UNITED STATES PATENT AND TRADEMARK OFFICE
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`Commissioner for Patents
`United States Patent and Trademark Office
`PO. Box 1450
`Alexandria. VA 22313-1450
`www.uspto.gov
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`MAILED
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`Novak Druce & Quigg LLP
`525 Okeechobee Blvd
`Suite 1500
`West Palm Beach FL 33401
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`SEP 22 ZUM
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`Pitt LEGAL ADMINISTRATION
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`In re Application of: PlRlM, Patrick.
`U.S. Application No.: 11/676,926
`U.S. Patent No.: 7,650,015
`Filing Date: February 20, 2007
`Attorney’s Docket No.: 8042-2-1
`For:
`IMAGE PROCESSING METHOD
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`DECISION ON
`PETITIONS UNDER
`37 CFR 1.78(a)(3)
`AND 1.55(c)
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`This decision is issued in response to the “SECOND REQUEST FOR
`RECONSIDERATION OF PETITION DECISION” filed on July 15, 2014, which requests
`reconsideration under 37 CFR §§ 1.78(a)(3) and 1.55(c). For the reasons set forth below, the
`petitions are DISMISSED without prejudice.
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`37 CFR 1.78121113)
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`The above-captioned U.S. patent issued from an application filed after November 29,
`2000, and the corrected benefit claim under 35 U.S.C. 120 is submitted after the expiration of the
`time period specified in 37 CFR l.78(a)(2)(ii). Under the circumstances present here, the
`petition is properly considered under 37 CFR 1.78(a)(3). E MPEP section 1481.03.
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`A grantable petition under 37 CFR 1.78(a)(3) must be accompanied by the following:
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`(1)
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`(2)
`(3)
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`the reference required by 35 U.S.C. 120 and 37 CFR
`l.78(a)(2)(i) to the prior—filed application, unless
`previously submitted;
`the surcharge set forth in 37 CFR l.l7(t); and
`a statement that the entire delay between the date the claim was due
`under 37 CFR l.78(a)(2)(ii) and the date the claim was filed was
`unintentional.
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`\
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`The present petition fails to comply with items (1) and (3) above.
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`Regarding requirement (1), the Application Data Sheet (ADS) filed on July 15, 2014
`indicates that parent application no. 09/230,502 is “a 371 of international PCT/FR97/01354,” but
`also indicates that 09/230,502 is a “Continuation in part of PCT/EP98/05383.” However, the
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`Application No. l l/676,926
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`2
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`filing date (35 U.S.C. 363) date of 09/230,502 is its international filing date, 22 July 1997. This
`is prior to the 25 August 1998 international filing date of purported “priority” application
`PCT/EP98/05383. Comparative review of parent application no. 09/792,294 reveals that
`petitioner may have intended instead to insert a claim that 09/792,294 is a CON of
`PCT/EP98/05383.
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`Regarding requirement (3), a decision dismissing the petition filed on 20 May 2011 was
`mailed on 05 January 2012, and the instant response was filed on 15 July 2014. Petitioner did
`not provide an updated statement of unintentional delay; it is not adequately clear at this time
`whether the entire delay between the date the claim was due under 37 CFR l.78(a)(2)(ii) and the
`date the claim was filed was unintentional.
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`For these reasons, it would not be appropriate to grant petition under 37 CFR l.78(a)(3)
`on the basis of the present record.
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`37 CFR 1.551c)
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`The above-captioned US. patent issued from an application filed after November 29,
`2000, and the foreign priority claim under 35 U.S.C. l l9(a)-(d) or 365(a) directed to French
`application number FR 9609420 was not submitted prior to the expiration of the time period
`specified in 37 CFR 1.55(a)(1). Accordingly, this is an appropriate petition under the provisions
`0f37 CFR 1.55(c).
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`A grantable petition under 37 CFR 1.55(c) to accept an unintentionally delayed claim for
`foreign priority requires the following:
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`(1)
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`the claim under 35 U.S.C. 119(a)—(d) or 365(a) and this section to the prior
`foreign application, unless previously submitted;
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`(2)
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`(3)
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`the surcharge as set forth in 37 CFR l.l7(t);
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`a statement that the entire delay between the date the claim was due under 37
`CFR 1.55(a)(1) and the date the claim was filed was unintentional.
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`1n the Decision mailed on 05 January 2012, the previous petition under 37 CFR 1.55( c)
`filed on 20 May 2011 was dismissed without prejudice because requirement (1) had not been
`satisfied. Petitioner now has submitted an ADS which sets forth the foreign priority claim.
`However, said ADS is defective for other reasons (as described above). Therefore, it would not
`be appropriate at this time to conclude that applicants have satisfied the requirements for a
`grantable petition under 357 CFR 1.55(c) for acceptance of an unintentionally delayed foreign
`benefit claim.
`It is noted that the instant renewed petition includes a statement of unintentional
`delay with respect to 37 CFR 1.55(a)(1).
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`Application No. l l/676,926
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`3
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`DECISION
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`For the reasons set forth above, the petitions under 37 CFR l.78(a)(3) and 1.55(c) are
`DISMISSED without prejudice.
`’
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`Any further correspondence with respect to this matter may be filed electronically via
`EFS-Web selecting the document description "Petition for review and processing by the PCT
`Legal Office" or by mail addressed to Mail Stop PCT, Commissioner for Patents, Office of PCT
`Legal Administration, PO. Box 1450, Alexandria, Virginia 22313-1450, with the contents ofthe
`letter marked to the attention of the Office of PCT Legal Administration.
`
`/George Dombroske/
`George Dombroske
`PCT Legal Examiner
`lntemational Patent Legal Administration
`Telephone: (571) 272-3283
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