- Patents/Claim Construction - Ford Straightens Out A Bent Fender—No Infringement
- Copyrights/Infringement - Scenes a Faire and Merger Doctrines in Action
- Lanham Act/§43(a) - False Claim of Creation Is Not Actionable as False Designation of Origin Under Section 43(A)
- Trademarks/Dilution - The Federal Circuit Narrows the Scope of the Federal Dilution Act
- Trademarks/Infringement - Fourth Circuit Construes Lanham Act to Provide Enhance Scope of Trademark Protection to Foreign Businesses
No Matter How You Festo It, a Non-Switching Multiplier Is Not Equivalent to a Switching Multiplier
By Behrooz Shariati
In a case decided on remand from the U.S. Supreme Court, the U.S. Court of Appeals for the Federal Circuit has held that incompetence of a patent lawyer is not a defense to prosecution history estoppel and that, if related to patentability, even a voluntarily added limitation may limit, or eliminate, the available range of equivalents. Pioneer Magnetics, Inc. v. Micro Linear Corp., Case No. 00-1012 (Fed. Cir. June 6, 2003).
After a series of procedural motions, the district court construed the claims of the patent in suit to require a "switching analog multiplier circuit." As the accused devices had only "non-switching analog multiplier circuits," the plaintiff attempted to prove that a non-switching analog multiplier circuit is equivalent to a switching analog multiplier circuit.
The switching limitation was found in a dependent claim added after filing. The examiner rejected the original claims as anticipated. The reference applied did not disclose a switching multiplier.
When amending the claims, the Pioneer Magnetics' lawyer imported the switching limitation from the dependent claim into new claim 1. Contrary to the remarks accompanying the amendment, claim 1 now included all the limitations of the original claims, plus the switching limitation. The dependent claim still included the switching limitation as well as a "timer and ramp signal generator" limitation.
The district court ruled that because the switching limitation was added to overcome a cited reference, Pioneer Magnetics was not entitled to a range of equivalence on this element. Because none of the accused devices had a switching multiplier, the parties stipulated to a summary judgment of non-infringement. Pioneer Magnetics appealed.
The Federal Circuit, citing its 2000 en banc Festo decision, affirmed the district court's claim construction and the summary judgment. After Pioneer Magnetics petitioned the Supreme Court for a writ of certiorari, this case, along with a number of other cases, was remanded in light of the Supreme Court's decision in Festo.
Pioneer Magnetics fared no better under the new Festo. The Federal Circuit noted that because the amendment in question narrowed the claim, Pioneer Magnetics has the burden to show that the amendment was not related to patentability.
Relying on a mea culpa declaration from its patent lawyer, Pioneer Magnetics argued that adding the switching limitation was through "inadvertence." The Federal Circuit rejected this evidence because it was not part of the public record of the patent. Pioneer Magnetics also pointed to a discrepancy between only the amendment and the accompanying remarks to the affect that claim 1 was only amended to include the limitations from the original claims. Pioneer Magnetics argued that the remarks were evidence that the amendment was inadvertent. The Court disagreed, pointing out that it is equally likely that the mistake was in the remarks and the amendment was intended.
The Federal Circuit then considered whether Pioneer Magnetics could prove that the particular equivalent in issue, a non-switching multiplier, was unforeseeable at the time of the prosecution of the patent. Since the main cited reference in the case showed a non-switching multiplier, the Federal Circuit concluded that Pioneer Magnetics could not meet its burden that such a structure was not foreseeable at the time of the prosecution of the `366 patent.
Practice Note: Only the public record counts. The file history should clearly explain the reasons for what is going on, if the patent holder wants to rely on the reasons later. The patentee cannot try to explain its reasons for various prosecution activities in after-the-fact testimony from its patent lawyer.
Implied License Negates Possibility of Direct Infringement and Therefore Active Inducement as Well
By Paul Devinsky
The U.S. Court of Appeals for the Federal Circuit, vacating a preliminary injunction, found that purchasers of a patentee's "female plate" battery pack had an implied license to mate the battery pack with a "male" charging plate, thus, obviating any direct infringement of the claimed combination of a male and female plate. Anton/Bauer, Inc. v. PAG, LTD., Case No. 02-1487 (Fed. Cir. May 21, 2003).
Anton/Bauer manufactures and sells a wide variety of batteries and chargers. The batteries typically require a device that allows them to be connected mechanically and electrically to a camera or to a battery charger and then released from the camera or charger. The patent in suit is directed to a battery pack connection that allows a battery pack to be "quickly and efficiently replaced upon discharge of the batteries" and claims a combination of a female plate and a male plate, where the female plate contains a plurality of slots and the male plate contains a plurality of projections that correspond to the female slots. The claimed combination is formed when a female and a male plate are fitted together to form a mechanical and an electrical connection.
Anton/Bauer sells its female plates directly to the camera industry and also to end-users as an after-market product. Anton/Bauer also separately sells battery packs that contain male plates. PAG also sells a battery pack that can be used in combination with Anton/Bauer's female plates. The PAG battery pack contains a male plate, which allows the battery pack to be connected to the Anton/Bauer female plate. Anton/Bauer filed suit alleging that the PAG battery pack induced infringement of the `204 patent and/or contributed to the infringement of the `204 patent by Anton/Bauer's customers.
The district court granted Anton/Bauer's motion for preliminary injunction, holding that Anton/Bauer would likely succeed on the merits of its claims of induced infringement or contributory infringement and rejecting PAG's claim that Anton/Bauer had exhausted its patents rights and had granted its customers an implied license to practice the claimed invention. PAG appealed.
PAG argued that the district court improperly applied the implied license test laid out in Met-Coil by requiring that the accused battery pack be a replacement for an element of the claimed combination and by requiring a showing of affirmative acts on the part of Anton/Bauer that would lead a customer to believe that an implied license had, in fact, been granted. The Federal Circuit agreed, noting that the sale of the unpatented female plate by Anton/Bauer is a complete transfer of the ownership of the plate, that "extinguishes Anton/Bauer's right to control the use of the plate" and that "the plate can only be used in the patented combination and the combination must be completed by the purchaser."
The Court found no evidence that Anton/Bauer placed any express restrictions on the use of the female plates and held that, "by the unrestricted sale of the female plate, Anton/Bauer grants an implied license to its customers to employ the combination claimed in the `204 patent. Accordingly, there is no direct infringement to support a claim of either inducement of infringement or contributory infringement."
Failure to Advise Examiner of Relevant Prosecution in a Related Case May Be Inequitable Conduct
By Paul Devinsky
Although it reversed and remanded a district court summary judgment of inequitable conduct because of a factual dispute on the issue of intent, the U.S. Court of Appeals for the Federal Circuit made clear that an applicant's failure to disclose a rejection by a different examiner of a claim similar to that in issue meets the materiality prong of an inequitable conduct defense. Dayco Products, Inc. v. Total Containment, Inc., Case No. 02-1497 (Fed. Cir. May 23, 2003).
The patents-in-suit all claim priority through a string of continuation applications. The family of applications for the patents-in-suit and a related family of applications were assigned to two different examiners. The examiner of the related family of applications (Examiner A) was made aware of the applications for the patent-in-suit. However, the examiner of the patents-in-suit (Examiner B) was not made aware of the existence of the family of related applications. The claims in the related family of applications were substantially identical to the claims of the patents-in-suit and were rejected by Examiner A on the three separate occasions. Examiner B was neither advised of these rejections, nor was the prior art cited by Examiner A brought to Examiner B's attention.
The district court found that Dayco committed inequitable conduct when it "intentionally withheld material prior art and information concerning [the] co-pending application from the patent examiner (assigned to the patents-in-suit) and granted summary judgment. Dayco appealed.
The Federal Circuit reversed and remanded but, in doing so, agreed with the district court that under the "reasonable examiner" standard of materiality, a co-pending application is "highly material" where "it would have conceivably served as the basis of a double patenting rejection." The Court rejected Dayco's argument that its filing of a terminal disclaimer limiting the term of the related application (to the terminal date another issued patent) obviated the materiality of the non-disclosure: "…a co-pending application may be material even though it cannot result in a shorter patent term when it could affect the rights of the patentee to assign the issue patents." Thus, the Court reasoned that the disclosure of the co-pending application "could have led to double patenting rejections in the applications that issued as the patent-in-suit" and that the pending, related application was, therefore, material.
Regarding the applicant's failure to disclose the prior rejection, the Court held that "a contrary decision of another examiner reviewing a substantially similar claim meets the Akron Polymer 'reasonable examiner' threshold materiality test of 'any information that a reasonable examiner would substantially likely consider important in deciding whether to allow an application to issue as a patent.'" The Court reasoned that "[a]lthough examiners are not bound to follow other examiners' interpretations, knowledge of a potentially different interpretation is clearly information that an examiner could consider important when examining an application."
However, the Court reversed the summary judgment based on a lack of a threshold showing of intent to deceive and remanded the case for a determination of that issue.
Ford Straightens Out A Bent Fender—No Infringement
By David Spenard
The U.S. Court of Appeals for the Federal Circuit overturned a jury verdict based on a claim construction issue, finding Ford Motor Company did not infringe Waner’s patent for a fender liner used on dual rear wheel trucks. In addition, the Federal Circuit affirmed the dismissal of Waner’s unjust enrichment claim on summary judgement. Waner v. Ford Motor Co. , Case Nos. 02-1184, -1185 (Fed. Cir. June 4, 2003).
The Federal Circuit disagreed with the district court’s construction of the claim term "flange." Relying on a dictionary definition as well as intrinsic evidence (i.e., the "structure of the language of the claim"), the Court decided that the claimed fender liner must have a "flange" that is a raised or projecting edge and that the flange must exist prior to installation of the fender liner. Because Ford’s fender liner was a single planar sheet before installation, the Federal Circuit ruled that no reasonable jury could have found infringement. Accordingly, the district court’s denial of a judgment as a matter of law (JMOL) for Ford was reversed.
The Court also affirmed the denial of Waner’s summary judgment motion for unjust enrichment in favor of Ford. The Federal Circuit agreed with the district court that, according to applicable state law, Waner’s had no protectable property interest during the time his invention was in the public domain. Waner sold his fender liners both to Ford and to the public at a horse show. At the time of the sales, Waner had no corresponding patent, nor did he have a confidentiality agreement with Ford. Because there was no dispute that Waner’s invention was in the public domain at that time, his claim of unjust enrichment was properly dismissed.
Judge Newman, in dissent, thought that the claim construction issue was a "close question" and argued for deference to the jury verdict. Judge Newman further argued that the complaint presented a course of action for "unjust enrichment," not trade secret violation as analyzed the majority, and should not have been dismissed.
COPYRIGHTS / INFRINGEMENT
Scenes a Faire and Merger Doctrines in Action
By Daniel Foster
In decisions issued two days apart, the U.S. Court of Appeal for the Seventh and Ninth Circuits expressed divergent views on the scope of copyright protection for collections of standard or generic elements. Following a recent case of its own, the Ninth Circuit affirmed that such works are entitled to only "thin" protection. In an analogous case, the Seventh Circuit articulated a broader scope of protection, holding that copyright protection lies even where minimal original elements are added to standard elements.
In Bucklew v. Hawkins, Ash, Baptie, & Co., Case Nos. 02-2244, 02-2299, 2003 U.S. App. LEXIS 10485 (7th Cir. May 27, 2003), Bucklew charged two affiliated companies (HAB) with infringing his copyright in software designed for use with standard spreadsheet applications for generating tables for use with forms required by the U.S. Department of Housing and Urban Development (HUD). Bucklew did not claim a copyright over the spreadsheet per se, but claimed protection for such elements as choice and size of font, the size of cells and columns, use of color in particular places, the wording of labels and headings (other than those prescribed by HUD) and the use of boldface or italics for column headings.
At trial, the jury heard evidence that HAB's form included numerous apparently arbitrary details also found in Bucklew's form, including information that had no function. Moreover, as circumstantial evidence of copying, Bucklew presented evidence that the font HAB used was the same as that used on Bucklew's and was not a font available on the Windows operating system that HAB had used to develop its software. The jury returned a verdict for Bucklew. HAB appealed.
HAB argued that Bucklew's work represented a merger of idea and expression and was, therefore, entitled to no copyright protection. Declining to apply the merger doctrine on these facts, the court held that whether Bucklew's choices were highly original was irrelevant; copyright protection required only enough expressive variation from public-domain or other existing works to enable the new work to be readily distinguishable from its predecessors. According to the Seventh Circuit, to require more would be burdensome to enforce and would involve judges in making aesthetic judgments, which few judges are competent to make. The court went on to state that when similarities between a copyrighted work and a work alleged to infringe it concern details of such an arbitrary character, the probability that the infringer had duplicated them independently is remote, and an inference of copying may be drawn without any additional evidence. The court also held that the scenes a faire doctrine did not apply because the format choices made by Bucklew were not generic. The court was unmoved by the fact that HAB had introduced a number of variations to the template copied from Bucklew. The court reasoned that this simply made the work derivative, not non-infringing.
In Rice v. Fox Broadcasting Co., Case Nos. 01-56582, 01-56846, 2003 U.S. App. LEXIS 10668 (9th Cir. May 29, 2003), Rice sued to protect his copyright in a home video entitled "The Mystery Magician." Several years after the video was released, Fox developed a series of television specials about magic that, like Rice's video, revealed the secrets behind famous magic illusions.
Affirming the district court's entry of judgment against Rice, the Ninth Circuit discussed two elements required to establish infringement: ownership of a valid copyright and copying of constituent elements of the work that are original. The latter element may be established by showing that the works in question are substantially similar in their protected elements and that the infringing party had access to the copyrighted work.
In determining whether the works are substantially similar, the Ninth Circuit applies both an extrinsic and an intrinsic test. In applying the extrinsic test, the court must distinguish between the protectable and unprotectable material because a party claiming infringement may not rely upon any similarity in expression resulting from unprotectable elements.
Specifically, the court noted that under copyright principles, ideas are not protectable, only the expression is protectable. Similarly the scenes a faire doctrine holds that expressions indispensable and naturally associated with the treatment of a given idea are treated like ideas and, therefore, not protected. Thus, the mere fact that both The Mystery Magician and the Fox Specials reveal the secrets behind magic tricks does not, by itself, give rise to infringement. Rather, infringement could be found only if Fox copied the presentation and stylistic elements of The Mystery Magician.
The Ninth Circuit held that, under the doctrines of merger and scenes a faire, the mere fact that both works feature a masked magician revealing magic tricks did not constitute infringement. Likewise, the court found that the dialogue, plot sequence and magic tricks themselves were either subject to the limiting doctrines of merger and scenes a faire or were quite different. Finally, the court found that the overall mood and secrecy were generic, which constitute scenes a faire that merge with the idea of revealing magic tricks.
False Claim of Creation Is Not Actionable as False Designation of Origin Under Section 43(A)
By John Dabney
The U.S. Supreme Court has held that a claim for false designation of origin which is premised on the defendant’s representation that it created the idea embodied in a product that the defendant sells is deficient as a matter of law. Dastar Corp. v. Fox, 539 U.S. ___, U.S. 2003 U.S. LEXIS 4276 (June 2, 2003).
In Dastar, the defendant sold videotapes, which were copies of the plaintiff’s videotapes. The defendant sold the tapes as its own, without disclosing that it had copied the plaintiff's tapes. The defendant represented itself as the originator of the creative work conveyed in its tapes. The plaintiff alleged a claim under Section 43(a) of the Lanham Act. The Supreme Court held that such a claim failed as a matter of law.
The Court explained that Section 43(a) provides a remedy against a person who uses a "false designation of origin." The question presented was whether the term "origin" in the phrase "false designation of origin" referred exclusively to the actual manufacturer of the goods or also included the inventor of the goods that were copied. The Court noted, "[I]n construing the Lanham Act, we have been ‘careful to caution against misuse or overextension’ of trademark and related protections into areas traditionally occupied by patent or copyright. The Lanham Act … does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity."
Relying on the limited purpose of the Act, and the interplay between the Act and the Federal Copyright and Patent Statutes, the Court held that the term "origin" in Section 43(a) refers only to the party that actually manufactured the physical goods made available to the public. "Origin" does not include the creator of an underlying work, which has been copied. Id. As the Court put it, "reading the phrase ‘origin of goods’ in the Lanham Act in accordance with the Act’s common-law foundations (which were not designed to protect originality or creativity), and in light of the copyright and patent laws (which were), we conclude that the phrase refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept or communication. To hold otherwise would be akin to finding that Section 43(a) created a species of perpetual patent and copyright, which Congress may not do."
That did not mean that the plaintiff had no redress -- it did, but only under the Copyright Act. A false designation of origin claim under the Lanham Act was unavailable as a matter of law: "Because [the defendant] was the ‘origin’ of the products it sold as its own, [the plaintiff] cannot prevail on its Lanham Act claim."John Dabney is a partner in the Intellectual Property Department, resident in McDermott, Will & Emery’s Washington, D.C. office. He concentrates his practice on trademark litigation, prosecution and counseling.
The Federal Circuit Narrows the Scope of the Federal Dilution Act
By John Dabney
The U.S. Court of Appeals for the Federal Circuit has now construed the Federal Dilution Act in a manner that limits the usefulness of the Act to a famous trademark owner. Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car, Inc., 2003 U.S. App. LEXIS 10760 (Fed. Cir. May 2003).
Enterprise Rent-A-Car (Enterprise) owns the famous slogan PICK THE COMPANY THAT PICKS YOU UP for rental car services. Advantage Rent-A-Car (Advantage) applied for the slogan WE’LL EVEN PICK YOU UP for the same services. Enterprise opposed registration of Advantage’s slogan based on the Federal Dilution Act. The Trademark Trial and Appeal Board dismissed the opposition because Advantage has made limited use of its slogan before Enterprise’s slogan had become famous.
The Federal Circuit affirmed. The Court observed that the Dilution Act provides that the owner of a famous mark is entitled to relief against the use of a diluting mark provided that such diluting use "begins after the mark has become famous." Relying on the legislative history of the Dilution Act, the Court held that any use in commerce -- no matter how geographically remote or restricted, will defeat a federal dilution claim. According to the Court, the prior use contemplated by the Act includes any use whatsoever, and is not limited to the use being challenged by the famous trademark owner. As the Court put it, "any prior use, even in a limited geographic area, defeats an injunction under [the Federal Dilution Act], and therefore bars a claim of dilution as a ground for opposition under [the Federal Dilution Act]."
TRADEMARKS / INFRINGEMENT
Fourth Circuit Construes Lanham Act to Provide Enhance Scope of Trademark Protection to Foreign Businesses
By James Wolfson
The U. S. Court of Appeals for the Fourth Circuit, over a spirited dissent, affirmed the district court's grant of summary judgment of trademark infringement and interpreted the "use in commerce" requirement of the Lanham Act to include services rendered solely outside of the United States, so long as those services were advertised and provided to citizens of the U.S. International Bancorp, LLC v. Societe des Bais de Mers et du Cercle des Etrangers a Monaco, Case No. 02-1364 (4th Cir. May 19, 2003).
The appellee, Societe des Bais de Mers et du Cercle des Etrangers a Monaco (SBM), owns and operates casino facilities in Monte Carlo, Monaco in connection with the service mark "Casino de Monte Carlo." Although SBM has advertised its casino services in the United States under its mark, it does not provide casino services within the United States. The appellants operate a number of online gambling websites using domain names incorporating the mark "Casino de Monte Carlo."
The most vigorously contested issue was whether the Lanham Act's requirement that a mark must be "used in commerce" in order to be eligible for protection is met where the services provided under that mark were rendered solely outside of the United States. The Fourth Circuit answered that question in the affirmative, interpreting the statutory term "use in commerce" to include use by SBM of its "mark in the sale and advertising of its gambling services to United States citizens. The court reasons that SBM's rendering of gambling services to U.S. citizens constitutes foreign trade that may be regulated by Congress. Thus, the court held that the services SBM renders under the "Casino de Monte Carlo" mark to citizens of the U.S. are services rendered in commerce, and the "use in commerce" requirement of the Lanham Act is satisfied.
The dissent termed the majority's decision permitting enforcement of a mark that has not been used within the United States as "without precedent" and "reverse imperialism." The dissent argued that "[s]uch a rule threatens to wreak havoc over this country's trademark law and would have a stifling effect on United States commercial interests generally. Before investing in a mark, firms and individuals would be forced to scour the globe to determine when and where American citizens had purchased goods or services from foreign subjects to determine whether there were trademarks involved that might be used against them in a priority contest or in an infringement action in the United States." The dissent further argued that, under the majority's rule, SBM and companies like it would suddenly acquire a windfall of potential U.S. trademark rights for all of the goods and services advertised to and purchased by U.S. citizens while traveling in their countries. "Like some sort of foreign influenza, these new entitlements would accompany American travelers on their return home, creating a vast array of new duties for individuals in the United States seeking to use the same or similar marks on goods or services sold in the United States."
Color, Size and Shape Matter—For Pharmaceuticals That Is
By James Griffith
In a recent case involving the validity of trade dress in drug configurations, the U.S. Court of Appeals for the Third Circuit held color, size and shape of certain medication was functional and that the manufacturer had, therefore, failed to demonstrate a likelihood of success on the merits of its trade dress claim. Shire U.S., Inc. v. Barr Laboratories, Inc., 329 F.3d 348, 2003 U.S. App. LEXIS 10363 (3rd Cir. 2003).
Shire has offered its ADDERALL brand ADHD medication in tablet form since 1996. The color (blue or orange/peach), size and shape (oval or round) of the tablets vary with dosage strengths. The tablets are also scored and stamped with the mark "AD" on one side and the dosage on the other. Barr, a competing pharmaceutical manufacturer, began offering a generic equivalent. Barr's tablets were offered in similar colors (blue or peach/light orange), sizes and shapes (oval) as Shire's. Shire brought suit for infringement of its unregistered trade dress, arguing that Barr's use of a similar trade dress for its nearly identical products was likely to cause consumer confusion.
The district court concluded that the allegedly infringed feature of Shire's trade dress is functional and, therefore, ineligible for trade dress protection. Specifically, the district court credited Barr's evidence that the variations in color, size and shape of Shire's ADDERALL drug are functional because they provide adult ADHD patients with the ability to recognize the identity and dosage of their medication with greater accuracy. The district court also noted that the coding facilitates the adjustment of dosages, which is common with ADHD drugs, and that many patients take multiple daily dosages of different strength tablets, and the coding decreases the likelihood of errors by patients and caregivers.
The Third Circuit agreed, but acknowledged that it had in the past made arguably contrary rulings. However, the court stressed that "it is inherent in the very nature of the deferential appellate review of findings of fact that a court of appeals can and, indeed, should, depending on the records before it, uphold arguably inconsistent outcomes." The district court's crediting of Barr's evidence that similarity in tablet appearance enhances patient safety by promoting psychological acceptance was not to be disturbed because Shire did not meet its burden of showing that determination to be clearly erroneous.
Practice Note: Trade dress cases involving medications sometimes reflect determinations about public health more than established law regarding intellectual property rights. Pharmaceutical manufacturers should be aware that some courts may be unwilling to extend trade dress protection to a drug's, for example, color and shape, based on a determination that doing so would render generic equivalents less acceptable to consumers.
Elimination of CPA Practice for Utility and Plant Patent Applications on July 14, 2003
By Jeffrey Miller
Continued prosecution application (CPA) practice for utility and plant applications will be eliminated effective July 14, 2003. The American Inventors Protection Act of 1999 enacted provisions for the continued examination of a utility or plant application at the request of the applicant (RCE) practice. See, IP Update, Vol. 3 No. 6 (June 2000) and Vol. 3 No. 9 (September 2000). As a convenience to applicants, the U.S. Patent and Trademark Office (USPTO) did not immediately eliminate the CPA practice, but carried the CPA practice on a transitional basis for utility and plant applications, by requiring that the prior application must have a filing date prior to May 29, 2000.
In response to an increasing number of CPA requests based on cases filed after May 29, 2000, the USPTO has determined to eliminate the CPA practice effective July 14, 2003. Rule 1.53(d)(1) has been amended to provide that effective July 14, 2003, an application may be filed as a CPA only if the application is for a design patent (either an original or reissue design patent). See, 68 Fed. Reg. 32376 (May 30, 2003).
A CPA filed on or after July 14, 2003 will be treated as an improper Request for Continuing Examination (RCE) and the time period set in the last office action (or notice of allowance) will continue to run. If the time period has expired, the applicant must file a petition to revive the abandoned application.
Practice Note: A RCE under Rule 114 merely continues prosecution of an existing application and must be filed while the application is pending, but after prosecution in the application has closed. Filing a RCE only acts to withdraw the finality of an Office action, and the time for response of any outstanding Office action continues to run. Under the RCE practice the applicant cannot shift the application to a non-elected invention.