IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of:
`
`Pirim
`
`Docket No.:
`
`8042-2-1
`
`Application No.:
`
`11/676,926
`
`Examiner:
`
`Seth MANAV
`
`Patent No.:
`
`7,650,015
`
`Art Unit:
`
`2624
`
`Filed:
`
`02-20-2007
`
`Confirmation No.:
`
`9051
`
`
`
`For:
`
`IMAGE PROCESSING METHOD
`
`
`
`Mail Stop PCT,
`Commissioner for Patents,
`Office of PCT Legal Administration
`PO. Box 1450
`
`Alexandria, Virginia 22313-1450
`
`REQUEST FOR RECONSIDERATION OF PETITION DECISION
`
`Sir:
`
`A Petition to Accept Unintentionally Delayed Priority Claims under 37
`
`C.F.R. §§ 1.55(c) and 1.78(a)(3) was filed on August 20, 2010. A decision on the
`
`Petition was mailed on April 05, 2011.
`
`Please reconsider the decision in view of the following remarks.
`
`

`

`11/676,926
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`Pirim
`
`8042—2—1
`
`Remarks
`
`The Diagram below summarizes the pertinent facts, which are stated, in
`
`full, in the original petition.
`
`\
`:
`k
`‘
`15%
`i
`i
`
`:
`
`5
`
`.‘““
`
`I
`:
`-‘
`
`9‘“:v.V.‘“v.‘K‘.‘\'
`
`Priority
`Claim
`
`:l omitted
`
`Domestic Priority Claim - 37 C.F.R. §1.78(a)(3)
`
`The decision acknowledges that the petition is correctly filed under 37
`
`C.F.R. §1.78(a)(3), which states:
`
`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
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`

`

`11/676,926
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`Pirim
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`8042—2—1
`
`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.
`119(a) — (d) or 365(a) or 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.
`
`The decision states:
`
`A greetable petitiee end-er 3‘? CFR 'l .?3{e){3} must be eceempeeied by the fbllewing:
`
`{1.)
`
`{2)
`{3)
`
`the reference required by 3,5 U.S.C. i133 and 3'? CFR
`l.?3(e){2}{i} to the prior—filed applieatiee, unless
`previeesly eubmilwd;
`the Stecherge set fertile i113? CPR 1.1?(1'); and
`a statement that the entire delay between the (fee: the claim wee due
`under 37" CPR 1,?8(e)(2){ii} emf the date the claim was filed wes
`unietmtienaf.
`
`The decision interprets 1.78(a)(3)’s reference to 1.78(a)(2) as a
`
`requirement that “an accompanying amendment to the specification of the
`
`application or a supplemental application data sheet” (Decision at p. 2) is
`
`needed. More specifically, the decision cites to 1.78(a)(2)(iii), which states, “[i]f
`
`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
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`

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`11/676,926
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`Pirim
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`8042—2—1
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`specification must contain or be amended to contain such reference in the first
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`sentence(s) following the title.”
`
`It is respectfully submitted the decision interprets 1.78(a)(3) incorrectly.
`
`As explained in MPEP §1481.03:
`
`Where 35 U.S.C. 120 and 365(c) priority based
`on an international application is to be asserted or
`corrected in a patent via a Certificate of Correction,
`the following conditions must be satisfied:
`(A) all requirements set forth in 37 CFR
`1.78(a)(1) must have been met in the application
`which became the patent to be corrected;
`(B) it must be clear from the record of the
`patent and the parent application(s) that priority is
`appropriate (see MPEP § 201.11); and
`(C) the patentee must submit with the request
`for the certificate copies of documentation showing
`designation of states and any other information
`needed to make it clear from the record that the 35
`
`U.S.C. 120 priority is appropriate. See MPEP §
`201.13(b) as to the requirements for 35 U.S.C. 120
`priority based on an international application.
`If all the above-stated conditions are satisfied,
`a Certificate of Correction can be used to amend
`
`the patent to make reference to a prior copending
`application, or to correct an incorrect reference to the
`prior copending application. Note In re Schuurs, 218
`USPQ 443 (Comm'r Pat. 1983) which suggests that a
`Certificate of Correction is an appropriate remedy for
`correcting, in a patent, reference to a prior copending
`application. Also, note In re Lambrech, 202 USPQ
`620 (Comm'r Pat. 1976), citing In re Van Esdonk, 187
`USPQ 671 (Comm'r Pat. 1975).
`
`Therefore, there is no requirement for a separate paper specifying amendments
`
`to the claims. Changes to an issued patent, are made with a Certificate of
`
`Correction. Favorable reconsideration of the petition filed on August 19, 2010 is
`
`respectfully requested.
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`

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`11/676,926
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`Pirim
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`8042—2—1
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`Foreign Priority Claim - 37 C.F.R. §1.55(c1
`
`37 C.F.R. §1.55(c) provides that:
`
`(c) Unless such claim is accepted in
`accordance with the provisions of this paragraph, any
`claim for priority under 35 U.S.C. 119(a)-(d) or 365(a)
`not presented within the time period provided by
`paragraph (a) of this section is considered to have
`been waived. If a claim for priority under 35 U.S.C.
`119(a)-(d) or 365(a) is presented after the time period
`provided by paragraph (a) of this section, the claim
`may be accepted if the claim identifying the prior
`foreign application by specifying its application
`number, country (or intellectual property authority),
`and the day, month, and year of its filing was
`unintentionally delayed. A petition to accept a delayed
`claim for priority under 35 U.S.C. 119(a)-(d) or 365(a)
`must be accompanied by:
`(1) The claim under 35 U.S.C. 119(a)-(d) or
`365(a) and this section to the prior foreign application,
`unless previously submitted;
`(2) The surcharge set forth in § 1.17(t); and
`(3) A statement that the entire delay between
`the date the claim was due under paragraph (a)(1) 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.
`
`The decision states:
`
`A grantabic pctittcn maxim? 3? CFR. 1 .55 {c} to accept an unintmitcnally delayed claim for
`foreign priority requires {1:6 tblltiwing:
`
`[1}
`
`[2}
`(3)
`
`this claim mid-pr 33 U.S.C. Ii.§}{a}~(d) m: 365(a) and this sccticm. to tho- prior
`{amigo application, 1:111:55 previously submitted;
`the isumhar‘gc as sat forth in 33* CPR. 1.1753};
`a statement that the satin: delay bctwccn: the data: "this ciaim was due under 3?
`CFR 1.55(51181 and this date thi: claim was filed was umintcntinnai
`
`The decision incorrectly concludes that the petition does not comply with
`
`1.55(c)(1), alleging MPEP §201.13 requires that “a claim for foreign priority must
`
`be contained in either an oath or declaration
`
`or an application data sheet.”
`
`(Decision at p. 3). MPEP §201.13 actually states, “[a] priority claim need not be
`
`in any special form and may be a statement signed by a registered attorney or
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`

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`11/676,926
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`Pirim
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`8042—2—1
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`agent. A priority claim can be made on filing: (A) by including a copy of an
`
`unexecuted or executed oath or declaration specifying a foreign priority claim
`
`(see 37 CFR 1.63(c)(2)); or (B) by submitting an application data sheet specifying
`
`a foreign priority claim (see 37 CFR 1.76).”
`
`More importantly, the decision errs by not considering MPEP §201.16,
`
`which explains:
`
`a certificate of correction under 35 U.S.C. 255
`
`and 37 CFR 1.323 may be requested and issued in
`order to perfect a claim for foreign priority benefit in a
`patented continuing application if the requirements of
`35 U.S.C. 119(a)-(d) or (f) had been satisfied in the
`parent application prior to issuance of the patent and
`the requirements of 37 CFR 1.55(a) are met.
`Furthermore, if the continuing application (other than
`a design application), which issued as a patent, was
`filed on or after November 29, 2000 **, in addition to
`the filing of a certificate of correction request,
`patentee must also file a petition for an
`unintentionally delayed foreign priority claim
`under 37 CFR 1.55(c).
`
`Therefore, in the present situation, the request for certificate of correction that
`
`accompanied the petition was appropriate. Favorable reconsideration of the
`
`petition filed on August 19, 2010 is respectfully requested.
`
`Telephonic lnterview
`
`A telephonic interview occurred on April 5, 2011 between Mr. Richard M.
`
`Ross, Attorney Advisor, Office of PCT Legal Administration and the undersigned
`
`representative, regarding an almost identical petition decision mailed March 31,
`
`2011, regarding U.S. Patent No. 7,181,047. Mr. Ross suggested attaching a
`
`normally formatted specification amendment to facilitate reconsideration. Such
`
`an amendment is attached.
`
`Please note that the attached amendment only includes corrections to the
`
`cover page of the patent. The Request for Certificate of Correction also specifies
`
`a number of corrections to the claims. Please enter a Certificate of Correction for
`
`the corrections to the claims.
`
`

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`11/676,926
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`Pirim
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`8042-2-1
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`Fee Authorization
`
`The Director is hereby authorized to charge any deficiency in fees filed,
`
`asserted to be filed, or which should have been filed herewith (or with any paper
`
`hereafter filed in this application by this firm) to our Deposit Account 14-1437.
`
`Please credit any excess fees to such account.
`
`Date: May 20, 2011
`
`Respectfully submitted,
`NOVAK DRUCE + QUIGG, LLP
`
`/Michael P. Byrne/
`
`Michael P. Byrne, Reg. No. 54,015
`300 New Jersey Ave, NW
`5th Floor
`
`Washington, DC. 20001
`Phone: (202) 659-0100
`Fax: (202) 659-0105
`
`Enclosure: “AMENDMENT” TO FACILITATE RECONSIDERATION OF
`
`PETITION DECISION
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of:
`
`Pirim
`
`Docket No.:
`
`8042-2-1
`
`Application No.:
`
`11/676,926
`
`Examiner:
`
`Seth MANAV
`
`Patent No.:
`
`7,650,015
`
`Art Unit:
`
`2624
`
`Filed:
`
`02-20-2007
`
`Confirmation No.:
`
`9051
`
`
`
`For:
`
`IMAGE PROCESSING METHOD
`
`
`
`Mail Stop PCT,
`Commissioner for Patents,
`Office of PCT Legal Administration
`PO. Box 1450
`
`Alexandria, Virginia 22313-1450
`
`“AMENDMENT” TO FACILITATE
`
`RECONSIDERATION OF PETITION DECISION
`
`Sir:
`
`Please enter and consider the following amendments and remarks.
`
`

`

`11/676,926
`
`Pirim
`
`8042-2-1
`
`Amendments to the Specification
`
`To the first page of the patent, below the Prior Publication Data section,
`
`please add the following secions:
`
`Related U.S. Application Data
`
`(63) Divisional of application No. 09/792,294, filed on
`Feb. 23, 2001, now Pat. No. 7,181,047, which is a
`continuation-in-part of application No. 09/230,502,
`filed on Sept. 13, 1999, now Pat. No. 6,486,909,
`which is a national stage of PCT/FR97/01354, filed on
`Jul. 22, 1997.
`
`Foreign Application Priority Data
`
`Jul. 26, 1996 (FR) .............................. 96 09420.
`
`Please replace the paragraph at column 1, lines 6 — 12 with the following
`paragraph:
`
`The present application claims the priorityfl
`divisional of U.S. application Ser. No. 09/792,294,
`filed Feb. 23, 2001, now U.S. Pat. No. 7,181,047[[;]];
`which claims priority as a continuation-in-part to U.S.
`application Ser. No. 09/230,502, filed Jan. 26, 1999,
`
`now U.S. Pat. No. 6,486,909 which is a national
`stage of International Application No.
`
`PCT/FR97/01354 filed Jul. 22 1997; U.S. Application
`
`Ser. No. 09/792 294 also—whieh claims priorityfl
`continuation-in-part to International Application No.
`PCT/EP98/05383, filed Aug. 25, 1998; all of which are
`incorporated herein by reference in their entirety.
`
`

`

`11/676,926
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`Pirim
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`8042-2-1
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`Remarks
`
`This paper should not be required, because it is duplicative of corrections
`
`presented in the Request for Certificate of Correction filed on August 20, 2010.
`
`It
`
`is being submitted merely to expedite reconsideration of the Petition to Accept
`
`Unintentionally Delayed Priority Claims under 37 C.F.R. §§ 1.55(c) and
`
`1.78(a)(3) filed on August 20, 2010 and denied on April 5, 2011.
`
`Fee Authorization
`
`The Director is hereby authorized to charge any deficiency in fees filed,
`
`asserted to be filed, or which should have been filed herewith (or with any paper
`
`hereafter filed in this application by this firm) to our Deposit Account 14-1437.
`
`Please credit any excess fees to such account.
`
`Date: May 20, 2011
`
`Respectfully submitted,
`NOVAK DRUCE + QUIGG, LLP
`
`/Michael P. Byrne/
`
`Michael P. Byrne, Reg. No. 54,015
`300 New Jersey Ave, NW
`5th Floor
`
`Washington, DC. 20001
`Phone: (202) 659-0100
`Fax: (202) 659-0105
`
`