IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re: Application of PIRIM
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`Confirmation No.
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`9051
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`Patent No.
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`7,650,015 B2
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`Group:
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`2624
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`Issue Date:
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`January 19, 2010
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`Examiner:
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`SETH, MANAV
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`Application No.
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`I 1/676,926
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`Docket No.
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`8042—2—1
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`Filing Date:
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`February 20, 2007
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`For:
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`IMAGE PROCESSING METHOD
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`PETITION To ACCEPT UNINTENTIONALLY DELAYED
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`PRIORITY CLAIMS UNDER 37 CFR §§ 1.78(a)(3) and 1.55(c)
`
`
`ATTN: Petitions Office
`Commissioner for Patents
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`PO. Box 1450
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`Alexandria, VA 22313-1450
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`Sir or Madam:
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`Patent Owner hereby petitions (I) under 37 CFR § 1.78(a)(3) to request acceptance of
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`unintentionally delayed domestic priority claims under 35 U.S.C. §§ 120 and 365(0) for the
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`benefit of prior-filed co-pending non—provisional applications and international applications
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`designating the United States; and (11) under 37 CFR § 1.55(c) to request acceptance of an
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`unintentionally delayed foreign priority claim under 35 U.S.C. § 119(a)-(d) for the benefit of a
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`prior—filed foreign application.
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`PERTINENT FACTS
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`1. US. Patent Application No. 09/230,502 (entitled “Image Processing Apparatus and
`
`method”) was filed on September 13, 1999 and issued as US. Patent No. 6,486,909.
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`

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`a. US. Patent No. 6,486,909 is the § 371 national stage of international application
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`No. PCT/FR97/01354, filed on July 22, 1997. Patrick Pirim is the inventor for
`
`both PCT/FR97/01354 and U.S. Patent No. 6,486,909.
`
`i.
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`International Application No. PCT/FR97/01354 claims priority to French
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`Patent Application No. FR 96 09420, filed in France on July 26, 1996.
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`b. US. Patent No. 6,486,909 also claims priority to French Patent Application No.
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`FR 96 09420, filed in France on July 26, 1996.
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`c. The priority and relationship to PCT/FR97/01354 and FR 96 09420 are recited on
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`the face ofU.S. Patent No. 6,486,909.
`
`2. US. Patent Application No. 09/792,294 (entitled “Methods and Apparatus for Identifying
`
`and Localizing an Area of Relative Movement in a Scene”) was filed on February 23,
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`2001 and issued as US Patent No. 7,181,047.
`
`a. US. Patent No. 7,181,047 claims priority as a continuation-in-part to US. Patent
`
`Application No. 09/230,502, filed on September 13, 1999, now US. Patent No.
`
`6,486,909.
`
`b. A Petition to Accept Unintentionally Delayed Priority Claim and Request for
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`Certificate of Correction has been filed for US. Patent No. 7,181,047 to perfect
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`priority claims to International Application No. PCT/FR97/01354 and French
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`Patent Application No. FR 96 09420.
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`3. US. Patent Application No. 11/676,926, the application for the above-referenced patent,
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`was filed on February 20, 2007 and issued as the above-referenced patent, US. Patent
`
`No. 7,650,015.
`
`

`

`a. The first paragraph of the specification in U.S. Patent No. 7,650,015 states: “The
`
`present application claims the priority of U.S. application Ser. No. 09/792,294,
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`filed Feb. 23, 2001, now U.S. Pat. No. 7,181,047; which claims priority to U.S.
`
`application Ser. No. 09/230,502, filed Jan. 26, 1999, now U.S. Pat. No. 6,486,909;
`
`which claims priority to International Application No. PCT/EP98/05383, filed
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`Aug. 25, 1998; all of which are incorporated herein by reference in their entirety.”
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`b. Applicant attempted to correct and clarify priority claims in a Request for
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`Corrected Filing Receipt filed on August 27, 2007, which states: “As noted in the
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`Official Filing Receipt, the instant application is a divisional of US 09/792,294.
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`The '294 application claims priority to two applications:
`
`it is a §371 national
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`phase application of PCT/EP98/05383 and a CIP application of US 09/230,502.
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`The '502 application is a §371 national phase application of PCT/FR97/01354,
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`which claims the priority benefit of FR 96/09420.”
`
`.
`
`.
`
`.
`
`.
`
`.
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`In U.S. Patent No. 7,650,015, a priority claim to U.S. Patent Application No. 09/792,294,
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`filed February 23, 2001, now U.S. Patent No. 7,181,047 was unintentionally omitted.
`
`In U.S. Patent No. 7,650,015, a priority claim to U.S. Patent Application No. 09/230,502,
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`filed September 13, 1999, now U.S. Patent No. 6,486,909 was unintentionally omitted.
`
`In U.S. Patent No. 7,650,015, a priority claim to International Application No.
`
`PCT/EP98/05383 was unintentionally omitted.
`
`In U.S. Patent No. 7,650,015, a priority claim to International Application No.
`
`PCT/FR97/01354 was unintentionally omitted.
`
`In U.S. Patent No. 7,650,015, a priority claim to French Patent Application No. FR 96
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`09420 was unintentionally omitted.
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`

`

`9. Patent owner has acted diligently and without delay from the time the errors in Facts 4-8
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`were discovered to the filing of the present Petition.
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`10. A Request for Certificate of Correction of U.S. Patent No. 7,650,015, together with
`
`supporting documentation, has been filed concurrently:
`
`a. The Request for Certificate of Correction requests to perfect the unintentionally
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`delayed claims for domestic priority under 35 U.S.C. § 255, 37 CFR § 1.323 and
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`MPEP § 1481.03 because the requirements of 37 CFR § 1.78(a)(1) and MPEP §
`
`1481.03 have been met
`
`b. The Request
`
`for Certificate of Correction also requests
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`to perfect
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`the
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`unintentionally delayed claim for foreign priority under 35 U.S.C. § 255, 37 CFR
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`§ 1.323 and MPEP § 201.16 because 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
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`the requirements of 37 CFR 1.5 5(a) were met.
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`DISCUSSION
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`I. UNINTENTIONALLY DELAYED DOMESTIC PRIORITY CLAIMS
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`A. Authority For Unintentional Delay In Claiming the Benefit of Prior-Filed C0-
`Pending Non—Provisional Applications and International Applications Designating
`the U.S. Under 35 USC §§ 120 and 365(c) In The Above-Referenced Patent
`
`37 CFR § 1.78(a)(3) provides that:
`
`(3) 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 section,
`the claim under 35 U.S.C. 120, 121, or 365(0) 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(0) for the benefit
`of a prior-filed application must be accompanied by:
`
`

`

`(i) The reference required by 35 U SC. 120 and 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.
`
`MPEP § 1481.03 provides that:
`
`the
`
`Where priority is based upon 35 U.S.C. 120 to a national application,
`following conditions must be satisfied:
`(A) all requirements set forth in 37 CFR l.78(a)(l) 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) a grantable petition to accept an unintentionally delayed claim for the
`benefit of a prior application must be filed, including a surcharge as set forth
`in 37 CFR 1.17(t), as required by 37 CFR l.78(a)(3).
`Where 35 U.S.C. 120 and 365(0) 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);
`(C) the patentee must submit together 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; and
`(D) a grantable petition to accept an unintentionally delayed claim for the
`benefit of a prior application must be filed, including a surcharge as set forth
`in 37 CFR l.17(t), as required by 37 CFR l.78(a)(3).
`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, for benefit
`claims under 35 U.S.C. 120 and 365(0).
`
`B. Claim Under 35 U.S.C. §§ 120 or 120 and 365(c) and Surcharge Set Forth In 37
`CFR § 1.17
`
`Patent Owner respectfully requests acceptance of unintentionally delayed priority claims
`
`under 35 U.S.C. § 120 as a divisional of application No. 09/792,294, filed Feb. 23, 2001, now
`
`

`

`US. Pat. No. 7,181,047, which claims priority to application No. 09/230,502, filed Jan. 26, 1999,
`
`now US. Pat. No. 6,486,909; and unintentionally delayed priority claims under 35 USC. §§ 120
`
`and 365(0) to international application Nos. PCT/FR97/01354, filed on July 22, 1997 and
`
`designating the United States of America and PCT/EP98/053 83, filed on August 25, 1998 and
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`designating the United States of America.
`
`In accordance with MPEP § 1481.03, all requirements
`
`set forth in 37 CFR 1.78(a)(1) have been met in the application for US. Patent No. 7,650,015; it
`
`is clear from the record of US. Patent No. 7,650,015 and its parent applications that priority is
`
`appropriate; and the patent owner submitted the required documentation with the Request for
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`Certificate of Correction. See Facts 1-3 and 10.
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`Credit card payment in the amount of $1410.00 accompanies this Request. Please charge
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`any necessary fee or credit any overpayment pursuant to 37 CFR § 1.17 to Deposit Account
`
`No. 14-1437.
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`C. Statement Regarding Unintentional Delay
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`The entire delay between the date the claim was due under paragraph (a)(2)(ii) of 37 CFR
`
`§l.78 and the date the claim was filed was unintentional.
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`II. UNINTENTIONALLY DELAYED FOREIGN PRIORITY CLAIM
`
`A. Authority For Unintentional Delay In Claiming the Benefit of A Prior-Filed
`Foreign Application Under 35 USC § 119(a)-(d) In The Above-Referenced Patent
`
`37 CFR § 1.55(c) provides that:
`
`(0) Unless such claim is accepted in accordance with the provisions of this
`paragraph, any claim for priority under 35 USC. 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 USC. 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.
`ll9(a)-(d) or
`365(a) must be accompanied by:
`ll9(a)—(d) or 365(a) and this section to the prior
`(l) The claim under 35 U.S.C.
`foreign application, unless previously submitted;
`(2) The surcharge set forth in § l.l7(t); and
`(3) A statement that the entire delay between the date the claim was due under
`paragraph (a)(l) 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.
`
`MPEP 201.16 provides that:
`
`In summary, 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. ll9(a)-(d) or
`(1‘) had been satisfied in the parent application prior to issuance of the patent and
`the requirements of 37 CFR l.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 l.55(c).
`
`B. Claim Under 35 U.S.C. § 119(a)—(d) and Surcharge Set Forth In 37 CFR § 1.17
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`Patent Owner respectfully requests acceptance of an unintentionally delayed foreign
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`priority claim under 35 U.S.C. § ll9(a)—(d) to French Patent Application No. FR 96 09420, filed
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`in France on July 26, 1996.
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`In accordance with MPEP § 201.16, the requested foreign priority
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`claim was perfected in a parent application. See Facts l-3.
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`Please charge any necessary fee or credit any overpayment pursuant to 37 CFR § 1.17 to
`
`Deposit Account No. 14-1437.
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`C. Statement Regarding Unintentional Delay
`
`The entire delay between the date the claim was due under paragraph (a)(1) of 37 CFR
`
`§1.55 and the date the claim was filed was unintentional.
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`

`

`CONCLUSION
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`The grant of the present Petition to accept the unintentionally delayed priority claims
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`under 35 USC §§ 119(a)-(d), 120 and 365(0) is respectfully requested.
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`In the event that the
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`Office requires additional information regarding this Petition or the patent otherwise, please
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`contact the undersigned representative Karen Kline (direct line: 561—847-7814).
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`Date: August 19, 2010
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`Respectfully submitted,
`
`NOVAK DRUCE + QUIGG LLP
`
`/Gregory A. Nelson/
`Gregory A. Nelson, Reg. No. 30,577
`Karen C. Kline, Reg. No. 59,907
`525 Okeechobee Blvd., 15th Floor
`West Palm Beach, FL 33401
`Tel:
`561-847—7800
`
`Fax:
`
`561—847—7801
`
`