[Federal Register Volume 75, Number 72 (Thursday, April 15, 2010)]
[Rules and Regulations]
[Pages 19558-19559]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-8626]



Patent and Trademark Office

37 CFR Part 41

[Docket No. PTO-P-2010-0032]
RIN 0651-AC46

Cancellation of Rule of Practice 41.200(b) Before the Board of 
Patent Appeals and Interferences in Interference Proceedings

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.


SUMMARY: The United States Court of Appeals for the Federal Circuit 
issued a decision in Agilent Technologies, Inc. v. Affymetrix, Inc., 
567 F.3d 1366 (Fed. Cir. 2009). That decision impacted the continuing 
viability of portions of a patent interference rule. The United States 
Patent and Trademark Office (USPTO or Office) is therefore cancelling 
the affected portion of the interference rule.

DATES: Effective date: This final rule is effective on April 15, 2010.
    Applicability date: This final rule is applicable in interferences 
declared before, on, or after April 15, 2010.

Administrative Patent Judge, Board of Patent Appeals and Interferences 
(BPAI or Board), by telephone at (571) 272-9797, or by mail addressed 
to: Mail Stop Interference, Director of the United States Patent and 
Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to 
the attention of James T. Moore, at the BPAI.

SUPPLEMENTARY INFORMATION: 37 CFR 41.200(b) (2004) provides: ``A claim 
shall be given its broadest reasonable construction in light of the 
specification of the application or patent in which it appears.'' On 
June 4, 2009, the Federal Circuit in Agilent determined that 37 CFR 
41.200(b) does not apply in an interference proceeding in the instance 
where one party challenges another's written description. The Court 
held: ``[W]hen a party challenges written description support for an 
interference count or the copied claim in an interference, the 
originating disclosure provides the meaning of the pertinent claim 
language.'' Agilent, 567 F.3d at 1375. The Court also noted that 
``[w]hen a party challenges a claim's validity under 35 U.S.C. 102 or 
103, however, this court and the Board must interpret the claim in 
light of the specification in which it appears.'' Id. Addressing the 
issue again in Koninklijke Philips Electronics N.V. v. Cardiac Science 
Operating Co., 590 F.3d 1326, 1335 (Fed. Cir. 2010), the Court stated 
that ``[A]ny conflict between [Agilent and Rule 200(b)] must be 
resolved as directed in Agilent.''). Accordingly, the Board in an 
interference will construe a claim in a manner consistent with Agilent.

Rulemaking Considerations

    A. Administrative Procedure Act: The change in this final rule 
merely revises the USPTO's rules of practice to eliminate any 
inconsistency with the Federal Circuit's determination. Furthermore, 
this rule change involves an interpretive rule or rule of agency 
practice and procedure under 5 U.S.C. 553(b)(A). Accordingly, the 
change in this final rule may be adopted without prior notice and 
opportunity for public comment under 5 U.S.C. 553(b) and (c), or 
thirty-day advance publication under 5 U.S.C. 553(d). See Cooper Techs. 
Co. v. Dudas, 536 F.3d 1330, 1336-37, 87 U.S.P.Q.2d 1705, 1710 (Fed. 
Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), 
does not require notice and comment rule making for ```interpretative 
rules, general statements of policy, or rules of agency organization, 
procedure, or practice.''' (quoting 5 U.S.C. 553(b)(A))).
    B. Regulatory Flexibility Act: As prior notice and an opportunity 
for public comment are not required pursuant to 5 U.S.C. 553 (or any 
other law), neither a regulatory flexibility analysis nor a 
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et 
seq.) is required. See 5 U.S.C. 603.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rule making has been determined to be not significant for purposes of 
Executive Order 12866 (Sept. 30, 1993).
    D. Executive Order 13132 (Federalism): This rule making does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    E. Executive Order 13175 (Tribal Consultation): This rule making 
will not: (1) Have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian tribal 
governments; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
    F. Executive Order 13211 (Energy Effects): This rule making is not 
a significant energy action under Executive Order 13211 because this 
rule making is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
    G. Executive Order 12988 (Civil Justice Reform): This rule making 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    H. Executive Order 13045 (Protection of Children): This rule making 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    I. Executive Order 12630 (Taking of Private Property): This rule 
making will not effect a taking of private property or otherwise have 
taking implications under Executive Order 12630 (Mar. 15, 1988).
    J. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule the USPTO 
will submit a report containing the final rule and other required 
information to the United States Senate, the United States House of 
Representatives, and the Comptroller General of the Government 
Accountability Office. However, this

[[Page 19559]]

action is not a major rule as defined by 5 U.S.C. 804(2).
    K. Unfunded Mandates Reform Act of 1995: This rule making does not 
involve a Federal intergovernmental mandate that will result in the 
expenditure by State, local, and tribal governments, in the aggregate, 
of 100 million dollars (as adjusted) or more in any one year, or a 
Federal private sector mandate that will result in the expenditure by 
the private sector of 100 million dollars (as adjusted) or more in any 
one year, and will not significantly or uniquely affect small 
governments. Therefore, no actions are necessary under the provisions 
of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.
    L. National Environmental Policy Act: This rule making will not 
have any effect on the quality of environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    M. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rule making does not contain provisions which involve the use of 
technical standards.
    N. Paperwork Reduction Act: This rule making involves information 
collection requirements which are subject to review by the Office of 
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 
(44 U.S.C. 3501 et seq.). The collection of information involved in 
this notice has been reviewed and approved by OMB under OMB control 
number 0651-0032. The USPTO is not resubmitting an information 
collection package to OMB for its review and approval because the 
changes in this rule making do not affect the information collection 
requirements associated with the information collection under OMB 
control number 0651-0032.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 41

    Administrative practice and procedure, Inventions and patents, 

For the reasons stated in the preamble, the Patent and Trademark Office 
amends 37 CFR part 41 as follows:


1. The authority citation for 37 CFR part 41 continues to read as 

    Authority:  35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 

Subpart E--Patent Interferences

Sec.  41.200  [Amended]

2. In Sec.  41.200, paragraph (b) is removed and reserved.

    Dated: April 10, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2010-8626 Filed 4-14-10; 8:45 am]