UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`Gregory A. Nelson
`Novak Druce & Quigg LLP
`525 Okeechobee Blvd
`Suite 1500
`West Palm Beach FL 33401
`
`In re Application of: PIRIM, Patrick.
`US Application No.: 11/676,926
`US. Patent No.: 7,650,015
`Filing Date: February 20, 2007
`Attomey’s Docket No.: 8042-2-1
`For:
`IMAGE PROCESSING METHOD
`
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`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 22313-1450
`www.uxpto.gov
`
`MA|LED
`
`APR 0 5 2011
`
`M LEG"‘L"DM'N'STRATIOII
`
`DECISION ON PETITIONS
`UNDER 37 CFR 1.78(a)(3)
`AND 1.55(c))
`
`This decision is issued in response to “PETITION TO ACCEPT UNINTENTIONALLY
`DELAYED PRIORITY CLAIMS UNDER 37 CFR §§ 1.78(a)(3) and 1.55(c)” filed August 20,
`2010. The petition under 37 CFR 1.78(a)(3) seeks to correct the domestic priority claim in the
`above-captioned patent to identify the patent as a divisional of US. application number
`09/792,294, which is a continuation-in-part (CIP) of US. Application number 09/230,502, which
`is the national stage under 35 U.S.C. 371 of PCT/FR97/01354. The petition under 37 CFR
`1.55(c) seeks to add an unintentionally delayed claim of foreign priority to French application
`FR 9609420.
`
`For the reasons set forth below, the petitions are DISMISSED without prejudice.
`
`1.
`
`37 CFR 1.7813113)
`
`The above-captioned US. 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). & MPEP section 1481.03.
`
`A grantable petition under 37 CFR 1.78(a)(3) must be accompanied by the following:
`
`(1)
`
`(2)
`(3)
`
`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 1.17(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.
`
`

`

`’11
`
`
`
`Application No. 11/676,926
`
`2
`
`The present petition fails to comply with item (1) above.
`
`37 CFR 1.78(a)(2)(iii) states that the required reference to the prior-filed application(s)
`“must be included in an application data sheet (37 CFR 1.76) or the specification must be
`amended to contain such reference in the first sentence(s) following the title.” Petitioner here
`has filed a Certificate of Correction setting forth the corrected reference to the prior-filed
`applications; however, petitioner did not include an accompanying amendment to the
`specification of the application or a supplemental application data sheet. Accordingly, petitioner
`has not provided the reference to the prior-filed applications in the form required by 37 CFR
`1.78.
`
`In addition, it would not be appropriate to grant the petition at this time since the petition
`under 37 CFR 1.78(a)(3) in parent application number 09/792,294 has not been granted and, as
`such, the claimed chain of continuity has not been established.
`
`Based on the above, the petition under 37 CFR 1.78(a)(3) may not be granted on the
`present record.
`
`2.
`
`37 CFR 1.55(c)
`
`The above—captioned US. patent issued from an application filed after November 29,
`2000, and the foreign priority claim under 35 U.S.C. 119(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
`of37 CFR 1.55(c).‘
`
`A grantable petition under 37 CFR 1.55(0) to accept an unintentionally delayed claim for
`foreign priority requires the following:
`
`(1)
`
`(2)
`(3)
`
`the claim under 35 U.S.C. 119(a)—(d) or 365(a) and this section to the prior
`foreign application, unless previously submitted;
`the surcharge as set forth in 37 CFR 1.17(t);
`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.
`
`' As noted in the present petition, pursuant to MPEP section 201.16, a certificate of correction accompanied by a
`grantable petition under 37 CFR 1.55(c) is permissible for adding an unintentionally delayed foreign priority claim
`to an issued patent where the foreign priority claim to be added was perfected in a parent application prior to the
`issuance of the patent.
`
`

`

`Application No. 11/676,926
`
`3
`
`The present petition fails to comply with item (1) above.
`
`Pursuant to MPEP section 201.13, a claim for foreign priority must be contained in either
`an oath or declaration (37 CFR 1.63(c)(2)) or an application data sheet (37 CFR 1.76). Petitioner
`here has filed a Certificate of Correction setting forth the foreign priority claim; however,
`petitioner did not include an accompanying oath or declaration or a supplemental application
`data sheet containing such claim. Accordingly, petitioner has not submitted the foreign priority
`claim in an acceptable form.
`
`In addition, it would not be appropriate to grant the petition at this time since the petition
`under 37 CFR 1.55(c) in parent application number 09/792,294 has not been granted and, as
`such, the foreign priority claim to be added has not been perfected in the parent case.
`
`Based on the above, applicants have failed to satisfy the requirements for a grantable
`petition under 37 CFR 1.55(c) for acceptance of an unintentionally delayed foreign benefit claim.
`
`CONCLUSION
`
`For the reasons set forth above, the petitions under 37 CFR 1.78(a)(3) and 1.55(c) are
`DISMISSED without prejudice.
`
`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 of the
`letter marked to the attention of the Office of PCT Legal Administration.
`
`/George Dombroske/
`George Dombroske
`PCT Legal Examiner
`Office of PCT Legal Administration
`Telephone:
`(571) 272-3283
`
`[Boris Milef/
`Boris Milef
`PCT Legal Examiner
`Office of PCT Legal Administration
`
`