The comments in opposition to the unique description proposal were both numerous and varied as to the reasons for opposition. Reasons for opposition are summarized: (1) A potential for adverse future litigation implications, and for admissions which otherwise need not be made, would result from the proposal; (2) the proposal would impose an unreasonable cost and time burden upon the public; (3) the impact of the burden imposed would be extremely hard on small entities and independent inventors, and may be contrary to the Office's Independent Inventor Initiative; (4) the proposed description of the citations is unduly burdensome, and the many possible description permutations impose an impossible task (description would be needed to cover all claim meanings, art settings and potential art combinations, and would need to be updated each time the claims are amended); (5) reasonable minds will differ on which portions of a citation are significant, which citations are cumulative, and the relevant teachings of any particular citation; (6) the appropriate standard for determining if an item should be considered is whether the item is material, not whether it is cumulative (so, explanation of why the citation is not cumulative should not be imposed); (7) the description proposal discriminates against foreign applications and U.S. practitioners representing foreign applicants, since the U.S. practitioner, who is not the author of the case, is not completely familiar with the technology; (8) the proposed unique description requirement is not fair since examiners donot have this burden; (9) experience has shown that the submitted description may not be a useful tool to the examiner, and some examiners do/did not even read the descriptions; (10) the description proposal would provide a ``role reversal'' where applicant does the examiner's job of evaluating the citations but not as well, i.e., the proposal appears to force applicant's representative to ``play'' examiner, review each of the citations, and essentially make a rejection for the examiner in an IDS; (11) there is no statute or case law that requires the applicant to comment on citations submitted to satisfy the duty to disclose (thus, applicant should not be charged with that responsibility); (12) it should take no longer for the examiner to evaluate IDS art than the time it takes him/her to review art when searching through shoes of patents; (13) no data/facts have been presented to show a need for the description of the citations; (14) the pre-set number of ten ``free'' citations (without description) proposed in the Advance Notice is an artificial and arbitrary number, and it would be difficult to decide which ten to choose (it encourages gamesmanship and planning in selecting which citations to describe); (15) the proposed selection of an arbitrary ten free citations opens up a ``Pandora's Box'' regarding inferences as to the particular ten citations selected; and (16) the number ``ten'' for the free citations is too small, and the number actually needed depends upon many factors surrounding the application such as complexity, technology, and number of claims. Conclusion: The overwhelming majority of the comments expressed opposition to the unique description proposal of the Advance Notice. The Office has taken note of the large burden that would be imposed on applicants and attorneys by the description proposal of the Advance Notice, the potential for future adverse consequences stemming from doing the description or the choice not to describe, and the applicant's role reversal that would be imposed by the description proposal. Accordingly, a decision has been made to not go forward with the unique description proposal at this time. Suggestions Regarding Topic 9: A substantial number of suggestions were submitted for modification of the Advance Notice Topic 9 proposal as to the required statement of personal review and the unique description requirement and its exceptions. It was also widely suggested that the Office charge fees for consideration and evaluation of an excessive number of submitted citations. These suggestions have not been accepted in view of the decision not to go forward with the Topic 9 proposal other than the requirement for copies of applications (as discussed above). Part (12) Comments Generally Directed at Revision of the IDS Rules Some comments on the Advance Notice IDS proposals were not directed to specific aspects of Topics 9 and 10, but commented on the IDS proposals on the whole. Those comments noted: (1) No reason nor incentive has been provided to the public to give up the current IDS system; (2) the proposed Advance Notice IDS changes donot serve the public nor applicant's interest, and would eliminate a significant number of application filings each year; (3) the current IDS submission rules work well and should not be changed (the Office should not over-react by adopting a drastic cure that would be more harmful than the disease); (4) it is not an excessive burden on the Office to review large numbers of submitted documents, but actually helps the process (this issue was previously visited during the promulgation of the current 1.98, and the Office found that examiners' review of all submitted documents would not constitute an excessive burden); (5) the IDS proposals set forth in the Advance Notice will not be effective to discourage submissions to the point that the Office problem is solved since the duty of disclosure remains in effect, and on the other hand, the proposals will discourage pre-searches and other mechanisms for disclosure that strengthen patents; (6) the proposal imposes significant new limitations on the practitioner's ability to freely disclose information to the Office due to cost accountability to clients and potential adverse litigation consequences; (7) the Office desire to reduce application processing time via the IDS proposals would be expected to reduce the quality of examination, and that is an undesirable trade-off; (8) the IDS proposals conflict with world patent harmonization (the U.S. is theonly patent-granting body in the world that requires citations of relevant art, and it runs counter to world patent harmonization that applicant's burden in this regard should now be increased by the proposals to further impose requirements on applicant not required by other patent granting bodies); (9) the IDS proposals are complicated; and (10) the Office's IDS problem is at least partly generated by MPEP 2004 which calls for citation of even questionable or marginal items. Summary: The overall support for the IDS proposals as set forth in the Advance Notice was relatively limited, and, for the most part, where support was advanced, it was advanced as a qualified support. On the other hand, a large majority of the comments opposed the Advance Notice IDS proposals, often stating their objection to the proposals using language. Accordingly, the IDS proposals as set forth in Topics 9 and 10 of the Advance Notice have been withdrawn at this time (with the exception of the proposed requirement for a copy of each cited U.S. application, which did have some support and is being retained for reasons discussed both below and above). The present IDS proposal addresses the major concerns of the comments in that it does not call for a statement of personal review, nor a unique description, as were called for in the Advance Notice. It also does not propose to limit the number of citations that may be submitted. As noted, the present IDS proposal does in fact retain one aspect of the Advance Notice IDS proposal-applicant would be required to provide a copy of the specification including the claims (and any drawing) of each U.S. application cited in the IDS, or the portion of the application which caused it to be listed, including any claims directed to that portion of the application. Any increase in applicant's burden due to this one retained aspect should be minor since: (1) The citation of U.S. applications represents a very small minority of documents cited, and (2) the original of the application is usually readily available to the applicant as a related application (and where not so, a petition can be filed requesting that a copy not be required in that isolated and rare case). The need for any such minor increase in burden is, however, heavily outweighed by the many benefits obtained. As pointed out above, the presence of the application copies with the IDS will (1) decrease the time burden on examiners in obtaining and copying the applications, (2) avoid interruption of examination of the cited cases, (3) reduce risks of application papers in the actual file of the cited applications being misplaced or lost, and (4) be advantageous to the public as such copies being in the application file would be readily available to the public upon issuance of the application as a patent. The presently proposed IDS rules also include a number of revisions for consistency and grammar, and to tie up a number of loose ends as discussed above. These proposed revisions should not, however, represent any significant burden on the public. Section 1.102: Section 1.102(d) is proposed to be amended to refer to ``the fee set forth in 1.17(h)'' for consistency with the changes to 1.17(h) and 1.17(i). See discussion of changes to 1.17(h) and 1.17(i). Section 1.103: Section 1.103 is proposed to be revised for clarity and to provide a procedure for obtaining a limited suspension of action in a continued prosecution application (CPA) under 1.53(d). The heading of 1.103 is proposed to be amended to add the phrase ``by the Office'' to clarify that this section does not apply to requests for suspension of action (or reply) by the applicant. Section 1.103(a) is proposed to provide for suspension of actionfor cause. Specifically, 1.103(a) is proposed to provide that on request of the applicant, the Office may grant a suspension of action under this paragraph for good and sufficient cause. Section 1.103(a) is also proposed to provide that: (1) The Office will not suspend action if reply by applicant to an Office action is outstanding; and (2) any petition for suspension of action under 1.103(a) must specify a period of suspension not exceeding six months. Section 1.103(a) is proposed to specifically provide that any petition for suspension ofaction under 1.103(a) must also include: (1) A showing of good and sufficient cause for suspension of action; and (2) the fee set forth in 1.17(h), unless such cause is the fault of the Office. If an additional suspension period is desired applicant may submit another petition under 1.103(a) requesting same. Section 1.103(b) is proposed to provide for a limited suspension of action in a continued prosecution application (CPA) under 1.53(d). Section 1.103(b) is specifically proposed to provide that on request of the applicant, the Office may grant a suspension of action under 1.103(b) in a CPA for a period not exceeding three months. Section 1.103(b) is proposed to specifically provide that any request forsuspension of action under 1.103(b) must be filed with the request for a CPA and include the processing fee set forth in 1.17(i). Section 1.103(c) is proposed to provide that the Office will notify applicant if the Office suspends action on an application on its own initiative. Section 1.103(d) is proposed to provide for suspension of action for public safety or defense. Section 1.103(b) is specifically proposed to provide that the Office may suspend action by order of the Commissioner if the following conditions are met: (1) The application is owned by the United States; (2) publication of the invention may be detrimental to the public safety or defense; and (3) the appropriate department or agency requests such suspension. Section 1.103(e) is proposed to provide that the Office willsuspend action for the entire pendency of an application if the Office has accepted a request to publish a statutory invention registration in the application, except for purposes relating to patent interference proceedings under Subpart E. Section 1.105: Section 1.105 would be a new section containing paragraphs (a) through (c), relating to requirements by the Office that certain information be supplied. Paragraph (a)(1) of 1.105 would provide examiners or other Office employees explicit authority to require submission of such information as may be reasonably necessary for the Office to properly examine or treat a matter being addressed in an application under 35 U.S.C. 111 or 371, in a patent, or in a reexamination proceeding. Abandoned applications would also fall within the scope of the rule to provide for handling of petition matters. New 1.105 is simply an explicit recitation of inherent authority that exists pursuant to 35 U.S.C. 131 and 132, and continues the practice of providing explicit authority to Office employees as was done with the Board of Patent Appeals and Interferences under 1.196(d) and with trademark examiners under 2.61. The use of the authority under proposed paragraph (a)(1) of 1.105 would be encouraged so that the Office can perform the best quality examination possible. The authority is not intended to be used by examiners without a reasonable basis, but to address legitimate concerns that may arise during the examination of an application or consideration of some matter. Any abuse in implementation of the authority, such as a requirement for information that is not in fact reasonably necessary to properly examine the application, would be addressed by way of petition under 1.181. For example, the Office may, under appropriate circumstances, desire the authority to ask for: 1. The existence of any particularly relevant commercial data base that could be searched for a particular aspect of an invention, in certain technologies where pertinent prior art is highly likely to be found in a commercial data base. 2. Information that may not be required to be submitted by 1.56, but that the examiner would deem useful on an application-by-application basis (which could be done prior to the application being taken up for examination, such as when the application is assigned to an examiner): (a) Submission of any published articles, authored by any of the inventors, that relate to a claimed invention, and (b) any non-patent literature or patents that were used to draftthe application or in the invention process, such as where the invention is an improvement over the prior information. 3. A reply to a matter raised in a protest under 1.291. 4. An explanation of technical material in a publication, such as one of the inventors' publications. 5. The identification of changes made in a reformatted continuing application filed under 1.53(b). 6. A mark-up for a continuation-in-part application showing the new matter where there is an intervening reference. 7. Comments on a new Federal Circuit decision that appears on point. The proposed 1.105 is not intended to change current Officepractice in regard to questions of fraud under 1.56, and inquiries relating thereto would not be authorized. See MPEP 2010. Paragraph (a)(2) of 1.105 would provide a safety net by specifically recognizing that where the information required to be submitted is unknown and/or is not available, a complete response to the requirement for information would be a statement to that effect. There would be no requirement for a showing that in fact the information was unknown or not available such as by way of disclosing what was done to attempt to satisfy the requirement for information. Nonetheless, it should be understood that a good faith attempt must be made to obtain the information and a reasonable inquiry made once the information is requested even though the Office will not look behind the answer given. An Office employee should not continue to question the scope of a specific answer merely because it is not as complete as the Office employee desires. Example: In a first action on the merits of an application with an effective filing date of May 1, 1999, the examiner notes the submission of a protest under 1.291 relating to a public sale of the subject matter of the invention and requests a date of publication for a business circular authored by the assignee of the invention, which circular was submitted with the protest. It is expected that the attempt to respond to the requirement for information would involve contacting the assignee who would then make a good faith attempt to determine the publication date of the circular. The response to the requirement states that the publication date of the circular is ``around May 1, 1998.'' As ``around May 1, 1998'' covers dates both prior and subsequent to May 1, 1998, a prima facie case under 35 U.S.C. 102(b) would not exist. The examiner cannot require that the response be more specific or hold the response to be incomplete based on such reply. The examiner can, however, in the next Office action seek confirmation that this is the most specific date that was obtained or can be obtained based on a reasonable inquiry being made if that is not already clear from the response to the initial requirement for information. Paragraph (b) of 1.105 would provide that the requirement for information may be included in an Office action, which would include a restriction requirement if appropriate, or can be sent as a separate letter independent of an Office action on the merits such as when the information required is critical to an issue or issues that need to be addressed in a subsequent Office action. It is expected that due to cycle time concerns the use of a requirement for information independent of an Office action on the merits would be limited. Paragraph (c) of 1.105 would provide that a response to a requirement for information or failure to respond thereto would be governed by 1.135 and 1.136. Note the Example provided in the discussion of paragraph (a)(2) of 1.105. Section 1.111: The heading of 1.111 is proposed to be amended to clarify that it applies to a reply by the applicant or patent owner to a non-final Office action. Section 1.111 is proposed to be amended to: (1) Provide a reference to 1.104 concerning the first examination of an application; (2) change the reference to 1.135 and 1.136 (for time for reply to avoid abandonment) from paragraph (c) to paragraph (a); and (3) add the sentence ``[a] second or subsequent supplemental reply will be entered unless disapproved by the Commissioner.'' The Office indicated in the Advance Notice that it was considering charging a handling fee for all supplemental replies. The Office was specifically considering replacing the current practice of allowing unlimited supplemental replies to be filed without requiring any fee with a new practice in which a handling fee would be charged for each supplemental reply that is filed after the initial reply to an Office action has been filed. While some comments supported this proposed change, a majority of comments opposed charging a handling fee for supplemental replies. The reasons given for opposition to the proposal included arguments that: (1) The proposal was simply a revenue-raising proposition; (2) the primary cause of supplemental replies crossing with an Office action is Office mail room delay and paper processing delays; (3) applicants may need to file a supplemental amendment due to later-discovered prior art. The comments also suggested that: (1) The PALM system be enhanced to flag supplemental replies to avoid issuing an Office action until any supplemental reply is matched with the application; and (2) examiners call applicants two weeks prior to acting on an application to determine whether a supplemental reply has been filed. This notice does not propose changing the rules of practice to charge a handling fee for supplemental replies. Based upon the comments and its own evaluation, the Office has concluded that the proposed handling charge would not discourage the filing of supplemental replies, but would only result in such replies being filed with the handling fee. The Office, however, is proposing a change to the rules of practice to provide that the entry of second or subsequent supplemental replies may be disapproved by the Commissioner. It is expected that disapproval of a second or subsequent supplemental amendment will be delegated to the appropriate Technology Center Group Director under MPEP 1002.02(c). As most supplemental replies cause only a minor inconvenience to the Office, the Office is not inclined to propose a change that would affect the ability to file a supplemental reply when such is warranted. There are, however, some applicants who routinely file preliminary or supplemental amendments that place a significant burden on the Office by: (1) Canceling the pending claims and adding many new claims; (2) adding numerous new claims; (3) being filed approximately two months from the date the original reply was filed (i.e., when the examiner is likely to be preparing an Office action responsive to the original reply). These applicants also tend to be those having many applications simultaneously on file in the Office. The provision that the entry of a second or subsequent supplemental reply may be disapproved by the Commissioner would give the Office the latitude to permit entry of those supplemental replies that do not unduly interfere with the preparation of an Office action, but would also give the Office the latitude to refuse entry of those supplemental replies that do unduly interfere with the preparation of an Office action. The factors that would be taken into consideration when deciding whether to disapprove entry of such a supplemental reply are: (1) The state of preparation of an Office action responsive to the initial reply; and (2) the nature of the change to the pending claims that would result from entry of the supplemental reply. That is, if the examiner has devoted a significant amount of time to preparing an Office action before such a supplemental amendment is matched with the application, it would be appropriate for the Office to disapprove entry of the supplemental amendment. If, however, such a supplemental amendment merely cancels claims (as opposed to canceling claims and adding claims, or simply adding claims), it would not be appropriate to disapprove entry of such a supplemental amendment even if the examiner has devoted a significant amount of time to preparing an Office action before such a supplemental amendment is matched with the application. Obviously, if a supplemental reply is received in the Office ( 1.6) after the mail date of the Office action responsive to the original reply and is not responsive to that Office action, the Office will continue the current practice of not mailing a new Office action responsive to that supplemental reply, but simply advising the applicant that the supplemental reply is non-responsive to such Office action and that a responsive reply (under 1.111 or 1.113 as the situation may be) must be timely filed to avoid abandonment. Put simply, the mailing of an Office action responsive to the original reply will continue to cut off the applicant's right to have any later-filed supplemental reply considered by the Office. The proposed change to 1.111(a) in this notice: (1) Is not a revenue-raising proposition; and (2) will not affect the vast majority of supplemental replies. It will only apply to a supplemental reply if: (1) the applicant has already filed one (a first) supplemental reply; and (2) the supplemental reply is not matched with the application until after the examiner has devoted a significant amount of time to preparing an Office action. The suggestion regarding enhancement to the PALM system is being taken under advisement. Such an enhancement, however, would not discourage the filing of the supplemental replies that place a burden on the Office, but would only inform the examiner that such a reply has not yet been matched with the application. In the absence of a procedure for disapproving the entry of such burdensome replies, the so-enhanced PALM system would simply advise the Office not to act on the affected application for extended periods of time, which would have an adverse effect on the Office's efforts to reduce cycle time. The suggestion that examiners call applicants two weeks prior to acting on an application to determine whether a supplemental reply has been filed is not practicable. The Office issues hundreds of thousands of Office actions each year. Thus, implementing this suggestion would require the Office (examiners) to make hundreds of thousands of additional telephone calls to applicants each year. Section 1.112: Section 1.112 is proposed to be amended to provide a reference to 1.104 concerning the first examination of an application. Section 1.112 is proposed to be amended to add the phrase ``or an appeal ( 1.191) has been taken'' to the last sentence. This addition is to clarify that once an appeal has been taken in an application, any amendment is subject to the provisions of 1.116 (b) and (c), even if the appeal is in reply to a non-final Office action. Section 1.115: A new 1.115 is proposed to be added to provide for preliminary amendments. The Office indicated in the Advance Notice that it was considering charging a handling fee for certain preliminary amendments. The Office was specifically considering replacing the current practice of allowing unlimited preliminary amendments to be filed without requiring any fee with a new practice in which a handling fee would be charged for each preliminary amendment filed later than a specified time period (one month) after the filing date of the application. While some comments supported this proposed change, a majority ofcomments opposed charging a handling fee for certain preliminary amendments. The reasons given for opposition to the proposal included arguments that: (1) The proposal was simply a revenue-raising proposition; (2) the primary cause of preliminary amendments crossing with an Office action is Office mail room delay and paper processing delays; (3) applicants should not be forced to file preliminary amendments and other papers until after receiving a filing receipt and application number; and (4) applicants may need to file a preliminary amendment due to later-discovered prior art. The comments also suggested that: (1) The PALM system be enhanced to flag preliminary amendments to avoid issuing an Office action until the preliminary amendment is matched with the application; (2) examiners call applicants two weeks prior to acting on an application to determine whether a preliminary amendment has been filed; and (3) applicants filing a continued prosecution application under 1.53(d) (CPA) be given a few weeks to file any necessary preliminary amendment. The Office is not proposing a change to the rules of practice to charge a handling fee for certain preliminary amendments. Based upon the comments and its own evaluation, the Office has concluded the proposed handling charge would not discourage the filing of preliminary amendments, but would only result in such amendments being filed with the handling fee. The Office, however, is proposing a change to the rules of practice to provide that the entry of certain preliminary amendments may be disapproved by the Commissioner. See the discussion of 1.111 for an explanation of the need for this change to the rules of practice. Section 1.115(a) as proposed provides that a preliminary amendment is an amendment that is received in the Office ( 1.6) on or before the mail date of the first Office action under 1.104. That is, an amendment received in the Office ( 1.6) after the mail date of the first Office action is not a preliminary amendment, even if it is non-responsive to the first Office action and seeks to amend the application prior to the first examination. Section 1.115(b) is proposed to provide that a preliminary amendment will be entered unless disapproved by the Commissioner, and also provide that a preliminary amendment will not be disapproved if it is filed no later than: (1) Three months from the filing date of an application under 1.53(b); (2) the filing date of a continued prosecution application under 1.53(d); or (3) three months from the date the national stage is entered as set forth in 1.491 in an international application. Thus, the entry of a preliminary amendment will not be disapproved under 1.115(b) if it is filed within one of the periods specified in 1.115(b)(1) through (b)(3). Nevertheless, if a ``preliminary'' amendment is filed after the mail date of the first Office action, it is not a preliminary amendment under 1.115(a). If a (``preliminary'') amendment is received in the Office ( 1.6) after the mail date of the first Office action and is not responsive to the first Office action, the Office will continue the current practice of not mailing a new Office action responsive to that amendment, but simply advising the applicant that the amendment is non-responsive to first Office action and that a responsive reply must be timely filed to avoid abandonment. Put simply, the mailing of the first Office action will continue to cut off the applicant's right to have any later-filed preliminary amendment considered by the Office, even if that amendment is filed within the time periods specified in proposed 1.115(b). Section 1.115(c) is proposed to provide that the time periods specified in 1.115(b) are not extendable. It is expected that disapproval of a preliminary amendment filed outside the period specified in 1.115(b) will be delegated to the appropriate Technology Center Group Director under MPEP 1002.02(c). The provision that the entry of a preliminary amendment filed outside the period specified in 1.115(b) may be disapproved by the Commissioner would give the Office the latitude to permit entry of those preliminary amendments filed outside the period specified in 1.115(b) that do not unduly interfere with the preparation of an Office action, but would also give the Office the latitude to refuse entry of those preliminary amendments filed outside the period specified in 1.115(b) that do unduly interfere with the preparation of an Office action. As with the proposed change to 1.111(a), the factors that would be taken into consideration when deciding whether to disapprove entry of such a preliminary amendment are: (1) The state of preparation of the first Office action; and (2) the nature of the change to the pending claims that would result from entry of the preliminary amendment. The proposed change to 1.115 in this notice: (1) Is not a revenue-raising proposition; and (2) will not affect the vast majority of preliminary amendments. It will only apply to a preliminary amendment if: (1) The preliminary amendment is filed outside the time periods specified in 1.115(b)(1) through (b)(3); and (2) the preliminary amendment is not matched with the application until after the examiner has devoted a significant amount of time to preparing an Office action. The suggestions that the PALM system be enhanced and that examiners call applicants two weeks prior to acting on an application are addressed above in the discussion of 1.111(a). In an application filed under 35 U.S.C. 111(a) and 1.53(b) or a PCT international application entering the national stage under 1.491, the time periods specified in 1.115(b) should give the applicant time between the mailing of a filing receipt and the mailing of a first Office action to file any necessary preliminary amendment. CPA practice under 1.53(d), however, is designed to provide a first Office action sooner than if the application had been filed as a continuation under 1.53(b) (or under former 1.60 or 1.62). See Continued Prosecution Application (CPA) Practice, Notice, 1214 Off. Gaz. Pat. Office 32, 32 (September 8, 1998). An applicant filing a CPA under 1.53(d) who needs time to prepare a preliminary amendment should file a request for suspension of action under 1.103(b) with the CPA request. See discussion of 1.103(b). Section 1.121: Section 1.121 is proposed to be amended to change the manner of making amendments in non-reissue applications. The proposed practice to amend the specification by replacement of asection or paragraph (or claim) would eliminate the need for the Office to enter changes by handwriting in red ink. This change would result in a specification (including claims) in clean-copy form that can be Optical Character Recognition (OCR) scanned during the patent publishing process. The proposed practice also requires the applicant to provide a marked-up copy of the changed section or paragraphs (or claims), using the applicant's choice of marking system, which will aid the examiner in ascertaining the changes to the specification. The proposed change to 1.121 involves concurrent changes to 1.52(b) (see discussion of 1.52(b)(6)) to provide for numbering of the paragraphs of the specification, except for the claims. If the paragraphs of the specification are numbered as proposed in 1.52, the applicant will be able to amend the specification by merely submitting a replacement paragraph (with the same number) with the desired changes made in the replacement paragraph. As discussed above, the adoption of the proposed changes to 1.121 will result in relatively clean (e.g., without underlining, bracketing, or red ink) application specifications that can be OCR scanned as part of the printing process in the Office of Patent Publications, which will result in a higher quality of printed patents. Complete OCR scanning of the amended portions of the specification and claims is not possible today because insertions of words, phrases or sentences made by handwriting in red ink and deletions made by words which have been lined through with red ink are ignored by the scanner. Further, while text marked with underlining and bracketing can be scanned, extra processing is required to delete the brackets and the text within the brackets and to correct misreading of letters caused by the underlining. Thus, using clean replacement sections or paragraphs and claims will permit complete OCR scanning which is a faster and more accurate method of capturing the application for printing while eliminating an extensive amount of key-entry of subject matter. This should result in patents with fewer errors in need of correction by certificate of correction, which will be a clear benefit to the patentees and conserve Office resources. In addition to submitting a replacement section or paragraph/claim to make an amendment, applicant would also be required to submit a marked-up copy of the section or paragraph/claim to show the differences between the original and the replacement. The marked-up copy may be created by any method applicant chooses, such as underlining and bracketing, redlining, or by any system designed to provide text comparison. The proposed change to 1.121 will make the amendment process simpler, reduce processing time and operating costs, and reduce the opportunity for error associated with amendment entry. In addition, it is consistent with standardizing processing of amendments in both paper and electronic format in anticipation of a total Electronic File Wrapper (EFW) environment, which is currently under development. Further, the changes being proposed are consistent with the Office's efforts to harmonize with PCT practice and any changes being contemplated for that system. Section 1.121(a) is specifically proposed to be amended by replacing paragraphs (a)(1) through (a)(6) with new paragraphs (a)(1) through (a)(5), which treat the manner of making amendments in nonprovisional applications other than reissue applications. Section 1.121(b) relates to amendments in reissue applications and 1.121(c) relates to amendments in reexamination proceedings. Section 1.121(a)(1)(i) is proposed to provide procedures to delete, replace or add a paragraph to the specification of an application by requiring instructions for such accompanied by the replacement or added paragraph(s). By following the four-digit numbering system concurrently proposed in 1.52(b)(6), applicants can easily refer to a specific paragraph by number and present an amendment thereto. Proposed 1.121(a) requires that the replacement or added paragraph(s) not include any markings to indicate the changes that have been made. A copy of the replacement or added paragraph(s) marked-up to show the changes would be required to accompany the amendment as an aid to the examiner. If a numbered paragraph is to be replaced by a single paragraph, the added replacement paragraph bearing the same number as the paragraph being replaced should be submitted. If more than one paragraph is to replace a single paragraph, the numbering of the added replacement paragraphs must begin first with the number of the paragraph being replaced, then subsequently by the number of the replaced paragraph together with a single decimal and sequential integers (e.g., paragraph [0071] is replaced by [0071], [0071.1] and [0071.2]). Any paragraphs being added between existing paragraphs must take the number of the preceding paragraph followed by a decimal and sequential integers (e.g., [0071.1] and [0071.2] are being inserted between paragraphs [0071] and [0072]). Unaffected paragraphs would retain their original numbers. Once an amendment is entered, subsequent amendments would be made vis-a-vis the numbering created by the previous amendment. Amendments to titles or headers, which are not considered paragraphs and thus not numbered, would be identified by reference to their location relative to a numbered paragraph (e.g., ``the title appearing after paragraph [0062]''). Section 1.121(a)(1)(ii) as proposed also permits applicants to amend the specification by replacement sections (e.g., as provided in 1.77(a), 1.154(a) or 1.163(c)). As with replacement paragraphs, the amended version of a replacement section would be required to be provided in clean form and not include any markings to show the changes which have been made. A marked-up version showing the changes must accompany the actual amendment as an aid to the examiner. Section 1.121(a)(1)(ii) as proposed also permits applicants to amend the specification by submitting a substitute specification. Sections 1.52, 1.77, 1.154, 1.163 and 1.121(a) as proposed do not require applicants to number the paragraphs of the specification ( 1.52(b)(6)) or provide section headings ( 1.77, 1.154, 1.163). Without numbered paragraphs of the specification or section headings, however, an applicant will be limited to amending the application by submitting a substitute specification. Thus, applicants submitting a substitute specification as a means of amending the application (including ``transition applications'' filed before but amended after this proposed change to 1.121(a) is adopted) areurged to include numbered paragraphs in the substitute specification (in the manner proposed in 1.52(b)(6)), so that further amendments may be made by replacement paragraphs in accordance with 1.121(a)(1)(i). An accompanying marked-up copy showing amended portions of the specification would be required. The addition of paragraph numbers in a substitute specification, however, need not be considered as an amendment to the specification requiring a marked-up showing. Further, in applications not having numbered paragraphs, even if no amendments to the specification are being made, applicants are urged to supply a substitute specification including numbered paragraphs (consistent with 1.52 (b)(6)) as part of the response to the first Office action, so that any future amendments to the specification may be made by numbered paragraph replacement. As stated immediately above, a marked-up copy, showing paragraph numbers as the only change, is not required. The Office will not, upon request of applicants, number the paragraphs or sections of the specification, or accept any instructions to do the same. The Office reserves the right, however, to number or renumber the paragraphs in the printed patent as part of thepublication process. Section 1.121(a)(1)(iv) as proposed requires that matter deleted by amendment pursuant to any of the earlier paragraphs of 1.121 could only be reinstated by a subsequent amendment presenting the previously deleted subject matter. No unentering of previously entered amendments will be permitted. Section 1.121(a)(2) as proposed requires that all amendments to the claims be presented as totally rewritten claims. Any rewriting of a claim will be construed as a direction to cancel the previous version of the claim. See In re Byers, 230 F.2d 451, 455, 109 USPQ 53, 55 (CCPA 1956) (amendment of a claim by inclusion of an additional limitation had exactly the same effect as if the claim as originally presented had been canceled and replaced by a new claim). The new (or rewritten) claim must be submitted in clean form with no markings showing the changes which have been made. A marked-up version of any amended claim must be submitted on pages separate from the amendment showing the changes which have been made by way of brackets (for deleted matter) and underlining (for added matter), or by any other suitable method of comparison, in order to clearly indicate the changes made by the amendment in a form that will assist the examiner in the examination process. Section 1.121(a)(3) is proposed to be amended to clarify the requirements for amending figures of drawing in an application. A sketch showing changes in red must be filed for approval by the examiner before new drawings in compliance with 1.84 can be filed. Sections 1.121(a)(5) and (a)(6) will be redesignated without change as new 1.121(a)(4) and (a)(5). Section 1.121(b) is proposed to be amended to transfer theprovisions for amending reissue applications to 1.173 (see discussion of 1.173). Section 1.121(b) is specifically proposed to simply include a reference to 1.173 for amendment of reissue applications. Most of the comments received were in support of the proposed change to amendment practice. Some criticisms and suggestions are addressed below. Comment: A concern was raised by a number of commenters that replacement paragraphs would make the identification of changes more obscure than the present system of using bracketing and underlining, would place an extra burden on practitioners and their staffs, and would work against reducing paper submissions if applicants were required to submit marked-up copies of the desired changes. Response: The proposed replacement paragraph requirement is necessary to facilitate the publication of patents more expeditiously and with fewer errors. The Office's goal is to eliminate the use of red ink and bracketing/underlining in the amendment of patent applications, since OCR techniques now employed in the preparation of patents for publication can best accommodate ``clean copy'' insertions of amended subject matter. The submission of marked-up copies would, for a time, increase file size but would provide the examiner with an easy way to compare the most recent amendments with earlier versions in the application files. While it may be possible for examiners to compare the clean copy with the previous version in order to detect changes, in the interest of reduced cycle time, a review of a marked-up copy of an amendment has been determined to be most effective in the examination process. The proposed requirements would provide the needed comparative basis (for paper copies) during the transition phase into an EFW environment. Comment: A number of comments were received which expressed concern about the harmonization of the Office's amendment requirements with those of PCT and/or other foreign countries. Response: While PCT practice currently provides for the use of replacement pages, it appears that paragraph or section replacement is being considered worldwide as electronic filing requirements are being developed. Both the JPO and the EPO currently employ paragraph numbering in their application requirements and publication procedures. No other patent examining authority has yet developed procedures for transitioning into electronic filing and practice. Comment: Several comments received questioned the ability of word processing software to handle paragraph numbering and renumbering without extensive clerical intervention. Response: The objective of the proposed amendment practice and the concept of paragraph numbering is to easily identify a paragraph in the specification and to not disturb the numbering of the paragraphs preceding and following the amendments/insertions. It is being concurrently proposed that 1.52 provide for paragraph numbering according to a four digit Arabic numeral arrangement enclosed in bold brackets to be placed at the beginning of each paragraph immediately to the right of the left margin, and followed by approximately four spaces, before beginning the paragraph text (e.g., [0071]). If, according to the proposed changes to 1.121, for example, paragraph [0071] is to be replaced, another paragraph of the same number should be inserted in its place. If several paragraphs are to replace a single deleted paragraph, [0071] should, for example, be replaced by [0071], [0071.1], and [0071.2]. The ability of word processing software to renumber the remaining paragraphs should not be necessary. Comment: Several comments suggested identifying the replacement paragraphs by page number and line number, or through the use of replacement pages. Response: The proposed changes to 1.121 are intended, in part, to serve the Office and its customers during a transition into an EFW environment. Accordingly, paragraph replacement via paragraph numbering will most effectively achieve the desired results. Identification of paragraphs by page and line number does not consistently and uniformly refer to the same section of the specification due to formatting and pagination differences among various word processing programs. Comment: Several comments received suggested that the Office more aggressively pursue total electronic filing. Response: A total EFW environment is still several years away. The proposed changes must be workable during a transition into electronic filing, and, at the same time, serve all customers adequately, including those not yet able to adapt to word processing and advanced computer techniques. Section 1.125: Section 1.125(b)(2) is proposed to be amended to require that all the changes to the specification (rather than simply all additions and deletions) be shown in a marked-up copy. Section 1.125(b)(2) is also proposed to be amended to provide that numbering the paragraphs of the specification of record is not considered a change that must be shown. Thus, the marked-up copy of the substitute specification need not show the numbering the paragraphs of the specification of record, and no marked-up copy of the substitute specification is required if the only change is numbering of the paragraph of the specification of record. Section 1.125(c) is proposed to be amended to encourage that the paragraphs of any substitute specification be numbered in a manner consistent with 1.52(b)(6). Section 1.131: The heading of 1.131 is proposed to be amended to clarify that it applies to overcoming other activities in addition to cited patents or publication. Section 1.131(a) is proposed to be amended for simplicity. Section 1.131(a) is specifically proposed to be amended to provide that when any claim of an application or a patent under reexaminationis rejected, the inventor of the subject matter of the rejected claim, the owner of the patent under reexamination, or the party qualified under 1.42, 1.43, or 1.47, may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based. Section 1.131(a) as proposed would eliminate the provisions that specify which bases for rejection must be applicable for 1.131 to apply. Instead, the approach would be that 1.131 is applicable unless the rejection is based upon a U.S. patent to another or others which claims the same patentable invention as defined in 1.601(n) or a statutory bar. This avoids the situation in which the basis for rejection is not a statutory bar (under 35 U.S.C. 102(a) based upon prior use by others in the United States) and should be capable of being antedated, but the rejection is not specified as a basis for rejection that must be applicable for 1.131 to apply. Section 1.131(a) is also proposed to be amended to provide that the effective date of a U.S. patent is the date that such U.S. patent is effective as a reference under 35 U.S.C. 102(e). MPEP 2136.03 provides a general discussion of the date a U.S. patent is effective as a reference under 35 U.S.C. 102(e). Finally, 1.131(a) is proposed to be amended to provide that prior invention may not be established under 1.131 if either: (1) The rejection is based upon a U.S. patent to another or others which claims the same patentable invention as defined in 1.601(n); or (2) the rejection is based upon a statutory bar. Section 1.132: Section 1.132 is proposed to be amended to eliminate the provisions that specify which bases for rejection must be applicable for 1.132 to apply. Instead, the approach would be that 1.132 is applicable unless the rejection is based upon a U.S. patent to another or others which claims the same patentable invention as defined in 1.601(n). Section 1.132 is specifically proposed to be amended to state that: (1) when any claim of an application or a patent under reexamination is rejected or objected to, an oath or declaration may be submitted to traverse the rejection or objection; and (2) an oath or declaration may not be submitted under this section to traverse a rejection if the rejection is based upon a U.S. patent to another or others which claims the same patentable invention as defined in 1.601(n). Sections 1.131 and 1.132 are procedural in nature that they provide mechanisms for the submission of evidence to antedate or otherwise traverse a rejection; however, they do not address the substantive effect of the submission of such evidence on the objection or rejection at issue. See, e.g., In re Zletz, 893 F.2d 319, 322-33, 13 USPQ2d 1320, 1322-23 (Fed. Cir. 1990)( 1.131 provides an ex parte mechanism whereby a patent applicant may antedate subject matter in a reference); Newell Cos. v. Kenney Mfg., 864 F.2d 757, 768-69, 9 USPQ2d 1417, 1426- 27 (Fed. Cir. 1988) (the mere submission of evidence under 1.132 does not mandate a conclusion of patentability). An applicant's compliance with 1.131 or 1.132 means that the applicant is entitled to have the evidence considered in determining the patentability of the claim(s) at issue. It does not mean that the applicant is entitled as a matter of right to have the rejection or objection of the claim(s) withdrawn. Section 1.133: Section 1.133(a) is proposed to be amended to provide that interviews must be conducted on ``Office premises'' (rather than ``in the examiner's rooms''). The purpose of this proposed change is to account for interviews conducted in conference rooms or by video conference. Section 1.136: Section 1.136(c) is proposed to be added to provide that if an applicant is notified in a ``Notice of Allowability'' that an application is otherwise in condition for allowance, the following time periods are not extendable if set in the ``Notice of Allowability'' or in an Office action having a mail date on or after the mail date of the ``Notice of Allowability'': (1) The period for submitting an oath or declaration in compliance with 1.63; (2) the period for submitting formal drawings set under 1.85(c); and (3) the period for making a deposit set under 1.809(c). See discussion of the change to 1.85(c). Section 1.137: Section 1.137(c) is proposed to be amended to provide that any petition under 1.137 in either a utility or plant application filed before June 8, 1995, must be accompanied by a terminal disclaimer and fee as set forth in 1.321 dedicating to the public a terminal part of the term of any patent granted there one quivalent to the lesser of: (1) The period of abandonment of the application; or (2) the period extending beyond twenty years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application(s) under 35 U.S.C. 120, 121, or 365(c), from the date on which the earliest such application was filed. This proposed change will further harmonize effective treatment under the patent term provisions of 35 U.S.C. 154(b) and (c) of utility and plant applications filed before June 8, 1995, with utility and plant applications filed on or after June 8, 1995. Section 1.137(c) is also proposed to provide that its terminal disclaimer requirement does not apply to applications for which revival is sought solely for purposes of copendency with a utility or plant application filed on or after June 8, 1995, or to lapsed patents. Section 1.138: Section 1.138 is proposed to be amended to clarify the signature requirement for a letter (or written declaration) of express abandonment. Section 1.138(a) is proposed to provide that: (1) An application may be expressly abandoned by filing in the Patent and Trademark Office a written declaration of abandonment identifying the application; and (2) express abandonment of the application may not be recognized by the Office unless it is actually received by appropriate officials in time to act thereon before the date of issue. Section 1.138(b) is proposed to provide that a written declaration of abandonment must be signed by a party authorized under 1.33(b)(1), (b)(3), or (b)(4) to sign a paper in the application, except that a registered attorney or agent not of record who acts in a representative capacity under the provisions of 1.34(a) when filing a continuing application may expressly abandon the prior application as of the filing date granted to the continuing application. Section 1.152: Section 1.152 is proposed to be revised to be consistent with the proposed changes to 1.84 (deletion of the petition requirement for color photographs and color drawings). Section 1.152 was amended in 1997 to clarify Office practice that details disclosed in the drawings or photographs filed with a design application are considered to be an integral part of the disclosed and claimed design, unless disclaimed. See Changes to Patent Practice and Procedure, Final Rule Notice, 62 FR 53131, 53164 (October 10, 1997), 1203 Off. Gaz. Pat. Office 63, 91 (October 21, 1997). A recent decision by the Federal Circuit, however, has called this practice into question. See In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 1998), rev'g, Ex parte Daniels, 40 USPQ2d 1394 (BPAI 1996). Accordingly, the Office is proposing to amend 1.152 to eliminate these provisions. See Removal of Surface Treatment From Design Drawings Permitted, Notice, 1217 Off. Gaz. Pat. Office 19 (December 1, 1998). Section 1.154: Section 1.154(a) is proposed to be separated into 1.154(a) and 1.154(b) and the material clarified. The order of the papers in a design patent application, including the proposed application data sheet (see 1.76), is proposed to be listed in 1.154(a). The order of the sections in the specification of a design patent application is proposed to be listed in 1.154(b). New 1.154(c) corresponds to 1.77(c) and provides that the section heading should be in uppercase letters without underlining or bold type. Section 1.155: Current 1.155 is proposed to be eliminated as being unnecessarily duplicative of the provisions of 1.311(a) and 1.316, which apply to the issuance of all patents, including designs. In its place, proposed 1.155 is proposed to be redrafted to establish a procedure to create a ``rocket docket'' for design applications. The procedure will be available to all design applicants who first conduct a preliminary examination search and file a request for expedited treatment accompanied by a fee commensurate with the Office cost of the expedited treatment and handling ( 1.17(t)). The Office will require a statement that a preexamination search was conducted which must also indicate the field of search and include an information disclosure statement in compliance with 1.98. Formal drawings in compliance with 1.84 are required. The applications will be individually examined with priority and the clerical processing will be conducted and/or monitored by specially designated personnel to achieve expeditious processing through initial application processing and the Design Examining Group. The Office will not examine an application that is not in condition for examination even if the applicant files a request for expedited examination under this section. The requirements announced in the Advance Notice relating to constructive election of the first presented invention have been dropped. General Comments Of the comments received in response to the proposal to creating a ``Rocket Docket'' for design applications, most of the comments generally favored the proposal, by roughly a two-to-one margin. Comment: One commenter opined that the ``ultra expedited'' procedure is a much needed avenue for patentees concerned with the design and marketing of seasonal, high volume consumer goods and that the procedure would attract new customers and fulfill a critical need in many industries for patent protection to stop infringement and todeter would-be infringers. Moreover, the commenter opined that recent court interpretations of the marking provisions require patented products to be marked with the patent number no matter what monetaryremedy the patentee pursues and that having all of the products marked with the patent number will maximize a patentee's protection by synchronizing protection with the retail market launch. Response: The Office envisions that these provisions will fulfill a particular need by affording rapid design protection on an expedited basis so that designs may be readily patented and marked with a patent number before marketing. At the same time, a fee will be charged to recoup estimated expected costs incurred by the Office. Comment: Two comments opposed the idea of giving one applicant priority over others based on a fee, or the opportunity to ``buy a place in line,'' further reasoning that the granting of priority should be based on need. Response: The applicant is not buying a place in line, but instead is merely compensating for the extra costs for expediting the examination of the design applications. Also, if priority were to be granted based upon need, a petition would be required to determine whether the standards for awarding priority had been met. By eliminating the determination of a petition (which is required to determine need or compliance in Petitions to Make Special), the significant time required to make the determination is eliminated. Comment: Another comment stated that the fee was unjustified in view of the fact that the current ``Petition to Make Special'' is available at a reduced fee. Response: Although the current system of making cases special by petition fulfills the needs of some applicants, an additional expedited process is necessary for a quicker, streamlined filing-to-issuance procedure that does not involve the lengthy process of deciding a petition based upon need or some other type of showing. Moreover, the Petition to Make Special procedure requires a petition to be decided once the application reaches the Design Group, whereas the expedited procedure is instituted once the fee is paid and the application is ready for examination. Further, the ``Petition to Make Special'' will continue to be made available. Although the 1.155 expedited examination is more costly, the cost is warranted due to more comprehensive expedited procedures to reduce processing time. Comment: One commenter also suggested that if the Office procedure for dealing with a petition to make special is too complex, then the answer should be to simplify the Petition to Make Special procedure. Response: The Petition to Make Special procedures are adopted for treating a variety of types of cases for which a determination must be made as to whether the subject matter qualifies under the procedure; e.g., whether ``the invention will materially enhance the quality of the environment.'' On the other hand, the expedited procedure of 1.155 is an entirely different rule which is fee-based and which may be readily decided as part of a clerical function, thereby reducing processing time and costs since the application does not need to be reviewed by a high level official. Comment: Two comments were directed to the amount of time the examiners spend on the searching of design applications. One commenter was alarmed by the belief that design applications were examined in groups of ten or twenty and questioned the fairness of not examining the application in the order of filing and of delaying examination until a group is filled. The same commenter reasoned that design applications are easy to search and therefore hiring additional design applications examiners should allow each design application to be examined in the order of filing. The same commenter postulated that applicants should not have to pay a surcharge and perform their own search in order to obtain the examination for which they have already paid. Another commenter stated that the examiners will require additional time for searching expedited cases. Response: Only the search phase of the examination of design applications is conducted in groups. Generally, the remainder of the examination process is done individually, unless the subject matter is so close as to involve double patenting. However, the most time consuming part of the design patent application examination is the search for prior art. Unlike the utility patent examiner, the design examiner is not concerned about claim language, but is focusing on visual characteristics that can be readily evaluated and searched. To employ economies of scale, searching is best done in groups. Generally, the size of group depends on the clustering of filing dates and similarities in subject matter. Cases are not delayed since design examiners are required to work on the ``oldest-date'' case. Moreover, even though a group search may be conducted, the examination is done in order of filing and the cases are not delayed to fill a group. Typically, the examiner picks the oldest date case for examination and then tries to create a group of design applications with similar subject matter for efficiency in searching. As to the comment directed to increasing the number of examiners, to dramatically increase the number of examiners might result in less efficiency due to overlapping subject matter and is not necessarily an option available based on Office priorities and budget. As to the comment regarding the payment of a ``surcharge,'' this is to cover the costs associated with expediting the search. It is recognized that more time is required to search cases individually than that required if the searching is done in groups. As to the requirement of a search performed by the applicant, this will not only enhance the quality of the search but also ensure that applicant is prudently filing for expedited status and making an informed choice. As to the impact of the processing time for expedited cases on those regularly filed, enough resources are being provided so that the handling of expedited cases will not influence the examination of other cases. Comment: Two comments suggested that the concept be extended to both utility and design applications. Response: This suggestion is not being adopted at this time, since due to limited resources, the idea is best limited to design applications where due to the relative ease of copying, there is often a need for rapid patent protection. Comment: One comment supported the measure but asked for a quid-pro-quo short time goal of four months. Response: The Design Group has indicated that they will set as an objective three months cycle-time for examination and one month cycle-time for printing and guidelines for the program shall be explained to the public in the MPEP. Comment: One comment stated there was no need for an expedited procedure since design applications ``are being examined as of late relatively quickly.'' Response: Nonetheless, the proposal is responsive to public need for those applicants who are willing to pay an increased, cost-offsetting fee in view of the benefits arising from further decreases in patent prosecution time. Comment: A few comments stated in opposition to the proposal that the best solution is to hire more examiners. Response: Although additional manpower conceivably would reduce cycle time, the Office faces certain constraints on its ability to hire more examiners and it must utilize its resources as best it can in order to meet all of the Office's goals. Comment: Several comments supportive in concept also had specific recommendations for streamlining the application process, including prepayment or preauthorization of the issue fee, and faxing and/or telephoning all communications. Response: As to the prepayment or preauthorization of the issue fee, this suggestion is not being adopted for reasons similar to those presented in conjunction with the proposal to eliminate preauthorization of payment of the issue fee ( 1.311). As to making all communications by facsimile or phone, this will be encouraged where practicable and when the applicant's representative supplies a facsimile number. Multiple references, however, may prove too cumbersome for transmission by facsimile. Comment: One comment suggested that automatic refunds be given if short time goals were not met and that a ``Public Advisory Committee'' be established to monitor progress and to be a point of contact for suggestions from the public. Response: The suggestion as to automatic refunds is not being adopted in view of the unpredictability of unforeseen circumstances which might justify the failure to achieve the goal as well as lack of statutory authority to give a refund because a processing goal is not met in time. As to the ``Public Advisory Committee,'' the Office does not foresee the need for such a committee, and the most practical point of contact would be with the design group itself, which is always open to suggestions from the public. Section 1.163: Section 1.163(b) is proposed to be eliminated to delete the requirement for two copies of the specification for consistency with the current Office practice. See Interim Waiver of 37 C.F.R. 1.163(b) for Two Copies of a Specification of an Application for a Plant Patent, Notice, 1213 Off. Gaz. Pat. Office 109 (August 4, 1998). Section 1.163(c) is proposed to be separated into 1.163(b) and 1.163(c). The order of the papers in a plant patent application, including the proposed application data sheet (see 1.76) is proposed to be listed in 1.163(b). The order of the sections in the specification of a plant patent application is proposed to be listed in 1.163(c). New 1.163(d) corresponds to 1.77(c) and provides that the section headings should be in uppercase letters without underlining or bold type. New sections 1.163(c)(4) and 1.163(c)(5) require the plant patent applicant to state the Latin name and the variety denomination for the plant claimed. The Latin name and the variety denomination of the claimed plant are usually included in the specification of the plant patent application. The Office, pursuant to the ``International Convention for the Protection of New Varieties of Plants'' (generally known by its French acronym as the UPOV convention), has been asked to compile a database of the plants patented and the database must include the Latin name and the variety denomination of each patented plant. Having this information in separate sections of the plant patent application will make the process of compiling this database more efficient. Current 1.163(c)(5) through 1.163(c)(10) are proposed to be redesignated 1.163(c)(6) through 1.163 (c)(11), respectfully. Section 1.163(c)(14) and 1.163(d) are proposed to be eliminated to delete the reference to a plant patent color coding sheet. The colorcodes and the color coding system are generally included in the specification. Repeating the color coding information in a color coding sheet increases the risk of error and inconsistencies. Section 1.173: The proposed changes to 1.173 regardingidentifying all occurrences of claim broadening in a reissue application, which were published in the Advance Notice (Topic 16), have been dropped in view of comments received. A number of comments were directed to the undue burden which the rule change would place on applicants and the potential for future issues in litigation re 1.56 violations. It is now being proposed that 1.173 be amended to consolidate the requirements for the filing of reissue applications currently in 1.173, the requirements for amending reissue applications currently in 1.121, and the requirements for reissue drawings, currently in 1.174. It is proposed that 1.174 be eliminated as the requirements for filing drawings would be moved to 1.173. The proposed language consolidates many procedural and formal requirements for reissue applications into a single section. Paragraphs for separate items within this section have been proposed, in order to set forth the requirements for the specification, claims and drawings in a format which is clearer and easier to understand. The title 1.173 is proposed to be changed to ``Reissue specification, drawings, and amendments'' to more aptly describe the inclusion of all filing and amendment requirements for the specification, including the claims, and the drawings of reissue applications in a single section.