1. USPTO does not have substantive rule making power.

2. USPTO's interpretations of statutes that pertain to the USPTO's delegated authority are entitled to Chevron deference. The Final Rules are procedural.

3. Rule 78 is invalid because it attempts to add an additional requirement to for a third continuation that is not in Section 120 - that the application not contain amendments, arguments, or evidence that could have been submitted earlier. The Final Rule limits continuation applications on the basis of the total number of such applications previously filed, not on the length of a given serial chain of such applications.

"We agree that the USPTO has "inherent authority to govern procedure before the PTO, and that authority allows it to set reasonable deadlines and requirements for the prosecution of applications." Id. at 1368. However, under Bogese, the USPTO cannot set requirements that conflict with § 120 unless those requirements comport with a proper application of prosecution history laches. There are no "firm guidelines" for determining when prosecution laches exists. Symbol Techs., Inc. v. Lemelson Med. Educ. & Research Found., 422 F.3d 1378, 1385 (Fed. Cir. 2005) ("Symbol IV"). However, it is limited to cases of "unreasonable and unexplained delay in prosecution." Id. at 1384-85. We need not address the precise boundaries of the USPTO's authority to promulgate rules under Bogese because Final Rule 78 is far too restrictive to fall within the scope of prosecution history laches. The rule operates on an applicant's third continuation application without regard to when it was filed, even if the delay is significantly shorter than any of the delays in our prior prosecution history laches cases."

4. Rule 114, restricting RCE's, is valid.

5. Rules 75 and 265 are valid. They address "Examination Support Document" ("ESD") requirement. They do not impose a limit on the number of claims an applicant can pursue; they require that an ESD be submitted if more than five independent or twenty-five total claims are included in certain sets of copending applications. The ESD does not shift the burden away from the PTO to prove unpatentability.

Link to Tafas opinion