)
`concerning papers in an application.
`Section 1.84(g) is amended to delete
`the margin requirements for the sheet
`sizes that are no longer acceptable in
`view of the changes to § 1.84(f). Section
`1.84(g) is further amended to provide
`that the sheets should have scan targets
`(cross-hairs) on two catercorner margin
`corners. Finally, § 1.84(g) is amended to
`increase the bottom and side margins
`such that each sheet must include a top
`margin of at least 2.5 cm. (1 inch), a left
`side margin of at least 2.5 cm. (1 inch),
`a right side margin of at least 1.5 cm.
`(9⁄16 inch), and a bottom margin of at
`least 1.0 cm. (3⁄8 inch), thereby leaving
`
`a sight no greater than 17.0 cm. by 26.2
`cm. on 21.0 cm. by 29.7 cm. (DIN size
`A4) drawing sheets, and a sight no
`greater than 17.6 cm. by 24.4 cm. (615⁄16
`by 95⁄8 inches) on 21.6 cm. by 27.9 cm.
`(81⁄2 by 11 inch) drawing sheets.
`Section 1.84(x) is amended to delete
`the provisions indicating the proper
`location for holes in a drawing sheet,
`and provide that no holes should be
`provided in the drawing sheets.
`Section 1.96 is amended to designate
`the text preceding current paragraph (a)
`as paragraph (a) ‘‘General,’’ and would
`redesignate current paragraphs (a) and
`(b) as paragraphs (b) and (c),
`re