Exhibit_C.docx

Exhibit C

Selecting Only the Primary Classification Background In the past, US patent documents were completely classified in USPC. This process involved classifying every claim that was separately classifiable, then selecting from those mandatory classifications a single OR classification (OR) for grants or PR (Primary) for Pre-Grant Publications (PGPubs). The remaining mandatory classifications became XRs (cross-reference) or SRs (Secondary) for grants or PGPubs, respectively.

With the advent of CPC, the need to classify US patent documents in USPC is diminished. Only the PR classification symbol is required to be allocated to PGPub documents, for routing applications to the appropriate art units for examination. It is assumed that one knows how to classify a claim, in general. This paper describes a process for selecting the PR classification of a PGPub, usually without having to determine all the mandatory classifications that would otherwise have to be determined if the document were being completely classified in USPC.

The PR classification is identified by a USPC class and a USPC subclass. In this paper the class of the PR classification is referred to as the “PR class” and the subclass of the PR classification is referred to as the “PR subclass”. It is assumed that the user knows how to select a USPC class and subclass to classify any given claim. For information on that process consult The Handbook of Classification at http://www.uspto.gov/sites/default/files/web/offices/opc/documents/handbook.pdf. The process outlined in this paper is concerned only with minimizing the amount of classification needed to be done in order to select the PR classification for an application.

Utility Classes Selecting the PR Class The process of selecting the PR classification for a PGPub document involves first selecting the PR class and then the PR subclass in that class. If one were completely classifying a document in USPC all the mandatory classification symbols would first be determined and then the PR classification symbol would be selected from among them. If all one wishes to do is determine the PR classification it may not be necessary to determine all the mandatory classifications.

The best way to determine the PR class is to briefly look at each claim in the application. There is no need at this stage to classify anything. In the case where an application contains one or more claims that appear to be classified in only one USPC class, then the class of the PR classification is the class where the subject matter of the claims is classified.

The Controlling Claim When an application contains one or more claims that appear to be classified in different classes, one should normally attempt to first identify the “controlling claim” prior to classifying the claims. The controlling claim is identified by performing an ordered sequence of tests until one claim successfully satisfies the conditions of one of the tests. That claim is the controlling claim, and the class in which the controlling claim is classified is the PR class. There must be common subject matter in all the claims in order to apply the first two tests. If there is no common subject matter between the claims, or there is common subject matter only between some of the claims, the first two tests must be skipped and the sequence of tests should begin with test #3. The sequence of tests performed to identify the controlling claim is listed below.

1. Is there a claim that is more comprehensive than the other claims?

2. Is there a claim directed to a superior statutory category of subject matter than the other claims?

3. Is there a claim directed to a more superior type of subject matter than the other claims?

4. Are the claims classified in “chemical” classes related to each other as genus and species classes?

5. For claims classified in different classes, which class is superior in the listing “Classes within the USPC System Arranged by Related Subject Matter”?

The Most Comprehensive Claim If there is a most comprehensive claim, the class of the PR would be the class in which the most comprehensive claim is classified. Comprehensiveness generally refers to the combinatorial extent of the claimed subject matter, that is, the more comprehensive of two claims reciting common subject matter is the claim that comprises the largest combination of subject matter. It is essential when comparing the comprehensiveness between two claims that they recite at least some common subject matter. If claims contain no common subject matter their relative comprehensiveness cannot be determined.

The presence or number of claimed subcombinations doesn’t usually change the comprehensiveness of a claim. Consider, for example, the following two claims:

Claim 1 An oven having a compartment to be heated, a heating element, an insulated door to access the compartment, and a shelf for holding items within the compartment at selectable heights.

Claim 2 An oven having a compartment to be heated combined with a refrigerator to cool items that have been cooked in the oven.

Both claims recite some common subject matter, an oven. For this reason an assessment can be made about the relative comprehensiveness of the two claims. Claim 1 clearly recites more limitations than claim 2; however, most of these limitations, i.e. the insulated door, the shelf, and the heating element are all considered to be subcombinations of an oven, and do not contribute to the combinatorial extent of the claim.

Claim two recites an oven combined with a refrigerator. A refrigerator is not a subcombination of an oven, that is, it is something altogether different from an oven. Thus claim 2 has a larger combinatorial extent than claim 1, and is therefore the controlling claim. Whichever USPC class covers the claimed combination of claim 2 is the PR class.

It is possible to compare the comprehensiveness of two claims that are directed to different statutory categories. For example:

Claim 1 An oven having a compartment to be heated, a heating element, an insulated door to access the compartment, and a shelf for holding items within the compartment at selectable heights.

Claim 2 A process for making an oven comprising the steps of taking an oven, placing it next to a refrigerator, then riveting them together.

Here, claim 1 recites an oven and claim 2 recites making an oven. The oven is the common subject matter. In this case the oven produced by the process of claim 2 is more comprehensive than the oven recited in claim 1, for the same reasons given in the previous example. Therefore, claim 2 is more comprehensive than claim 1, and the class that covers the subject matter of claim 2 is the PR class.

When determining the relative comprehensiveness between two method claims one should always select as the most comprehensive claim the one that “goes farthest” in terms of a production. This may not always be the method claim having the greatest combination of steps. For example:

Claim 1 The method of producing a cardboard box comprising the steps of sowing seed, growing trees from the seed, harvesting the trees, turning the trees into pulp, then producing cardboard boxes from the pulp.

Claim 2 A method of filling a cardboard box comprising the steps of inserting contents into the box then closing the box.

Clearly, claim 1 has a greater combination of steps than claim 2; however, claim 2 produces a product that is further along in the production cycle than claim 1. Claim 1 produces a box, claim 2 takes the box and fills it, then closes the box. In this sense the method of claim 2 has a greater “extent” than the extent of the method of claim 1, and so claim 2 is the controlling claim, and the PR class is the class covering claim 2. In general, the extent of a method claim is determined by how far the method goes, not by where it begins.

Determining which claim is most comprehensive does not require the classification of any claims. Just compare the combinatorial extent of successive claims, e.g. the most comprehensive of claim 1 vs. claim 2 gets compared to claim 3, etc., until all the claims have been compared and a most comprehensive claim determined.

Superior Category of Subject Matter The relative comprehensiveness of claims cannot always be determined. This is true when there is common subject matter in the claims, but the claims are equally comprehensive, and when there is no common subject matter between the claims. When the claims have common subject matter and are equally comprehensive we can apply the second test, i.e., the category of subject matter test. If there is a claim directed to a category of subject matter that is superior to categories of subject matter in the other claims that claim will be the controlling claim.

The different categories of subject matter and their order of superiority are:

1. Process of using a product of manufacture (2), e.g., using a fuel or radio transmitter

2. Product of manufacture, e.g., a fuel or radio transmitter

3. Process of making product (2), e.g. an oil refining process

4. Apparatus to make a product (2), e.g., machine, tool, etc.

5. Materials used to make a product (2) The following example illustrates two claims that are equally comprehensive, as they are directed to common subject matter, and have equal combinatorial extent.

Claim 1 An oven having a compartment to be heated combined with a refrigerator to cool items that have been cooked in the oven.

Claim 2 A process for making an oven comprising the steps of taking an oven, placing it next to a refrigerator, then riveting them together.

The claims either recite the combination of a refrigerator and an oven, or a process for making the combination. As such, they are equally comprehensive. Since they are equally comprehensive we need to compare the categories of subject matter to see if one is superior to the other.

Claim 1 recites a “product” and appears as item number 2 on the list of categories. Claim 2 recites a process claim for making the product of claim 1. Claim 2 is item #3 on the list of categories. Since the order of the categories defines the superiority of the respective categories claim 1 is a more superior category of subject matter than claim 2, since a product claim is a superior category of subject matter than a claim to the process of making the product. In this example, the class that covers the subject matter of claim 1 is the PR class.

As with the determination of the most comprehensive claim, there must be common subject matter in all the claims in order to select a controlling claim based on category of subject matter. No classification of any claims is required to determine the controlling claim for either of the first two tests. If there is no common subject matter between the claims it will be necessary to compare the types of subject matter of the claims to determine if a controlling claim can be identified.

Superior Types of Subject Matter In the event the test of comprehensiveness and the test for superior category of subject matter fail to identify a controlling claim, or there is no common subject matter in all the claims such that these tests cannot be used, the test for superior types of subject matter is invoked. The types of subject matter, in their order of superiority are:

1. Relating to maintenance or preservation of life

2. Chemical subject matter

3. Electrical subject matter

4. Mechanical subject matter

5. (a) Dynamic (relates to moving things or combinations of relatively moving parts)

6. (b) Static (stationary things or parts) Subject matter related to the maintenance or preservation of life comprises subject matter for treating or diagnosing conditions of the body, such as pharmaceuticals, medical equipment and procedures, biological testing, etc. It has not traditionally included food items, ambulances, exercise equipment, or other devices not directly associated with treating or diagnosing an abnormal condition of a living organism.

Chemical, Electrical, and Mechanical subject matter are fairly self-evident. If there is a question whether the subject matter covered by a particular class is chemical, electrical, or chemical one should refer to the document “Classes Arranged by Related Subject Matter”, which identifies the recognized discipline of each USPC class.

Consider the following two claims:

Claim 1 A pharmaceutical composition for treating athlete’s foot fungus comprising the active ingredient Cladosporium encapsulated in a gelatin shell.

Claim 2 A writing instrument including an eraser, an ink fountain and writing nib, a cap having a pocket clip, an electric light for illuminating the surface to be written on while writing.

It is not unheard of for claims as diverse as these to appear in the same application. While it is definitely true that claim 2 has a greater combinatorial extent than claim 1, there is no common subject matter between the two claims. Therefore, neither the test for most comprehensive claim nor the test for superior categories of subject matter can be used to answer the question which claim is controlling. The third test concerning superior types of subject matter should be applied next.

Applying the test for superior types of subject matter we see that claim 1 is an antifungal composition used for treating the human body. As such, claim one is a type 1 subject matter relating to the maintenance or preservation of life. Claim 2 is an implement for writing (mechanical subject matter) combined with an electric light (electrical subject matter). Since it is clear that subject matter relating to the preservation or maintenance of life is superior to both mechanical and electrical subject matter in general, it should be clear from test three that claim 1 is the controlling claim, and the class that covers the subject matter of claim 1is the PR class.

Chemical Classes Related as Genus and Species

A process of coating an aluminum plate comprising the steps of heating the aluminum plate to 500 degrees C, applying a negative electrostatic charge to the plate, then spraying a positively charged aerosol film onto the heated plate.

From the class 427 definition we see that the class is a generic coating class:

SECTION I - CLASS DEFINITION

A. This is the generic class for applying or obtaining a coating on a surface. The coating may be hard or soft, permanent or transitory, supplied solely by extraneous materials or supplied wholly or in part by the base material.

While class 427 covers generic coating processes, class 205 covers coating processes involving the use of wave energy and an electrolyte. As such, class 205 covers a species of coating. According to test 4, if the classes in which the claims are classified are both chemical and related as genus and species classes, the controlling claim is the one classified in the species class. For the example provided here, claim 1 is the controlling claim and the PR class is USPC class 205, based on test 4 for determining the controlling claim.

Superiority of Classes in the Classes Arranged by Related Subject Matter

Exceptions There are a few exceptions to the rules above for selecting the PR class. When applicable, either of these exceptions will determine the PR class without regard to other rules or tests.

Administrative directives It is required to place the PR for any application claiming high temperature superconducting (process or materials or apparatus) in class 505. For the purpose of classification in class 505 high temperature means temperatures above 30 degrees Kelvin.

Agreements made between examining centers Regardless of whichever other classes the claims might be classified in, except class 505, if gene sequencing appears in any claim the PR class will be the class covering the gene sequencing.

Hybrid claims

In this case, claim 2 is hybrid claim of the type referred to as a Product-by-Process (PxP) claim. In this particular example the PXP claim is a “classic” PXP claim, that is, the product is defined entirely in terms of the process and has no structural limitations. A “classic” PxP claim has its PR in the class that covers the process claims. If structural limitations are added to a claimed PxP invention the PR class will be in the class covering the product. For example, Claim 3 The toy of claim 2 where the toy comprises a firetruck with a moveable ladder.

The structural limitations of claim 3 make this claim the most comprehensive claim, since it is now the claim with the greatest combinatorial extent. The application with these three claims will have the PR class in class 446, the class covering toys.

There are other types of hybrid claims besides PxP claims. There are Product-by-Apparatus claims, Materials-by-Process, Product-by-Materials, etc. All these claims should be dealt with in a manner similar to that described for the PxP claims in the example above. If there are claims defining an apparatus for making a product, and a claim directed to the product made by the apparatus the PR class would be in the class covering the apparatus if there are no structural limitations added to the product, and in the class covering the product if there are. If there are method claims for making a material and a claim to the material made by the claimed method the PR class would be the class covering the claimed method if there were no structural limitations to the material and in the class covering the material if there are.

In other words, a product of manufacture defined solely by the method used to make it is classified in the class covering the method of making the product. A product defined solely by an apparatus used to make it is classified in the class covering the apparatus. The same principle may be extended to cover other types of hybrid claims. Once additional limitations are added to a classic hybrid claim, be it structural limitations to a PxP claim or method steps to a Method-by-Apparatus claim, etc., classification shifts to the place covering the thing having the additional limitations.

Selecting the PR subclass

Design Classes

For example, The PR for a Design application seeking protection for a walking cane with a built-in radio receiver would be in class D03, which covers walking canes, not in class D14, which covers radio receivers, because D03 is numerically lower than D14.

Once the correct PR Design class has been selected the PR subclass is selected based on the disclosure of the document and the usual rules for selecting a subclass within a class. It should be observed that some Design classes include definitions, similar to the utility classes. For the most part, these definitions are merely listings of what the classes cover. Some Design classes additionally include notes in their class schedules that can distinguish between the coverage of different subclasses or classes, and should always be consulted when selecting a subclass within a Design class.

Plant Classes There is only one USPC class covering applications for plant protection under 35 U.S.C. 161. The class is PLT, and the PR for all Plant documents is in the PLT class. The usual rules for selecting a subclass in a class are followed when selecting the PR subclass within the PLT class.