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OCR transcription for search; preserved printed pages are authoritative

# Chapter 900 Prior Art, Classification, Search

901\.
Prior Art

901.01
Canceled Matter in U. S. Patent Files

901.02
Abandoned and Forfeited Applications

901.03
Pending Applications

901.04
U. S. Patents

901.05
Foreign Patents

901.05 (a)
Citation Dates and Information

901.05 (b)
Countries Not Sending Complete Copies

901.05

901.05
(d)
Translation

901.06
Non-Patent Publications

901.06 (a)
Scientific Library

901.06 (b)
Requests for Obtaining

901.06

901.06 (d)
Abstracts of U. S. Applications

901.07
Arrangement of Art in Examining Divisions

901.08
Borrowing References

901.09
Missing Copies-Replacement

902
Official Publications and Indices of U. S. Patents

902.01
Manual of Classification

902.02
Definitions

902.02
(a)
Search Notes

902.02
(b)
Search Cards

902.03
U. S. Patent Classification Indices

902.03 (a)
Numerical

902.03

(b)
Blue Slip

902.03 (c)
Subclass Lists

902.03

(d)
Count

902.04
Classification Orders and Bulletins

903
Classification

903.01
Statutory Authority

903.02
Basis and Principles of Classification

903.02 (a
New and Revised Classes

903.02 (
(b)
Scope of a Class

903.03
Of Foreign Patents

903.04
Stamping Examiners' and Search Room
Copies

903.05
Transfer of U. S. Patents

903.06
Ordering Official Cross-References

903.06 (a
Discovery of New Cross-References

903.07
Classifying and Cross-Referencing at Allow-
ance or before Issue

903.07 (a)
Cross-References - Keeping Systematic
Notes during Prosecution

903.07 (b)
Issuing in Another Division Without
Transfer

903.08
Applications-Assignment and Transfer

903.08 (a)
Transfer of Improperly Classified Appli-
cation

903.08 (b)
Classification and Assignment to Assist-
ant Examiner

903.08 (c)
Immediate Inspection of Amendments

903.08 (đ)
Transfer Procedure

903.08 (e)
General Rules

903.08 (f)
Classification Examiner's Decision

903.08 (g)
Transfer to Another Division after Deci-

sion

904
How to Search

904.01
Analysis of Claims

904.01
(a)
Variant Embodiments within Scope of
Claim

904.01
(b)
Equivalents

904.01
(c)
Analogous Arts

904.01
(d)
Outlining Field of Search

904.02
Selecting Pertinent References

905
Miscellaneous

905.01
Orders for Photostats

905.02
Orders for Soft Copies

905.02

(a)
Return of Soft Copies

905.03
Orders for Patented and Abandoned Files

905.04
Marking Examiners' Copies

## 901 Prior Art

Extract from Rule 104. (a) On taking up an appli-
cation for examination, the examiner shall make a thor-
ough study thereof and shall make a thorough investi-
gation of the available prior art relating to the subject
matter of the invention sought to be patented.

## 901.01 Canceled Matter in U. S. Patent File

Canceled matter in the application file of a
U. S. patent is not a proper reference, since it is
neither a patent nor a printed publication. See
Fessenden v. Wilson et al., 1931 C. D. 419; 410
O. G. 815.

## 901.02 Abandoned and Forfeited Ap- plications

Rule 108 Abandoned and forfeited applications not
cited. Abandoned and forfeited applications as such
will not be cited as references.

[Old Rule 177]

Where a forfeited or abandoned application is
referred to in an issued U. S. patent and such
patent relies upon the disclosure of the aban-
doned or forfeited application, such disclosure
is incorporated by reference into the disclosure
of the patent and is available to the public. See
101, Rule 14.

In Ex parte Heritage, 77 U. S. P. Q. 179, it
was held that where a patent refers to and relies

upon the disclosure of a copending abandoned
application, such disclosure is available as a
reference.

It has also been held that where the reference
patent refers to a copending but abandoned ap-
plication which discloses subject matter in com-
mon with the patent, the effective date of the
reference as to the common subject matter is the
filing date of the abandoned application. Ex
parte Clifford, 49 U. S. P. Q. 152; Ex parte
Peterson, 63 U. S. P. Q. 99; and In re Switzer
et al., 612 O. G. 11.

## 901.03 Pending Applications

U. S. applications which are pending before
the Office are secret and so are not available as
references (101 Rule 14) except that claims in
one application may be rejected on the claimed
subject matter of a copending application of
the same inventor or assignee (305).

Published abstracts of pending applications
are references (901.06 (d)).

## 901.04 U. S. Patents

The following different series of U. S. pat-
ents are being, or in the past have been issued.
The date of patenting given on the face of each
copy is the publication date and is the one usu-
ally cited. The filing date, in most instances
also given on the face of the patent, is ordi-
narily the effective date as a reference.

X-Series. These are the approximately
10,000 patents issued between 1790 and July 4,
1836. They were not originally numbered, but
have been arbitrarily assigned numbers in the
sequence in which they were issued. When
copies are ordered, in addition to the X number,
the patentee's name and date of issue must be
given, since copies in stock are filed al-
phabetically.

1836 Series. The mechanical, electrical, and
chemical patents issued since 1836 and fre-
quently designated as "utility" patents, are in-
cluded in this series. A citation by number
only is understood to refer to this series. This
series comprises the bulk of all U. S. patents
issued.

Reissue Series. Reissued patents (1401)
have been given a separate series of numbers,
preceded by "Re." In citing the letters must
be given, e. g., Re 1776. The date that it is
effective as a reference is the effective date of
the original patent application, not the filing
date of the reissue application.

A. I. Series From 1838 to 1861, patents cov-
ering an inventor's improvement on his own
patented device were given a separate series of
numbers preceded by "A. I." to indicate addi-
tional improvement. In citing, the letters

must be given, e. g. A. I. 113. Only 275 such
patents were issued.

Plant Patent Series. When the statutes were
amended to provide for patenting certain types
of plants (Chapter 1600) these patents were
given a separate series of numbers. In citing,
the letters "P. P." must be given, e. g., P. P. 13.

Design Patents. Patents for designs (Chap-
ter 1500) are issued under a separate series of
numbers. In citing, the letters "Des." must
be given, e. g., Des. 140,000.

## 901.05 Foreign Patents

For a comprehensive list of the patent pub-
lications officially issued by foreign govern-
ments and detailed instructions for their use
see "Manual of Foreign Patents" by Belknap
Severance, 161 pages, published 1935 by the
Patent Office Society.

A pamphlet entitled "Guide to the Search
Department of the (British) Patent Office Li-
brary," is published by the British Patent Of-
fice. A copy of this pamphlet is in the Scien-
tific Library. Appendix 1 of this pamphlet
consists of a concordance of British, United
States and German classes.

## 901.05 (a) Citation Dates and Infor- mation About Foreign Patents

For citation of the number of pages of draw-
ing and specification of a foreign patent see
707.05 (e).

Complete copies of patents issued by the fol-
lowing countries have been received in the past,
and except for Russia, are now being received.
Australia. Patents were formerly published
by Queensland (1860-88), Victoria (1877-
1902), New Zealand (1861-78) and New South
Wales.

In Australia, the publication of the pre-
viously printed specification is completed by a
notice published within two or three weeks from
the date of acceptance of the complete specifi-
cation, which date is printed on the face of
the patent. It does not become effective as a
patent until sealed. The time interval between
publication and sealing date varies according
to opposition, extension, etc. The date of ac-
ceptance of the complete specification should be
cited.

Austria. The publication date, which should
be cited, is indicated by "Ausgegeben."

Canada. The Canadian Patent Office issues
illustrated briefs in its Official Journal and
until the beginning of 1949 these were the only
patent reference material available. However,
starting with Patent No. 453,746 of January 4,
1949, complete copies are being received for

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901.95 (a)

distribution to the Examiners. The issue date
of the patent should be cited.

Czechoslovakia. The publication date, which
should be cited, is indicated by "Vydáno."

Denmark. The publication date, which
should be cited is indicated by "Offentliggjort."

Finland. The publication date, which should
be cited is "Julkaistu" and the patent date is
"Patentti myönnettiin." Finnish patents have
been received only since August 1946, starting
with patent No. 19,872.

France. "The date of publication is indicated
by "Publié" and the patent date by "Delivré."

In the citation of foreign patents, the publi-
cation date is the date ordinarily cited; but in
the case of French patents, it is preferable to
use the "Delivré" date, since on that date the
patent is accesible to the public in the Patent
Office at Paris.

French additions should be cited as such along
with the serial number of the prior patent to
which the addition is related.

The files of French patents are incomplete in
that patents Nos. 262, 738 to 284, 608, inclusive
(1897-1898) were not published. Of the pa-
tents Nos. 284,609 to 302,569 (1899-1900) only
certain ones were published, and of patents
Nos. 302,363 to 317,501 (1900-1901) none was
published.

Germany. The Ausgegeben date is the one
used in the Patent Office as both the publication
and patent date.

A pamphlet entitled "Alphabetical Index to
the Classification of German Patents," and a set
of German patents bound in classes, are kept in
the Scientific Library. The German "Auszuge"
are in weekly installments. Mr. Lovett's trans-
lation of the Manual of Classification of the
German Patent Office (edition of 1910) as well
as the revised classification and index of 1933,
in German, are also in the Scientific Library.

Austria, Denmark, Netherlands, Norway and
Sweden follow the German classification.

Great Britain. British patents cover Eng-
land, Scotland, Wales, Northern Ireland, and
the Isle of Man.

In Great Britain the publication of the pre-
viously printed specification is completed by a
notice published within two or three weeks
from the date of acceptance of the complete
specification, which date is printed on the face
of the patent. It does not become effective as a
patent until sealed. The time interval between
publication and sealing dates varies according
to opposition, extension, etc.

British specifications prior to 1916 have printed
in large heavy type at the head of the first page of
the specification a number and year, as 1451 A. D.
1912. This, together with the name, as required

by the rules, is always the proper citation of the
patent. The year given at the head of the specifica-
tion is either the year of filing or the year of ac-
ceptance, but in either case it is the official desig-
nation of the patent.

The year printed on the drawing is not always the
year for correct designation of the patent. Where
it is not, the correct year is shown by a small superior
number or exponent placed to the right and above
the serial number of the patent, as-

1910-No. 499 **
1912-No. 19421 13

In instances of this kind the patent should be cited
as No. 499 of 1911 or No. 19421 of 1913.

British patents applied for subsequent to January
1, 1916 are numbered in a continuous series start-
ing with 100,000. Hence, for these patents, the year
is not necessary for identification and the date of
acceptance may be used as giving a much closer
approximation to the date of sealing. (Notice of
Sept. 30, 1931, Revised)

Those British applications which had been
opened to public inspection and had become
void, were printed prior to 1940 and given a
number in the patent series. These publica-
tions can be distinguished from patents by the
lack of a date of acceptance. An approxima-
tion of the effective date of the publication ap-
pears at the end of the specification following
the statement "Printed for His Majesty's Sta-
tionery Office" and should be cited, except in
critical situations where recourse must be had
to the British "Journal" in the Scientific
Library.

The British Patent Office publishes "Speci-
fication Abridgements" of the patents issued
by that office. These abridgements are ar-
ranged in classes, with all of the patents of a
class for a given year bound in a single volume.
The bound volumes of these abridgments are
to be found in the Scientific Library.

In the case of applications filed in Great
Britain under the International Convention,
claiming the benefit of an earlier filed foreign
application, no provisional specification is per-
mitted and under the Patents Act of 1907, the
complete specifications are open to inspection
18 months after the Convention date claimed.

Hungary. The publication date, which
should be cited, is indicated by "Megjelent."

India. Patents of India bear application date
and acceptance date. The acceptance date
should be cited.

Italy. The patent date, indicated by "Rilas-
ciato," should be cited.

The Italian Patent Office sent full copies of
specifications and plates until the end of 1892.
For the next two years briefs of the specifica-

## 901.05 (b)

tion were sent. Since the beginning of 1895, the
Italian Bulletin has been received here. This
gives the titles of inventions and names of in-
ventors. The Italian Patent Office later sent
complete copies, having resumed publication
thereof October 1, 1925. Only those patents
after No. 248,000 are published in serial order.

Japan. The Japanese patents, as received in
the U. S. Patent Office, are grouped in booklet
form with the date of publication (which should
be cited) appearing in English on the front page
of the booklet. The patent date in Japanese
appears on the face of each of the patents in-
cluded in the booklet.

The Japanese method of assembling a num-
ber of patents in booklet form, above referred to,
makes it impracticable to distribute Japanese
patents among the examining divisions.

Netherlands. The publication date, which
should be cited, is indicated by "Uitgegeven,"
the patent date being indicated by Dagteeke-
ning."

Norway. The date to be cited is indicated by
"Offentliggjort."

Poland. The date of publication, which
should be cited, appears in the upper right hand
corner of the face of the patent following the
word "Warsaw." The word "Udzielono" indi-
cates the patent date.

Russia. The publication date to be cited is
indicated by "Opublikovano."

The date of the Russion patent, as also that
of the publication, appears in the caption im-
mediately preceding the beginning of the speci-
fication.

Sweden. The publication date to be cited is
indicated by "Publicerat," while "Beviljat" in-
dicates patent date.

Switzerland. Patents are published in three
languages, the publication date to be cited being
indicated :

In:

By:

German

Veröffentlicht

French

Publié

Italian

Pubblicato 1-

## 901.05 (b) Countries Not Sending Complete Copies

The following countries publish patents by
briefs, abstracts, or abridgments only: Argen-
tina (to 1947 only), Belgium, Brazil (only
1908-09 and 1924-26 in Library), Chile, Eire,
Jugoslavia (Kingdom of Serbs, Croatians and
Slovens), Mexico, New Zealand, Portugal, and
Spain.

Of these, the patent publications of Portugal
and Spain are not received in the Scientific
Library. The data published by Cuba and
Venezuela are merely the number and date of

the patent, the title of the invention and name
of inventor.

There are some Sardinian patents.

Eire and Jugoslavia patents are received in
the Library of Congress, but are not yet received
in the Patent Office.

### 901.05 (c) Obtaining Copies

Prints of foreign patents classified in arts in
other divisions can be had by an Examiner if
he thinks the patents would be of frequent use
in his own class (905.01).

### 901.05 (d) Translation

A translator in the Scientific Library is avail-
able to assist the Examiner with the specifica-
tions in various languages with which the
Examiner is not familiar. Typed translations
can be had, if necessary, of any material to be
used.

### 901.06 Non-Patent Publications

All printed publications may be used as refer-
ences, the date to be cited being the publication
date. Recognized abbreviations of names of
periodicals may be used in their citation
7707.05 (e)).

There are some publications kept or circu-
lated in every division and each assistant Ex-
aminer should ascertain which are available in
his division and whether or not any of them
is likely to bear on any class assigned to him.

#### 901.06 (a) Scientific Library

The Scientific Library of the Patent Office
has a large collection of volumes, including sci-
entific and technical books and periodicals,
arranged in accordance with the Library of
Congress classification and card indexed as to
author, title and subject matter. Since these
books and periodicals are maintained for the
maximum service to the examination process,
frequently the most recent of them are to be
found in the examining divisions concerned.

The Library also has bound volumes of for-
eign patents in numerical order.

The Examiner should acquaint himself with
this Library sufficiently to know when it is
likely to afford him assistance in his examina-
tion of an application. The reference staff of
the Library will assist in making use of the
Library's holdings.

#### 901.06 (b) Requests for Obtaining See Change 1-6

Whenever it is deemed necessary to obtain cata-
logues, bulletins, or other literature, the request
clears through the Scientific Library. A letter for
this purpose is addressed to the Librarian, request-
ing that he order or obtain the needed material.

)

The Library will borrow reference material from
other libraries for official use and for limited time
only. Upon receipt of the same the Librarian dis-
tributes the literature to the division requesting it.
(Circular of Oct. 7, 1922, Revised)

As the examiner currently inspects non-patent
literature pertinent to the class or classes that he
examines, he should fill out a form PO-253 for each
item or part thereof that is essential in connection
with search in his arts. The publication, the par-
ticular pages desired, each class and subclass in
which he desires a copy and the other information
on the order form should be given and the order
approved by Primary Examiner.

The order should be sent to the Manuscript and
Lithographie Branch with the publication (where
possible). The copies made will be sent to the
Classification Group for processing, the publication
(when submitted) being returned to the Examining
Division. The publication copies will be stamped in
the same manner as officially assigned U. S. patent
copies, and the classification recorded. No change in
classification of copies so stamped should be made
except on approval of an Examiner of Classification.

A reasonable effort should be made to avoid dupli-
cation of disclosures that are patented or about to
be patented. (Notice of Oct. 31, 1949.)

## 901.06 (c) Alien Property Custodian Publications

Applications vested in the Alien Property Custo-
dian during World War II were published in 1943
even though they had not become patents.

Care must be taken not to refer to these publica-
tions as patents, they should be designated as A. P. C.
published applications.

An A. P. C. published application may be used by
the examiner as a basis for rejection only as a printed
publication effective from the date of publication
which is printed on each copy.

The manner of citing one of these publications
is as follows: A. P. C. Application of
Ser. No. ______ , Published

Before citing any A. P. C. published application,
and before each subsequent action, the examiner
should verify whether the application has become
abandoned or patented. If it has become abandoned,
the examiner's action should state this fact. If it
has become patented the patent is to be cited. The
patent should be substituted for the printed applica-
tion as the basis for the rejection unless the date of
publication is material.

When any A. P. C. application becomes a patent,
copies of the printed application may be removed
from the files and returned to the Classification Divi-
sion for disposal if the examiner has no further use
for them. (Extract from Notice of May 14, 1943.)

## 901.06 (d) Abstracts of U. S. Applica- tions

U. S. applications which the inventor intends
to abandon now may be published in abstract
form upon the request of the applicant (711.06
to 711.06 (f) ). These abstracts contain a figure
of the application drawing, if any, and a brief
description of the subject matter of the applica-
tion. The publication date of the abstract
should be cited.

After the abstracts of U. S. applications are pub-
lished, they are processed by the Classification
Group.

The classification given in the heading is checked
by a classification examiner who also adds such
cross-references as are required by the abstract
disclosure.

Copies are mounted and stamped for both the
examining divisions and the search room. Both a
numerical index by serial number and subclass lists
are prepared. Thus the copies of abstracts should
not be transferred except on approval by an Exam-
iner of Classification.

Additional copies of these abstracts may be ob-
tained by a request directed to the Classification
Group, identifying the desired abstract by serial
number, and date of publication, and by giving the
class and subclass in which the added copy is to be
placed. The forms used in ordering copies of U. S.
patents may be employed.

The Classification Group has a set of abstracts
arranged by serial number for ready reference when
only the serial number is known. (Notice of August
10, 1949.)

## 901.07 Arrangement of Art in Examin- ing Divisions

In the examining divisions the U. S. patents
are arranged in shoes bearing appropriate la-
bels, each showing the class, sub-class, and
usually the lowest and highest numbered patents
put in the respective shoe. The patents should
be arranged in numerical order.

Some U. S. copies are marked "Cross Ref-
erence." These are patents which are classified
in other classes or subclasses but which have
disclosures pertinent to the subclasses in which
they are placed as cross references. Cross ref-
erence copies may be filed in the shoes along with
the copies of the original patents to simplify
the tasks of searching and filing.

Copies of foreign patents are usually kept in
shoes separate from and immediately following
the U. S. patents and are preferably arranged
numerically without regard to country.

Non-patent publications or photocopies
thereof containing disclosures for particular
subclasses, if numerous, should be filed in shoes
following the foreign patents, otherwise at the
bottom of the last shoe of foreign patents.

### 901.08 Borrowing References

The search files in each examining division
should at all times be complete. Where they are
incomplete, the Examiners using such files and
relying upon their completeness may miss valu-
able references. References removed from the
files whether for use in the division or other-
wise should, of course, be promptly replaced.

The following is established as the uniform Office
practice in borrowing references (domestic and for-
eign patents and publications) :

a. References may be borrowed and charged for a
maximum of two days. In all possible instances, the
references should be returned in less than two days,
preferably in a few hours. It is the responsibility of
the chief of the borrowing division to see that all
borrowed references are returned within the time
indicated.

b. The file clerk of each division shall review the
charges each morning, select all charges over two
days old and collect the corresponding borrowed
references. The file clerk shall report to his chief
for appropriate action any failure to obtain overdue
references and any instances where it is necessary
repeatedly to collect overdue references.

c. In the case of domestic patents, when it appears
that they will be needed for more than two days, par-
ticularly where future use is indicated, soft copies
should be ordered, but the references may be bor-
rowed for immediate use, if this will facilitite an
action. The Patent Copy Sales Branch should give
prompt service on Examiner's orders for soft copies.
(Extract from Notice of Apr. 6, 1948.)

### 901.09 Missing Copies-Replacement

When the original copy of a reference is miss-
ing from the Examiner's files, a soft copy should
be substituted at once and marked-"Keep until
original is found." When it definitely appears
that the original is lost, the Classification Divi-
sion should be notified and requested to supply a
mounted copy. When received, this is substi-
tuted for the soft copy. If the original copy is
subsequently found, the substitute copy should
be removed from the file and discarded.

### 902 Official Publications and Indices of U. S. Patents

#### 902.01 Manual of Classification

The Manual of Classification is published in
loose-leaf form, and supplementary sheets con-

taining changes are issued from time to time to
replace the original sheets.

All changes are published currently in classi-
fication orders. These orders are printed in the
Official Gazette. As these changes are pub-
lished, each Examiner should enter them in his
manual, so that his manual will at all times be
complete and up-to-date. As supplementary
sheets are issued, the old sheets should be re-
moved, and the new sheets substituted therefor.

There are at present 302 classes of utility
inventions. Each of the classes bears a class
number ranging from 1 through 346 (there
being 44 blank numbers). Each class has a
title, and each class is subdivided into a number
of subclasses each of which has a number. A
complete identification of a subclass requires
both the class and subclass number, the class
number appearing first and the subclass num-
ber second, e. g., "13-13" identifies Class 13,
Subclass 13.

The Manual of Classification has the follow-
ing parts :

A Brief Statement on the Use of the Manual.
Immediately following the flyleaf is a brief
statement on how to use the manual.

Classes Arranged by Related Subjects. Next
are tables of classes, in which the classes are
arranged in five major subject groups, with the
classes listed under each group by relationship
of subject matter. This tabulation of the classes
is for the purpose of assisting the user in finding
the main class pertinent to his search.

Classes Arranged by Examining Division.

Classes Listed Alphabetically by title.

Classes Listed Numerically with titles.

Subclass Schedules. Next are the complete
subclass schedules for each class, the utility
classes appearing first in numerical sequence of
class numbers, and then the design classes in
numerical sequence of design class numbers.
Design class alphabetical sequence by class
names corresponds to numerical sequence. This
is not true of the utility classes.

Alphabetical Index. There is an alphabetical
index to the manual, in which words and phrases
(frequently called titles) identifying various
characters of patentable subjects are arranged
in alphabetical order, with the citation of a class
or both class and subclass in which subject mat-
ter identified by the title will be found.

#### 902.02 Definitions

All of the utility classes (i. e., classes devoted
to technology) except twelve have definitions.
None of the design classes has definitions.

Such definitions state the subject matter that
is found in each defined class and subclass much

(

more explicitly than it is possible to state in
short class and subclass titles.

Each examining division has a set of defini-
tions and there are several sets in the Public
Search Room.

#### 902.02 (a) Search Notes

The definitions have search notes as a part
thereof; namely, notes giving information as to
where subject matter related to the class will be
found (such notes appearing after the class
definition), and also notes as to where subject
matter pertinent to the subclass will be found
(appearing after the subclass definition).
These notes are intended to indicate both the
relationship and the difference between the
separately classified subjects.

Such search notes are not exhaustive and
should be regarded as suggestive of additional
fields of search, but not as limiting the search.

#### 902.02 (b) Search Cards

In one shoe of each defined subclass in both
the examining division and the Public Search
Room is a "Search Card" having the definition
of the subclass and the search notes if any.

#### 902.03 U. S. Patent Classification In- dices

The following indices of U. S. patents are
available and may be used to obtain classification
data of U. S. patents:

#### 902.03 (a) Numerical

A numerical index of domestic patents giving
their present original classification is in card
files in the Public Search Room and in ledger
books in the Service Branch of the Classification
Group.

A numerically arranged punch card index of
both original and officially cross-referenced do-
mestic patents is on file in the Machine Tabulat-
ing Branch of the Administrative Services
Division.

In each of the above, there is a separate index
for each series, X, 1836, AI, Re, PP and Des.

##### 902.03 (b) Blue Slips

The "blue" or issue slips, starting with patent
number 1,987,000, Re. 19,228, Des. 126,796, P. P.
1, and for all subsequently issued patents, and
containing the original classification and cross-
references ordered at time of issue are on file
in the Service Branch, Classification Group.

### 902.03 (c) Subclass Lists

Cards representing all U. S . patents, arranged
by class and subclass, are available in punch
card form in the Machine Tabulating Branch
of the Administrative Services Division.

Tabulated lists for each subclass can be ob-
tained, one list for originals and one list for
cross-reference and published abstracts of U. S.
applications.

### 902.03 (d) Count

In the Service Branch, Classification Group,
is maintained a subclass "count," giving the
number of U. S. patents originally classified in
each class and subclass, and a corresponding
"count" for cross-referenced U. S. patents.

### 902.04 Classification Orders and Bulle- tins

Classification Orders are issued from time to
time giving all changes in the classification that
have been made officially, including every
change to be made in the Manual of Classifica-
tion or in the definition books.

Photolithographed copies are distributed to
all examining divisions for immediate use.

Each order is subsequently printed in the
Official Gazette.

These orders are from time to time collected
and issued as a Classification Bulletin. As class
schedules and definitions are extensively
amended to take care of developments subse-
quent to original classification, they are repub-
lished in amended form in Classification
Bulletins.

## 903 Classification

### 903.01 Statutory Authority

The statutory authority for establishing and
maintaining a classification is given in the
following statute, which states:

Act June 10, 1898, ch. 423, sec. 1, 30 Stat. 440, pro-
vided : "That for the purpose of determining with more
readiness and accuracy the novelty of inventions for
which applications for letters patent are or may be
filed in the United States Patent Office, and to prevent
the issuance of letters patent of the United States for
inventions which are not new, the Commissioner of
Patents is hereby authorized and directed to revise
and perfect the classification, by subjects-matter, of
all letters patent and printed publications in the United
States Patent Office which constitute the field of search
in the examination as to the novelty of invention for
which applications for patents are or may be filled."

### 903.02 Basis and Principles of Classi- fication

The basis of classification used in the U. S.
Patent Office, the principles followed, and the
reasons why such principles were adopted are
set forth in two pamphlets :

#### Classification of Patents, 2nd revision History of Classification

These are available to every Examiner on
request addressed to the Classification Group.
Since the classification is the basic tool of every
Examiner, these pamphlets and the classifica-
tion as it at present exists should be studied
carefully.

Unofficial subclasses and digests made by patent
examiners, if made in accordance with the plan of
classification, could be defined and issued as an
official part of the classification.

Relative to all such work, the patent examiners
doing the same are directed to consult the Examiner
of Classification having jurisdiction of the class to
the end that, when the work is completed, it can be
defined and made official. (Notice of August 22,
1949.)

##### 903.02 (a) New and Revised Classes

The establishment of new classes or subclasses
and the revision of old classes are done under
the supervision of an Examiner of Classifi-
cation.

When an old class is to be revised, or a new
class formed, an assistant Examiner who has
been examining applications in the art involved
is usually transferred from the examining
division to a classification division for the
reclassifying work.

The Examiner performing the reclassification
secures a set of patent copies of the present
classification, usually by ordering soft copies.
With these copies, by study and successive
groupings, he develops an arrangement of the
patents which is satisfactory for searching.

The lines marking the confines of the new or
revised class and its subclasses are determined,
and appropriate definitions drawn, all subject to
the supervision and approval of an Examiner
of Classification and to the final approval by the
Commissioner. Then the Examiner's and the
Search Room's copies of the patents included
in the new class are collected, arranged and
stamped comformably to the new classification.
Official cross-references are also prepared and
appropriately stamped.

The patents comprised in the new class are
entered upon the numerical and subclass indices.

Notification of the new class or subclass is
published in the Official Gazette, and Supple-
mentary sheets necessary to correct the loose
leaf Manual of Clasification are published.

Definitions of all revised classes and sub-
classes are found in the Classification Bulletins.

##### 903.02 (b) Scope of a Class

In using any classification system, it is neces-
sary to analyze the organization of the class or
classes to be included in the search.

The initial analysis should determine which
one or ones of the several types of subject mat-
ter (manufacture, art, apparatus or starting ma-
terial) are contained in the class being consid-
ered.

Further, relative to each type of subject mat-
ter, it is necessary to consider each of the various
combinations and subcombinations set out be-
low:

Feature Combined with Basic Subject Mat-
ter for Some Added Purpose. The added pur-
pose is in excess of the scope of the subject mat-
ter for the class, as defined in the class defini-
tion, e. g., adding a sifter to a stone crusher
which gives the added function of separating the
crushed stone.

Feature Combined to Perfect the Basic Sub-
ject Matter. Features may be added to the basic
subject matter which do not change the charac-
ter thereof, but do perfect it for its intended pur-
pose, e. g., an overload release means tends to
perfect a stone crusher by providing means to
stop it on overload and thus prevent ruining the
machine. However, this perfecting combined
feature adds nothing to the basic character of
the machine.

Basic Subject Matter. The combination of
features necessary and essential to the funda-
mental character of the subject matter treated,
e. g., a stone crusher requires a minimum num-
ber of features as essential before it can func-
tion as such.

Subcombinations Specialized to Basic Subject
Matter. Each type of basic subject matter may
have subcombinations specialized to use there-
with, e. g., the crushing element of a stone
crusher.

Subcombinations to General Utility. Each
type of basic subject matter may have subcom-
bination which have utility with other and dif-
ferent types of subject matter, e. g., the machine
elements of a stone crusher. Subcombinations
of this character usually are provided for in
some general class so that the Examiner should
determine in each instance where they are classi-
fied.

(

### 903.03 Classification of Foreign Pat- ents

It would be advisable for the classification
Examiners to classify foreign patents, but there
has never been a corps large enough to do it.
The present procedure is for the Scientific
Library to distribute the foreign patent copies
and lists of the same in triplicate to the exam-
ining divisions. When received in the division
one of the lists which is entitled "Receipt"
should be dated with the division date stamp
and returned immediately to the Library, The
Patent Examiners classify those patents be-
longing in their division. If the Examiners
consider that some of the patents should go to
another division those patents are so marked.
If a foreign patent is a duplicate of a U. S.
Patent or another foreign patent and is of no
advantage it is marked "U. S. Duplicate" or
"Foreign Duplicate". The list entitled "Clas-
sification of
Patents for the Library" is
filled in with the markings corresponding to
those on the patents and is returned to the
Library with those patents marked for other
divisions and those marked "U. S. Duplicate" or
"Foreign Duplicate". The patents that have
been classified can be forwarded to the Service
Branch of the Classification Division with a
request that they be mounted. The list marked
"Invoice" is for the division records.

An Examiner should be on the alert to note
foreign patents which are exact duplicates of
domestic patents, or duplicates of other foreign
patents. Except in the case of the foreign dupli-
cate which has the earliest effective date, or
which is in a more widely read language than a
foreign patent already received, such duplicates
should not be placed in the shoe cases, where
they needlessly increase the number of patents
to be inspected in making a search.

The data of the foreign patents returned
should be written on the one retained or on the
U. S. Patent of which they are duplicates.

Since foreign patents, in addition to duplicat-
ing the disclosure of other patents, sometimes
disclose additional subject matter, care should
be exercised to avoid discarding a patent having
a useful disclosure.

Time spent in classifying foreign patents is allowed
in computing an Examiner's output subject, how-
ever, to the condition that the total time allowed for
each division for any six months period (October
through March and April through September) shall
not exceed a number of days equal to one-half the
number of Examiners in the division ... The
method used in classifying foreign patents and the
assignment of such work among the Examiners of
the division are left to the Primary Examiner of the
division. The time spent by each Examiner on this
work is reported in days on the monthly work report
in the column under "Remarks." (Extract from
Notice of Sept. 24, 1940.)

### 903.04 Stamping of Examiner's and Search Room Copies

Before each application in issue becomes a
patent, the Issue and Gazette Branch forwards
the issue slip (Form 574 of 582) together with
the printed Examiner's and Search Room copies
of the patent to the Classification Group for
review, stamping and recording of the classifica-
tion of the patent and transmittal to the Exam-
iner and Search Room on the date of the patent.

After they are so stamped and recorded, the
photolithographic copies are retained in the re-
spective classes in the divisions and no changes
in the classification or the arrangement of the
copies are permitted except with the approval of
the Classification Group as set out in 903.05.

The classification printed in the heading of
patents issued since 1933 can not always be re-
lied upon to be the present original classifica-
tion, since this data is obtained from the blue
slip prior to any changes in classification made
at the time of issue or after the issuance of the
patent.

### 903.05 Transfer of U. S. Patents

The transfer of official copies of U. S. patents,
either original or cross-reference, from one class or
subclass to another requires the approval of an
Examiner of Classification. (Extract from Notice of
Feb. 20, 1918.)

Examiners must submit to the Classification
Group all questions of transfer of patents.

When an Examiner desires to transfer domes-
tic patents from one class or sub-class to another,
he should have the patents listed on triplicate
transfer blanks (Form 566), as explained in sec-
tion 51 of the Clerical Operations Manual stat-
ing thereon both the class and sub-class from
which and to which they are to be transferred.
Transfers of original patents and of cross refer-
ences must be on separate blanks. All patents
listed on a blank must involve transfer from a
single class to a single class. This blank is for-
warded with the Examiner's copies of the pat-
ents to the Classification Division but is routed
through any other division involved for its ap-
proval or comment. If the transfer is ap-
proved, the class and subclass designations on
the patents are changed, and the classification
indices are changed to agree with the new classi-
fication.

Unauthorized transfers render the subclasses in
the Public Search Room no longer duplicates of
those in the Examiners' rooms, and also render in-
correct the official numerical index and subclass
lists. (Extract from Notice of Feb. 20, 1918.)

When it becomes necessary in the course of a
transfer to remove copies from the files in the
Public Search Room, a red dummy a little longer
than a patent copy is substituted therefor, and
the identification data of the patents withdrawn
are written thereon. This dummy is amended
if the patents are returned, and should all be
returned the dummy is removed.

### 903.06 Practice To Be Followed in Or- dering Official Cross-Refer- ences

The following three alternatives are available for
obtaining official cross-reference copies of United
States patents.

In many instances, U. S. patents are found which
contain disclosure that the searcher believes should
be cross-referenced. Such patents should be brought

to the attention of the Classification Group for con-
sideration in any of the following ways:

a. Call extension 4087, identify the patent and
give the class and subclass to which it is thought it
should be cross-referenced.

b. Send to the Classification Group a list of pat-
ents and relative to each patent, indicate the class
and subclass in which it is thought each should be
cross referenced.

c. The preferred mode of ordering a cross-refer-
ence where the Examiner has a soft copy with the
pertinent portion marked, is to indicate on the
marked soft copy the class and subclass in which it
is thought it should be cross-referenced. Such soft
copy should be forwarded to the Classification Group
where it will be promptly inspected, the necessary
action taken and the soft copy returned within two
days of its receipt. (Extract from Notice of Apr. 6,
1948.)

### 903.06 (a) Discovery of New Cross- References

In addition to the cross-references officially
designated, valuable references are often to be
found by an inspection by the Examiner of the
Official Gazette each week, as well as by being
alert to disclosures revealed during the search.
Such patents may be placed as soft copies in the
Examiner's files. However, if they contain dis-
closure properly classifiable in an official sub-
class they should, with the approval of a Classi-
fication Examiner, be given the status of official
cross-references, by copies of the patents being
mounted and placed in the appropriate sub-
classes in both the Examiner's files and in the
Public Search Room in accordance with the
practice enumerated above.

## 903.07 Classifying and Cross-Referenc- ing at Allowance or Before Issue

Careful attention should be given by Examiners
to the classification of all applications pending in
their respective divisions. It is the duty of each
Primary Examiner to personally review the classifi-
cation and cross-referencing made by his assistants
of every application passed for issue. (Extract from
Order 2357.)

The initial classification of pending applica-
tions and the drawings thereof will have been
indicated in pencil by the Primary Examiner.
See 903.08 (b).

However, an application, properly classified
at the start of examination, may be improperly
classified when it is ready for issue. The claims
as allowed should be reviewed, in order to deter-
mine the subject matter covered thereby. It is
the disclosed subject matter covered by the al-

lowed claims that determines the original classi-
fication of U. S. patents.

Only the correct official classification should be
left on the file and drawing of each application
when passed for issue. Unofficial subclasses (not
established by classification order) should not be
indicated on the file wrapper or drawing. (Extract
from Notice of Mar. 31, 1914.)

The Examiner fills out a blue slip (Form No. 574)
or a salmon slip (Form 582) in the case of designs
to indicate the class and subclass in which the
patent should be classified and also the classes in
which it should appear as a cross reference. The
Examiner attaches the blue slip to the left hand
corner of the drawing, being careful to insert the
pin or staple outside of the margin line (or if no
drawing, to the inside of the left fold of the file
wrapper) to be forwarded to the Issue and Gazette
Branch. (Extract from Order 2952.)

The classification of all applications which have
been passed to issue, which would be changed by
any changes, made in the official classification by
classification order, are corrected by the examiner
having custody of such applications as soon as pos-
sible after promulgation of the order.

To effect the correction for the classification of
applications that have been passed for issue but are
awaiting payment of the final fee, the Examiner
writes a letter to the Head of the Issue and Gazette
Branch listing the applications, the classification
of which are to be changed, by name of applicant,
serial number and date of allowance and requesting
that they be forwarded to his division. Upon re-
ceipt, the Examiner corrects the classification ap-
pearing on each file wrapper and returns the file
to the Issue and Gazette Branch. The Examiner
or the clerk corrects the class and subclass numbers
on the clerk's register, the issue slip and the drawing,
if any. Applications which already have been sent
to the printer will be classified by the Classification
Group at the time the patent issues. (Extract from
Notice of Mar. 31, 1914.)

## 903.07 (a) Cross-Referencing-Keep Systematic Notes During Prosecution

Throughout the examination of the case,
systematic notes should be kept as to cross-
references needed either due to claimed or un-
claimed disclosure. The several Examiners
handling related subject matter should be con-
sulted during prosecution (whether they handle
larger unclaimed combinations or claimed or
unclaimed, but disclosed, subcombinations), and
asked if cross-references are needed. If needed,
systematically note the proper class and sub-
class.

All of these should be inserted on the blue slip
at time of issue.

## 903.07 (b) Issuing in Another Divi- sion Without Transfer

Where a prospective patent is to be classified in
a division other than the one which is sending the
application to issue, the Examiner, after indicating
in blue or black ink on the blue issue slip the class
and subclass number in which the patent is to appear,
designates in red ink on the blue slip the division to
which the patent is to be sent. For example, the
third line of the blue issue slip, in such cases will
read:

## Class 18 subclass 51 (div. 15)

The division passing the case to issue will insert its
own number as usual in the space provided in the
lower left hand corner. (When the patent issues,
the Classification Division will, as a matter of routine,
send the necessary notices to the divisions involved.)

The sending of cases to issue from one division and
assigning them to classes in another division is re-
stricted to those situations where both Examiners
concur in the proposed classification of the patent,
which must be shown by the concurring Examiner
initialing the slip, or where there has been a ruling
by a Classification Examiner, who must initial the
slip.

The drawing should be retained in the division
that sent the case to issued. (Notice of Mar. 24,
1937, Revised.)

## 903.08 08 Applications: Assignment and Transfer

Applications are assigned originally by the
Application Branch, accepted by the examining
divisions, or transferred to other divisions, as
explained in 903.08 (a).

## 903.08 (a) Transfer of Improperly Classified Application

Upon receiving an application from the Ap-
plication Branch and before entering it upon
the register, each Primary Examiner will forth-
with decide whether it has been properly as-
signed to his division.

The Primary Examiners have full authority
to accept any application submitted to them that
they believe is properly classifiable in a class in
their division. "Only where there is a difference
of opinion amongst Primary Examiners, should
cases be submitted to a Classification Examiner.

When a new application is received and in the
Primary Examiner's opinion the application
does not belong to his division, he will submit
it without entry on his register, to the Examiner
of the division to which he thinks it belongs.

If the latter agrees to accept the application,
the Examiner to whom the application was
originally sent instructs the clerk of his division

(

to forward the application to the Application
Branch for transfer to the other division.

If, however, no other division will accept the
new application, the clerk makes a complete en-
try in the "Register of Pending Applications";
and the Primary Examiner submits the applica-
tion for transfer in accordance with the transfer
procedure outline in 903.08 (d).

## 903.08 (b) Classification and Assign- ment to Assistant Exam- iner

Every application, new or amended and in-
cluding the drawings if any, when first assigned
to a division must be classified and assigned to an
assistant Examiner.

The Primary Examiner assigns them to his
assistants, noting in lead pencil in the upper
left hand corner of the face of the file, the class,
and subclass to which the case pertains, and also
the numeral of the desk or the initials of the
Examiner to whom the case is assigned for ex-
amination. The application file is then turned
over to the clerk of the division, who then proc-
esses the file as a new receipt.

## 903.08 (c) Immediate Inspection of Amendments

Steps to transfer an application, should be
taken promptly on receipt of any amendment
thereto which makes the transfer proper, and
in accordance with the transfer procedure of
section 903.08 (d).

## 903.08 (d) Transfer Procedure Submission of Applications for Classification

In order to lessen the Examiner time required for
submission of applications for classification, all
should be submitted in one of the following two
ways:

1\. Where the Examiners in different divisions are
in agreement that an application is properly assign-
able to one of the divisions but are in disagreement
as to which one should receive it, the Examiners in-
volved should present their positions orally to the
appropriate Classification Examiner for verbal deci-
sion. This is generally termed informal submission.

2\. In all other instances, including those in-
stances where a Classification Examiner feels that
additional evidence is necessary, applications are
submitted for classification as follows: The Examiner
having jurisdiction thereof submits a memorandum
listing the division or divisions and the classes there-
in in which he believes the case may be classifiable
and makes a search both in his own class and the
class to which he thinks the case should be trans-
ferred and cites the most pertinent art relative to the
question of classification. He should not take time

to write either an analysis of the art or an argument.
He forwards the file, together with his memoran-
dum, to the Examiner of another division involved.
He also fills out blank Form 573 and has it receipted
by such Examiner and retains the receipted form as
a charge. Each other Examiner involved may simi-
larly make a search and cite art without taking the
time to write either an art analysis or an argument.
The time involved in making such searches is not
lost, since the cited art may be of value to the Ex-
aminer to whom the case is assigned. Each Exami-
ner in turn promptly adds his memorandum to the
file and the last forwards the file and all papers to
the Classification Group. This practice eliminates
the time consumed in evaluating the art and ex-
pounding reasons for proposed assignments; it is all
that is required by the general rules governing the
assignment of applications for examination. See
particularly items 4 and 10 of the regulations gov-
erning assignment of application [903.08 (e)]. This
is generally termed formal submission. (Notice of
Nov. 25, 1947, Revised.)

## 903.08 (e) General Regulations Gov- erning the Assignment of Applictions for Examina- tion

The fact should be borne in mind that the following
regulations are only general guides, and exceptions
frequently arise because of some unusual condition.
The fact should also be kept in view that the Classi-
fication Examiners as well as the Patent Examiners
are confronted with an already existing classifica-
tion, made up of newly revised classes, those revised
years ago and which have somewhat outgrown their
definitions and limits, and still others made a gener-
ation ago and never changed. Also, these classes are
based on different theories and plans, some on art,
some on sructure, some on functions, some on the
material worked upon, and some apparently, on no
theory or plan at all. The Classification Examiners
cannot change this existing condition as each appli-
cation comes up for assignment but must seek to
dovetail the cases into the patchwork and try to get
the applications where they will be best handled. . To
do this often violates the Classification Examiner's
views as to what constitutes a really proper classifi-
cation.

1\. The assignment of applications follows, as far
as possible, the rules or principles governing the
classification of patents. (See the bulletins: "Plan
of Classification" 1900, "The Classification of Pat-
ents," 2nd revision, 1946 and "History of Classifica-
tion of Patents.")

2\. The most comprehensive claim, that is the claim
to the most extensive combination, governs, and this
is true whether there is only one such claim and a
large number of other claims, or whether the sets
of claims are more evenly divided. It is regarded

as just as vital that one complex claim be searched
and adjudicated by an Examiner skilled in the art
as that a group of such claims be so searched and
adjudicated.

3\. The claims and statement of invention are gen-
erally taken as they read, since any attempt of a
Classification Examiner to go behind the record and
decide the case upon what is deemed the "real in-
vention" would, it is believed, introduce more errors
than such action would cure. The Classification Ex-
aminers cannot possess the specific knowledge of
the state of the art in all the classes that the Patent
Examiners collectively possess. Further, such ques-
tions are matters of merit for the Examiners to
determine and are often open to argument and are
subject for appeal.

4\. The location of the U. S. patents constituting
the prior art is generally controlling over all else.
(Note: Where time permits, obvious misplacements
of the patents constituting the prior art are cor-
rected, but to straighten all lines as the cases come
up for assignment would require the time of several
men and would often involve a reclassification of an
entire class.)

5\. Ordinarily an application cannot be assigned
to a class which includes one element or part onry
of several claimed in combination. The claim is
treated in its entirety. The question of aggregation
is not reviewed by the Classification Examiners.

6\. The Examiners of Classification are authorized
in all cases, where they evaluate the facts as war-
ranting it, to assign applications for examination to
the division best able to examine the same. Since
assignment for examination on this basis will at
times be contrary to classification of patents con-
taining the same character of claims, the Examiners
of Classification will indicate the proper classifica-
tion of the patent if such claims are allowed.

7\. When an application has been taken up by an
Examiner for action and a requirement to divide
is found necessary, a part of the claims being directed
to matter classifiable in the division where the case
is being examined, an action requiring division
should be made without seeking a transfer of the
case to another division. The action of the appli-
cant in response to the requirement of division may
result in making a transfer of the application
unnecessary.

8\. Ordinarily where a claim is for an article made
of a specific composition or an alloy, and there exists
a class of such articles, the application will be as-
signed to such class, unless a question as to the
novelty of the composition or alloy broadly is raised,
in which case the application should go to the divi-
sion having the class of composition of matter. or
of alloys to determine the question of novelty of
material.

9\. A class of cases exists in which either no art
or a divided art is found and in which no rule or
principle is involved. Such cases are placed where,

in the judgment of the Classification Examiner they
will be best searched and adjudicated. It is often
impossible to so explain a decision in this class of
cases as to satisfy or in any way aid the Examiners
interested. Indeed the reasons for or against send-
ing such cases one place or another may be so evenly
balanced that no reason of any value can be given.

10\. An Examiner seeking the transfer of a case
should make a search, both of his own class and
the class to which he thinks the case should be trans-
ferred, and the Examiner in charge of the division
exhibit the result of such search to the Classification
Group. This is the only way to utilize the expert
knowledge of the Examiners involved. (Notice of
Apr. 15, 1919, Revised.)

## 903.08 (f) Classification Examiner's Decision

An Examiner in the Classification Group de-
cides the question of the proper classification
of the application, and returns the application
to the division which submitted it enclosing a
statement of the grounds of his decision.

## 903.08 (g) Transfer to Another Exam- ining Division After Deci- sion

If the application is to remain in the division
which submitted it for classification, no further
procedure is necessary. If assigned to another
division, the clerk processes the case as described
in section 7-1.1 of the Clerical Operations
Manual.

### 904 How To Search

Having obtained a thorough understanding
of the subject matter disclosed and claimed in
the application, the Examiner then searches the
prior art as disclosed in patents and other
printed documents. Any such document used
in the rejection of a claim is called a "reference."

### 904.01 Analysis of Claims

The breadth of claim of the application
should always be carefully noted; that is, the
Examiner should be fully aware of what the
claim does not call for, as well as what it does
require. For, there is always danger of reading
into the claim limitations imported from the
specification or drawing.

## 904.01 (a) Variant Embodiments Within Scope of Claim

Substantially every claim includes within its
breadth or scope of definition one or more vari-
ant embodiments not disclosed by applicant,
which would anticipate the terms of the defini-
tion. The claim must be so analyzed and un-

(

derstood that any such variant encountered
during the search will be recognized and
selected.

In each type of subject matter capable of such
treatment (e. g., a machine or other apparatus),
the subject matter as defined by the claim may
be sketched in order to clearly delineate the
limitations of the claim. Two or more sketches,
each of which is as divergent from the particular
disclosure as is permitted by claim recitation,
will assist the Examiner in determining the
claim's actual breadth or scope.

## 904.01 (b) Equivalents

Also, all subject matter that is the patentable
equivalent of the subject matter as defined in
the claim, even though specifically different
from the definition in the claim, must be
considered.

## 904.01 (c) Analogous Arts

Not only must the art be searched with which
the invention claimed is classifiable, but also all
analogous arts regardless of where classified.

The determination of when arts are analogous
is at times difficult. It depends upon the neces-
sary essential function or utility of the subject
matter covered by the claims, and not what it is
called.

For example, a tea mixer and a concrete
mixer are for the same art, namely the mixing
art, this being the necessary function of each.
Similarly a brick cutting machine and a biscuit
cutting machine have the same necessary
function.

## 904.01 (d) Outlining Field of Search

In outlining a field of search the Examiner
should note every class and subclass that may
have material pertinent to the subject matter as
claimed, or that may in the future properly be
claimed in that case. Every subclass pertinent
to each type of invention claimed should be
listed, from the largest combination through
the various subcombinations to the most elemen-
tary part needed to anticipate any disclosure
properly claimable in that case.

The following should be kept in mind: (a)
that a combination reference is necessary to
anticipate a claim drawn to an old or exhausted
combination, (b) that a combination reference
is valuable as a basic reference where elements
thereof may be substituted by elements of a sec-
ondary reference, (c) that a convincing aid to
a rejection on the ground of old combination is
the citation of references showing the subcom-
binations to have been already recognized as
having practical and more general utility, (d)

that combination claims at times can be antici-
pated by combining separately classified sub-
combinational elements where reasons can be
given for holding non-invention in forming the
combination, and (e) that in the rejection of a
claim on the ground of aggregation, the citation
of references showing the individual utility of
the elements may better prove that the aggrega-
tive structure is no more than the sum of the
features shown by the several elemental patents.

In each action by an Examiner upon an appli-
cation, he makes an initialed endorsement in ink
in the space provided on the left-hand page of
the open file wrapper, stating the classes and
subclasses of domestic and foreign patents, and
the publications in which search for references
was made and also the date of the search.

In subsequent actions, if further search is
made, notation of the additional field covered is
also endorsed and initialed on the file wrapper.

## 904.02 Selecting Pertinent References

It is a prerequisite to a speedy and just deter-
mination of the issues involved in the examina-
tion of an application that a careful and ex-
haustive search be made in the first action. It
is not enough that the claims alone be searched,
especially if they be broad in their scope; but
the search should, in so far as possible, cover
the entire claimable subject matter in the case.

It thus results that the Examiner finds refer-
ences that, while not needed for treating the
claims before him, would be useful in forestal-
ling the possible presentation of claims to other
subject matter disclosed by applicant but shown
to be old by these references. To that end, an
Examiner may cite at the beginning of his letter
two groups of references, one under the head-
ing, "References applied," 707.05 (b) and the
other under the heading, "References further
showing the state of the art 707.05 (c)."

In selecting the references to be cited the Ex-
aminer should carefully compare the references
with one another and with the applicant's dis-
closure to avoid the citation of an unnecessary
number. The Examiner is not called upon to
cite all the references that may be available, but
only the "best." (Rule 106.) Multiplying ref-
erences, any one of which is as good as, but no
better than, the others, adds to the burden and
cost of prosecution, and should therefore be
avoided. However, if doubt exists as to the
inclusion of a reference, it is better to err in
citing too much art rather than too little.

While the best reference should always be the
one used, yet if this is of a date less than one
year prior to the filing date of the application,
a second reference, though inferior but not thus
open to being overcome under Rule 131, if such

reference is found, should be cited and the
claims additionally rejected thereon.

In all references, including non-patent, for-
eign patents and domestic patents, the Exami-
ner should study the specification or description
as it relates to every feature in the drawing
which he does not thoroughly understand.

## 905 Miscellaneous

### 905.01 Orders for Photostats To Be Signed by Primary Examiner

All orders for photostats or for photoprints (Form
247) sent to the Manuscript and Lithographic
Branch from the examining divisions must be signed
by the Primary Examiner or in his absence by the
Assistant Chief. (Extract from Notice of Apr. 19,
1930.)

## 905.02 Orders for Soft Copies

Soft copies may be ordered on PO-14 by the Ex-
aminer for his use. These orders are filled by em-
ployees of Patent Copy Sales Branch. No employees
other than those assigned to this Branch have access
to the files of printed copies of patents. In emer-
gency cases, orders may be taken to the Chief of
the Branch whose approval thereof, if given, will
insure immediate filling of said orders, (Notice of
Feb. 25, 1927, Revised.)

Copies of patents retail at twenty-five cents
each (design patents at ten cents each) and
economy should be exercised in their use. It is
advisable to place in the application file soft
copies of those patents cited from other classes.
This will avoid a duplicate order when the
application as amended is re-examined, or
appealed.

## 905.02 (a) Return of Soft Copies

All soft copies which are in perfect condition and
unmarked and which are not deemed useful for
cross-reference or other purposes should be re-
turned to the Patent Copy Sales Branch from time
to time for replacement on the shelves. (Notice of
Feb. 2, 1924, Revised.)

## 905.03 Orders for Patented and Aban- doned Files

In the examination of an application it is
sometimes necessary to inspect the application
papers of some previously abandoned applica-
tion or granted patent. This is always true in
the case of a reissue application.

Patented and abandoned files may be obtained in
the Record Room and Abandoned File Room, respec-
tively, by filling out a slip (PO-125), found there,
and leaving this slip with the clerk in charge. The
patented files are drawn from the shelves and dis-
tributed, the slip being retained by the clerk as a
charge. The patent file should be promptly returned
when the Examiner has finished with it, and it should
not be kept longer than thirty days without renewing
the charge. Where the file is needed for the purpose
of reissue or interference, this information should be
given to the Record Room upon obtaining the file,
and as soon as these matters have been disposed of,
the file should be returned to the Record Room.

When an interference is declared between a patent
and an application and the interference is forwarded
to the Examiner of Interference, the clerk in charge
of the Record Room should be informed in order that
the charge may be changed and the location of the
file known at all times. (Notice of Mar. 19, 1947,
Revised.)

Patent Copy Sales Branch has charge of the
drawings in patented cases. Canceled sheets,
however, are not retained with the patented
drawings but are filed with the "Abandoned
Files and Drawings."

## 905.04 Marking Examiner's Copies of Patents

When the Examiners' copies of patents are sent to
their respective divisions to be filed, the assistant
Examiners who examined the application should
mark in ink on the face of the drawings, or the
specifications where there are no drawings, such
features as may be deemed advantageous in aiding
understanding of the patents in future searches.
(Order 2380, Revised.)

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OCR transcription for search; preserved printed pages are authoritative

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