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2307.05 Corresponding Patent Claims Not Identified - 2300 Interference Proceedings
2307.05 Corresponding Patent Claims Not Identified
37 CFR 1.607(c) requires that "[w]hen an applicant presents a claim which corresponds exactly or substantially to a claim of a patent, the applicant shall identify the patent and the number of the patent claim, unless the claim is presented in response to a suggestion by the examiner."
This requirement of 37 CFR 1.607(c) applies to claims presented in an application at the time of filing as well as to claims presented in an amendment to a pending application. If an applicant, attorney, or agent presents a claim corresponding exactly or substantially to a patent claim without complying with 37 CFR 1.607(c), the examiner may be led into making an action different from what would have been made had the examiner been in possession of all the facts. Therefore, failure to comply with 37 CFR 1.607, when presenting a claim corresponding to a patent claim, may result in the issuance of a requirement for information as to why an identification of the source of the claim was not made. Also see 37 CFR 10.23(c)(7).
The examiner should require the applicant to supply a full identification of the copied patent claims by using Form Paragraph 23.11.
¶ 23.11 Failure To Identify Source of Patent Claims
Claim [1] of this application [2] apparently been copied from a U.S. patent without being suggested by the examiner. The patent number and the number of the copied claims have not been properly identified. 37 CFR 1.607(c).
Applicant is required to identify the patent and claim numbers and supply information explaining why a complete identification of the copied patent claim(s) has not been presented. Following applicant's reply to this requirement or the abandonment thereof, this application will be forwarded by the examiner to the Office of the Assistant Commissioner for Patents for appropriate review as noted under 37 CFR 1.607(c).
Applicant is given a TIME PERIOD of ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this communication for reply to avoid abandonment of this application.
Examiner Note
1. The primary examiner must refrain from commenting as to the reasons for applicant's failure to disclose the U. S. patent identification.
2. In bracket 2, insert --has-- or --have--, as appropriate.
After the applicant's reply or abandonment of the application, the examiner is required to "notify the Commissioner of any instance where an applicant fails to identify the patent" under 37 CFR 1.607(c). The examiner's notification should be in the form of a memorandum directed to the Office of the Deputy Commissioner for Patent Examination Policy. The memorandum must be accompanied by the application and a copy of the patent from which the claim(s) was copied.
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