UNITED STATES PATENT AND TRADEMARK OFFICE
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`Gregory A. Nelson
`Novak Druce & Quigg LLP
`525 Okeechobee 131ch
`Suite 1500
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`West Palm Beach FL 33401
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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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`MAILE D
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`JAN U5 2012
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`P T
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`c LEGALADM'N'STRAT'O”
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`In re Application of: PIRIM, 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 “REQUEST FOR RECONSIDERATION OF
`PETITION DECISION” filed on 20 May 2011, which requests reconsideration under 37 CFR §§
`1.78(a)(3) and 1.55(0). The petition under 37 CFR 1.78(a)(3) seeks to correct the domestic
`priority claim1n the above-captioned patent to identify the patent as a divisional of U. S.
`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.
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`1.
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`37 CFR 1.781an3l
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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 1.78(a)(2)(ii).l Under the circumstances present here, the
`petition is properly considered under 37 CFR 1.78(a)(3). S_ee 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 It is noted that the addition of the statement identifying U S. application number 09/230,502 as the national stage
`of PCT/FR97/Ol354IS not considered the addition of a new benefit claim that requires a petition under 37 CFR 1.78.
`S_ee MPEP section 1893.03(c), “a national stage application submitted under 35 U. S.C 371 may not claim benefit of
`the filing date of the international application of which it is the national stage since its filing date[Stile international
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`filing date of the international application.” SE also Broadcast Innovation L.L.C. and 10 Research PTY LTD v.
`Charter Communications, Inc. and Comcast Comoration, 420 F.3d 1364, 1367 (Fed. Cir., Aug 19, 2005): “Where
`proper reference to a national stage application exists, no reference to the corresponding PCT application is required
`because the national stage application effectively has the same U.S. filing date as the PCT application.”
`
`

`

`Application No. 11/676,926
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`2
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`(1)
`
`(2)
`(3)
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`the reference required by 35 U.S.C. 120 and 37 CFR
`1.78(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 1.78(a)(2)(ii) and the date the claim was filed was
`unintentional.
`'
`
`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.
`
`Petitioner argues that a request for Certificate of Correction may be used in lieu of an
`amendment or ADS to make the required reference. However, pursuant to the requirements of
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`35 U.S.C. 120 and Office policy, in the circumstances presented, petitioner must submit both a
`request for Certificate of Correction and an amendment to the application adding the specific
`reference to the parent application. Cf the Decision on Petition in 09/792,294, mailed on
`September 27, 2011. Petitioner is also advised that the amendment included in the instant
`petition does not comply with 37 CFR 1.121(b)(1)(iii).
`
`Based on the above, the petition under 37 CFR 1.78(a)(3) may not be granted on the
`present record.
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`2.
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`37 CFR 1.55§c[
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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. 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
`of 37 CFR 1.55(c).2
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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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`2 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.
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`

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`Application No. 11/676,926
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`'
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`3
`
`(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;
`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.
`The present petition fails to comply with item (1) above.
`
`(2)
`(3)
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`Pursuant to MPEP section 201.13, a claim for foreign priority must be contained
`in either an oath or declaration (37 CFR 163(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. Cf the Decision on Petition in 09/792,294, mailed
`on September 27, 2011. Accordingly, petitioner has not submitted the foreign priority claim in
`an acceptable form.
`
`Based on the above, applicants have failed to satisfy the requirements for a grantable
`petition under 357 CFR 1. 55(c) for acceptance of an unintentionally delayed foreign benefit
`claim.
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`DECISION
`
`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
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`/Boris Milef/
`Boris Milef
`PCT Legal Examiner
`Office of PCT Legal Administration
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