Tafas v. Dudas et al

Filing 178

NOTICE of Submission by Polestar Capital Associates, LLC, Norseman Group, LLC re 173 Memorandum in Support, Exhibits 21-27 to Amici Brief in Support of Summary Judgment (Attachments: # 1 Exhibit 21# 2 Exhibit 22# 3 Exhibit 23# 4 Exhibit 24# 5 Exhibit 25# 6 Exhibit 26# 7 Exhibit 27.1# 8 Exhibit 27.2# 9 Exhibit 27.3)(Franco, Craig) Modified text on 12/31/2007 (klau, ).

Tafas v. Dudas et al

Doc. 178 Att. 6

Case 1:07-cv-00846-JCC-TRJ

Document 178-7

Filed 12/27/2007

Page 1 of 32

Exhibit 26
SF-83 Supporting Statement estimating paperwork burdens (Sept. 26, 2007)

-40-

CUTS

Dockets.Justia.com

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Page 2 of 32

SF-83 SUPPORTING STATEMENT UNITED STATES PATENT AND TRADEMARK OFFICE Patent Processing (Updating) OMB Control Number 0651-0031 A. 1. JUSTIFICATION Necessity of Information Collection

The United States Patent and Trademark Office (USPTO) is required by 35 U.S.C. § 131 et seq. to examine an application for patent and, when appropriate, issue a patent. Also, the USPTO is required to publish patent applications, with certain exceptions, promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought under Title 35, United States Code ("eighteenmonth publication"). Certain situations may arise that require additional information to be supplied in order for the USPTO to further process the patent or application. The USPTO administers the statutes through various sections of the rules of practice in 37 CFR Part 1. During the processing for an application for a patent, the applicant or applicant's representative may be required or desire to submit additional information to the USPTO concerning the examination of a specific application. The specific information required or that may be submitted includes: information disclosure statement and citation, examination support documents, requests for extension of time, the establishment of small entity status, abandonment and revival of abandoned applications, disclaimers, appeals, petitions, expedited examination of design applications, transmittal forms, requests to inspect, copy and access patent applications, publication requests, certificates of mailing, transmittals, submission of priority documents and amendments, and examination support documents covering claims and continuations or continuations-in-part applications. The new information being added into this collection since the previous renewal includes 5 proposed additions for notices of proposed rulemakings, 6 change worksheets, 7 new forms/requirements, and 9 electronic forms. Table 1 identifies the proposed statutory and regulatory provisions that require the USPTO to collect this information:
Table 1: Information Requirements for Patent Processing (Updating)
Requirement Information Disclosure Statements and eIDS Transmittal Form Statute 35 U.S.C. § 2(b)(2) 35 U.S.C. § 2(b)(2) Rule 37 CFR 1.56, 1.97 and 1.98 37 CFR 1.4; 1.5, 1.48, 1.111, 1.116, 1.121, 1.125, 1.133 and 1.291

P000733

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Petitions for Extension of Time under 37 CFR 1.136(a) & (b) Express Abandonment under 37 CFR 1.138 Petition for Express Abandonment to Avoid Publication under 1.138(c) Disclaimers Request for Expedited Examination of a Design Application Notice of Appeal Information Disclosure Citation in a Patent Petitions to Revive Unintentionally or Unavoidably Abandoned Applications Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing Requests to Access, Inspect and Copy Deposit Account Order Form Certificates of Mailing/Transmission Statement under 37 CFR 3.73(b) Non-publication Request Rescission of Previous Non-publication Request (35 U.S.C. § 122(b)(2)(B)(ii)) and, if applicable, Notice of Foreign Filing (35 U.S.C. § 122(b)(2)(B)(iii)) Electronic Filing System (EFS) Copy of Application for Publication Copy of File Content Showing Redactions Copy of the Applicant or Patentee's Record of the Application (including copies of the correspondence, list of the correspondence, and statements verifying whether the record is complete or not) Request for Continued Examination (RCE) Transmittal Request for Continued Examination (RCE) Transmittal EFS-Web Written request for an oral appeal hearing before the Board, filed in a separate paper from the appeal itself Request for Deferral of Examination 37 CFR 1.103(d) Request for Voluntary Publication or Republication Applicant Initiated Interview Request Form Petition for Request for Documents in a Form Other Than That Provided by 1.19

35 U.S.C. §§ 2(b)(2), 41(a)(8), 131 and 132 35 U.S.C. §§ 2(b)(2), 131 & 132 35 U.S.C. § 122(b) 35 U.S.C. § 253 35 U.S.C. § 2(b)(2) 35 U.S.C. § 134 35 U.S.C. § 301 35 U.S.C. §§ 41(a)(7), 111, 133, 151 and 371(d) 35 U.S.C. § 2(b)(2)

37 CFR 1.136 37 CFR 1.138 37 CFR 1.38(c) and 1.211(a)(1) 37 CFR 1.321 37 CFR 1.155 37 CFR 1.191 37 CFR 1.501 37 CFR 1.137 37 CFR 1.137 and 1.213

35 U.S.C. § 122 35 U.S.C. § 2(b)(2) 35 U.S.C. §§ 2(b)(2) and 21(a) 35 U.S.C. § 2(b)(2) 35 U.S.C. § 122(b)(2)(B)(i) 35 U.S.C. §§ 122(b)(2)(B)(ii) and 122(b)(2)(B)(iii) 35 U.S.C. §§ 122(b) and 122(b)(2)(B)(v) 35 U.S.C. § 122(b) 35 U.S.C. § 2(b)(2)

37 CFR 1.14 37 CFR 1.25 37 CFR 1.8 37 CFR 3.73(b) 37 CFR 1.213(a) 37 CFR 1.213(b)

37 CFR 1.215, 1.217, 1.219 and 1.221 37 CFR 1.217(d) 37 CFR 1.251

35 U.S.C. § 132(b) 35 U.S.C. § 132(b) 35 U.S.C. § 134 35 U.S.C. §§ 2(b)(2) and 131 35 U.S.C. § 2(b)(2) 35 U.S.C. § 2(b)(2) 35 U.S.C. §§ 2(b)(2), 131 and 132

37 CFR 1.114 37 CFR 1.114 37 CFR 1.194(b) 37 CFR 1.103(d) 37 CFR 1.221 37 CFR 1.133 37 CFR 1.19(i) and (j)

2

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Petitions under 37 CFR 1.17(f) include: Petition to Accord a Filing Date under 1.57(a) Petition to Accord a Filing Date under 1.153(d) Petition for Decision on a Question Not Specifically Provided For Petition to Suspend the Rules Petitions under 37 CFR 1.17(g) include: Petition to Access an Assignment Record Petition for Access to an Application Petition for Expungement and Return of Information Petition to Suspend Action in an Application Petitions under 37 CFR 1.17(h) include: Petition for Accepting Color Drawings or Photographs Petition for Entry of a Model or Exhibit Petition to Withdraw an Application from Issue Petition to Defer Issuance of a Patent Request for Processing of Replacement Drawings to Include the Drawings in Any Patent Application Publication Processing Fee under 37 CFR 1.17(i) Transmittal Petition Fee under 37 CFR 1.17(f), (g) and (h) Transmittal Request to Retrieve Electronic Priority Application(s) under 37 CFR 1.55(d) Authorization for Permit Access to Participating Offices under 37 CFR 1.14(h) Application by

35 U.S.C. §§ 131 and 132

37 CFR 1.17(f), 1.53(e), 1.57(e), 1.182 and 1.183

35 U.S.C. §§ 131 and 132

37 CFR 1.12, 1.14, 1.17(g), 1.59 and 1.102

35 U.S.C. §§ 131 and 132

37 CFR 1.17(h), 1.84, 1.91, 1.103(d), 1.313 and 1.314

35 U.S.C. §§ 2(b)(2), 131 and 132 35 U.S.C. § 2(b)(2) 35 U.S.C. § 2(b)(2) 35 U.S.C. § 2(b)(2) 35 U.S.C. § 2(b)(2) 35 U.S.C. § 4(d)(1)(D) 35 U.S.C. §§ 2(b)(2) and 134 35 U.S.C. § 2(b)(2) 35 U.S.C. § 2(b)(2) 35 U.S.C. § 2(b)(2) 35 U.S.C. §§ 2(b) and 131

37 CFR 1.215 37 CFR 1.17(i) 37 CFR 1.17(f), (g) and (h) 37 CFR 1.155(d) 37 CFR 1.14(h) 37 CFR 1.138(d) 37 CFR 41.32 37 CFR 1.54, 1.76(a) and 1.48(a) and (c) 37 CFR 1.54, 1.76(a) and 1.48(a) and (c) 37 CFR 1.102 37 CFR 1.75(b)

Petition for Express Abandonment to Obtain a Refund Pre-Appeal Brief Request for Review Request for Corrected Filing Receipt Request for Corrected Filing Receipt (electronic) Petition to Make Special under Accelerated Examination Program Examination Support Document Transmittal (examination support document filed in certain nonprovisional applications covering the independent claims and the designated dependent claims) Examination Support Document Listing of References 37 CFR 1.265(c) (examination support document filed in certain nonprovisional applications covering the independent claims and the designated dependent claims) Petition for a second continuation or continuation-in-part application showing why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the prior-filed application Petition for a second request for continued examination showing why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the application

35 U.S.C. §§ 2(b) and 131

37 CFR 1.75(b)

35 U.S.C. §§ 2(b) and 120

37 CFR 1.78(d)(1)(iv)

35 U.S.C. §§ 2(b) and 132(b)

37 CFR 1.114(f)

3

P000735

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Listing of Commonly Owned Application and Patents 37 CFR 1.78(f) (explanations filed in certain non-provisional applications of either how the claims are patentably distinct or why there are patentably indistinct claims filed in multiple applications) Listing of Commonly Owned Application and Patents 37 CFR 1.78(f) EFS-Web (explanations filed in certain non-provisional applications of either how the claims are patentably distinct or why there are patentably indistinct claims filed in multiple applications) Request for First-Action Interview (Pilot Program) Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.102(c)(1) Request for Streamlined Docketing Procedure

35 U.S.C. § 2(b)

37 CFR 1.78(f)(2)

35 U.S.C. § 2(b)

37 CFR 1.78(f)(2)

35 U.S.C. § 2(b) 35 U.S.C. § 2(b) 35 U.S.C. §§ 2(b) and 111(a)

37 CFR 1.133 37 CFR 1.102(c)(1) 37 CFR 1.173(d)(1) (proposed) and 1.138

2.

Needs and Uses

The Information Quality Guidelines from Section 515 of Public Law 106-554, Treasury and General Government Appropriations Act for Fiscal Year 2001, apply to this information collection and comply with all applicable information quality guidelines, i.e., OMB and specific operating unit guidelines. This proposed collection of information will result in information that will be collected, maintained, and used in a way consistent with all applicable OMB and USPTO Information Quality Guidelines. Table 2 outlines how this information is used by the public and by the USPTO:
Table 2: Needs and Uses for Patent Processing (Updating)
Form and Function Information Disclosure Statements (Ref. A) Form # PTO/SB/08a/ 08b and EFSWeb PTO/SB/21 Needs and Uses · Used by the applicant to meet the applicant's duty of disclosure under 37 CFR 1.56. · Used by the USPTO when printing the patent document. · Used by the applicant to indicate what type of correspondence is being submitted. · Used by the USPTO to determine the specific contents of the communication. · Used by the USPTO to facilitate the routing of papers to the most appropriate USPTO locations. · Used by the applicant to request an extension of time. · Used by the USPTO to determine whether the reason for requesting an extension is sufficient for granting it. · Used by the USPTO to decide the correct fee, based upon the number of months of extension requested, and whether or not the applicant is entitled to small entity status.

Transmittal Form (Ref. B)

Petitions for Extension of Time (Ref. C)

PTO/SB/22/23

4

P000736

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Express Abandonment (Ref. D)

PTO/SB/24

· Used by the applicant to expressly abandon an application. · Used by the USPTO to determine whether the application is expressly abandoned. · Used by the USPTO to determine whether an application has been expressly abandoned in favor of a continuation or divisional application. · Used by the applicant to expressly request abandonment of an application to avoid publication of the application. · Used by the USPTO to expressly abandon the application prior to its publication. · Used by the applicant or assignee to disclaim the entire term or part of a term of a patent or a patent to be granted. · Used by the USPTO to determine whether all owners have provided the required terminal disclaimer and to determine the length of the patent term to which the patentee is entitled. · Used by the Certificate of Corrections branch of the USPTO for determining whether regulatory compliance has been met, for recording the disclaimer, and for providing the disclaimer data for printing. · Used by the applicant to request expedited examination of a design application. · Used by the USPTO to ensure that all of the required information to expedite examination is provided and to process the request. · Used by the applicant to file a Notice of Appeal. · Used by the USPTO to ensure that applicants comply with regulations when filing a Notice of Appeal. · Informs the patent owner and the public that the patents or printed publications cited are in existence. · Used by the examiner in subsequent reissue or reexamination proceedings. · Used by the applicant to request that applications that were unintentionally or unavoidably abandoned be revived. · Used by the USPTO to ensure that applicants have included all the proper documentation and fees necessary to revive an unintentionally or unavoidably abandoned application. · Used by the applicant to revive an application for patent abandoned for failure to timely notify the office of a foreign or international filing. · Used by the USPTO to revive an application for patent abandoned for failure to timely notify the office of a foreign or international filing. · Used by the public to request permission to inspect and/or make copies in accordance with regulations. · Ensures that applications are maintained in confidence in accordance with regulations. · Used by the USPTO to determine that the persons requesting permission to inspect and/or make copies are authorized to do so. · Used by the USPTO to verify that the application requested is abandoned and that it has been referred to in the referenced U.S. patent. · Used by the public to order goods or services using an established deposit account. · Used by the USPTO to process orders for articles or services, and to identify the deposit account to which an order should be charged.

Petition for express abandonment to avoid publication under 37 CFR 1.138(c) (Ref. E)

PTO/SB/24A

Disclaimers (Ref. F)

PTO/SB/25/26/ 43/62/63

Request for Expedited Examination of a Design Application (Ref. G)

PTO/SB/27

Notice of Appeal (Ref. H)

PTO/SB/31

Information Disclosure Citation (Ref. I)

PTO/SB/42

Petitions to Revive Unintentionally or Unavoidably Abandoned Applications (Ref. J)

PTO/SB/61/64

Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing (Ref. K)

PTO/SB/64a

Requests to Access, Inspect and Copy (Ref. L)

PTO/SB/67/68

Deposit Account Order Form (Ref. M)

PTO/SB/91

5

P000737

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Certificate of Mailing/Transmission (Ref. N)

PTO/SB/92/97

· Used by the applicant as evidence of the date for replies to actions by the USPTO. · Used by the USPTO to determine the timeliness of replies by an applicant to actions by the USPTO. · Used by the applicant to show that this person has their authority to take actions on their behalf. · Used by the USPTO to determine that the person signing has authority to take action on behalf of an assignee. · Used by the applicant to request that the USPTO not publish the application under 37 U.S.C. § 122(b). · Used by the USPTO to determine whether the application should be published under 35 U.S.C § 122(b). · Used by the applicant to rescind a previously filed request that the USPTO not publish the application under 35 U.S.C. § 122 (b)(2)(B)(ii). · Used by the applicant to provide notice of a foreign or international filing required by 35 U.S.C. § 122 (b)(2)(B)(iii). · Used by the USPTO to determine that the application is subject to eighteen-month publication. · Used by the applicant to obtain publication of a version of the application different from the application as initially submitted to the USPTO. · Used by the applicant to request publication of an application earlier than as provided for by eighteen-month publication or of an application that is not subject to eighteen-month publication. · Used by the USPTO to create a publication document as part of the USPTO's publication of the application. · Used by the applicant to show redactions to USPTO actions/notices and the applicant's replies. · Used by the USPTO to confirm what redactions are made to the copy of application file content that is provided to the public. · Used by the applicant to assist the USPTO in reconstructing a current copy of a missing patent or application file. · Used by the USPTO to notify the applicant that the application or patent file is unlocatable and to request a copy of the applicant's or patentee's record of the application or patent file (including copies of the correspondence, list of the correspondence, and statements verifying whether the record is complete or not) in order to reconstruct the file of an unlocatable application or patent.

Statement under 37 CFR 3.73(b) (Ref. O)

PTO/SB/96

Non-publication Request (Ref. P)

PTO/SB/35

Notice of Rescission of Previous Nonpublication Request (35 U.S.C. § 122 (b)(2)(B)(ii)) and, if applicable, Notice of Foreign Filing (35 U.S.C. § 122 (b)(2)(B)(iii)) (Ref. Q)

PTO/SB/36

Electronic filing system (EFS) copy of application for publication (Ref. R)

Electronic form via EFS

Copy of file content showing redactions

No Form

Copy of Applicant or Patentee's Record of the Application (including copies of the correspondence, list of the correspondence, and statements verifying whether the record is complete or not) Notice Under 37 CFR 1.251 ­ Pending Application (Ref. S ) Notice Under 37 CFR 1.251 ­ Abandoned Application (Ref. T) Notice Under 37 CFR 1.251 ­ Patent (Ref. U) Request for Continued Examination (RCE) (Ref. V)

PTO-2053-A/B PTO-2054-A/B PTO-2055-A/B

PTO/SB/30

· Used by the applicant to request continued examination of a previously submitted application. · Used by the USPTO to process and initiate continued examination of a previously submitted application. · Used by the applicant to request continued examination of a previously submitted application. · Used by the USPTO to process and initiate continued examination of a previously submitted application. · Used by the applicant to file a written request in a separate paper for an oral hearing before the Board. · Used by the USPTO to process and consider the request for an oral appeal hearing.

Request for Continued Examination (RCE) EFS-Web (Ref. W) Request for Oral Hearing Before the Board of Patent Appeals and Interferences (Ref. X)

PTO/SB/30EFS

PTO/SB/32

6

P000738

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Request for Deferral of Examination 37 CFR 1.103(d) (Ref. Y)

PTO/SB/37

· Used by the applicant to request deferred examination of a patent application for up to three years from the earliest filing date for which a benefit is claimed. · Used by the USPTO to process and consider this request for deferral of examination. · Voluntary Publication: Used by the applicant to request publication of an application filed prior to November 29, 2000. · Republication: Used by the applicant to correct prior application publications containing material errors caused by the USPTO, or to correct other data, such as claims that previously published as part of an application publication. · Used by the USPTO to publish an application filed prior to November 29, 2000, or to correct prior application publication errors. · Used by the applicant to request an interview. · Used by the applicant to assist in the preparation of a written record of the interview. · Used by the USPTO to allow the examiner to prepare in advance for an applicant initiated interview. · Used by the USPTO to allow the examiner to focus on the issued to be discussed in the applicant initiated interview. · Used by the USPTO to identify whether agreement has been reached. · Used by the applicant to obtain copies of documents that have been submitted in a form other than provided for by the rules of practice. · Used by the USPTO to provide copies of documents that have been submitted in a form other than provided for by the rules of practice. · Used by the applicant to request agreement to a filing date. · Used by the applicant to request a decision on a question not specifically provided for. · Used by the applicant to ask for suspension of the rules. · Used by the USPTO to agree to a filing date. · Used by the USPTO to grant a decision on a question not specifically provided for. · Used by the USPTO to agree to a suspension of the rules. · Used by the applicant to request access to an assignment record. · Used by the applicant to request access to an application. · Used by the applicant to request expungement and return of information. · Used by the applicant to request to suspend action in an application. · Used by the USPTO to grant access to an assignment record. · Used by the USPTO to grant access to an application. · Used by the USPTO to expunge and return information. · Used by the USPTO to suspend action on an application. · Used by an applicant to submit color drawings or photographs. · Used by an applicant to submit a model or exhibit. · Used by an applicant to request withdrawal of an application from issue. · Used by an applicant to request permission to defer issuance of a patent. · Used by the USPTO to accept color drawings or photographs from an applicant. · Used by the USPTO to accept a model or exhibit. · Used by the USPTO to withdraw an application from issue. · Used by the USPTO to defer issuance of a patent.

Request for Voluntary Publication or Republication

EFS-Web Only

Applicant Initiated Interview Request Form (Ref. Z)

PTOL/413A

Petition for Request for Documents in a Form Other Than That Provided by 1.19

No Form

Petitions under 37 CFR 1.17(f) include: Petition to Accord a Filing Date under 1.57(a) Petition to Accord a Filing Date under 1.153(d) Petition for Decision on a Question Not Specifically Provided For Petition to Suspend the Rules Petitions under 37 CFR 1.17(g) include: Petition to Access an Assignment Record Petition for Access to an Application Petition for Expungement and Return of Information Petition to Suspend Action in an Application

No Form

No Form

Petitions under 37 CFR 1.17(h) include: Petition for Accepting Color Drawings or Photographs Petition for Entry of a Model or Exhibit Petition to Withdraw an Application from Issue Petition to Defer Issuance of a Patent

No Form

7

P000739

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Request for Processing of Replacement Drawings to Include the Drawings in Any Patent Application Publication

No Form

· Used by applicants to request replacement drawings to be included as the drawings in any patent application publication. · Used by the USPTO to process replacement drawings to be included as the drawings in any patent application publication. · Used by the applicant to identify the proper fee, and thus reduce the potential for any additional work due to mistakes in payment. · Used by the USPTO to process the appropriate fees. · Used by the applicant to identify the proper fee, and thus reduce the potential for any additional work due to mistakes in payment. · Used by the USPTO to process the appropriate fees. · Used by the applicant to request that the USPTO retrieve priority documents from the other participating intellectual property offices. · Used by the USPTO to retrieve priority documents from the other participating intellectual property offices. · Used by the applicant to authorize the USPTO to release confidential documents to other participating intellectual property offices that are important to the prosecution of the patent application. · Used by the USPTO to properly release confidential documents to other participating intellectual property offices that are important to the prosecution of the patent application. · Used by the applicant to expressly abandon the application for a refund of the search fee if recognized by an appropriate USPTO official prior to examination of the application. · Used by the USPTO to expressly abandon the application and to refund the search fee to the applicant if recognized by an appropriate USPTO official prior to examination of the application. · Used by the applicant to request that a panel of examiners formally review the basis of the rejections in their application prior to filing an appeal brief. · Used by the USPTO to determine whether an appeal should be maintained. · Used by the applicant to request a corrected filing receipt. · Used by the USPTO to correct errors in application data. · Used by the applicant to electronically request a corrected filing receipt. · Used by the USPTO to correct errors in application data.

Processing Fee under 37 CFR 1.17(i) Transmittal (Ref. AA) Petition Fee under 37 CFR 1.17(f), (g) and (h) Transmittal (Ref. BB) Request to Retrieve Electronic Priority Application(s) under 37 CFR 1.55(d) (Ref. CC)

PTO/SB/17i

PTO/SB/17P

PTO/SB/38

Authorization for Permit Access to Application by Participating Offices under 37 CFR 1.14(h) (Ref. DD)

PTO/SB/39

Petition for Express Abandonment to Obtain a Refund (Ref. EE)

PTO/SB/24B

Pre-Appeal Brief Request for Review (Ref. FF)

PTO/SB/33

Request for Corrected Filing Receipt

No Form

Request for Corrected Filing Receipt (electronic)

No Form (possibly capable through private PAIR) PTO/SB/28 EFS-Web Only

Petition to Make Special under Accelerated Examination Program (Ref. GG)

· Used by the applicant to assist in meeting the requirements necessary to request accelerated examination. · Used by the applicant to increase the likelihood of a filing of a grantable application. · Used by the USPTO to assist in the expeditious processing of the petitions to make special. · Used by the applicant to prepare a schedule of claims that are patentable (i.e., novel and non-obvious) over the prior art, and to explain how the claims are patentable over the prior art. · Used by the USPTO in determining whether the claims are patentable over the prior art.

Examination Support Document Transmittal (examination support document filed in certain non-provisional applications covering the independent claims and the designated dependent claims) (Ref. HH)

PTO/SB/216

8

P000740

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Examination Support Document Listing of References 37 CFR 1.265(c) (examination support document filed in certain non-provisional applications covering the independent claims and the designated dependent claims) (Ref. II) Petition for a second continuation or continuation-in-part application showing why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the prior-filed application (proposed 37 CFR 1.78(d)(1)(iv)) Petition for a second request for continued examination showing why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the application (proposed 37 CFR 1.114(f))

PTO/SB/211

· Used by the applicant to prepare a schedule of claims that are patentable (i.e., novel and non-obvious) over the prior art, and to explain how the claims are patentable over the prior art. · Used by the USPTO in determining whether the claims are patentable over the prior art.

No Form

· Used by the applicant to explain how the continuation or continuation-in-part application is a bona fide attempt to advance the application to final agency action. · Used by the USPTO to determine whether the continuation or continuation-in-part application is a bona fide attempt to advance the application to final agency action or is simply being filed to delay examination. · Used by the applicant to explain how the request for continued examination is a bona fide attempt to advance the application to final agency action. · Used by the USPTO to determine whether the request for continued examination is a bona fide attempt to advance the application to final agency action or is simply being filed to delay examination. · Used by the applicant to explain, when multiple applications have been filed on the same day, whether the applications contain only patentably distinct claims or why there are patentably indistinct claims filed in multiple applications. · Used by the USPTO to determine whether double patenting exists and whether the applications should be merged.

No Form

Listing of Commonly Owned Applications and Patents 37 CFR 1.78(f) (explanations filed in certain nonprovisional applications of either how the claims are patentably distinct or why there are patentably indistinct claims filed in multiple applications) (Ref. JJ) Listing of Commonly Owned Applications and Patents 37 CFR 1.78(f) EFS-Web (explanations filed in certain nonprovisional applications of either how the claims are patentably distinct or why there are patentably indistinct claims filed in multiple applications) (Ref. KK) Request for First-Action Interview (Pilot Program) (Ref. LL)

PTO/SB/206

PTO/SB/206 EFS-Web

· Used by the applicant to explain, when multiple applications have been filed on the same day, whether the applications contain only patentably distinct claims or why there are patentably indistinct claims filed in multiple applications. · Used by the USPTO to determine whether double patenting exists and whether the applications should be merged.

PTOL-413C EFS-Web Only

· Used by the applicant to request a first-action interview prior to the first Office action on the merits to advance prosecution of the application. · Used by the USPTO to grant advancement of examination for the first Office action on the merits. · Used by the applicant to petition that an application be made special for advancement of examination by showing that the applicant is 65 year of age, or more. · Used by the USPTO to assist in the expeditious processing of the petition to make special based on age. · Used by the applicant to request a continuation application from a prior-filed application under a final Office action or under appeal. · Used by the USPTO to enable the resulting continuation application to be placed on the examiner's New Special docket.

Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.102(c)(1) (Ref. MM)

PTO/SB/130 EFS-Web Only

Request for Streamlined Docketing Procedure (Ref. NN)

PTO/SB/201

3.

Use of Information Technology

Generally, the USPTO does not use automated, electronic, mechanical, or other technologies to collect information for this collection. The USPTO allows applicants to use an electronic signature, which is consistent with international standards for
9

P000741

Case 1:07-cv-00846-JCC-TRJ

Document 178-7

Filed 12/27/2007

Page 11 of 32

electronic signatures, for patent application and reexamination proceeding documents created with a word processor as well as the fillable forms that can be accessed through the USPTO website. The USPTO's new web-based electronic filing system, EFS-Web, became available to the public on March 17, 2006. EFS-Web allows customers to file applications and associated documents through their standard web browser and does not require any significant client-side components. EFS-Web permits most patent applications and other patent-related documents to be submitted in portable document file (PDF) format. Accordingly, EFS-Web enables users to streamline processing and filing of patent correspondence, and to better integrate electronic filing into their current computer systems. EFS-Web offers many potential benefits to filers, including form validation to ensure that all required information has been included, immediate notification that a submission has been received, automated processing of requests, and avoidance of postage or other paper delivery costs. Correspondence officially submitted via EFS-Web is accorded a "receipt date," which is the date the correspondence was received by the USPTO. After a successful submission, an acknowledgement receipt contains the receipt date, the time the correspondence was received at the USPTO, and a full listing of the correspondence submitted. The USPTO provides restricted Internet access to patent application status for applicants and their designated representatives through the Patent Application Information Retrieval (PAIR) system, which is available at the USPTO website. PAIR provides USPTO customers with secure and immediate access to up-to-date application status and history information by the use of digital certificates, which maintain the confidentiality of the information transmitted electronically over the Internet. In addition to being sent to the customer, acknowledgement receipts for EFS-Web submissions will also be available in PAIR. The USPTO does not intend to disseminate any confidential application information to the general public electronically through PAIR or any other means. However, the general public may use PAIR to access non-private information regarding published applications and granted patents. 4. Efforts to Identify Duplication

This information is collected during the pendency of a patent application. It does not duplicate information or collection of data found elsewhere. 5. Minimizing the Burden to Small Entities

No significant impact is placed on small entities. Small entities simply need to identify themselves as such to obtain the benefits of small entity status. Pursuant to 35 U.S.C. § 41(h)(1), the USPTO provides a fifty percent (50%) reduction in the fees charged under 35 U.S.C. § 41(a) and (b) for small entities. The USPTO's

10

P000742

Case 1:07-cv-00846-JCC-TRJ

Document 178-7

Filed 12/27/2007

Page 12 of 32

regulations concerning the payment of reduced patent fees by small entities are at 37 CFR 1.27 and 1.28, and reduced patent fees for small entity applicants are shown in 37 CFR 1.16, 1.17, 1.18 and 1.20. 6. Consequences of Less Frequent Collection

This information is collected only as required to process a patent application or enforceable patent, and is not collected elsewhere. Therefore, this collection of information could not be conducted less frequently. If this information were not collected, the USPTO would not be able to comply with the patent statute 35 U.S.C. § 131. 7. Special Circumstances in the Conduct of Information Collection

There are no special circumstances associated with this collection of information. 8. Consultation Outside the Agency

The 60-Day Notice was published in the Federal Register on May 30, 2006 (71 Fed Reg. 103). The comment period ended on July 31, 2006. No public comments were received. The USPTO has long-standing relationships with groups from whom patent application data is collected, such as the American Intellectual Property Law Association (AIPLA), as well as patent bar associations, inventor groups, and users of our public facilities. Their views are expressed in regularly scheduled meetings and considered in developing proposals for information collection requirements. There have been no comments or concerns expressed by these or similar organizations concerning the time required to provide the information required under this program. 9. Payment or Gifts to Respondents

This information collection does not involve a payment or gift to any respondent. 10. Assurance of Confidentiality

Confidentiality of patent applications is governed by 35 U.S.C. § 122 and 37 CFR 1.14. Upon publication of an application or issuance of an application as a patent, the entire file contents of the application are available to the public (subject to the provisions for providing only a redacted copy of the filed contents). The disclosure of the invention in the application is the quid pro quo for the property right conferred by the patent grant, and the very means by which the patent statute achieves its constitutional objective of "promot[ing] the progress of science and useful arts." The prosecution history contained in the application file is critical to determining the scope of the property right conferred by a patent grant.

11

P000743

Case 1:07-cv-00846-JCC-TRJ

Document 178-7

Filed 12/27/2007

Page 13 of 32

To further define the boundaries of the confidentiality of patent applications in light of the eighteen-month publication of patent applications introduced under the American Inventors Protection Act of 1999, the USPTO amended 37 CFR 1.14 to maintain the confidentiality only of applications that have not been published as a U.S. patent application publication. 37 CFR 1.14 now provides that the public can obtain status information about the application, such as whether the application is pending, abandoned, or patented, whether the application has been published under 35 U.S.C. § 122(b), and the application "numerical identifier." This information can be supplied to the public under certain conditions. The public can also receive copies of an application-as-filed and the file wrapper, as long as it meets certain criteria. The confidentiality, security, integrity, authenticity, and non-repudiation of patent applications submitted electronically through EFS-Web is maintained using PKI technology and digital certificates for registered users. Applications electronically filed by non-registered users are protected using TLS or SSL ptotocols. The ePAVE submission software encrypts the electronic patent application package. The authorized filer electronically signs the application and then it is "digitally" signed using the digital certificates. Because ePAVE is also cryptographic software, it is subject to export and import restrictions of the United States. The license agreement informs those installing and using this software that they cannot export or import this software, nor can they be located in, under the control of, or a national or resident of countries that are under export or import restrictions. 11. Justification for Sensitive Questions

None of the required information is considered to be of a sensitive nature. 12. Estimate of Hour and Cost Burden to Respondents

Table 3 calculates the anticipated burden hours and costs of this information collection to the public, based on the following factors:
· Respondent Calculation Factors The USPTO estimates that it will receive 2,643,259 responses to this information collection annually. Burden Hour Calculation Factors The USPTO estimates that it will take the public an average of 1 minute, 48 seconds (0.03 hours) to 22 hours (22.0) to complete the collections of information described in this submission, depending on the nature of the information. This includes time to gather the necessary information, create the documents, and mail the completed request. The time estimates shown for the electronic forms in this collection are based on the average amount of time needed to complete and electronically file the associated form. Cost Burden Calculation Factors The USPTO believes that both attorneys and paralegals will supply the information requested for this information collection. The professional rate of $304 per hour used in

·

·

12

P000744

Case 1:07-cv-00846-JCC-TRJ

Document 178-7

Filed 12/27/2007

Page 14 of 32

this submission to calculate the respondent cost burden is the median rate for associate attorneys in private firms as published in the 2005 report of the Committee on Economics of Legal Practice of the American Intellectual Property Law Association. This report summarized the results of a survey with data on hourly billing rates. The paraprofessional rate is $90 per hour. These are fully loaded hourly rates.
Table 3: Burden Hour/Burden Cost to Respondents for Patent Processing (Updating)
Item Hours (a) Response s (yr) (b) 273,300 68,450 71,150 52,250 Burden (hrs/yr) (a) x (b) (c) 546,600 136,900 284,600 261,250 Rate ($/hr) (d) $304.00 $304.00 $304.00 $304.00 Total Cost ($/hr) (c) x (d) (e) $166,166,400.00 $41,617,600.00 $86,518,400.00 $79,420,000.00

Information Disclosure Statements with no additional disclosure requirements eIDS (Information Disclosure Statements) filed with no additional disclosure requirements Information Disclosure Statements filed during the first time period that require the explanation Information Disclosure Statements filed during the second time period that require the explanation and non-cumulative description Information Disclosure Statements filed during the third time period that require the first patentability justification Information Disclosure Statements filed during the third time period that require the second patentability justification Transmittal Form Petition for Extension of Time under 37 CFR 1.136(a) Petition for Extension of Time under 37 CFR 1.136(b) Express Abandonment under 37 CFR 1.138 Petition for Express Abandonment to Avoid Publication Under 1.138(c) Disclaimers Request for Expedited Examination of a Design Application Notice of Appeal Information Disclosure Citation in a Patent Petition for Revival of an Application for Patent Abandoned Unavoidably Petition for Revival of an Application for Patent Abandoned Unintentionally Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing

2.00 2.00 4.00 5.00

6.00

3,850

23,100

$304.00

$7,022,400.00

7.00

1,000

7,000

$304.00

$2,128,000.00

2.00 0.10 0.50 0.20 0.20 0.20 0.10 0.20 2.00 8.00 1.00 1.00

1,039,500 189,000 54 13,825 500 15,000 130 16,500 1,830 585 6,950 2,400

2,079,000 18,900 27 2,765 100 3,000 13 3,300 3,660 4,680 6,950 2,400

$90.00 $90.00 $304.00 $90.00 $90.00 $304.00 $304.00 $304.00 $304.00 $304.00 $304.00 $304.00

$187,110,000.00 $1,701,000.00 $8,208.00 $248,850.00 $9,000.00 $912,000.00 $3,952.00 $1,003,200.00 $1,112,640.00 $1,422,720.00 $2,112,800.00 $729,600.00

13

P000745

Case 1:07-cv-00846-JCC-TRJ

Document 178-7

Filed 12/27/2007

Page 15 of 32

Requests to Access, Inspect and Copy Deposit Account Order Form Certificates of Mailing/Transmission Statement Under 37 CFR 3.73(b) Non-publication Request Rescission of Previous Non-publication Request (35 U.S.C. § 122(b)(2)(B)(ii)) and, if applicable, Notice of Foreign Filing (35 U.S.C. § 122(b)(2)(B)(iii)) Electronic Filing System (EFS) Copy of Application for Publication Copy of File Content Showing Redactions Copy of the Applicant or Patentee's Record of the Application (including copies of the correspondence, list of the correspondence, and statements verifying whether the record is complete or not) Request for Continued Examination (RCE) Transmittal Request for Continued Examination (RCE) Transmittal EFS-Web Request for Oral Hearing Before the Board of Patent Appeals and Interferences Request for Deferral of Examination 37 CFR 1.103(d) Request for Voluntary Publication or Republication EFS-Web Applicant Initiated Interview Request Form Petition for Request for Documents in a Form Other Than That Provided by 1.19 Petitions under 37 CFR 1.17(f) include: Petition to Accord a Filing Date under 1.57(a) Petition to Accord a Filing Date under 1.153(d) Petition for Decision on a Question Not Specifically Provided For Petition to Suspend the Rules Petitions under 37 CFR 1.17(g) include: Petition to Access an Assignment Record Petition for Access to an Application Petition for Expungement and Return of Information Petition to Suspend Action in an Application

0.20 0.20 0.03 0.20 0.10 0.10

18,650 1,160 590,000 19,450 31,500 525

3,730 232 17,700 3,890 3,150 53

$90.00 $90.00 $90.00 $304.00 $304.00 $304.00

$335,700.00 $20,880.00 $1,593,000.00 $1,182,560.00 $957,600.00 $16,112.00

2.50 4.00 1.00

1,000 12 235

2,500 48 235

$90.00 $304.00 $90.00

$225,000.00 $14,592.00 $21,150.00

0.20 0.20

54,300 1,700

10,860 340

$304.00 $304.00

$3,301,440.00 $103,360.00

0.20 0.20 0.20 0.35 1.00 4.00

750 53 1,400 1,600 50 3,300

150 11 280 560 50 13,200

$304.00 $304.00 $90.00 $304.00 $90.00 $304.00

$45,600.00 $3,344.00 $25,200.00 $170,240.00 $4,500.00 $4,012,800.00

2.00

3,600

7,200

$304.00

$2,188,800.00

14

P000746

Case 1:07-cv-00846-JCC-TRJ

Document 178-7

Filed 12/27/2007

Page 16 of 32

Petitions under 37 CFR 1.17(h) include: Petition for Accepting Color Drawings or Photographs Petition for Entry of a Model or Exhibit Petition to Withdraw an Application from Issue Petition to Defer Issuance of a Patent Request for Processing of Replacement Drawings to Include the Drawings in Any Patent Application Publication Processing Fee Under 37 CFR 1.17(i) Transmittal Petition Fee Under 37 CFR 1.17(f), (g) and (h) Transmittal Request to Retrieve Electronic Priority Application(s) Under 37 CFR 1.55(d) Authorization to Permit Access to Application by Participating Offices Under 37 CFR 1.14(h) Petition for Express Abandonment to Obtain a Refund Pre-Appeal Brief Request for Review Request for Corrected Filing Receipt Request for Corrected Filing Receipt (electronic) Petition to Make Special Under Accelerated Examination Program Examination Support Document Transmittal (examination support document filed in certain nonprovisional applications covering the independent claims and the designated dependent claims) SB/216 Examination Support Document Listing of References 37 CFR 1.265(c) (examination support document filed in certain nonprovisional applications covering the independent claims and the designated dependent claims) SB/211 Petition for a second continuation or continuationin-part application showing why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the prior-filed application (proposed 37 CFR 1.78(d)(1)(iv)) Petition for a second request for continued examination showing why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the application (proposed 37 CFR 1.114(f))

1.00

10,400

10,400

$304.00

$3,161,600.00

1.00

50

50

$90.00

$4,500.00

0.08 0.08 0.13 0.10 0.20 0.50 0.08 0.08 12.0 22.0

500 17,300 36,800 21,000 3,000 3,200 25,000 2,050 500 5,000

40 1,384 4,784 2,100 600 1,600 2,000 164 6,000 110,000

$304.00 $304.00 $304.00 $304.00 $304.00 $304.00 $90.00 $90.00 $304.00 $304.00

$12,160.00 $420,736.00 $1,454,336.00 $638,400.00 $182,400.00 $486,400.00 $180,000.00 $14,760.00 $1,824,000.00 $33,440,000.00

2.00

5,000

10,000

$304.00

$3,040,000.00

4.00

1,000

4,000

$304.00

$1,216,000.00

4.00

1,000

4,000

$304.00

$1,216,000.00

15

P000747

Case 1:07-cv-00846-JCC-TRJ

Document 178-7

Filed 12/27/2007

Page 17 of 32

Listing of Commonly Owned Applications and Patents 37 CFR 1.78(f) (explanations filed in certain nonprovisional applications of either how the claims are patentably distinct or why there are patentably indistinct claims filed in multiple applications) SB/206 Listing of Commonly Owned Applications and Patents 37 CFR 1.78(f) EFS-Web (explanations filed in certain nonprovisional applications of either how the claims are patentably distinct or why there are patentably indistinct claims filed in multiple applications) SB/206 EFS-Web Request for First-Action Interview (Pilot Program) Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.102(c)(1) EFS-Web only Request for Streamlined Docketing Procedure SB/201 Total

1.00

10,000

10,000

$304.00

$3,040,000.00

1.00

10,000

10,000

$304.00

$3,040,000.00

2.50 2.00

1,000 1,900

2,500 3,800

$304.00 $304.00

$760,000.00 $1,155,200.00

0.20 -----

3,000 2,643,259

600 3,632,456

$304.00 -----

$182,400.00 $648,937,540.00

13.

Total Annualized Cost Burden

There are no maintenance or capital start-up costs associated with this submission. There are, however, non-hour costs due to record keeping requirements, filing fees and mailing costs that need to be added into the total annual non-hour cost burden. A record keeping cost of $7,920 is being added into this collection for the EFS-Web submissions. The applicant is strongly urged to retain a copy of the file submitted to the USPTO as evidence of authenticity in addition to keeping the acknowledgment receipt as clear evidence of the date the file was received by the USPTO. The USPTO estimates that it will take 5 seconds (0.001 hours) to print and retain a copy of the EFSWeb submissions and that approximately 88,000 submissions per year will use this option, for a total of 88 hours per year for printing this receipt. Using the paraprofessional rate of $90 per hour, the USPTO estimates that the record keeping cost associated with this collection will be $7,920 per year. The minimum total annual filing fee/non-hour cost burden to respondents is outlined in Table 4 below:
Table 4: Filing Fees ­ Non-hour cost burden for Patent Processing (Updating)
Item Responses (a) 470,000 1,039,500 Filing Fees (b) None None Total Cost (a) x (b) (c) $0 $0

Submission of an Information Disclosure Statement (IDS) under 37 CFR 1.97(c) or (d) Transmittal Forms

16

P000748

Case 1:07-cv-00846-JCC-TRJ

Document 178-7

Filed 12/27/2007

Page 18 of 32

One-month extension of time under 37 CFR 1.136(a) One-month extension of time under 37 CFR 1.136(a) (small entity) Two-month extension of time under 37 CFR 1.136(a) Two-month extension of time under 37 CFR 1.136(a) (small entity) Three-month extension of time under 37 CFR 1.136(a) Three-month extension of time under 37 CFR 1.136(a) (small entity) Four-month extension of time under 37 CFR 1.136(a) Four-month extension of time under 37 CFR 1.136(a) (small entity) Five-month extension of time under 37 CFR 1.136(a) Five-month extension of time under 37 CFR 1.136(a) (small entity) Extension of time under 37 CFR 1.136(b) Express abandonment under 37 CFR 1.138 Petition for express abandonment to avoid publication under 37 CFR 1.138(c) Statutory Disclaimer Statutory Disclaimer (small entity) Request for expedited examination of a design application Notice of Appeal Notice of Appeal (small entity) Information Disclosure Citations Petition to Revive Unavoidably Abandoned Application Petition to Revive Unavoidably Abandoned Application (small entity) Petition to Revive Unintentionally Abandoned Application Petition to Revive Unintentionally Abandoned Application (small entity) Petition for revival of an application for patent abandoned for failure to notify the office of a foreign or international filing Petition for revival of an application for patent abandoned for failure to notify the office of a foreign or international filing ­ small entity Requests to Access, Inspect and Copy Deposit Account Order Form Certificates of Mailing/Transmission Statement under 37 CFR 3.73(b)

60,270 23,503 31,225 12,891 32,724 16,413 3,370 2,267 2,163 4,174 54 13,825 500 11,250 3,750 130 12,570 3,930 1,830 250 335 3,700 3,250 1,440 960

$120.00 $60.00 $450.00 $225.00 $1,020.00 $510.00 $1,590.00 $795.00 $2,160.00 $1,080.00 None None $130.00 $130.00 $65.00 $900.00 $500.00 $250.00 None $500.00 $250.00 $1,500.00 $750.00 $1,300.00 $650.00

$7,232,400.00 $1,410,180.00 $14,051,250.00 $2,900,475.00 $33,378,480.00 $8,370,630.00 $5,358,300.00 $1,802,265.00 $4,672,080.00 $4,507,920.00 $0 $0 $65,000.00 $1,462,500.00 $243,750.00 $117,000.00 $6,285,000.00 $982,500.00 $0 $125,000.00 $83,750.00 $5,550,000.00 $2,437,500.00 $1,872,000.00 $624,000.00

18,650 1,160 590,000 19,450

None None None None

$0 $0 $0 $0

17

P000749

Case 1:07-cv-00846-JCC-TRJ

Document 178-7

Filed 12/27/2007

Page 19 of 32

Non-publication request Rescission of Non-publication request Electronic Filing System (EFS) Copy of Application for Publication Copy of File Content Showing Redactions Copy of the Applicant or Patentee's Record of the Application (including copies of the correspondence, list of the correspondence, and statement verifying whether the record is complete or not) Request for Continued Examination (RCE) Transmittal Request for Continued Examination (RCE) Transmittal (small entity) Request for Continued Examination (RCE) Transmittal EFS-Web Request for Continued Examination (RCE) Transmittal (small entity) EFS-Web Request for an Oral Hearing Request for an Oral Hearing (small entity) Processing Fee for Deferral of Examination Request for Voluntary Publication or Republication Applicant Initiated Interview Request Form Petition for request for documents in a form other than that provided by 1.19 Petitions under 37 CFR 1.17(h) include: Petition to Accord a Filing Date under 1.57(a) Petition to Accord a Filing Date under 1.153(e) Petition for Decision on a Question Not Specifically Provided For Petition to Suspend the Rules Petitions under 37 CFR 1.17(g) include: Petition to Access an Assignment Record Petition for Access to an Application Petition for Expungement and Return of Information Petition to Suspend Action in an Application Petitions under 37 CFR 1.17(h) include: Petition for Accepting Color Drawings or Photographs Petition for Entry of a Model or Exhibit Petition to Withdraw an Application from Issue Petition to Defer Issuance of a Patent Request for processing of replacement drawings to include the drawings in any patent application publication Processing Fee under 37 CFR 1.17(i) Transmittal Processing Fee under 37 CFR 1.17(f), (g) and (h) Transmittal Request to retrieve electronic priority application(s) under 37 CFR 1.55(d) Authorization to permit access to application by participating offices under 37 CFR 1.17(h)

31,500 525 1,000 12 235

None None None None None

$0 $0 $0 $0 $0

43,500 10,800 1,300 400

$790.00 $395.00 $790.00 $395.00

$34,365,000.00 $4,266,000.00 $1,027,000.00 $158,000.00

600 150 53 1,400 1,600 50

$1,000,00 $500.00 $430.00 $130.00 None $130.00

$600,000.00 $75,000.00 $22,790.00 $182,000.00 $0 $6,500.00

3,300

$400.00

$1,320,000.00

3,600

$200.00

$720,000.00

10,400

$130.00

$1,352,000.00

50 500 17,300 36,800 21,000

$130.00 $130.00 None None None

$6,500.00 $65,000.00 $0 $0 $0

18

P000750

Case 1:07-cv-00846-JCC-TRJ

Document 178-7

Filed 12/27/2007

Page 20 of 32

Petition for express abandonment to obtain a refund Pre-Appeal Brief Request for Review (filed with the Notice of Appeal)

3,000 2,400

None None $130.00 None None $130.00 None

$0 $0 $104,000.00 $0 $0 $65,000.00 $0

Pre-Appeal Brief Request for Review (filed later than the Notice of Appeal) Correction Request Form Correction Request Form (electronic) Petition to Make Special Under Accelerated Examination Program Examination Support Document Transmittal (examination support document filed in certain nonprovisional applications covering the independent claims and the designated dependent claims) Examination Support Document Listing of References 37 CFR 1.265(c) (examination support document filed in certain non-provisional applications covering the independent claims and the designated dependent claims) Petition for a second continuation or continuation-in-part application showing why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the prior-filed application (proposed 37 CFR 1.178(d)(1)(iv)) Petition for a second request for continued examination showing why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the application (proposed 37 CFR 1.114(f) Listing of Commonly Owned Applications and Patents 37 CFR 1.78(f) (explanations filed in certain non-provisional applications of either how the claims are patentably distinct or why there are patentably indistinct claims filed in multiple applications) Listing of Commonly Owned Applications and Patents 37 CFR 1.78(f) EFS-Web (explanations filed in certain non-provisional applications of either how the claims are patentably distinct or why there are patentably indistinct claims filed in multiple applications) Request for First-Action Interview (Pilot Program) Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.102(c)(1) Request for Streamlined Docketing Procedure Totals

800 25,000 2,050 500 5,000

5,000

None

$0

1,000

$400.00

$400,000.00

1,000

$400.00

$400,000.00

10,000

None

$0

10,000

None

$0

1,000 1,900 3,000 2,643,259

None None None -------

$0 $0 $0 $148,666,770.00

There are mailing costs in the way of postage fees that also need to be added into the total annual non-hour cost burden for this collection. The public may submit the paper forms and petitions in this collection to the USPTO by mail through the United States Postal Service. All correspondence may include a certificate of mailing for each piece of correspondence enclosed, stating the date of deposit or transmission to the USPTO in order to receive credit for timely filing. The USPTO estimates that the average firstclass postage for a mailed submission may amount to 58 cents. Postage for the certificates of mailing themselves are not calculated into this estimate as they are included with the individual pieces of correspondence that are being deposited with the
19

P000751

Case 1:07-cv-00846-JCC-TRJ

Document 178-7

Filed 12/27/2007

Page 21 of 32

United States Postal Service. The USPTO estimates that it will receive 1,965,259 responses per year subject to mailing costs, for a cost of $1,139,850 annually in postage fees. Therefore, the USPTO estimates that that the total annualized cost burden for this collection from record keeping costs ($7,920), filing fees ($148,666,770), and mailing costs ($1,139,850) amounts to $149,814,540. 14. Annual Cost to the Federal Government

The USPTO estimates that it takes a GS-5, step 1, between 1 minute 48 seconds (0.03 hours) and 4 hours to process the items in this collection. The hourly rate for a GS-5, step 1, is currently $14.56 according to the U.S. Office of Personnel Management's (OPM's) wage chart, including locality pay for the Washington, DC area. When 30% is added to account for a fully loaded hourly rate (benefits and overhead), the rate per hour for a GS-5, step 1, is $18.43 ($14.56 + $4.37). Table 6 calculates the processing hours and costs of this information collection to the Federal Government:
Table 6: Burden Hour/Burden Cost to the Federal Government for Patent Processing (Updating)
Item Hours (a) Responses (yr) (b) 470,000 1,039,500 189,000 54 13,825 500 15,000 130 16,500 1,830 7,535 2,400 Burden (hrs/yr) (a) x (b) (c) 141,000 103,950 18,900 11 1,383 50 3,000 13 1,650 183 2,261 720 Rate ($/hr) (d) $18.43 $18.43 $18.43 $18.43 $18.43 $18.43 $18.43 $18.43 $18.43 $18.43 $18.43 $18.43 Total Cost ($/hr) (c) x (d) (e) $2,598,630.00 $1,915,799.00 $348,327.00 $203.00 $25,489.00 $922.00 $55,290.00 $240.00 $30,410.00 $3,373.00 $41,670.00 $13,270.00

Information Disclosure Statements and eIDS Transmittal Form Petition for Extension of Time under 37 CFR 1.136(a) Petition for Extension of Time under 37 CFR 1.136(b) Express Abandonment under 37 CFR 1.138 Petition for Express Abandonment to Avoid Publication under 37 CFR 1.138(c) Disclaimers Request for Expedited Examination of a Design Application Notice of Appeal Information Disclosure Citation in a Patent Petition for Revival of an Application for Patent Abandoned Unavoidably or Unintentionally Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing Requests to Access, Inspect and Copy

0.30 0.10 0.10 0.20 0.10 0.10 0.20 0.10 0.10 0.10 0.30 0.30

0.10

18,650

1,865

$18.43

$34,372.00

20

P000752

Case 1:07-cv-00846-JCC-TRJ

Document 178-7

Filed 12/27/2007

Page 22 of 32

Deposit Account Order Form Certificates of Mailing/Transmission Statement under 37 CFR 3.37(b) Non-publication Request Rescission of Previous Non-publication Request (35 U.S.C. § 122(b)(2)(B)(ii)) and, if applicable, Notice of Foreign Filing (35 U.S.C. § 122(b)(2)(B)(iii)) Electronic Filing System (EFS) Copy of Application for Publication Copy of File Content Showing Redactions Copy of the Applicant or Patentee's Record of the Application (including copies of the correspondence, list of the correspondence, and statements verifying whether the record is complete or not Request for Continued Examination (RCE) Transmittal Request for Continued Examination (RCE) Transmittal (small entity) Request for Oral Hearing Before the Board of Patent Appeals and Interferences Request for Deferral of Examination 37 CFR 1.103(d) Request for Voluntary Publication or Republication Applicant Initiated Interview Request Form Petition for Request for Documents in a Form Other Than That Provided by 1.19 Petitions under 37 CFR 1.17(f) include: Petition to Accord a Filing Date under 1.57(a) Petition to Accord a Filing Date under 1.153(d) Petition for Decision on a Question Not Specifically Provided For Petition to Suspend the Rules Petitions under 37 CFR 1.17(g) include: Petition to Access an Assignment Record Petition for Access to an Application Petition for Expungement and Return of Information Petition to Suspend Action in an Application Petitions under 37 CFR 1.17(h) include: Petition for Accepting Color Drawings or Photographs Petition for Entry of a Model or Exhibit Petition to Withdraw an Application from Issue Petition to Defer Issuance of a Patent

0.20 0.10 0.10 0.50 0.50

1,160 590,000 19,450 31,500 525

232 59,000 1,945 15,750 263

$18.43 $18.43 $18.43 $18.43 $18.43

$4,276.00 $1,087,370.00 $35,846.00 $290,273.00 $4,847.00

0.25 4.00 1.00

1,000 12 235

250 48 235

$18.43 $18.43 $18.43

$4,608.00 $885.00 $4,331.00

0.60 0.60

54,300 1,700

32,580 1,020

$18.43 $18.43

$600,449.00 $18,799.00

0.10 0.30 0.03 0.10 0.10 0.30

750 53 1,400 1,600 50 3,300

75 16 42 160 5 990

$18.43 $18.43 $18.43 $18.43 $18.43 $18.43

$1,382.00 $295.00 $774.00 $2,949.00 $92.00 $18,246.00

0.20

3,600

720

$18.43

$13,270.00

0.10

10,400

1,040

$18.43

$19,167.00

21

P000753

Case 1:07-cv-00846-JCC-TRJ

Document 178-7

Filed 12/27/2007

Page 23 of 32

Request for Processing of Replacement Drawings to Include the Drawings in Any Patent Application Publication Processing Fee under 37 CFR 1.17(i) Transmittal Petition Fee under 37 CFR 1.17(f), (g) and (h) Transmittal Request to Retrieve Electronic Priority Application(s) under 37 CFR 1.55(d) Authorization for Permit Access to Application by Participating Offices under 37 CFR 1.14(h) Petition for Express Abandonment to Obtain a Refund Pre-Appeal Brief Request for Review Request for Corrected Filing Receipt Request for Corrected Filing Receipt (electronic) Petition to Make Special under Accelerated Examination Program Examination Support Document Transmittal (examination support document filed in certain non-provisional applications covering the independent claims and the designated dependent claims) Examination Support Document Listing of References 37 CFR 1.265(c) (examination support document filed in certain non-provisional applications covering the independent claims and the designated dependent claims) Petition for a second continuation or continuationin-part application showing why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the prior-filed application (proposed 37 CFR 1.78(d)(1)(v)) Petition for a second request for continued examination showing why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the application (proposed 37 CFR 1.114(f)) Listing of Commonly Owned Applications and Patents 37 CFR 1.78(f) (explanation of either how the claims are patentably distinct or why there are patentably indistinct claims filed in multiple applications) Listing of Commonly Owned Applications and Patents 37 CFR 1.78(f) EFS-Web (explanation of either how the claims are patentably distinct or why there are patentably indistinct claims filed in multiple applications) Request for First-Action Interview (Pilot Program)

0.10

50

5

$18.43

$92.00

0.08 0.08 0.05 0.05 0.10 0.10 0.08 0.08 0.50 0.10

500 17,300 36,800 21,000 3,000 3,200 25,000 2,050 500 5,000

40 1,384 1,840 1,050 300 320 2,000 164 250 500

$18.43 $18.43 $18.43 $18.43 $18.43 $18.43 $18.43 $18.43 $18.43 $18.43

$737.00 $25,507.00 $33,911.00 $19,352.00 $5,529.00 $5,898.00 $36,860.00 $3,023.00 $4,608.00 $9,215.00

0.10

5,000

500

$18.43

$9,215.00

0.10

1,000

100

$18.43

$1,843.00

0.10

1,000

100

$18.43

$1,843.00

0.10

10,000

1,000

$18.43

$18,430.00

0.10

10,000

1,000

$18.43

$18,430.00

0.30

1,000

300

$18.43

$5,529.00

22

P000754

Case 1:07-cv-00846-JCC-TRJ

Document 178-7

Filed 12/27/2007

Page 24 of 32

Petition to Make Special Based on Age for Advancement of Examination under 37 CFR 1.102(c)(1) Request for Streamlined Docketing Procedure Total

0.10

1,900

190

$18.43

$3,502.00

0.10 -----

3,000 2,643,259

300 400,700

$18.43 -----

$5,529.00 $7,384,907.00

15.

Reason for Change in Burden

Summary of Changes Since the Previous Renewal In the 2003 renewal of this collection the USPTO reported a total of 2,208,339 responses and 830,629 burden hours. Since that time, there have been numerous proposed additions due to rulemakings and change worksheets approved by OMB, along with an adjustment in responses and response times and the addition of new requirements into the collection, drastically affecting the response and burden hour totals. The following changes have taken place since the previous renewal of this collection: · · July 2003 - Renewal approved by OMB with a total of 2,208,339 responses and 830,629 burden hours per year. December