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OCR transcription for search; preserved printed pages are authoritative

# Chapter 1100

# Interference

1101
Preliminaries to an Interference

1101.01
Between Applications

1101.01
(a)
In Different Divisions

1101.01
(b)
Common Ownership

1101.01 (c)
The Interference Search

1101.01 (d)
Correspondence Under Rule 202

1101.01 (e)
How Conducted

1101.01 (f)
Not an Action on the Case

1101.01 (g)
When and When Not Needed

1101.01 (h)
Approval or Disapproval by Law
Examiner

1101.01 (1)
Failure of Junior Party to Overcome
Filing Date of Senior Party

1101.01
(j)
Suggestion of Claims

1101.01 (k)

Conflicting Parties Have Same Attor-
ney

1109
Action After Award of Priority

1109.01
The Winning Party

1109.02
The Losing Party

1110
Action After Dissolution

1111
Miscellaneous

1111.01
Interviews

1111.02
Record in Each Interference Complete

1111.03
Overlapping Applications

1111.04
"Secrecy Order" Cases

1111.05
Amendments Filed During Interference

1111.06
Notice in File Relating to Motion Under Rule
234

1101,02 (c)

Difference Between Copying Patent
Claims and Suggesting Claims of an
Application

1111.08
Reissue During Interference

1101.02 (d)
Copied Patent Claims Not Identified

1101.02 (e)

Making of Patent Claims Not a Re-
sponse to Last Office Action

1101.02 (f)

Rejection of Copied Patent Claims

1111.12
Certified Copies of Part of an Application

1111.13
Consultation With Examiner of Interfer-
ences

1112
Letter Forms Used in Interferences

1112.01
To Law Examiner

1112.02

Suggesting Claims

1112.03
Same Attorney or Agent

1112.04
Requesting Withdrawal From Issue

1112.05
Declaration

1112.05
(a) Letter to Examiner of Interferences

1112.05
(b)
Declaration Where One Party Has Two
Applications

1112.05 (c) Letter to Each Party

1112.06 Requests for Jurisdiction

1112.06 (a)
Requesting Jurisdiction of Application

1112.06

(b)
Requesting Jurisdiction of Interference

1105.01
Briefs and Hearings on Motion

1105.02
Decision on Motion To Dissolve

1105.03
Decision on Motion to Amend or to Add or
Substitute an Application

1105.04
Decision on Motion Relating to Burden of
Proof

1105.05
Dissolution on Primary Examiner's Own
Motion

1105.06. Form of Decision Letter

1105.07
Petition for Reconsideration

1108
Redeclaration and Additional Interferences

1106.01
After Decision on Motion

1106.02
By Addition of New Party

1107
Examiner's Entry in Interference File Subse-
quent to Interference

1108
Entry of Amendments Filed in Connection With
Motions

1101.01 (1)
Action To Be Made at Time of Suggest-
ing Claims

1101.01 (m)
Time Limit Set for Making Suggested
Claims

1101.01 (n)
Suggested Claims Made After Statutory
Period Running Against Case
1101.01 (0)
Application in Issue or in Interference

1101.02 With a Patent

1101.02 (2)

Copying Claims From a Patent

1101.02 (b)

Examiner Cites Patent Having Filing
Date Later Than That of Applica-
tion

1111.07
Conversion of Application From Joint to Sole
or Sole to Joint

1111.09
Suit Under 35 U. S. C. 146

1111.10
Benefit of Foreign Filing Date

1111.11
Patentability Reports

1101.02 (g)

After Prosecution of Application Is
Closed or Application Is Allowed

1101.03
Removing of Affidavits Before Interference
1102
Preparation of Interference Papers and Decla-
ration

1102.01 Preparation of Papers

1102.01 (a)
Letter to Examiner of Interferences

1102.01 (b)
Letters to Parties

1102.01 (c) Interference Brief Card

1102.02
Declaration of Interference

1103
Suspension of Ec Parte Prosecution

1104
Jurisdiction of Interference

1105

Matters Requiring Decision by Primary Ex-
aminer

1101

1112.07 Withdrawal of Interference

1112.08 Primary Ezaminer Initiates Dissolution

1112.09 Redeclaration

1112.09

1112.09 (b)

Redeclaration After Decision on Motion
Letter to Examiner of Interferenceş

1112.09 (c)
Letter to Retained Party

1112.09 (d)
Letter to New Party

1112.09 (e)

Adding a Party (No Testimony Taken)

1112.09 (f)
Letter to Examiner of Interferences

1112.09 (g)
Letter to Original Party

1112.09 (h)
Letter to New Party

1112.09 (1)
Adding a Party (Testimony Taken)

1112.09 (1)
Letter to Examiner of Interferences

1112.09 (k)
Letter to Original Party

1112.09 (1)
Letter to New Party

1112.09 (m)
Changing Joint to Sole

1112.09 (n)
Letter to Examiner of Interferences

1112.09 (0)
Letter to Resulting Sole Party

1112.09 (p)
Letter to Other Party

1112.10

Denying Entry of Amendment Seeking Fur-
ther Interference .

The interference practice is based on 35
U. S. C. 135 here set forth :

35 U. S. C. 135, Interferences. Whenever an appli-
cation is made for a patent which, in the opinion of
the Commissioner, would interfere with any pending
application, or with any unexpired patent, he shall
give notice thereof to the applicants, or applicant and
patentee, as the case may be. The question of pri-
ority of invention shall be determined by a board of.
patent Interferences (consisting of three examiners
of interferences) whose decision, if adverse to the
claim of an applicant, shall constitute the final re-
fusal by the Patent Office of the claims involved, and
the Commissioner may issue a patent to the applicant.
who is adjudged the prior inventor. A final judgment
adverse to a patentee from which no appeal or other
review has been or can be taken or had shall con-
stitute cancellation of the claims involved from the
patent, and notice thereof shall be endorsed on copies
of the patent thereafter distributed by the Patent
Office.

A claim which is the same as, or for the same or
substantially the same subject matter as, a claim of
an issued patent may not be made in any application
unless such a claim is made prior to one year from
the date on which the patent was granted.

Bule 201 sets forth the definition of an in-
terference and is here reproduced.

Rule 201. Definition, when declared. (a) An inter-
erence is a proceeding instituted for the purpose of
etermining the question of priority of invention be-
ween two or more parties claiming substantially the
ame patentable invention and may be instituted as
bon as it is determined that common patentable sub-

ject matter is claimed in a plurality of applications
or in an application and a patent.

(b) An interference will be declared between pend-
ing applications for patent or for reissue of different
parties when such applications contain claims for sub-
stantially the same invention which are allowable in
the application of each party, and interferences will
also be declared between pending applications for pat-
ent, or for reissue, and unexpired original or reissued
patents, of different parties, when such applications
and patents contain claims for substantially the same
invention which are allowable in all of the applica-
tions involved, in accordance with the provisions of
these rules.

(c) Interferences will not be declared, nor contin-
ued, between applications or applications and patents
owned by the same party unless good cause is shown
therefor. The parties shall make known any and all
right, title and interest affecting the ownership of
any application or patent involved or essential to the
proceedings, not recorded in the Patent Office, when
an interference is declared,and of changes in such
right, title, or interest, made after the declaration of
the interference and before the expiration of the time
prescribed for seeking review of the decision in the
interference.

## 1101. Preliminaries to an Interference

An interference is often an expensive and
time-consuming proceeding. Yet, it is neces-
sary to determine priority when two applicants
before the Office are claiming the same subject
matter and their filing dates are close enough
together that there is a reasonable possibility
that the first applicant to file is not the first
inventor.

The greatest care must therefore be exercised
both in the search for interfering applications
and in the determination of the question as
to whether an interference should be declared.
Also the claims in recently issued patents,
especially those used as references against the
application claims, should be considered for
possible interference.

The question of the propriety of initiating an
interference in any given case is affected by so
many factors that a discussion of them here is
impracticable. Some circumstances which ren-
der an interference unnecessary are hereinafter
noted, but each instance must be carefully con-
sidered if serious errors are to be avoided.

In determining whether an interference exists
a claim should be given the broadest interpreta-
tion which it reasonably will support, bearing in
mind the following general principles :

(a) The interpretation should not be strained.

(b) Express limitations in the claim should
not be ignored nor should limitations be read
therein to meet the exigencies of a particular
situation.

(c) The doctrine of equivalents which is
applicable in questions of patentability is not
applicable in interferences, i. e., no application
should be placed in interference unless it dis-
closes clearly the structure called for by the
count and the fact that it discloses equivalent
structure is no ground for placing it in inter-
ference.

(d) Before a claim (unless it is a patented
claim) is made the count of an interference
it should be allowable and in good form. No
pending claim which is indefinite, ambiguous or
otherwise defective should be made the count
of an interference.

(e) A claim copied from a patent, if am-
biguous, should be interpreted in the light of
the patent in which it originated.

(f) If doubts exist as to whether there is an
interference, an interference should not be
declared.

### 1101.01 Between Applications ac 5-19

Where two or more applications are found to
be claiming the same patentable invention they
may be put in interference, dependent on the
status of the respective cases and the difference
between their filing dates. Before taking any
steps looking to the formation of an interfer-
ence, it is very essential that the Examiner make
certain that each of the prospective parties is
claiming the same patentable invention and that
the claims that are to constitute the counts of the
interference are clearly readable upon the dis-
closure of each party and allowable in each ap-
plication. Failure to observe this practice re-
sults in time-consuming and burdensome pro-
ceedings to dissolve or redeclare the interfer-
ence and, if the interference be not dissolved or
redeclared, very serious difficulties may be cre-
ated in connection with the trial of the cause
and the award of priority.

It is to be noted that while the claims of two
or more applicants may vary in scope and in
immaterial details, yet if directed to the same
invention, an interference exists. But mere dis-
closure by an applicant of an invention which
he is not claiming does not afford a ground for
suggesting to that applicant claims for the said
invention copied from another application that
is claiming the invention. The intention of the
parties to claim the same patentable invention,
as expressed in the summary of the invention or

elsewhere in the disclosure, or in the claims, is
an essential in every instance.

When the subject matter found to be allowable in
one application is disclosed and claimed in another
application, but the claims therein to such subject
matter are either nonelected or subject to election,
the question of interference should be considered.
The requirement of Rule 201 (b) that the conflicting
applications shall contain claims for substantially
the same invention which are allowable in each
application should be interpreted as meaning gen-
erally that the conflicting claimed subject matter
is sufficiently supported in each application and
is patentable to each applicant over the prior art.
The statutory requirement of first inventorship is of
transcendent importance and every effort should be
made to avoid the improvident issuance of a patent
when there is an adverse claimant.

Following are illustrative situations where the
examiner should take action toward instituting in-
terference, including correspondence under Rule
202, if necessary :

A. Application filed with claims to divisible in-
ventions I and II. Before action requiring restric-
tion is made, examiner discovers another case having
allowed claims to invention I.

The situation is not altered by the fact that &
requirement for restriction had actually been made
but had not been responded to. Nor is the situation
materially different if an election of noninterfering
subject matter had been made without traverse but
no action given on the merits of the elected
invention,

B. Application filed with claims to divisible inven-
tions I and II and in response to a requirement for
restriction, applicant traverses the same and elects
invention I. Examiner gives an action on the merits
of I. Examiner subsequently finds an application to
another containing allowed claims to invention II
and which is ready for issue.

The situation is not altered by the fact that the
election is made without traverse and the nonelected
claims possibly cancelled.

C. Application filed with generic claims and
claimed species a, b, c, d, and e. Generic claims re-
jected and election of a single species required.
Applicant elects species a but continues to urge
allowability of generic claims. Examiner finds an-
other application claiming species b which is ready
for issue.

The allowability of generic claims in the first case
is not a condition precedent to setting up inter-
ference.

D. Application filed with generic claims and
claims to five species, and other species disclosed
but not specifically claimed. Examiner finds an-
other application the disclosure and claims of which

## 1101.01 (a)

are restricted to one of the unclaimed species and
have been found allowable.

The prosecution of generic claims is taken as in-
dicative of an intention to cover all species disclosed
which come under the generic claim.

In all the above situations, the applicant has
shown an intention to claim the subject matter
which is actually being claimed in another applica-
tion. These are to be distinguished from situations
where a distinct invention is claimed in one appli-
cation but merely disclosed in another application
without evidence of an intent to claim the same.
The question of interference should not be consid-
ered in the latter instance. However, if the appli-
cation disclosing but not claiming the invention is
senior, and the junior application is ready for issue,
the Primary Examiner should discuss the matter
with the Supervisory Examiner to determine the
action to be taken. (Memorandum of August 5,
1949, Revised.)

## 1101.01 (a) In Different Divisions

An interference between applications as-
signed to different divisions is declared by the
division where the controlling interfering claim
would be classified. After correspondence
under Rule 202, if necessary, appropriate trans-
fer of one of the applications is made. After
termination of the interference, further transfer
may be necessary depending upon the outcome.

## 1101.01 (b) Common Ownership

Where applications by different inventors
but of common ownership claim the same sub-
ject matter or subject matter that is not pat-
entably different :-

I. Interference therebetween is normally not
instituted since there is no conflict of interest.
Elimination of conflicting claims from all ex-
cept one case should usually be required, Rule
78 (b). The common assignee must determine
the application in which the conflicting claims
are properly placed. Treatment by rejection is
set forth in Section 305.02 (a).

II. Where an interference with a third party
is found to exist, the owner should be required
to elect which one of the applications shall be
placed in interference.

## 1101.01 (c) The Interference Search

The search for interfering applications which is
always made when preparing an application for
allowance, but may be made at any time after a case
has been found to contain allowable subject matter,
must not be limited to the class or subclass in which
it is classified, but must be extended to all classes in

or out of the Examiner's division which it has been
necessary to search in the examination of the appli-
cation. (Notice of August 2, 1909, Revised.)

Moreover, the possibility of the existence of
interfering applications should be kept in mind
throughout the prosecution of each application
and every indication of the existence of inter-
fering matter noted in such a way that it will
not be overlooked, should it be decided not to
declare the interference forthwith.

In connection with the subject of interference
search, it is to be noted that, where the Exami-
ner at any time finds that two or more applica-
tions are claiming the same invention and he
does not deem it expedient to institute inter-
ference proceedings at that time, he should make
a record of the possible interference as, on the
face of the file wrapper in the space reserved for
class and subclass designation. His notations,
however, if made on the file wrapper or draw-
ings, must not be such as to give any hint to the
applicants, who may inspect their own applica-
tions at any time, of the date or identity of a
supposedly interfering application. Serial
numbers or filing dates of conflicting applica-
tions must never be placed upon drawings or file
wrappers. The examining division should keep
a book of "Prospective Interferences" contain-
ing complete data concerning possible inter-
ferences and the page and line of this book
should be referred to on the respective file
wrappers or drawings. For future reference,
this book may include notes as to why pro-
spective interferences were not declared.

In determining whether an interference exists, the
Examiner in charge of the division must personally
review and decide the question. The Law Examiner
may, however, be consulted to obtain his advice and
he will have charge of such correspondence with
junior parties as is provided for in Rule 202 (Order
2687, Revised).

## 1101.01 (d) Correspondence Under Rule 202

After the Primary Examiner has determined
that a conflict exists in the claimed patentable
subject matter of two or more applications, he
considers the question of correspondence under
Rule 202. The rule follows:

Rule 202. Preparation for interference between ap-
plications; preliminary inquiry of junior applicant.
In order to ascertain whether any question of pri-
ority arises between applications which appear to in-
terfere and are otherwise ready to be prepared for
interference, any junior applicant may be called upon

(

to state in writing under oath the date and the char-
acter of the earliest fact or act, susceptible of proof,
which can be relied upon to establish conception of the
invention under consideration for the purpose of es-
tablishing priority of invention. The statement filed
in compliance with this section will be retained by the
Patent Office separate from the application file and if
an interference is declared will be opened simultane-
ously with the preliminary statement of the party fil-
ing the same. In case the junior applicant makes no
reply within the time specified, not less than thirty
days, or if the earliest date alleged is subsequent to the
filing date of the senior party, the interference ordi-
narily will not be declared.

Under Rule 202. the Commissioner may re-
quire an applicant junior to another applicant
"to state in writing under oath the date and the
character of the earliest fact or act, susceptible
of proof, which can be relied upon to establish
conception of the invention under considera-
tion.". Such affidavit does not become a part of
the record in the application, nor does any cor-
respondence relative thereto. The affidavit,
however, will become a part of the interference
record, if an interference is formed.

# 1101.01 (e) Correspondence Under Rule 202, How Con- ducted

The Rule 202 correspondence is conducted by
the Law Examiner on receipt from the Primary
Examiner of notice of the proposed interference
set forth in a letter modeled after the form
found under "Letter Forms Used in Interfer-
ences" (1112.01).

This letter and a carbon copy thereof, both
signed by the Primary Examiner, together with
the files are forwarded to the Law Examiner.
The files, however, are not retained by the Law
Examiner, but are returned to the examining
division where they are held separate from
other files while the correspondence is being
conducted.

In preparing cases for submission to the Law
Examiner and in subsequent treatment of the cases
involved attention should be given to the following
points:

(1) The name of the Examiner to be called for a
conference should be given as indicated on the form.

(2) It should be stated which of the applications,
if any, is ready for allowance.

(3) If an application is a division, continuation or
continuation-in-part of an earlier one (and the
parent application discloses the conflicting subject
matter), this fact should be stated.

(4) If two or more applications are owned by the
same assignee, or are presented by the same attorney,
it should be so stated.

(5) In the suggestion of counts only claims which
are necessary to determine the question of priority
should be selected; claims which are not patentable
over the proposed claims should be omitted. Claims
are not patentably distinct unless they differ suffi-
ciently to sustain separate patents.

(6) Any other points which have a bearing on the
declaration of the interference should be stated.

(7) Amendments or other papers filed in cases
held by the Law Examiner bearing on the question
of interference should be promptly forwarded to him.

(8) Letters of submission should be in duplicate.
(Extract from Notice of April 18, 1919, Revised.)

1101.01 (f) Correspondence Under
Rule 202, Not an Action
on the Case

Correspondence under Rule 202 is not an
action on the case. Hence, it cannot serve to
extend the statutory period if the case is await-
ing action by the applicant.

1101.01 (g) Correspondence Under
Rule 202, When and
When Not Needed

Ordinarily where there is a difference between the
dates of applications of the senior and junior parties
of about six months to two years the Law Examiner
will require from the junior party a verified state-
ment relating to his date of conception, (Extract
from Notice of April 18, 1919.)

The following cases need not be submitted to the
Law Examiner:

(1) Where any junior applicant may. be entitled
to a foreign filing date at least as early as the senior
applicant's filing date in this country.

(2) Where any junior applicant is entitled to a
filing date in this country which is within six months
of the senior applicant's filing date. (Order 2750,
Revised.)

In general it may be stated that this corre-
spondence is confined to those cases having &
difference in effective U. S. filing dates within
the range of six months to two years. By "effec-
tive" filing date is meant the filing date to which
the application is entitled, i. e., its own filing
date if it be an "original" application, or the
filing date of a parent application, as in the
case of a "divisional" or "continuation" or "con-
tinuation-in-part" application (and the parent
application discloses the conflicting subject
matter).

## 1101.01 (h)

Exceptions to the above general rule are the
following: (a) If the invention is of simple
character, thereby requiring but a short time to
be perfected, correspondence is usually not had
if the senior party's case is ready for issue, and
the difference in dates exceeds one year.
(b) Where the senior party's case is not ready
for issue, or where the junior party's claims
would form the counts of the interference, or
where the embodiments of the invention in the
two applications are substantially identical,
correspondence is had even though the differ-
ence in dates exceeds two years.

In other cases where the senior party's appli-
cation is ready for issue and the difference in
effective filing dates exceeds two years, or if it
be a simple case, one year, it is assumed that
there is no question of priority involved and
the senior application is forthwith sent to issue.

In summary, correspondence under Rule 202
is not had in the following cases :

(1) Where the effective date of the senior
party is less than six months prior to the date
to which another case is entitled, as by its own
filing date or that of a prior application of
which the instant case is a division, continua-
tion, or continuation-in-part (conflicting sub-
ject matter is disclosed in parent application),
including situations where there are three or
more applications claiming the same invention
and the oldest two are less than six months apart
in effective filing dates.

(2) Where any junior applicant has an
available foreign filing date at least as early as
the U. S. filing date of the senior applicant.

(3) Where there is a difference in effective
U. S. filing dates of more than two years (or
in a simple case, one year), and the application
of the senior party is ready for issue unless
(a) the claims of the junior party would consti-
tute the counts of the interference or (b) the
disclosures of the claimed invention in the two
cases are substantially identical.

(4) Where one of the parties to the prospec-
tive interference is a patentee. If the applica-
tion is junior to the effective date of the patent,
an affidavit under Rule 204 is required.

Where the case falls into category (1) or (2)
an interference is forthwith formed and this is
true also as to (4) unless a Rule 204 affidavit is
required. If the case falls in the principal por-
tion of category (3), the senior application is
passed to issue, it being assumed that there is no
question of priority to be determined; but if the
senior party's application is not ready for issue

or if conditions (a) or (b) of category (3) ob-
tains, then correspondence under Rule 202 is
conducted.

1101.01 (h) Correspondence Under
Rule 202, Approval or
Disapproval by Law Ex-
aminer

The Law Examiner will stamp the letters
from the Examiner either "Approved" or "Dis-
approved," as the case may require, and return
the carbon copy to the examining division.

If the earliest date alleged by the junior party
under Rule 202 fails to antedate the filing date
of the senior applicant, the Law Examiner dis-
approves the proposed interference and the Ex-
aminer then follows the procedure outlined in
the next section. When a "Disapproved" letter
is returned to the examining division it is ac-
companied by a note to be attached to the senior
party's case requesting the Issue and Gazette
Branch to return the case to the Law Examiner
after the notice of allowance is sent.

Where the junior party, as required by Rule
202, states under oath a date of a fact or an act,
susceptible of proof, which would establish that
he had conceived the claimed invention prior to
the filing date of the senior applicant, the Law
Examiner approves the Examiner's proposal to
suggest claims and the Examiner may then pro-
ceed with the preparation of the cases for inter-
ference.

When an interference is to be declared involving
applications which had previously been submitted to
the Law Examiner for correspondence under Rule
202, before forwarding the files to the Interference
Division, the Examiner should ascertain from the
Law Examiner if any such statement has been filled
and, if so, seal this statement and forward it with
the files to the Interference Division. (Order 3380,
Revised.)

The oath under Rule 202 becomes a part of
the interference file in contradistinction to the
application file as in the case of an affidavit
under Rule 131 or Rule 204 but, like them, is
subject to inspection on the opening of the pre-
liminary statements.

When the formation of an interference be-
tween two parties is necessary, all other appli-
cants claiming the contested invention should
be placed in the interference irrespective of their
filing dates or of any dates alleged under Rule
202, provided there is no statutory bar to the
allowance of the claims in the other applica-
tions.

(

# 1101.01 (i) Correspondence Under Rule 202, Failure of Jun- ior Party To Overcome Filing Date of Senior Party

If the earliest date alleged by a junior party
in his affidavit under Rule 202 fails to overcome
the filing date of the senior party and if the in-
terference is not to be declared (note that an
interference might be necessary for other rea-
sons), the senior party's application will be sent
to issue as speedily as possible and the conflict-
ing claims of the junior applicant will be
rejected on the patent when granted. A short-
ened period for response may be set in the senior
party's case. (See 710.02 (b).)

After the senior applicant's application has
been passed for issue, the application is sent
to the Law Examiner by the Issue and Gazette
Branch in accordance with a note to that effect
attached to the application and he writes a
letter to that applicant urging him to promptly
pay the final fee, this being done to the end
that prosecution of the junior application may
be promptly resumed, the senior party's dis-
closure then being available as prior art in
treating the claims of the junior application.
The examiner may make a supplemental action
on the junior applicant's case when the senior
applicant's patent issues.

In the meantime the junior party's applica-
tion will be treated in accordance with the
following :

Where a junior party after correspondence under
Rule 202 fails to overcome the filing date of the
senior party, the Examiner when he reaches the
case for action will write a letter substantially as
follows:

In view of Rule 202, action on this case (or
on claims 1, 2, 4, etc., indicating the conflict-
ing claims and claims not patentable over the.
senior party's case) is suspended for six months
to determine whether an interference will be
declared (unless these claims are canceled).
At the end of the six months applicant should
call up the case for action.

The letter should include the usual action on the
remaining claims in the case, indicating what, if any,
claims are allowable. (Order 2913, Revised.)

If the Examiner's letter is a suspension of
action on the entire case, the Examiner should
also note the case on his calendar at the date
marking the end of the six months' period, and,
if applicant does not call up the case, the Exam-
iner should do so unless the senior party's patent

will soon issue, since there is no period for
response running against the applicant and the
case should not be permitted to remain indefi-
nitely among the files in the examining division.

It sometimes happens that the application of the
junior party is not amended and nothing else occurs
to bring it to the attention of the Examiner, and that
the patent to the senior party issues and is not
promptly cited to the junior party. This works an
unnecessary hardship upon the junior applicant and
the Office should make every effort to give him action
in view of this reference at the earliest possible date.
To this end, the Examiner should keep informed as
to the progress of the senior application and cite
the patent with appropriate comment to the junior
applicant immediately after its issue. (Notice of
February 15, 1921, Revised.)

If, at the end of the six months' suspension,
it appears likely that the senior application will
be passed to issue within the next six months,
action on the conflicting claims and claims not
patentable over the senior party's case should
again be suspended for a period of six months.
Of course, if the first suspension was directed
to certain claims only and the usual action was
given on other claims, it is necessary for the ap-
plicant to make such response as is required to
the action on the other claims.

If, at the end of the first six months' suspen-
sion, there is no likelihood of the senior party's
application being put in condition for allowance
within the next six months and the only unset-
tled question in the junior party's case is the dis-
position of the claims on which action was sus-
pended, then the interference should be
declared.

If the junior application is in issue when the
interference is discovered and, in correspond-
ence under Rule 202, the junior applicant fails
to make the date of the senior party, the junior
application should be withdrawn from issue
(see "Letter Forms Used in Interferences,"
1112.04) and a letter sent informing him that
the interfering claim or claims and claims not
patentable over the senior party's case cannot be
allowed him as his date of invention indicates
he is not the first inventor. Action should be
suspended for six months, the Examiner not-
ing the expiration date on his calendar and ad-
vising applicant to call the case up for action at
the end of the six months. Thereafter, pro-
cedure should be as above.

## 1101.01 (j) Suggestion of Claims

Rule 203. Preparation for interference between ap-
plications; suggestion of claims for interference. (a)
Before the declaration of interference, it must be de-

)

## 1101.01 (k)

termined that there is common patentable subject mat-
ter in the cases of the respective parties, patentable
to each of the respective parties, subject to the deter-
mination of the question of priority. Claims in the
same language, to form the counts of the interfer-
ence, must be present or be presented, in each appli-
cation.

(b) When the claims of two or more applications
differ in phraseology, but relate to substantially the
same patentable subject matter, the examiner shall,
if it has been determined that an interference should
be declared, suggest to the parties such claims as are
necessary to cover the common invention in the same
language. The parties to whom the claims are sug-
gested will be required to make those claims (i. e., pre-
sent the suggested claims in their applications by
amendment) within a specified time, not less than 30
days, in order that an interference may be declared.
The failure or refusal of any applicant to make any
elaim suggested within the time specified, shall be
taken without further action as a disclaimer of the
invention covered by that claim unless the time be
extended.

(c) The suggestion of claims for purpose of inter-
ference will not stay the period for response to an
Office action which may be running against an appli-
cation, unless the claims are made by the applicant
within the time specified for making the claims.

(d) When an applicant presents a claim in his ap-
plication (not suggested by the examiner as specified
in this rule) which is copied from some other appli-
cation, either for purpose of interference or otherwise,
he must so state, at the time he presents the claim and
identify the other application.

Although the subject of suggesting claims is
treated in detail at this point in the discussion
of a prospective interference between applica-
tions, some of the practice here outlined is also
applicable to a prospective interference with a
patent.

If the applications contain identical claims
covering the entire interfering subject matter
the Examiner proceeds under Rule 207 to form
the interference; otherwise, proper claims must
be suggested to some or all of the parties.

It should be noted at this point that if an
applicant copies a claim from another appli-
cation without suggestion by the Examiner,
Rule 203 (d) requires him to "so state, at the
time he presents the claim and identify the
other application."

The question of what claims to suggest to the
interfering applications is one of great im-
portance, and failure to suggest such claims as
will define clearly the matter in issue leads to
confusion and to prolongation of the contest.

While it is much to be desired that the claims
suggested (which are to form the issue of the
interference) should be claims already present
in one or the other of the applications, yet if
claims cannot be found in the applications
which satisfactorily express the issue it may be
necessary to frame a claim or claims reading on
all the applications and clearly expressing the
interfering subject matter and suggest it or
them to all parties.

It is not necessary that all the claims of each
party that read on the other party's case be sug-
gested. This would lead in some instances to
a needless multiplication of counts of the issue
and a consequent complication of the proceed-
ings to no good purpose. The counts of the
issue should be patentably different. The test
in an interference for patentably distinct counts
is not whether they may appear in the same
patent but whether they differ sufficiently to
sustain separate patents. In general, the broad-
est patentable claim which is allowable in each
case should be used as the interference count
and additional claims should not be suggested
unless they meet the foregoing test as to pat-
entable distinction. The same precaution
should be observed in the declaration of com-
panion interferences involving several common
parties. Claims not patentably different from
counts of the issue are rejected in the application
of the defeated party after termination of the
interference.

The claims to form the issue of the interfer-
ence are suggested to all parties who have not
already made those claims. (See "Letter Forms
Used in Interferences," 1112.02.)

# 1101.01 (k) Suggestion of Claims, Conflicting Parties Have Same Attorney

Rule 208. Conflicting parties having same attorney.
Whenever it shall be found that two or more parties
whose interests appear to be in conflict are represented
by the same attorney or agent, the examiner shall

1101.01 (0)

notify each of said principal parties and the attorney
or agent of this fact, and shall also call the matter
to the attention of the Commissioner. If conflicting
interests exist, the same attorney or agent or his asso-
ciates will not be recognized to represent either of the
parties whose interests are in conflict without the
consent of the other party or in the absence of special
circumstances requiring such representation, in fur-
ther proceedings before the Patent Office involving
the matter or application or patent in which the con-
flicting interests exist.

This notification should be given to both par-
ties at the time claims are suggested even though
claims are suggested to only one party. Nota-
tion of the persons to whom this letter is mailed
should be made on all copies. (See "Letter
Forms Used in Interferences," 1112.03.) The
attention of the Commissioner is not called to
the fact that two conflicting parties have the
same attorney until an actual interference is
set up and then it is done by notifying the
Examiner of Interferences as explained in
1102.01 (b).

# 1101.01 (1) Suggestion of Claims, Ac- tion To Be Made at Time of Suggesting Claims

At the same time that the claims are suggested
an action is made on each of the applications
that are up for action by the Examiner, whether
they be new or amended cases. In this way pos-
sible motions under Rules 233 and 234 may be
forestalled. That is, the action on the new or
amended case may bring to light patentable
claims that should be included as counts of the
interference, and, on the other hand, the rejec-
tion of unpatentable claims will serve to indi-
cate to the opposing parties the position of the
Examiner with respect to such claims.

The Examiner is required to inform each
applicant when the interference is declared what
claims in his application are unpatentable over
the issue. There would seem to be no objection
to, and many advantages in, giving this infor-
mation when suggesting claims.

Where in a letter suggesting claims to an
applicant for interference, the Examiner states
that none of the claims in the case is patentable
over the claims suggested, this statement does
not constitute a formal rejection of the claims,
so that after the expiration of the period fixed
for presenting the suggested claims, if no
amendment has been filed, the Examiner should
make a definite action on the claims then in the
application.

1101.01 (m)
Suggestion of Claims,
Time Limit Set for Mak-
ing Suggested Claims

Where claims are suggested for interference,
a limited period determined by the Examiner,
not less than 30 days, is set for reply. See
710.02 (c).

Should any one of the applicants fail to make
the claim or claims suggested to him, within
the time specified, all his claims not patentable
thereover are rejected on the ground that he
has disclaimed the invention to which they are
directed. If applicant makes the suggested
claims later they will be rejected on the
same ground unless the delay is satisfactorily
explained. (706.03 (u).)

1101.01 (n) Suggestion of Claims,
Suggested Claims Made
After Statutory Period
Running Against Case

If claims are suggested in an application near
the end of the statuory period running against
the case, and the time limit for making the
claims extend beyond the end of the period,
such claims will be admitted if filed within the
time limit even though outside the six months'
period and even though no amendment was
made responsive to the Office action outstanding
against the case at the time of suggesting the
claims. However, if the suggested claims are
not thus made within the specified time, the case
becomes abandoned in the absence of a respon-
sive amendment filed within the six months'
period. Rule 203 (c).

# 1101.01 (o) Suggestion of Claims, Application in Issue or in Interference

An application will not be withdrawn from issue
for the purpose of suggesting claims for an inter-
ference. When an application is pending before
the Examiner which contains one or more claims,
which may be made in a case in issue, the Examiner
may write a letter suggesting such claims to the
applicant whose case is in issue, stating that if such
claims be made within a certain specified time the
case will be withdrawn from issue, the amendment
entered and the intereference declared. Such letters
must be submitted to the Supervisory Examiner. If
the suggested claims are not copied in the applica-
tion in issue, it may be necessary to withdraw it
from issue for the purpose of rejecting other claims
on the implied disclaimer resulting from the failure
to copy the suggested claims, using form at 1112.04.

When the Examiner suggests one or more claims
appearing in a case in issue to an applicant whose
case is pending before him, the case in issue will not
be withdrawn for the purpose of interference unless
the suggested claims shall be made in the pending
application within the time specified by the Ex-
aminer. The letter suggesting claims should be sub-
mitted to the Supervisory Examiner for approval.

In either of the above cases the Issue and Gazette
Branch should be notified when the claim is sug-
gested, so that in case the final fee is paid during
the time in which the suggested claims may be made,
proper steps may be taken to prevent the final fee
from being applied. (Order 1365, Revised.)

The Examiner should borrow the allowed ap-
plication from the Issue and Gazette Branch
and hold the file until the claims are made or
the time limit expires. This avoids any pos-
sible issuance of the application as a patent
should the final fee be paid. To further insure
against the issuance of the application, the
Examiner may pencil in the blank space fol-
lowing "Final Fee" on the file jacket the ini-
tialled request: "Defer for interference."
When notified that the final fee has been re-
ceived, the Examiner shall prepare a memo to
the Issue and Gazette Branch requesting that
issue of the patent be deferred for a period of 90
days due to a possible interference. This allows
a period of 60 days to complete any action
needed. At the end of this 60 day period, the
application must either be released to the Issue
and Gazette Branch or be withdrawn from
issue, using form at 1112.04.

When an application is found having claims
to be suggested to other applications already in-
volved in interference, to form another interfer-
ence, the Primary Examiner requests jurisdic-
tion of the last named applications. To this end
a separate letter (see form at 1112.06 (a)), ad-
dressed to the Commissioner is written for each
file, referring only to that file, and is placed
therein. This letter goes to the Supervisory
Examiner for his approval. In case the appli-
cation is to be added to the existing interference,
the Primary Examiner requests jurisdiction of
the interference. In this case, form at 1112.06
(b) is used. This is addressed to the Examiner
of Interferences.

# 1101.02 With a Patent

Rules 204, 205 and 206 quoted below deal with
interference involving patents.

Rule 204. Interference with a patent; affidavit by
junior applicant. (a) The fact that one of the parties
has already obtained a patent will not prevent an inter-
ference. Although the Commissioner has no power to
cancel a patent, he may grant another patent for the
same invention to a person who, in the interference,
proves himself to be the prior inventor.

(b) When the filing date or effective filing date of
an applicant is subsequent to the filing date of a
patentee, the applicant, before an interference will be
declared, shall file an affidavit that he made the inven-
tion in controversy in this country, before the filing
date of the patentee, or that his acts in this country
with respect to the invention were sufficient under the
law to establish priority of invention relative to the
filing date of the patentee; and, when required, the
applicant shall file an affidavit (of the nature specified
in rule 131) setting forth facts which would prima
facie entitle him to an award of priority relative to
the filing date of the patentee.

As a patentee may not alter his claims (ex-
cept by reissue) an applicant must make one
or more claims of the patent, or substantial
equivalents thereof, to invoke an interference
as stated in Rule 205. For the practice to be
followed where an interference in fact exists
between a patent and an application but, be-
cause of overlapping numerical ranges or dif-
ferences in Markush groups, priority cannot be
properly determined on the basis of a patent
claim, see the following Notice :

It has been found that the practice set forth in Ex
parte Card and Card, 112 O. G. 499, 1904 C. D. 383,
does not adequately take care of all situations where
there is an interference in fact between a patent and
an application but there are obstacles to the appli-
cant making the exact patent claim.

In those cases where the claim of the patent con-
tains an immaterial limitation which can be wholly
eliminated or suitably modified so as to broaden
the claim, the practice set forth in Ex parte Card
and Card should continue to be followed.

A. In some cases, the disclosure in the applica-
tion, although for the same invention in fact as the
patent claim, is somewhat narrower than the claim
of the patent. Under such circumstances, the ap-
plicant should be permitted to copy the claim of
the patent as exactly as possible, modifying it only
by substituting language based upon his own slightly
narrower disclosure for the limitation in the patent
claim which he can not make. In declaring the
interference, the exact patent claim should be used
as the count of the interference and it should be
indicated that the claim in the application corre-
sponds substantially to the interference count.

(

(

Examples of the practice outlined in the preceding
paragraph:

I. PATENT CLAIMS A RANGE OF 10 TO 90.

Application discloses a range of 20 to 80, there
being no distinction in substance between the two
ranges.

Applicant may be permitted to copy the patent
claim, modifying it by substituting his range of 20
to 80 for the range of 10 to 90 in the patent claim.

Interference should be declared with the exact
patent claim as the count and it should be indi-
cated that the claim in the application corresponds
substantially to the interference count.

II. PATENT CLAIMS A MARKUSH GROUP OF 6 MEMBERS.

Application discloses a Markush group of 5 of the
same 6 members, there being no distinction in sub-
stance between the two groups.

Applicant may be permitted to copy the patent
claim, modifying it by substituting his 5-member
group for the 6-member group in the patent claim.

Interference should be declared with the exact
patent claim as the count and it should be indi-
cated that the claim in the application corresponds
substantially to the interference count.

B. In come cases, the disclosure in the applica-
tion, although for the same invention in fact as the
patent claim, is somewhat broader than the claim
of the patent. Under such circumstances, in ini-
tially declaring the interference the applicant
should be required to make the exact patent claim
and the interference should be declared on that
claim. However, if the applicant presents and
prosecutes a motion to substitute a broader count
and, in connection with such a motion, makes a sat-
isfactory showing, as by demonstrating that his best
evidence lies outside the exact limit of the patent
claim, the applicant may be permitted to substitute
a count wherein language based upon his slightly
broader disclosure replaces the corresponding limi-
tation in the patent claim. In redeclaring the in-
terference, the application claim should be used as
the count of the interference and it should be indi-
cated that the claim in the patent corresponds sub-
stantially to the interference count.

Examples of the practice outlined in the preced-
ing paragraph:

I. PATENT CLAIMS A RANGE OF 20 TO 80.

Application discloses a range of 10 to 90, there
being no distinction in substance between the two
ranges.

Applicant should be required initially to copy the
exact patent claim.

Interference should be declared initially with the
exact patent claim as the count.

If, in connection with a motion to substitute, the

applicant makes a satisfactory showing of the
necessity for including the ranges of 10 to 20 and
80 to 90 in the interference count, he may be per-
mitted to present the patent claim modified by sub-
stituting his range of 10 to 90 for the range of 20 to
80 in the patent claim.

Interference should be redeclared with the appli-
cation claim as the count and it should be indi-
cated that the claim in the patent corresponds
substantially to the interference count.

II. PATENT CLAIMS A MARKUSH GROUP OF 5 MEMBERS.

Application discloses a Markush group of 6 mem-
bers, including the 5 claimed in the patent, there
being no distinction in substance between the two
groups.

Applicant should be required initially to copy the
exact patent claim.

Interference should be declared initially with the
exact patent claim as the count.

If, in connection with a motion to substitute, the
applicant makes a satisfactory showing of the nec-
essity for including the sixth member in the inter-
ference count, he may be permitted to present the
patent claim modified by substituting his 6-mem-
ber group for the 5-member group in the patent
claim.

Interference should be redeclared with the appli-
cation claim as the count and it should be indi-
cated that the claim in the patent corresponds sub-
stantially to the interference count.

C. Some cases may include aspects of both A
and B, above. Such cases should be appropriately
treated by the same general principles outlined
above.

Examples of cases involving mixed aspects:

I. PATENT CLAIMS A RANGE OF 10 TO 80.

Application discloses a range of 20 to 90, there
being no distinction in substance between the two
ranges.

(a) Initially, applicant may be permitted to copy
the patent claim, modifying it by substituting the
range of 20 to 80 for the range of 10 to 80 in the
patent claim.

Interference should be initially declared with the
exact patent claim as the count and it should be
indicated that the claim in the application cor-
responds substantially to the interference count,

(b) If, in connection with a motion to substitute,
the applicant makes a satisfactory showing of the
necessity for including the range of 80 to 90 in the
interference count, he may be permitted to present
the patent claim modified by submitting his range
of 20 to 90 for the range of 10 to 80 in the patent
claim.

Interference should be redeclared with a count
covering the range of 10 to 90 and it should be in-

dicated that both the claim in the patent and the
claim in the application correspond substantially to
the interference count.

II. PATENT CLAIMS A MARKUSH GROUP OF 6 MEMBERS.

Application discloses a Markush group of 5 of the
same 6 members, plus another member not claimed
in the patent, there being no distinction in substance
between the two groups.

(a) Initially, applicant may be permitted to copy
the patent claim, modifying it by substituting the
5 members of the patent claim which he discloses
for the 6-member group in the patent claim.

Interference should be declared initially with the
exact patent claim as the count and it should be
indicated that the claim in the application corre-
sponds substantially to the interference count.

(b) If, in connection with a motion to substitute,
the applicant makes a satisfactory showing of the
necessity for including his additional member of the
group, he may be permitted to present the patent
claim modified by substituting the 6-member group
which he discloses for the 6-member group in the
patent claim.

Interference should be redeclared with a count
including in a Markush group all 7 members claimed
in the patent and disclosed in the application and it
should be indicated that both the claim in the patent
and the claim in the application correspond sub-
stantially to the interference count.

The practice outlined above should be restricted
to situations where the inventions claimed in the
patent and disclosed in the application are clearly
the same, so that there is truly an interference in
fact.

Until further notice, interferences declared or re-
declared in accordance with this practice should be
submitted to the Supervisory Examiners.

All prior decisions, orders, and notices are hereby
overruled to the extent that they may be inconsist-
ent with the said practice. (Notice of April 5, 1954.)

Rule 205. Interference with a patent; copying claims
from patent. (a) Before an interference will be de-
clared with a patent, the applicant must present in his
application copies of all the claims of the patent which
also define his invention and such claims must be
patentable in the application. If claims cannot be
properly presented in his application owing to the
inclusion of an immaterial limitation or variation, an
interference may be declared after copying the claims
excluding such immaterial limitation or variation.

(b) Where an applicant presents a claim copied
or substantially copied from a patent, he must, at the
time he presents the claim, identify the patent, give
the number of the patented claim, and specifically
apply the terms of the copied claim to his own dis-
closure, unless the claim is copied in response to a
suggestion by the Office. The examiner will call to the
Commissioner's attention any instance of the filing of
an application or the presentation of an amendment
copying or substantially copying claims from a patent
without calling attention to that fact and identifying
the patent.

Rule 206. Interference with a patent ; claims improp-
erly copied. (a) Where claims are copied from a
patent and the examiner is of the opinion that the
applicant can make only some of the claims so copied,

he shall notify the applicant to that effect, state why
he is of the opinion the applicant cannot make the
other claims and state further that the interference
will be promptly declared. The applicant may pro-
ceed under rule 233, if he desires to further contest
his right to make the claims not included in the
declaration of the interference.

(b) Where the examiner is of the opinion that none
of the claims can be made, he shall state in his ac-
tion why the applicant cannot make the claims and
set a time limit, not less than 30 days, for reply. If,
after response by the applicant, the rejection is made
final, a similar time limit shall be set for appeal.
Failure to respond or appeal, as the case may be,
within the time fixed will in the absence of a satis-
factory showing, be deemed a disclaimer of the inven-
tion claimed.

For rejection of copied patent claims see
1101.02 (f).

When an interference with a patent is pro-
posed it should be ascertained before any steps
are taken whether there is common ownership.
A title report must be placed in the patented file
when the papers for an interference between an
application and a patent are forwarded. To
this end the Examiner, before initiating an in-
terference involving a patent, should refer the
patented file to the Assignment Branch for nota-
tion as to ownership.

PATENT IN DIFFERENT DIVISION

Where claims are copied from a patent classi-
fied in another division, the propriety of declar-
ing the interference (if any) is decided by and
the interference is declared by the division
where the copied claims would be classified. In
such a case, it may be necessary to transfer the
application, including the drawings, tempo-
rarily to the division which will declare the
interference. A print of the drawings should
be made and filed in the division originally hav-
ing jurisdiction of the application in place of
the original drawings.

## 1101.02 (a) Copying Claims From a Patent

A large proportion of interferences with a
patent arise through the initiative of an appli-
cant in copying claims of a patent which has
come to his attention through citation in an
Office action or otherwise.

However, in some instances the Examiner ob-
serves that certain claims of a patent can be
made in a pending application and, if the patent
is not a statutory bar, he must take steps to avoid
the issuance of a second patent claiming the

same invention without an interference. The
practice set forth hereinbelow applies when an
issued patent and a pending application are not
commonly assigned. If there is a common as-
signment, a rejection as outlined in 305 should
be made if an attempt is made to claim in the
pending application the same invention as is
claimed in the patent.

A patent claiming the same invention as that
being claimed in an application can be overcome
only through interference proceedings. Where
the effective filing date of the application is
prior to that of the patented application, no
oath is required. Otherwise the applicant must
submit an affidavit that he made the invention
prior to the filing date of the patent, even
though there was copendency between the two
applications. It is within the discretion of the
Examiner to require the same showing of facts
in an affidavit under Rule 204 as is required in
an affidavit under Rule 131. This discretion
should be governed by the circumstances of the
case, such as the difference in filing dates, com-
plexity of the invention, etc.

If the filing date of the patent precedes the
filing date of the application and the patent is
not a statutory bar against the application, the
claims of the application should be rejected on
the patent. If it appears that the applicant
is claiming the same invention as is claimed in
the patent and that the applicant is able to
make one or more claims of the patent, a state-
ment should be included in the rejection that
the patent cannot be overcome by an affidavit
under Rule 131 but only through interference
proceedings. Note, however, 35 U. S. C. 135,
2d par. If the applicant controverts this
statement and presents an affidavit under Rule
131, the case should be considered special, one
claim of the patent which the applicant clearly
can make should be selected, and an action
should be made refusing to accept the affida-
vit under Rule 131 and requiring the applicant
to make the selected claim as well as any other
claims of the patent which he believes find sup-
port in his application. If necessary, the appli-
cant should be required to file the affidavit and
showing required by Rule 204. A shortened
period for response should be set under Rule 203.
In any case where an applicant attempts to
overcome a patent by means of affidavit under
Rule 131, even though the examiner has not
made a rejection on the ground that the same
invention is claimed in the patent, the claims
of the patent should be examined and, if appli-

cant is claiming the same invention as is claimed
in the patent and can make one or more of claims
of the patent, the affidavit under Rule 131 should
be refused, and an action such as outlined in the
preceding part of this paragraph should be
made. If necessary, the requirements of Rule
204 should be specified and a shortened period
for response should be set under Rule 203.

1101.02 (b) Copying Claims From a
Patent, Examiner Cites
Patent Having Filing
Date Later Than That of
Application

If the patent discloses the same subject
matter as disclosed in an application but the
filing date of the patent is later than the fil-
ing date of the application, the patent should be
cited to the applicant. If the invention claimed
by the applicant is different from that claimed
in the patent so that a distinct patent could be
granted to the applicant without interference
proceedings, nothing further need be done at
this time, leaving it to the applicant to deter-
mine whether he wishes to and can copy the
claims of the patent. If the invention claimed
by the applicant is the same as that claimed in
the patent so that a second patent could not be
granted without interference proceedings, one
claim of the patent which the applicant clearly
can make should be selected and the applicant
should be required to make the selected claim as
well as any other claims of the patent which he
believes find support in his application. No
affidavit under Rule 204 is required but a short-
ened period for response should be set under
Rule 203.

1101.02 (c)
Copying Claims From a
Patent, Difference Be-
tween Copying Patent
Claims and Suggesting
Claims of an Application

The practice of an applicant copying claims
from a patent differs from the practice of sug-
gesting claims for a prospective interference in-
volving only applications in the following re-
spects :

(1) No correspondence under Rule 202 is
conducted with a junior applicant who is to be-
come involved in an interference with a patent
but, instead, an affidavit under Rule 204 is re-
quired.

(2) When a question of possible interference
with a patent arises, the patent should be cited,

whereas no information concerning the source
of the claim should be revealed when a claim is
suggested for a prospective interference involv-
ing only applications.

(3) All claims of a patent which an appli-
cant can make should be copied, whereas only
patentably distinct claims are suggested for an
interference involving only applications.

(4) Claims copied by an applicant from a
patent may differ from the patent claims by the
exclusion of an immaterial limitation or vari-
ation which the applicant cannot make, whereas
claims suggested for an interference between
applications must be identical in all cases.

1101.02 (d) Copying Claims From a
Patent, Copied Patent
Claims Not Identified

If an attorney or agent presents a claim
copied or substantially copied from a patent
without indicating its origin he may be deemed
to be seeking, obviously improperly, to obtain a
claim or claims to which the applicant is not
entitled under the law without an interference,
or the Examiner may be led into making an
action different from what he would have made
had he been in possession of all the facts. Rule
205 (b) therefore requires the Examiner to "call
to the Commissioner's attention any instance of
the filing of an application or the presentation
of an amendment copying or substantially copy-
ing claims from a patent without calling atten-
tion to the fact and identifying the patent."

1101.02 (e) Copying Claims From a
Patent, Making of Patent
Claims Not a Response to
Last Office Action

The making of claims from a patent when
not required by the Office does not constitute a
response to the last Office action and does not
operate to stay the running of the statutory pe-
riod dating from the unanswered Office action.

1101.02 (f) Copying Claims From a
Patent, Rejection of
Copied Patent Claims

REJECTION NOT APPLICABLE TO PATENT

When claims from a patent are made, the
application is taken up at once and the Exam-
iner may reject such claims in the application
if the ground of rejection is not also applicable
in the case of the patent. Examples of such a
ground of rejection are insufficient disclosure
in the application, a reference whose date is

(

junior to that of the patent, or because the
claims copied from a patent are barred to appli-
cant by the second paragraph of 35 U. S. C.
135, which reads:

"A claim which is the same as, or for the same
or substantially the same subject matter as, a
claim of an issued patent may not be made in
any application unless such a claim is made
prior to one year from the date on which the
patent was granted."

It should be noted that an applicant is per-
mitted to copy a patent claim outside the year
period if he has been claiming substantially the
same subject matter within the year limit. See
Thompson v. Hamilton, 1946 C. D. 70, 585 O. G.
177; In re Frey, 1950 C. D. 362, 639 O. G. 5;
Andrews v. Wickenden, 1952 C. D. 176, 659
O. G. 305; In re Tanke et al., 102 U. S. P. Q.
83; -- C. D. - , 687 O. G. 677; Emerson v.
Beach, 103 U. S. P. Q. 45, - C. D. -- , 691
O. G. 170,

As is pointed out in Rule 206, where more
than one claim is copied from a patent, and the
Examiner holds that one or more of them are
not patentable to applicant and at least one
other is, the Examiner should at once set up the
interference on the claim or claims considered
patentable to applicant, rejecting the others,
leaving it to applicant to proceed under Rule
233 in the event that he does not acquiesce in
the Examiner's ruling as to the rejected claims.

Where all the claims copied from a patent are
rejected on a ground not applicable to the
patentee the Examiner sets a time limit for
reply, not less than thirty days, and all subse-
quent actions, including action of the Board on
appeal, are special in order that the interfer-
ence may be declared as promptly as possible.
Failure to respond or appeal, as the case may
be, within the time fixed, will, in the absence of
a satisfactory showing, be deemed a disclaimer
of the invention claimed.

While the time limit for an appeal from the
final rejection of a copied patent claim is usually
set under the provisions of Rule 206, where the
remainder of the case is ready for final action,
it may be advisable to set a shortened statutory
period for the entire case in accordance with
Rule 136. Such a letter must have the approval
of the Supervisory Examiner.

The distinction between a limited time for
reply under Rule 206 and a shortened statutory
period under Rule 136 should not be lost sight
of. The one is set by the Primary Examiner,
while the other requires the approval of the
Supervisory Examiner. The penalty result-
ing from failure to reply within the time limit

under Rule 206 is loss of the claim or claims in-
volved, on the doctrine of disclaimer, and this is
appealable; while failure to respond within the
set statutory period (Rule 136) results in
abandonment of the entire application. That
is not appealable. Further, a belated response
after the time limit set in accordance with Rule
206 may be entered by the Examiner, if the de-
lay is satisfactorily explained (except that the
approval of the Commissioner is required where
the situation described in the next paragraph
below exists) ; but one day late under Rule 136
period, no matter what the excuse, results in
abandonment. However, if asked for in ad-
vance, one extension of either period may be
granted by the Examiner, provided that exten-
sion does not go beyond the six months' period.

Where a patent claim is suggested to an applicant
by the Examiner for the purpose of establishing an
interference and is not copied within the time limit
set or a reasonable extension thereof, an amendment
presenting it thereafter will not be entered without
the approval of the Commissioner. (Notice of Sep-
tember 27, 1933, Revised.)

The rejection of copied patent claims sometimes
creates a situation where two different periods for
response are running against the application-one,
the statutory period dating from the last full action
on the case; the other, the limited period set for the
response to the rejection (either first or final) of the
patent claims. This condition should be avoided
where possible as by setting a shortened period for
the entire case with the approval of the Supervisory
Examiner, but where unavoidable, it should be
emphasized in the Examiner's letter.

In this connection it is to be noted that a reply
to a rejection or an appeal from the final rejection
of the patent claims will not stay the running of the
regular statutory period if there be an unanswered
Office action in the case at the time of reply or appeal,
nor does such reply or appeal relieve the Examiner
from the duty of acting on the case if up for action,
when reached in its regular order.

Where an Office action is such as requires the
setting of a time limit for response to or appeal
from that action or a portion thereof, the Examiner
should note at the end of the letter the date when
the time limit period ends and also the date when
the statutory period ends. (Notice of June 29, 1938,
Revised.) See 710.04.

## REJECTION APPLICABLE TO PATENT AND APPLICATION

If the ground of rejection is applicable to
both the claims in the application and the
claims in the patent, any letter including the
rejection must have the approval of the Super-

1101.02 (g)

visory Examiner. However, if an interference
would be proper except for such ground of re-
jection, the interference nevertheless may be
declared.

The Primary Examiner should forward a memo-
randum with the declaration papers requesting the
Examiner of Patent Interferences to notify him of
the setting of the motion period and, as soon as such
notification is received, the Primary Examiner should
proceed promptly in accordance with the provisions
of Rule 237 (a) and Section 1105.05 of the Manual,
employing the form letter of Section 1112.08 of the
Manual. Promptness of action by the Examiner is
important as notification to the parties early in the
motion period will permit a hearing on the Exam-
iner's proposal to dissolve under Rules 237 (a) to be
included with hearings on motions.

If such a reference is discovered while an interfer-
ence involving a patent is before the Examiner for
his decision on motions, he should proceed under
Rule 237 (a), last sentence. If the reference is
discovered after decision on motions has been ren-
dered, the Examiner proceeds in accordance with
Rule 237 (a) and Section 1105.05 of the Manual.
The Supervisory Examiner's approval must be ob-
tained before forwarding the form letter of Sec.
1112.08 and before mailing the decision on motion.
(Notice of March 15, 1950, Revised.)

1101.02 (g)
Copying Claims From a
Patent, After Prosecution
of Application Is Closed
or Application Is Allowed

While an amendment presenting a patent
claim in an application not in issue is usually
admitted and promptly acted on whatever may
be the stage of prosecution-final rejection, ap-
peal, interference, or what-not-yet, if the case
had been closed to further prosecution before
the Primary Examiner, as, by final rejection or
allowance of all of the claims, or by appeal, such
amendment is not entered as a matter of right.
Where the prosecution of the application is
closed before the Primary Examiner and the
copied patent claims relate to an invention dis-
tinct from that claimed in the application en-
try of the amendment may be denied. (Ex
parte Shohan, 1941 C. D. 1; 522 O. G. 501.)
Admission of the amendment may very prop-
erly be denied in a closed application, if, prima
facie, the claims are not supported by appli-
cant's disclosure. An applicant may not have
recourse to asserting a patent claim which he
has no right to make as a means to reopen or

prolong the prosecution of his case. See
714.19 (4).

When an amendment is received after notice of
allowance, which includes one or more claims copied
or substantially copied from a patent and the Ex-
aminer, after consideration of the proposed amend-
ment, finds one or more of the claims patentable to
the applicant and an interference to exist, he should
prepare a letter [see Letter Form 1112.04], request-
ing that the application be withdrawn from issue
for the purpose of interference. This letter, which
should designate the claims to be involved, should
be forwarded, together with the file and the proposed
amendment, to the Supervisory Examiner.

When an amendment is received after notice of
allowance, which includes one or more claims copied
or substantially copied from a patent and the Exami-
ner finds basis for refusing the interference on any
ground he should make an oral report to the Su-
pervisory Examiner of the reasons for refusing the
requested interference. Notification to applicant is
made on Form POL-105 if the entire amendment
is refused or on Form POL-103 if a portion of the
amendment (including all the copied claims) is re-
fused. The following or equivalent language should
be employed to express the adverse recommendation
as to the entry of the copied or substantially copied
patent claims:

"Entry of claims
is not recommended
because (brief statement of basic reasons for re-
fusing interference). Therefore withdrawal of the
application from issue is not deemed necessary."
(Notices of December 9, 1943 and January 6, 1953,
Revised.)

### 1101.03 Removing of Affidavits Before Interference

Where there is of record in the fille an affidavit
under Rule 204 making a showing of facts, the afil-
davit should be sealed in an envelope and the en-
velope properly labeled as to its contents before send-
ing the file to the Interference Division. Affidavits
under Rule 131 should be similarly treated. These
envelopes should be retained in the examining divi-
sion during the interference. (Notice of October 15.
1940, Revised.)

This same practice applies in case of affidavits
under Rule 131 and Rule 204 in earlier applica-
tions (not patents) which are to be included in
the declaration papers.

Any correspondence under Rule 202 should be
obtained from the Law Examiner, sealed, and

forwarded with the other papers to the Inter-
ference Division.

Affidavits under Rules 131 and 204, as well as an
affidavit under Rule 202, which never becomes a

paper in the application file, are available for inspec-
tion by an opposing party to an interference when
the preliminary statements are opened. Ferris v.
Tuttle, 1940 C. D. 5; 521 O. G. 523. (Notice of Oc-
tober 15, 1940, Revised.)

The now opened affidavits filed under Rules
131 and 204 may then be returned to the appli-
cation files and the affidavits filed under Rule
202 filed in the interference jacket.

# 1102 Preparation of Interference Papers and Declaration

The rules pertinent to this subject are set
forth in Rule 207 quoted below and in Rule 209
in 1102.02.

Rule 207. Preparation of interference notices and
statements. (a) When an interference is found to
exist and the applications are in condition therefor,
the primary examiner shall forward the files to the
Examiner of Interference, together with notices of
interference to be sent to all the parties (as specified
in rule 209) disclosing the name and residence of each
party and those of his attorney or agent, and of any
assignee, and, if any party be a patentee, the date and
number of the patent. The notices shall also specify
the issue of the interference, which shall be clearly and
concisely defined in only as many counts as may be
necessary to define the interfering subject matter (but
in the case of an interference with a patent all the
claims of the patent which can be made by the appli-
cant should constitute the counts), and shall indicate
the claim or claims of the respective cases correspond-
ing to the count or counts. If the application or
patent of a party included in the interference is a
division or continuation of a prior application and the
examiner has determined that it is entitled to the
filling date of such prior application, the notice to such
party shall so state.

(b) The primary examiner shall also forward a
statement for the Examiners of Interferences disclos-
ing the applications involved in interference, fully
identified, arranged in the inverse chronological order
of the filing of the completed applications, and also dis-
closing the count or counts in issue and the ordinals of
the corresponding claims, the name and residence of
any assignee, and the names and addresses of all
attorneys or agents, both principal and associate.

## 1102.01 Preparation of Papers

The procedure to be followed in setting up an
interference is set forth in Rule 207. Further
information is given in the following sections,
and in In re Redeclaration of Interferences,
Nos. 49,635; 49,636; 49,866; 1926 C. D. 75; 350
O. G. 3. The forms used by the Examiner in
setting up an interference give the details of
all letters to be written.

"In declaring or redeclaring an interference
the following should be borne in mind :

(1) That no party should be made junior as
to some counts and senior as to others, but that
two interferences should be set up making the
party with two applications junior in one inter-
ference and senior in the other.

(2) That no interference should be declared
in which each party to the interference is not
involved on every count.

(3) That where an applicant puts identical
claims in two applications by virtue of one of
which he will be the senior party and of the
other the junior the later application should be
placed directly in the interference, leaving the
applicant to gain such benefit as he may from
the senior application either by motion to shift
the burden of proof or by introducing the senior
into the interference as evidence." (In re Re-
declaration of Interferences Nos. 49,635 ; 49,636;
49,866; 1926 C. D. 75; 350 O. G. 3.)

Briefly, in preparing cases for interference,
Forms PO-221, POL-76, and PO-222 should be
filled out.

Any correspondence under Rule 202 should
be obtained from the Law Examiner, sealed, and
forwarded with the other papers. Affidavits
under Rule 131 and those affidavits under Rule
204 which reveal facts of the nature of those
included in an affidavit under Rule 131 should
be removed from application (not patent) files,
sealed, and retained in the examining division
until called for or until the interference is ter-
minated. See 1101.03. This same practice ob-
tains in the case of affidavits of this nature in
earlier applications which have been referred
to in the declaration papers. And, if a patent
is involved in the interference, a recent title
report on the patent should be forwarded with
the other papers.

To make the practice in declaring interfer-
ences uniform the procedure to be followed is
set forth below :

1102.01 (a) Letter to Examiner of
Interferences

The letter to the Examiner of Interferences is
written upon the blank (Form PO-221) for that
purpose. See 1112.05 (a). This letter should con-
tain, first the information as to the parties required
by the rules, the parties being arranged in inverse
chronological order of filing of the applications di-
rectly involved in the interference, second, the counts
of the interference, and third, a table showing the
relationship of the counts with the respective claims
made by the parties. For example, in an interfer-
ence involving X, Y, and Z, in which Z is the senior
party and Y junior to both X and Z:

The relation of the counts of the interference to
the claims of the respective parties is as follows:

Counts:

(Extract from Order 1514, Revised.)

Reference is made to a divisional or continuation
application only if the Primary Examiner considers
that the earlier application clearly supports all the
counts. If there is any doubt upon this question, no
reference should be made to an eariler application,
the matter being left for determination upon motion
to shift the burden of proof. (Notice of April 22,
1922, Revised.)

If the case in interference is a division or con-
tinuation of an earlier application, the parent
application should be completely identified by
application number and filing date and includ-
ing a patent number and date if it has matured
into a patent. Also, if the parent application
is, in turn, a division or continuation of a still
earlier application, the earlier application
should also be completely identified and its rela-
tionship stated. This procedure should be fol-
lowed to the point where the earliest effective
U. S. filing date of each party with respect to
all the counts in issue has been given. Ignore
any earlier application of which the case in
interference is a continuation-in-part.

The letter to the Examiner of Interferences
should not include any reference to foreign fil-
ing dates, even though the Examiner may have
acted favorably on a request under Sec. 1 of
Public Law 690. (See 1111.10.)

If a reissue application or patent is involved
in an interference, complete information con-
cerning it should be given on Form PO-221,
including reissue patent number and date, re-
issue application number and filing date, orig-
inal patent number and date, and original
application number and filing date.

In preparing the papers for an interference which
involves a patent, the numeral of the patent claim
should be used rather than the original numeral of
that claim when the patent was a pending applica-
tion. The interference is between the application
which has copied the patent claim and the patent-
not the patented application (Rule 201); and the
Interference papers should be prepared accordingly.
Observance of this practice is important, since if the
patentee loses the interference, this fact specifying
the patent claims involved as obtained from the in-
terference papers is published in the Official Gazette
and endorsed on copies of the patent.

(Notice of November 1, 1943, Revised.)

In an interference involving a patent, if the
Primary Examiner discovers a reference which,
in his opinion, renders a count obviously un-
patentable, a memorandum should be forwarded
to the Examiner of Interferences as set forth
in 1101.02 (f).

If the interference counts are modified claims
of a patent, the word "modified" or "substan-
tially" should appear in parentheses after the
corresponding claim numbers of the patent in
the table of claims. If an application was
merely in issue and did not become a patent, the
original claim numbers of the application, prior
to revision for issue, should be used.

The letter to the Examiner of Interferences
(Form PO-221) must include copies of the
counts. A certificate of correction in a patent
should not be overlooked. For the best prac-
tice in interference between applications, de-
pendent counts should be avoided and each
count should be independent. This avoids con-
fusion in language and disputes as to the mean-
ing of the counts. When dependent counts can-
not be avoided, as in the case of an inter-
ference with a patent and one of the counts is a
dependent claim, the count may likewise be
stated as dependent on the count correspond-
ing to the claim on which the dependent claim
is founded. In the rare instance where a de-
pendent claim is the sole count of an interfer-
ence and the basic claim is not included, the
count should be copied as a dependent claim and
immediately thereunder, in brackets, the basic
claim should be copied.

If an interference is declared as the result of
a decision on motions under Rules 233 and 234
in a prior interference, a statement should be
added to Form PO-221 to the following effect :
"This interference is declared as the result of
the Primary Examiner's decision on motions in
Interference No.
"

This insures against the setting of a new mo-
tion period in the newly declared interference.
(See Rule 233 (e), last sentence.)

The counts should be checked against the original
claims and the words "counts compared" placed
at the end of the letter to the Examiner of Interfer-
ences as evidence that the copies of the counts had
been compared with the original claims. (Order
1537, Revised.)

If parties to an interference have the same
attorney, the attention of the Examiner of In-
terferences should be called to this as set forth
in 1102.01 (b).

## 1102.01 (b) Letters to Parties

The letters to the different parties are written
upon the blanks for that purpose. See Letter Form
at 1112.05 (c). After the printed matter upon said
blank, there shall appear first, the ordinals of the
claims of the application corresponding to the counts
of the interference, second, the information pertain-
ing to the other parties, as required by the rules,

(

arranged strictly in accordance with alphabetical
order, and third, the counts and claims of the parties
tabulated strictly in accordance with alphabetical
order. For example, after the identification of the
counts, the letter to X would read:

(a) The interference involves your application
above identified, and

(b) An application filed by Y, of 282 Broadway,
New York, whose attorney is
of
and whose assignee is
of

(c) An application (patent) filed by Z, of 1205
Chestnut Street, Philadelphia, Pennsylvania, whose
attorney is
of
and whose
assignee is
of

(d) The relation of the counts of the interference
to the claims of the respective parties is as follows:

Counts:

(Extract from Order 1514, Revised.)

Special precautions to be observed in filling
out the interference notice to the parties (Form
POL-76) will now be discussed.

First and foremost, the letters to the parties
must never include the serial numbers or filing
dates of opposing applications or reveal the
relative order of filing of the respective applica-
tions. If the interference involves a patent, the
letter to any opposing party includes complete
information concerning the patent, since this
is public information which is available to any-
one and the applicant knows the patent from
which he copied claims. No statement as to
parent applications of the patent should be
made.

In filling out Form POL-76 the blanks to the
right of the address box should be completely
filled out.

If an application or patent of a party is a
division or continuation of a prior application
and the Examiner has determined that the
party is entitled to the filing date of the prior
application, the Examiner should, in addition
to including that information on Form PO-221,
inform the party of that fact in the letter which
is sent to him, as by including a notation to the
following effect :

"Your application (or patent), above identi-
fied, is a division (or continuation) of Serial
No.
filed
(see Rule 207 (a) )."
Ignore any earlier application of which the
case in interference is a continuation-in-part.

Notation of the persons to whom Form POL-
76 is mailed should be made on all copies.

The interference number and date for filing the
preliminary statement must be left blank.

The counts of the interference are ordinarily not
copied in the letters to the parties unless a particular
party's case does not include an exact copy of the
interference counts. Thus, if the interference count
is a modified claim of a patent the letter to the
patentee must include a copy of the count. (Notice
of January 2, 1947, Revised.) Similarly, if the inter-
ference count is a dependent claim of a patent re-
written as an independent claim, the rewritten claim
should be copied in the letter to the patentee. Also,
if the entry of a particular amendment in a party's
case is in doubt, the interference notice to that party
should indicate whether the count is in the form as
amended or prior to the amendment or the exact
count may be copied in that party's letter.

The attention of the Examiners is called to the
decisions in Votey v. Wuest v. Doman, 1904 C. D.
323; 111 O. G. 1627 and Earl v. Love, 1909 C. D. 56;
140 O. G. 1209 in which it is held that when an inter-
ference is declared involving a patentee and the
Examiner is of the opinion that the application or
applications contain claims not patentably different
from the issue of the interference, he should append
to the letter to the applicant a statement that such
claims, specifying them by number, will be held sub-
ject to the decision in the interference. The reason
for making such statement applies equally well to an
interference involving only applications.

The practice announced in these decisions should
be followed. Such a statement gives the parties
notice as to what claims the Examiner considers un-
patentable over the issue, it avoids the liability of
granting claims to the losing party which are not
patentable over the issue, but which are not included
therein, and will probably lessen the motions under
Rule 233. (Notice of May 11, 1917, Revised.)

When parties to an interference have the same
attorney this fact should be stated at the bottom
of each interference notice. In the case of con-
flicting applications it is a repetition of infor-
mation given at the time of suggesting claims;
but where the interference is between a patent
and an application, such information has not
heretofore been given. This matter should also
be called to the attention of the Examiner of
Interferences, in accordance with the following
notice :

In carrying out the provisions of Rule 208, Exam-
iners, when forwarding interference notices and
statements to the Examiners of Interferences, will
call their attention to cases in which two of the
parties are represented by the same attorney, in
lieu of calling the matter directly to the attention
of the Commissioner. The Examiner of Interfer-
ences when mailing out the notices to the parties

1102.01 (c)

and their attorney will advise the parties and the
attorney that the attorney will not be recognized
further as representing either party in the inter-
ference or in the interfering cases unless he shows
that he is entitled to continue to represent either
or both parties as provided by Rule 208. The Exam-
iner of Interferences will also call to the attention
of the parties and the attorney the requirement of
the second sentence of Rule 201 (c). (Notice of
April 14, 1949.)

In no case should a letter with the exception of
the letter to the Examiner of Interferences be dated.
All letters except that to the Examiner of Interfer-
ences should contain the words "Forwarded to the
Examiner of Interferences from Div.

(date)
" at the upper left-hand corner,
and it should be stated on all copies that a copy has
been sent to the patentee and, if the patent has been
assigned, to the assignee.

All the letters, both those for the files and those
to be mailed are forwarded as required by the rules,
the originals separate from the files, and the carbon
copies to be mailed preferably attached to their
respective envelopes, but, in no case to be folded or
placed within the envelopes. (Extract from Order
1514, Revised.)

## 1102.01 (c) The Interference Brief Card

Interference brief cards Form No. PO-222
are placed in the files of the respective parties.
The names only of the other interfering parties
arranged strictly in alphabetical order shall be
inserted after "Interference with." The patent
number, if any, should be inserted after its cor-
responding serial number.

## 1102.02 Declaration of Interference

Rule 209. Declaration of interference; mailing of
notices. (a) When the notices of interference are in
proper form, an examiner of interferences shall assign
a number to the interference and add to the notices a
designation of the time within which the preliminary
statements required by rule 215 must be filed, and shall,
pro forma, institute and declare the interference by
forwarding the notices to the several parties to the pro-
ceeding.

(b) The notices of interference shall be forwarded
by the Examiner of Interferences to all the parties, in
care of their attorneys or agents; a copy of the notices
will also be sent to the patentees in person and, if
the patent in interference has been assigned, to the
assignees.

(c) When the notices sent in the interest of a
patent are returned to the Office undelivered, or when
one of the parties resides abroad and his agent in the
United States is unknown, additional notice may be

given by publication in the Official Gazette for such
period of time as the Commissioner may direct.

The papers necessary in declaring an inter-
ference having been prepared (see. 1102 to
1102.01 (c) ) in the examining division are sent
to the Interference Division, the Examiner
filing in his own division a copy of the letter to
the Examiner of Interferences.

In the Interference Division the interference
is given a number and the files and letters are
inspected to ascertain whether the issues be-
tween the parties have been clearly defined, and
whether they are otherwise correct. If the
notices are ambiguous or are defective in any
material point, the objections are transmitted to
the Primary Examiner, who shall promptly
notify the Examiner of Interferences of his de-
cision to amend or not to amend them. In case
of a material disagreement between the Ex-
aminer of Interferences and the primary ex-
aminer, the points of difference shall be referred
to the Commissioner for decision.

When all the papers are correct, the Exam-
iner of Interferences, under the provisions of
Rule 209, adds to the notices a designation of
the time within which the preliminary state-
ments required by Rule 215 must be filed and
pro forma institutes and declares the interfer-
ence by mailing the notices to the several par-
ties to the proceeding. After the notices are
mailed, the application and interference files
are sent to the Docket Branch, where the files
and interference letters are put in an envelope
or box with full data of the interference placed
on said envelope or box. These data are also
recorded in a card index. The date set for
filing the preliminary statements is noted on
the interference envelope or box and in the
interference register.

If an application that has been made special
by the Commissioner becomes involved in an
interference, the interference will be made
special, provided the prosecution of such appli-
cation has been diligent on the part of the
applicant. See 708.01.

## 1103 Suspension of Ex Parte Prosecu- tion

Rule 212. Suspension of ex parte prosecution. On
declaration of the interference, ex parte prosecution
of an application is suspended, and amendments and
other papers received during the pendency of the in-
terference will not be entered or considered without
the consent of the Commissioner, except as provided
by these rules. Proposed amendments directed toward
the declaration of an interference with another party
will be considered to the extent necessary. Ex parte

(

1105

prosecution as to specified matters may be continued
concurrently with the interference, on order from or
with the consent of the Commissioner.

The treatment of amendments filed during an.
interference is considered in detail in sections
1108 and 1111.05.

For treatment of other applications by the
same inventor or assignee having overlapping
claims with the application being put into inter-
ference see 709.01 and 1111.03.

## 1104 Jurisdiction of Interference

Rule 211. Jurisdiction of interference. Upon the
institution and declaration of the interference, as pro-
vided in rule 209, the Examiners of Interferences will
take jurisdiction of the same, which will then become
a contested case.

The primary examiner will retain jurisdiction of
the case until the declaration of interference is made.
See rule 237 (b).

The declaration of interference is made when
the Examiner of Interferences mails the letters
forwarded to him by the Primary Examiner.
The interference is thus technically pending
before the Examiner of Interferences from the
date on which the letters are mailed. However,
the files of the various applicants are not opened
to the inspection of their opponents until the
time for filing preliminary statements has ex-
pired and the statements are approved, or an
order to show cause is issued.

During the period from the mailing of the
notices until the receipt and approval of the
preliminary statements and the ensuing opening
up of the files to the opposing parties, the inter-
ference may be withdrawn at the discretion of
the Primary Examiner if he discovers facts that
existed at the time the notices were mailed that
would have forestalled declaration of the inter-
ference, such as a reference for the interference
claims applicable to one or to both parties (Rule
237 (b) ).

When withdrawing an interference prior to
the opening up of the files to the opposing par-
ties the Examiner writes a letter to the Exam-
iner of Interferences requesting the withdrawal
of the interference, whereupon the Examiner
of Interferences advises the parties that the
interference has been withdrawn and returns
the files to the Primary Examiner. The
Primary Examiner then acts upon the applica-
tions as though no interference had been
declared. For form see 1112.07.

Throughout the interference, the interfer-
ence papers and application files involved
are in the keeping of the Docket Branch except
at such times as hearings on motions, final hear-

ings, appeals, etc., when they are temporarily
in possession of the tribunal before whom the
particular question is pending.

If, independent of that interference, action as
to one or more of the applications becomes
necessary, the Examiner requests jurisdiction of
the necessary file or files from the Commissioner
but first forwards the letter (or letters) to the
Supervisory Examiner for approval. See
1111.05 and Form at 1112.06 (a).

If, after the interference has passed the pro-
forma stage, action by the Primary Examiner
becomes necessary relative to the entire inter-
ferences, he requests jurisdiction of the inter-
ference from the Examiner of Interferences,
forwarding the request through the Docket
Branch. See form at 1112.06 (b).

The Examiner never asks jurisdiction of a
patent file, but merely borrows it if needed, as,
where the patent is to be involved in a new
interference.

### 1105 Matters Requiring Decision by Primary Examiner During Inter- ference

An interference may be enlarged or dimin-
ished both as to counts and applications in-
volved, or may be entirely dissolved, by actions
taken under Rule 232 "Motions to dissolve",
Rule 233 "Motions to amend", Rule 234 "Mo-
tions to include another application" and Rule
237 "Dissolution on motion of examiner". The
burden of proof may be shifted by action taken
under Rule 235 "Motions relating to burden of
proof". Decisions on questions arising under
these rules are made under the personal super-
vision of the Primary Examiner or the Exam-
iner in charge of the division.

Examiners should not consider es parte,
when raised by an applicant, questions which
are pending before the Office in inter partes pro-
ceedings involving the same applicant or party
in interest. See 1111.01.

If a motion under Rules 232 through 235 is
filed, it is examined by the Examiner of Inter-
ferences who, if he finds it to be proper in form,
will set it for hearing before the Primary
Examiner.

A copy of the Interference Examiner's letter
to the parties setting the motion for hearing is
sent to the examining division wherein the
interference originated. The Examiner in
charge, Clerk, Typist, or other responsible per-
son in the division is requested to sign a receipt
for this notice of hearing. It then becomes the
responsibility of the Primary Examiner and

the Clerk of the division to see that the hear-
ing date is not overlooked, since no other notice
is given before the hearing. Prior to the time
of the hearing the complete file of the inter-
ference should be obtained from the Docket
Branch and the Primary Examiner or the Ex-
aminer in charge of the division and the assist-
ant in charge of the case must be present for
the hearing at the set time and place. If their
attendance at the indicated time is not feasible
the matter should be brought to the attention of
the Examiner of Interferences (this may be
done orally) at the earliest possible time so
that, if a change in the hearing date is neces-
sary, the parties may be given adequate advance
notice.

It is advisable to examine the motions which
will be heard at least several days prior to the
hearing in order to review the subject matter of
the interference and to become familiar with the
motions which are to be heard.

Occasionally the entire subject matter of the
interference has been transferred to another di-
vision between the time of declaring the inter-
ference and the time of hearing the motion. If
this has occurred, after the second division has
agreed to take the case, the Docket Branch and
Interference Division should be notified so that
appropriate changes may be made on their rec-
ords. Also, the notice of the motion hearing
should be returned to the Examiner of Interfer-
ences so that it may be forwarded to the new
division and the receipt therefor signed.

A further reason for examining the motions
prior to the hearing is that it may be desirable
to utilize Patentability Report procedure in de-
ciding the motions. If this is the case, the con-
currence of the reporting division in the pro-
cedure should be secured as soon as possible so
that it may be determined whether it is advis-
able to have the Examiner in charge of the re-
porting division and his assistant attend the
hearing.

## 1105.01 Briefs and Hearings on Motion

Rule 236. Hearing and determination of motions.
(a) The motions specified must contain a full state-
ment of the grounds therefor, and any briefs or memo-
randa in support thereof or in opposition thereto shall,
except as hereinafter provided, be filled in the Patent
Office not less than ten days prior to the date of hear-
ing and, if not so filed, consideration thereof may be
refused.

: (b) If, in the opinion of an examiner of interfer-
ences, such motions, and motions of a similar char-
acter, be in proper form, they will be set for hearing

before the primary examiner, due notice of the day
of hearing being given by the Office to all parties. Ap-
pearance at the hearing is not required; any party
may waive oral hearing and, in lieu of appearance
at the hearing, file a reply brief no later than three
days following the date of the hearing in addition
to his principal brief referred to in paragraph (a).
If, in the opinion of the examiner of interferences,
the motion be not in proper form or if it be not
brought within the time specified and no satisfac-
tory reason given for the delay, it will not be con-
sidered and the parties will be so notified. Consider-
ation of matters raised by motion which can be con-
sidered at final hearing may, as directed by the Com-
missioner, be deferred to final hearing.

(c) Setting a motion brought under the provisions
of rules 231 to 235 for hearing will act as a stay of
proceedings pending the determination of the motion.

(d) In the determination of a motion to dissolve
an interference between an application and a patent,
the prior art of record in the patent file may be
referred to for the purpose of construing the issue.

Concerning briefs on motions, Rule 236 (a)
requires that any briefs in support of or in op-
position to a motion shall "be filed in the Patent
Office not less than ten days prior to the date
of hearing". If a party opposes the addition of
counts under Rules 233 and 234 "in view of
prior patents or publications, full notice of such
patents or publications, applying them to the
proposed counts, must be given to all parties
at least twenty days prior to the date of hear-
ing" (Rule 233 (c) ). Under Rule 236 (b) "any
party may waive oral hearing and, in lieu of
appearance at the hearing, file a reply brief
no later than three days following the date
of the hearing provided he has filed the princi-
pal brief referred to in paragraph (a)." Ac-
cordingly, if all parties were not represented at
the hearing, the Examiner should, before decid-
ing the motions, be certain that he has received
any reply briefs which may have been filed.

Rule 244 states that in oral hearings on mo-
tions, the moving parties shall have the right
to make the opening and closing arguments. It
further states that unless otherwise ordered
before the hearing begins, oral arguments will
be limited to one-half hour for each party.
This means that each party has a total of one-
half hour to argue all the motions which are
to be heard in the interference. Although the
moving parties have the right to make the
opening and closing arguments, the total time
available for each party is only one-half hour
and that time must be so. apportioned by the
moving parties as to leave time for rebuttal
arguments, if they care to do so.

The hearing on motions is conducted in a for-
mal manner and, prior to the initial arguments,
it is well to advise the parties of the available
time and to have the order of the arguments
clearly fixed. It may be stated as a general rule
that arguments must be limited to those mo-
tions which were set for hearing by the Inter-
ference Examiner and matters relating thereto,
as, for example, a motion to strike a brief on
one of those motions. No party has a right to
be heard on a motion which was dismissed or
deferred to final. hearing by the Examiner of
Interferences, nor does any party have a right
to be heard on a matter which he should have
presented by way of a timely motion under
Rules 232 through 235 or notice under Rule
233 (c), but failed to do so.

## 1105.02 Decision on Motion To Dis- solve Under Rule 232

Rule 282. Motions to dissolve. (a) Motions to dis-
solve an interference may be brought on the ground
(1) that there has been such informality in declaring
the same as will preclude the proper determination of
the question of priority of invention, or (2) that the
claims forming the counts of the interference are not
patentable, or are not patentable to a particular appli-
cant, while being patentable to another party, or (3)
that a particular party has no right to make the claim,
or (4) that there is no interference in fact if the inter-
ference involves a design or plant patent or application,
or if the interference involves a patent, a claim of
which has been copied in modified form.

(b) When one of the parties to the interference is
a patentee, no motion to dissolve may be brought by any
party on the ground that the subject matter of a count
is unpatentable to all parties or is unpatentable to the
patentee, except that a motion to dissolve as to the
patentee may be brought which is limited to such mat-
ters as may be considered at final hearing (rule 258).

(c) Motions to dissolve on the ground that the counts
are unpatentable, or are unpatentable to the party
bringing the motion, must be accompanied by a pro-
posed amendment to the application of the moving
party canceling the claims forming the counts of the
Interference, which amendment shall be entered by the
primary examiner to the extent the motion is not
denied, after the interference is terminated.

The Primary Examiner hears and decides
motions to dissolve as to some or all of the
counts. One or more parties may thus be en-
tirely eliminated from the interference as a
result of a decision on a Rule 232 motion ; or cer-
tain of the counts may be eliminated. Where
the interference is dissolved as to one or more
of the contestants only, ex parte action as to
such cases is resumed after the time for request-

ing reconsideration has expired, while the inter-
ference as to the remaining parties continues.
The ex parte action then taken in each rejected
application should conform to the practice set
forth hereinafter under the heading "Action
After Dissolution" (1110).

It should be noted that if all the parties agree
upon the same ground for dissolution, which
ground will subsequently be the basis for rejec-
tion of the interference count to one or more
parties, the interference should be dissolved pro
forma upon that ground, without regard to the
merits of the matter. This agreement among
all parties may be expressed in the motion
papers, in the briefs, or orally at the hearing.
See Buchli v. Rasmussen, 339 O. G. 223; 1925
C. D. 75, and Tilden v, Snodgrass, 1923 C. D. 30;
309 O. G. 477.

Affidavits relating to the disclosure of a
party's application as, for example, on the mat-
ter of operativeness or right to make, should
not be considered but affidavits relating to the
prior art may be considered by analogy
to Rule 132.

If there is considerable doubt as to whether
or not a party's application discloses the subject
matter in issue or is operative and it appears
that testimony on the matter may be useful to
resolve the doubt, a motion to dissolve may be
denied so that the interference may continue
and testimony taken on the point.

Where the effective date of a patent or publi-
cation is antedated by the effective filing dates
or the allegations in the preliminary statements
of all parties, then the anticipatory effect of
that patent or publication need not be consid-
ered by the Examiner at this time, but the ref-
erence should be considered if at least one party
fails to antedate its effective date by his own
filing date or the allegations in his preliminary
statement. A party's assertion that the date
alleged in his preliminary statement antedates
the effective date of a patent or publication
should be considered authorization for the Pri-
mary Examiner to inspect his statement but it
must be promptly resealed against inspection
by any opposing party and no reference must
be made to the exact dates of invention alleged
therein beyond the mere statement that the date
of the patent or publication is antedated by the
allegations in the preliminary statement.

In deciding motions under Rule 232 the Ex-
aminer should not be misled by citation of deci-
sions of the Court of Customs and Patent
Appeals to the effect that only priority and
matters ancillary thereto will be considered and
that patentability of the counts will not be con-
sidered. These court decisions relate only to

the final determination of priority, after the
interference has passed the motion stage; in
the ordinary case a motion to dissolve may at-
tack the patentability of the count and need not
be limited to matters which are ancillary to
priority.

1105.03 Decision on Motion To
Amend or To Add or Sub-
stitute Other Application Un-
der Rules 233 and 234

Rule 233. Motions to amend. (a) Motions may be
brought to amend the interference to put in issue any
claims which should be made the basis of interference
between the moving party and any other party. When
a patent is involved, such claims must be claims of the
patent (as provided by rule 205). If the claims are not
already in the application of the moving party, the
motion must be accompanied by a proposed amend-
ment adding the claims to the application, The pre-
liminary statement for the proposed counts may be
required before the motion is considered.

(b) Such motions must, if possible, be made within
the time set, but if a motion to dissolve the interference
has been brought by another party, such motions may
be made within thirty days from the filing of the
motion to dissolve. In case of action by the primary
examiner under rule 237 (a), such motions may be
made within thirty days from the date of the primary
examiner's decision on motion wherein an action under
rule 237 (a) was incorporated or the date of the com-
munication giving notice to the parties of the proposed
dissolution of the interference.

(c) Where a party opposes the addition of such
claims in view of prior patents or publications, full
notice of such patents or publications, applying them
to the proposed counts, must be given to all parties at
least twenty days prior to the date of the hearing.

(d) The proposed claims must be indicated to be
patentable in the opinion of the moving party in each
of the applications involved in the motion and must,
unless they stand allowed, be distinguished from the
prior art of record or sufficient other reason for their
patentability given. The reason why an additional
count is necessary must be stated and when more than
one count is proposed, the motion must point out where-
in they differ materially from each other and why each
proposed count is necessary to the interference. The
proposed claims must also be applied to the disclosure
of each application involved in the motion, except as
to an application in which the claims already appear
and the claims identified as originating therein.

(e) On the granting of such motion and the adop-
tion of the claims by the other parties within a time
specified, and after the expiration of the time for filling
any new preliminary statements, the Primary Exam-
iner shall redeclare the interference or shall declare
such other interferences as may be necessary to include
said claims. A preliminary statement as to the added

claims need not be filed if a party states he intends to
rely on the original statement and such a declaration
as to added claims need not be signed or sworn to by
the inventor in person. A second motion period will
not be set and subsequent motions with respect to
such matters as could have been raised during the
motion period will not be considered.

Rule 234. Motion to include another application.
(a) Any party to an interference may bring a motion
to add (subject to the provisions of rule 201 (c) ) or
substitute any other application owned by him, as to
the existing issue; or to include any other application
or patent owned by him as to any subject matter dis-
closed in his application or patent involved in the
interference and in an opposing party's application or
patent in the interference which should be made the
basis of interference between himself and such other
party.

(b) Such motions are subject to the same condi-
tions and the procedure in connection therewith is the
same, so far as applicable, as set forth in rule 233 for
motions to amend.

Motions by the interfering parties may be
made under Rules 233 and 234 to add counts to
the interference and also to add or substitute
other applications owned by them. It should
be noted that, if the Examiner grants a mo-
tion under Rule 233 and/or Rule 234, he sets
a time for the nonmoving parties to present the
allowed proposed counts in their applications,
if necessary, and also sets a time for all parties
to file preliminary statements as to the allowed
proposed counts. An illustrative form for
these requirements is given at 1105.06. If the
claims are made by all parties within the time
limit set, the interference is reformed or a new
interference is declared by the Primary Exam-
iner.

If a motion under Rule 234 relates to an ap-
plication in issue, the application should be
withdrawn from issue only if the date set for
hearing the motion is close to or subsequent to
the ultimate date for paying the final fee. For
form see 1112.04.

The case should be withdrawn from issue even
though the Examiner may be of the opinion that
the motion will probably be denied, but this
withdrawal does not reopen the case to further
ex parte prosecution and if the motion is denied
the case is returned to issue with a new notice
of allowance.

It will be noted that Rule 234 does not specify
that a party to the interference may bring a
motion to include an application or patent
owned by him as to subject matter, in addition
to the existing issue, which is not disclosed both
in his application or patent already in the inter-
ference and in an opposing party's application

or patent in the interference. Consequently the
failure to bring such a motion will not be con-
sidered by the Examiner to result in an estoppel
against any party to an interference as to sub-
ject matter not disclosed in his case in the inter-
ference. On the other hand, if such a motion is
brought, it may be set for hearing by the Inter-
ference Examiner; if so set, it will be considered
and decided by the Primary Examiner without
regard to the question of whether the moving
party's case already in the interference discloses
the subject matter of the proposed claims.

Contrary to the practice which obtains when all
parties agree upon the same ground for dissolution
under Rule 232, the concurrence of all parties in a
motion under Rules 233 or 234 does not result in the
automatic granting of the motion. The mere agree-
ment of the parties that certain proposed counts are
patentable does not relieve the Examiner of his duty
to determine independently whether the proposed
counts are patentable and allowable in the applica-
tions involved. Even though no references have been
cited against proposed counts by the parties, it is
the Examiner's duty to cite such references as may
anticipate the proposed counts, making a search for
this purpose if necessary. However, if the decision
includes a new ground for holding a proposed count
unpatentable, the Examiner should state that recon-
sideration or rehearing may be requested within
the time specified in Rule 244 (c). (Notice of May 29,
1937, Revised.)

Also, care should be exercised in deciding mo-
tions under Rules 233 and 234 that any counts
to be added to the existing interference are pat-
entably distinct from the original counts and
from each other and that counts of additional
interferences are likewise patentably distinct
from the counts of the first interference and
from each other. This practice is not followed
when the counts are claims of a patent, since
all the patent claims which an applicant can
properly make must be included as counts of
the interference. The phrase "patentably dis-
tinct," as used herein, means sufficiently dis-
tinct to support separate patents in the event of
a split award of priority.

Affidavits are occasionally offered in support
of or in opposition to motions under Rules 233
and 234. The practice here is the same as in
the case of affidavits concerning Rule 232 mo-
tions, that is, affidavits relating to disclosure of
a party's application as, for example, on the
matter of operativeness or right to make, should
not. be considered, but affidavits relating to the
prior art may be considered by analogy to Rule
132.

If a motion under Rule 233 or 234 is denied
on the basis of a reference which is not a statu-
tory bar, the decision may be modified and the
motion granted upon the filing of proper affi-
davits under Rule 131 in the application file
of the party involved. These affidavits should
not be opened to the inspection of opposing
parties and no reference should be made to the
dates of invention set forth therein other than
the mere statement that the effective date of the
reference has been overcome. As in the case
of other affidavits under Rule 131, they remain
sealed until the preliminary statements are
opened.

# 1105.04 Decision on Motion Relating to Burden of Proof Under Rule 235

Rule 235. Motions relating to burden of proof. Any
party may bring a motion to shift the burden of proof
on the ground that he is entitled to the benefit of the
filing date of an earlier domestic or foreign applica-
tion, or on the ground that an opposing party is not
entitled to the benefit of an earlier application of which
he has been given the benefit in the declaration. (See
rule 224.)

The Primary Examiner also decides motions
relating to burden of proof under Rule 235.

In deciding a motion of this nature, it is usu-
ally advisable first to determine exactly which
counts will be involved in the final redeclaration
of the interference. The practice in deciding
the motion under Rule 235 should then follow
that set forth in the case of In re Redeclaration
of Interferences Nos. 49,635; 49,636; 49,866;
1926 C. D. 75; 350 O. G. 3.

With respect to the shifting of the burden
of proof it should be noted that the order of
taking testimony should be placed upon the ap-
plicant last to file unless all the counts of the
interference read upon an earlier application
which antedates that of the other party. A
party should not be given the benefit of an ear-
lier application if there is doubt on the matter.

For proving of foreign filing for "Normal"
Priority see 201.14, 201.15 and for the determi-
nation of rights under Public Law 690 see
201.16.

# 1105.05 Dissolution on Primary Ex- aminer's Own Motion Under Rule 237

Rule 287. Dissolution on motion of examiner. (a)
If, during the pendency of an interference, a reference
or other reason be found which, in the opinion of the
primary examiner, renders all or part of the counts

unpatentable, the attention of the examiners of inter-
ferences shall be called thereto unless the interference
is before the primary examiner for determination of a
motion. The interference may be suspended and re-
ferred to the primary examiner for his determination
of the question of patentability, in which case the
interference shall be dissolved or continued in accord-
ance with such determination. The consideration of
such reference or reason by the primary examiner
shall be inter partes as in the case of a motion to dis-
solve. If such reference or reason be found while the
interference is before the primary examiner for de-
termination of a motion, decision thereon may be in-
corporated in the decision on the motion, but the parties
shall be entitled to reconsideration or rehearing if they
have not been heard on the matter. (See rule 236)

(b) Prior to the approval of the preliminary state-
ments and notification of the parties thereof (rule
226), an interference may be withdrawn at the request
of the primary examiner, in which event the interfer-
ence shall be considered as not having been declared.

Rule 237 covers dissolution of an interference
on the Primary Examiner's own motion if he
discovers a reference or other reason which ren-
ders all or part of the counts unpatentable.
Three procedures are available under this rule:

First, prior to the approval of the prelimi-
nary statements the interference may be with-
drawn. This is accomplished by a letter from
the Primary Examiner to the Examiner of In-
terferences requesting that the interference be
withdrawn. This letter is forwarded to the
Docket Branch. The Interference Examiner
then sends a letter to the parties informing them
that the interference has been withdrawn and
that the proceeding is terminated. The
Primary Examiner then acts upon the applica-
tions as though no interference had been
declared. Form at 1112.07.

Second, if the Primary Examiner finds a refer-
ence or other reason for terminating the interfer-
ence in whole or in part while the interference is
before him for determination of a motion, decision
on this newly discovered matter "may be incorpo-
rated in the decision on the motion, but the parties
shall be entitled to reconsideration or rehearing if
they have not been heard on the matter" (Rule
237). This same practice obtains when the Primary
Examiner discovers a new reason for holding counts
proposed under Rules 233 or 234 unpatentable. Un-
der this practice, the Primary Examiner should state
that reconsideration or rehearing may be requested
within the time specified in Rule 244 (c). (Notice
of May 29, 1937, Revised.)

Third, if the Primary Examiner finds a reference
or other reason for terminating the interference in
whole or in part after the preliminary statements

have been approved but not while the interference
is before him for determination of a motion, he
should call the attention of the Examiner of Inter-
ferences to the matter. The Primary Examiner
should include in his letter to the Interference Ex-
aminer a statement applying the reference or reason
to each of the counts of the interference which he
deems unpatentable and should forward with the
original signed letter a copy thereof for each of the
parties of the interference. Form at 1112.08.
(Notice of June 14, 1938, Revised.)

The Interference Examiner may suspend the
interference and refer the case to the Primary
Examiner for his determination of the question
of patentability, which is inter partes as in the
case of a motion to dissolve under Rule 232.
Briefs may be filed as in the case of a motion
under Rule 232 and a hearing will be set. De-
cision is prepared and mailed by the Primary
Examiner as in the case of a motion to dissolve.

If, in an interference involving two or more
applications, a reference is brought to the at-
tention of the Examiner by one of the parties
to the interference, that fact should be made
of record by the Examiner in his letter to the
Examiner of Interferences under Rule 237.

If, in an interference involving an applica-
tion and a patent, the applicant calls attention
to a reference which he states anticipates the
issue of the interference, the Examiner of In-
terferences will forthwith dissolve the inter-
ference, and the Primary Examiner will there-
upon reject the claim or claims to the applicant
on his own admission of nonpatentability with-
out commenting on the pertinency of the refer-
ence. Such applicant is of course also estopped
from claiming subject matter not patentable
over the issue. A reference cited by the pat-
entee will be ignored. A reference newly dis-
covered by the Primary Examiner is treated
in accordance with 1101.02 (f), Notice of March
15, 1950.

## 1105.06 Form of Decision Letter

In order to reduce the pendency of applications
involved in interference proceedings, Primary Ex-
aminers are directed to render decisions on motions
within sixty days of the date of hearing. (Extract
from Notice of October 23, 1952.)

The decision is prepared on Form POL-78,
with carbon copies for the parties on Form
POL-78a. Sufficient carbon copies are pre-
pared so that each party or his attorney or
agent as indicated on the back of the inter-
ference file may be mailed a copy. At the right
of the address box should be typed the identifi-
cation consisting of the interference number and

)

the last names of the parties, juniormost first.
For example: Interference No. 68,561, Smith
v. Jones v. Brown.

The decision should be divided into three
parts, the heading, the body, and the summary.

The heading should commence with a concise
statement of each motion which has been set for
hearing. For example:

The party Brown moves to dissolve on
the grounds :

(1) that the counts (or counts 1 and 2)
are unpatentable to all parties over the
prior art cited;

(2) that the party Jones has no right
to make the counts;

(3) that the party Smith is estopped to
make the counts.

The party Jones moves to add proposed
counts 6, 7, and 8 to the issue.

The party Smith moves to shift the bur-
den of proof.

Next should appear, a brief description of
the invention at issue in general terms, followed
by copies of a representative count or counts and
proposed counts. The references cited in the
motions may then be listed, particularly those
relied upon by the Examiner in his decision.

In the body of the decision each motion which
has been set for hearing should be discussed in
detail. Decisions on such matters as right to
make, operativeness, estoppel, and burden of
proof should be particularly complete, since
they are often reviewed by the Board of Patent
Interferences at final hearings and by the
Court of Customs and Patent Appeals on ap-
peal, whereas decisions on matters of patentabil-
ity over prior art are not subpect to inter partes
review. Each motion which has been set for
hearing must be decided on its merits, except
that when a motion to dissolve is granted only
the one point resulting in dissolution need be
decided if detailed decision on other matters is
unduly burdensome.

The arrangement of the body of the decision
must be determined by the good judgment of
the Examiner. In general, the arguments pro
and con should be referred to briefly and dis-
posed of succinctly. The grounds for the de-
cision should be stated clearly. It is usually
advisable to make the decision on a motion re-
lating to burden of proof last, after motions
under Rules 232, 233, and 234 have been dis-
posed of, since it is easiest to determine burden
of proof after the counts finally admitted to the
interference have been decided upon.

The summary should state the action taken on
every motion set for hearing, being sure that

every count put in question and every proposed
count is mentioned, and should offer, under
penalty, the allowed proposed counts to such of
the parties as have not asserted them in their
applications, and set the time for filing prelimi-
nary statements as to any allowed proposed
counts. For example :

Brown's motions to dissolve as to counts
1 and 2 is granted on grounds 1 and 2 and
is denied on ground 3.

Jones' motion under Rule 233 is granted
as to proposed counts 6 and 7 and is denied
as to proposed count 8.

Smith's motion to shift the burden of
proof is granted and the order of the parties
is changed to: Jones v. Brown v. Smith.

Should the parties Smith and Brown de-
sire to contest priority as to proposed
counts 6 and 7, they should assert them by
amendment to their respective applications
on or before
and failure to so
assert them within the time allowed will be
taken as a disclaimer of the subject matter
thereof.

On or before
the statements
demanded by Rules 215 et seg. with respect
to proposed counts 6 and 7 must be filed in
a sealed envelope bearing the name of the
party filing it and the number and title of
the interference. See also Rule 233 (e),
second sentence.

No appeal (Rule 244 (d) ).

The time periods fixed in the decision for
copying allowed proposed counts and for filing
preliminary statements should ordinarily be
the same and a period of thirty days should
suffice in most cases. However, where mailing
time is materially longer, as to the West Coast
or foreign countries, or when an attorney and
inventor are widely separated, this time may be
increased to as much as sixty days.

Decisions under Rules 232 through 235 and
237 are signed, dated, and mailed by the Pri-
mary Examiner in the same way as ex parte
cases.

The Clerk of the division makes the entry
of the decision in the interference file on the
next vacant line of the index. The entry should
be, first, the date, followed by "Dec. of Pr. Exr."
and "Granted" if all the motions have been
granted, "Denied" if all the motions have been
denied, or "Granted and Denied" if some mo-
tions have been granted and others denied. If a
date for copying allowed proposed counts and
for filing preliminary statements has been set,
this should also be indicated at the end of the
line by "Amdt. and Statement due
92

Appropriate entries should be made on the in-
terference brief in the section entitled "De-
cisions on Motion" (Form PO-222) in each
case involved in the interference. Examples
of entries are :

Dissolved.

Dissolved as to counts 2 and 3.

Dissolved as to Smith.

Counts 4 and 5 admitted.

These entries should be verified by the Pri-
mary Examiner.

Immediately upon mailing a decision under Rules
232 through 235 and 237 the Examiner should for-
ward the complete interference file to the Inter-
ference Division, where special facilities are main-
tained to insure that the interference is promptly
called up for the next step, which may be a redec-
laration or the taking of testimony. The complete
interference file will be returned to the Examiner
for redeclaration at the proper time if such action
is necessary. (Notice of January 11, 1935, Revised.)

## 1105.07 Petition for Reconsideration of Decision

Any petition for reconsideration, rehearing,
or modification must be filed within twenty
days from the date of the decision (Rule 244
(c)) and, unless this time has been extended
(see Rule 245), any such petition filed more
than twenty days after the date of the decision
should be dismissed.

In the case of requests for reconsideration, deci-
sions thereon should be rendered within thirty days
of the filing of such requests. (Extract from Notice
of October 23, 1952.)

Action on a petition for reconsideration, re-
hearing, or modification is similar to the orig-
inal decision and is likewise signed, dated, and
mailed by the Primary Examiner. Appro-
priate entry should be made on the index of the
interference file and the complete interference
file should be forwarded immediately to the
Interference Division.

## 1106 Redeclaration of Interferences and Additional Interferences

### 1106.01 After Decision on Motion

Various procedures are necessary after de-
cision on a motion. The following general
rules may be stated :

(1) If the total result of the motion decision
consists solely in the elimination of counts, the
elimination of parties or a shifting of the bur-
den of proof, no redeclaration is necessary.

The motion decision itself constitutes the paper
deleting counts or parties and is likewise ade-
quate notice of the shifting of the burden of
proof. Where there is no motion decision or
other record in the interference, as when juris-
diction of the interference had been requested
in order to declare an interference between a
new party and the interferants as to some but
not all of the counts, it will be necessary to re-
declare the interference. For this last purpose
the forms at 1112.09 (b) and 1112.09 (c), suit-
ably modified, may be used. See 1106.02.

(2) If the motion decision results in any ad-
dition or substitution of parties or applications
or the addition or substitution of counts, then
redeclaration is necessary. If redeclaration is
necessary, the information falling within cate-
gory (1) should also be included in the redecla-
ration papers. The old counts should retain
their old numbers for ease of identification.

(3) In redeclaring an interference the letter
to the Examiner of Interferences should be
written on a long (8" x 121/2") plain sheet of
paper and should include in detail all pertinent
information and data relating to the redeclara-
tion. Added or substituted counts should be
copied. For form see 1112.09 (b).

(4) In redeclaring an interference the letters
to the parties should give all proper informa-
tion relating to the redeclaration, omitting,
however, all serial numbers of opposing appli-
cations. Parties should be arranged in alpha-
betical order. Although this precaution may
appear to be unnecessary because the parties
already have complete information concerning
the opposing cases, yet it is essential that it be
observed because a third party may properly
have access to one of the application files and
must not be given any information relative to
the other application involved in the interfer-
ence. New counts need not be copied in the
letters to the parties except under such circum-
stances as would necessitate copying the counts
in original declaration letters to the parties.
The letters to the parties should be prepared on
Form POL-90 with the same number of carbon
copies as the original declaration papers.
Properly addressed envelopes must be provided.
Forms at 1112.09 (c) and 1112.09 (d).

(5) Redeclaration papers must never be
mailed by the examining division but must
always be forwarded, along with the complete
interference file, to the Interference Division.

When the time arrives for redeclaring an
interference or declaring a new interference as
the result of a motion decision, the Interference
Examiner will forward to the Primary Ex-

(

aminer, through the Docket Branch, the com-
plete file of the interference. If the allowed
proposed counts have been copied by the parties
to whom they have been suggested in the motion
decision, the Examiner proceeds to prepare the
redeclaration papers. If one party fails,
within the time set, to make the claims which
are to be added to the interference issue, the
Examiner puts a statement to that effect in a
letter to the Examiner of Interferences.

In some instances it may be necessary to de-
clare a new interference as the result of a de-
cision on motions. In such cases a statement
should be added to the letter to the Examiner
of Interferences (Form PO-221) in the new
interference to the following effect :

"This interference is declared as the result of
a decision on motions in Interference No. ____. "

# 1106.02 By Addition of New Party by Examiner

Rule 238 states the procedure to be followed
when the Examiner finds, or there is filed, other
or new applications interfering as to some or as
to all of the counts. The procedure when any
testimony has been taken differs considerably
from the procedure when no testimony has been
taken, and this distinction must be observed.
Forms at 1112.09 (e) to 1112.09 (1).

If no testimony has been taken and the addi-
tional application interferes as to all counts, the
Examiner requests jurisdiction of the inter-
ference and if granted, adds the new party. If
the additional application interferes as to some
of the counts only, the Examiner requests juris-
diction of the interference and, on the granting
thereof, reforms the interference omitting the
counts made by the proposed new party, using
the forms at 1112.09 (b) and 1112.09 (c) suit-
ably modified, and forms another interference
including the new party, with said omitted
counts as the issue. In the latter instance the
fact that the issue was in a former interference
should be noted in all letters in the new inter-
ference. Such action should not be taken, how-
ever, if the new application is owned by the
assignee of one of the parties already in the
interference.

# 1107 Examiner's Entry in Interference File Subsequent to Interference

An interference is terminated either by dis-
solution or by an award of priority to one of
the parties. In either case the interference is
returned with the entire record to the Examiner
as soon as the decision or judgment has become
final.

After the files have been returned to the examin-
ing division the Primary Examiner is required to
make an entry on the index in the interference
file on the next vacant line that the decision has
been noted, such as by the words "Decision Noted"
and initialed by him. The interference file is re-
turned to the Docket Branch when the examiner
is through with it. The Docket Branch will see
that such note has been made and initialed before
filing away the interference record. (Order No.
1883, Revised.)

# 1108 Entry of Amendments Filed in Connection With Motions

This section is limited to the disposition of
amendments filed in connection with motions
in an application involved in interference,
after the interference has terminated.

The manner of treating other amendments
which are filed in an application during the
course of the interference, is discussed in a sepa-
rate section (1111.05).

Rule 232 (c) reads as follows :

(c) Motions to dissolve on the ground that the
counts are unpatentable, or are unpatentable to the
party bringing the motion, must be accompanied by a
proposed amendment to the application of the moving
party cancelling the claims forming the counts of the
interference, which amendment shall be entered by the
primary examiner to the extent the motion is not
denied, after the interference is terminated.

An amendment accompanying a motion un-
der Rule 232 is placed in the application file
but is not entered while the interference con-
tinues. After the interference has been ter-
minated, this amendment is entered "to the ex-
tent the motion is not denied." Any portion of
the amendment corresponding to a denied por-
tion of the Rule 232 motion is not entered and
it is so indicated by striking out the portion in
pencil.

Under Rule 233 an applicant is required to submit
with his motion as a separate paper an amendment
embodying the proposed claims if the claims are
not already in his application. This amendment is
placed in the application file whether the motion is
granted or not.

If the motion under Rule 233 is granted the amend-
ment is of course entered. If the motion is not
granted, the amendment, though left in the file, is
not entered and is so marked.

If the motion under Rule 233 is granted in part
and denied in other part, only so much of the
amendment as is covered in the grant of the motion
is entered, the remaining part being marked "not
entered" in pencil as in the treatment of an amend-

ment under Rule 232 that is only partly acceptable.
(See Rule 266.)

In each instance the applicant is informed of the
disposition of the amendment in the first action in
the case following the termination of the interfer-
ence. If the case is otherwise ready for issue the
notice of allowance is sent out concurrently with
the letter informing applicant as to the disposition
of the amendment.

As a corollary to this practice, it follows that where
prosecution of the winning application had been
closed prior to the declaration of the interference,
as by being in condition for issue, that application
may not be reopened to further prosecution follow-
ing the interference, even though additional claims
had been presented under Rule 233. The interfer-
ence proceeding was not such an Office action as
relieved the case from its condition as subject to the
doctrine of Ex parte Quayle, 1935 C. D. 11; 453 O. G.
213. (Circular of February 20, 1936, Revised.)

It should be noted at this point that, under the
provisions of Rule 262 (d), the termination of
an interference on the basis of a disclaimer, con-
cession of priority, abandonment of the inven-
tion, or abandonment of the contest filed by an
applicant operates without further action as a
direction to cancel the claims involved from the
application of the party making the same.

# 1109 Action After Award of Priority

Under 35 U. S. C. 135, the Commissioner may
at once issue a patent to the applicant who is
adjudged by the Board of Patent Interferences
to be the prior inventor, without waiting for
appeal by any loser. However, in ordinary
cases it is the policy of the Office not to issue a
patent to the winning party during the period
within which appeal may be taken to the Court
of Customs and Patent Appeals, or during the
pendency of such appeal. Therefore, the files
are not returned to the examining division until
after the termination of the appeal period, or
the termination of the appeal, as the case may
be. Jurisdiction of the Examiner is auto-
matically restored with the return of the files,
and the cases of all parties are subject to such
ex parte action as their respective conditions
may require, even though, where no appeal to
the Court of Customs and Patent Appeals, was
filed the losing party to the interference may file
a suit under 35 U. S. C. 146. The date when
the priority decision becomes final does not
mark the beginning of a statutory period for
response by the applicant. See Ex parte Peter-
son, 1941 C. D. 8, 525 O. G. 3.

# 1109.01 The Winning Party

The winning party may be sent to issue de-
spite the filing of a suit under 35 U. S. C. 146 by
his opponent.

In the case of the winning party, if his appli-
cation was not in allowable condition when the
interference was formed and has since been
amended, or if it contains an unanswered
amendment, or if the rejection standing against
the claims at the time the interference was
formed was overcome by reason of the award
of priority, as an interference involving the
application and a patent which formed the basis
of the rejection, the Examiner forthwith takes
the application up for action.

If, however, the application of the winning
party contains an unanswered Office action, the
Examiner at once notifies the applicant of this
fact and requires response to the Office action
within a shortened statutory period (40 days)
running from the date of such notice. See Ex
parte Peterson, 1941 C. D. 8; 525 O. G. 3. This
procedure is not to be construed as requiring the
reopening of the case if the Office action had
closed the prosecution before the Examiner.
(See Notice of April 14, 1941, 710.02 (b).)

The winning party, if the prosecution of his
case had not been closed, generally may be
allowed additional and broader claims to the
common patentable subject matter. (Note,
however, In re Hoover Co., Etc., 1943 C. D. 338;
553 O. G. 365.) Having won the interference,
he is not denied anything he was in possession
of prior to the interference, nor has he acquired
any additional rights as a result of the inter-
ference. His case thus stands as it was prior to
the interference. If the application was under
final rejection as to some of its claims at the
time the interference was formed, the institu-
tion of the interference acted to suspend, but not
to vacate, the final rejection. After termination
of the interference a letter is written the appli-
cant, as in the case of any other action un-
answered at the time the interference was in-
stituted, setting a shortened period (with the
approval of the Supervisory Examiner) within
which to file an appeal or cancel the finally
rejected claims.

## 1109.02 The Losing Party

The application of each of the losing parties
following an interference terminated by a judg-
ment of priority is acted on at once. The judg-
ment is examined to determine the basis therefor
and action is taken accordingly.

If the judgment is based on a disclaimer, con-
cession of priority, or abandonment of the in-

(

vention filed by the losing applicant, such dis-
claimer, concession of priority, or abandonment
of the invention operates "without further
action as a direction to cancel the claims in-
volved from the application of the party making
the same" (Rule 262 (d) ). Abandonment of
the contest has a similar result. See 1110. The
interference counts thus disclaimed, conceded,
or abandoned are accordingly cancelled from
the application of the party filing the document
which resulted in the adverse judgment.

If the judgment is based on grounds other
than those referred to in the preceding para-
graph, the claims corresponding to the interfer-
ence counts in the application of the losing party
should be treated in accordance with Rule 265,
which provides that such claims "stand finally
disposed of without further action by the ex-
aminer and are not open to further ex parte
prosecution." Accordingly, a pencil line should
be drawn through the claims as to which a
judgment of priority adverse to applicant has
been rendered, and the words."Rule 265" should
be written in the margin to indicate the reason
for the pencil line. If these claims have not
been cancelled by the applicant and the case is
otherwise ready for issue, these notations should
be replaced by a line in red ink and the words
"Rule 265" in red ink before passing the case to
issue, and the applicant notified of the cancel-
lation by an Examiner's Amendment. If an
action is necessary in the application after the
interference, the applicant should be informed
that "Claims (designated by numerals), as to
which a judgment of priority adverse to appli-
cant has been rendered, stand finally disposed
of in accordance with Rule 265."

If, as the result of one or both of the two
preceding paragraphs all the claims in the ap-
plication are eliminated, a letter should be writ-
ten informing the applicant that all the claims
in his case have been disposed of, indicating the
circumstances, that no claims remain subject
to prosecution, and that the application will be
sent to the abandoned files with the next group
of abandoned applications. Proceedings are
terminated as of the date appeal or review by
civil action was due if no appeal or civil action
was filed.

Except as noted in the next paragraph (judg-
ment based solely on ancillary matters), any
remaining claims in each defeated party's case
should be reviewed in connection with the
winning party's disclosure. Any claim in a
losing party's case not patentable over the

winning party's disclosure, either by itself or
in conjunction with art, should be rejected.
However, a losing applicant may avoid a rejec-
tion based on unclaimed disclosure of a winning
patentee. When notice is received of the filing
of a suit under 35 U. S. C. 146, further action
is withheld on the application of the party filing
the suit. No letter to that effect need be sent.

When the award of priority is based solely
upon ancillary matters, as right to make, and
is in favor of the junior party, the claims of the
senior party, even though the award of priority
was to the junior party, are not subject to rejec-
tion on the ground of estoppel, through failure
to move under Rule 233 or on the disclosure of
the junior party as prior art (Rule 257).

If the losing party's case was under rejection
at the time the interference was declared, such
rejection is ordinarily repeated (either in full
or by reference to the previous action). If it
was under final rejection or ready for issue, his
right to reopen the prosecution is restricted to
subject matter related to the issue of the inter-
ference.

Where the losing party failed to get a copy
of his opponent's drawing or specification dur-
ing the interference, he may order a copy
thereof to enable him to respond to a rejection
based on the successful party's disclosure. Such
order is referred to the Chief of the Docket
Branch who has authority to approve orders of
this nature.

Where the rejection is based on the issue of
the interference, there is no need for the appli-
cant to have a copy of the winning party's draw-
ing, for the issue can be interpreted in the light
of the applicant's own drawing as well as that
of the successful party.

It may be added that rejection on estoppel
through failure to move under Rules 233 and
234 may apply where the interference termi-
nates in a judgment of priority as well as where
it is ended by dissolution. See 1110. How-
ever, Rule 234 now limits the doctrine of estop-
pel to subject matter in the cases involved in the
interference. See 1105.03.

## 1110 Action After Dissolution

After dissolution of an interference any
amendments which accompanied motions to dis-
solve are entered to the extent that the motions
were not denied. See 1108. If the grounds for
dissolution are also applicable to the non-mov-
ing parties, e. g., unpatentability of the subject
matter of the interference, the Examiner should,

# 1111

on the return of the files to his division, reject in
each of the applications of the non-moving par-
ties the claims corresponding to the counts of
the interference on the grounds stated in the de-
cision.

Dissolution of an interference on the basis of
an abandonment of the contest operates as a
direction to cancel the involved claims from that
party's application (Rule 262 (d) ).

If all the claims in an application are elim-
inated in accordance with the practice described
in the. foregoing paragraphs, see the fourth
paragraph of 1109.02 for the action to be taken.

Such claims as are unpatentable over the
issue of the interference are rejected on that
ground.

If following the dissolution of the inter-
ference any junior party files claims that might
have been included in the issue of the inter-
ference such claims should be rejected on the
ground of estoppel. The senior of the parties,
in accordance with Rule 257, is exempted from
such rejection. Where it is only the junior
parties to the interference that have common
subject matter additional to the subject matter
of the interference, the senior one of this sub-
group is free to claim this common subject mat-
ter. Rule 234 now limits the doctrine of estop-
pel to subject matter in the cases involved in
the interference. See 1105.03.

If an application was in condition for allow-
ance or appeal prior to the declaration of the
interference, the matter of reopening the pros-
ecution after dissolution of the interference
should be treated in the same general manner
as after an award of priority. (See 1109.01
and 1109.02.)

## 1111 Miscellaneous

### 1111.01 Interviews

Where an interference is declared all questions
involved therein are to be determined inter partes.
This includes not only the question of priority of
invention but all questions relative to the right of
each of the parties to make the claims in issue or
any claim suggested to be added to the issue and
the question of the patentability of the claims.

The Examiners are admonished that inter partes.
questions should not be discussed ex parte with any
of the interested parties and that they should so
inform applicants or their attorneys if any attempt
is made to discuss ex parte these inter partes ques-
tions. (Notice of March 2, 1935.)

## 1111.02 Record in Each Interference Complete

When there are two or more interferences pend-
ing in this Office relating to the same subject mat-
ter, or in which substantially the same applicants
or patentees are parties thereto, in order that the
record of the proceedings in each particular inter-
ference may be kept separate and distinct, all mo-
tions and papers sought to be filled therein must be
titled in and relate only to the particular inter-
ference to which they belong, and no motion or
paper can be filed in any interference which relates
to or in which is joined another interference or
matter affecting another interference.

The Examiners are also directed to file in each
interference a distinct and separate copy of their
actions, so that it will not be necessary to examine
the records of several interferences to ascertain the
status of a particular case.

This will not, however, apply to the testimony.
All papers filed in violation of this practice will be
returned to the parties filing them. (Order 453,
Revised.)

## 1111.03 Overlapping Applications

Where one of several applications of the same
inventor or assignee which contain overlapping
claims gets into an interference, the prosecution
of all the cases not in the interference should be
carried as far as possible, by treating as prior
art not only the counts of the interference, but
also the disclosures of all the adverse parties
and by forcing the drawing of proper lines of
division. In some instances suspension of
action by the Office cannot be avoided. See
709.01.

Where an application involved in interfer-
ence includes, in addition to the subject matter
of the interference, a separate and divisible in-
vention, prosecution of the second invention
may be had during the pendency of the inter-
ference by filing a divisional application for the
second invention or by filing a divisional appli-
cation for the subject matter of the interference
and moving to substitute the latter divisional
application for the application originally in-
volved in the interference. However, the ap-
plication for the second invention may not be
passed to issue if it contains claims broad
enough to dominate matter claimed in the ap-
plication involved in the interference.

## 1111.04 "Secrecy Order" Cases

Applications having a secrecy order therein
are treated in the same manner as the other ap-
plications up to and including the declaration
of the interference (see 107). However, after
the time for filing preliminary statements has
passed the Examiner of Interferences suspends
proceedings until modification or rescission of
the secrecy order permits access by the parties
to the respective applications.

After the declaration of the interference the
applications involved are returned to the exam-
ing division for safekeeping. It is vitally im-
portant that the Examiner of Interferences be
immediately notified of any modification or
rescission of the secrecy orders so that the inter-
ference proceedings may be promptly resumed,
if proper.

## 1111.05 Amendments Filed During Interference

The disposition of amendments filed in con-
nection with motions in applications involved
in an interference, after the interference has
been terminated, is treated in a separate sec-
tion (1108).

The manner of treating other amendments
which are filed in an application during the
course of the interference, is discussed in this
section.

When an amendment to an application involved
in an interference is received, the Examiner in-
spects the amendment and, if necessary, the appli-
cation, to determine whether or not the amendment
affects the pending or any prospective interference.
If the amendment is an ordinary one properly re-
sponsive to the last regular ex parte action preceding
the declaration of the interference and does not
affect the pending or any prospective interference,
the amendment is marked in pencil "not entered"
and placed in the file, a corresponding entry being
endorsed in ink in the contents column of the wrap-
per and on the serial and docket cards. After the
termination of the interference, the amendment may
be permanently entered and considered as in the case
of ordinary amendments filed during the ex parte
prosecution of the case. (Order 1759, Revised.)

When an amendment filed during interfer-
ence purports to put the application in condi-
tion for another interference either with a pend-
ing application or with a patent, the Primary
Examiner must personally consider the amend-
ment sufficiently to determine whether, in fact,
it does so. If it does, he obtains from the Com-
missioner jurisdiction of the application for the

purpose of setting up the new interference.
The Examiner submits his request for jurisdic-
tion to the Supervisory Examiner for approval,
assuming of course that the existing interfer-
ence is still pending before the Board of Patent
Interferences. Form at 1112.06 (a).

If the amendment presents allowable claims
directed to an invention claimed in a patent or
in a pending application in issue or ready for
issue, the Examiner requests jurisdiction of the
file, as above, setting forth in his request the
reason why immediate jurisdiction of the file
is required by him, and when the file is received,
enters the amendment and takes the proper
steps to initiate the second interference.

Where in the opinion of the Examiner, the
proposed amendment does not put the applica-
tion in condition for interference with another
application not involved in the interference, the
amendment is placed in the file and marked "not
entered" and the applicant is informed why it
will not be now entered and acted upon. See
form at 1112.10. Where the amendment cop-
ies claims of a patent not involved in the
interference and which the Examiner believes
are not patentable to the applicant, and where
the application is open to further ex parte prose-
cution, jurisdiction of the file should be obtained,
the amendment entered and the claims rejected,
setting a time limit for response. If recon-
sideration is requested and rejection made final
a time limit for appeal should be set. Where
the application at the time of forming the inter-
ference was closed to further ex parte prosecu-
tion and the disclosure of the application will,
prima facie, not support the copied patent
claims or where copied patent claims are drawn
to a nonelected invention, the amendment will
not be entered and the applicant will be so in-
formed, giving very briefly the reason for the
nonentry of the amendment. See Letter Form
1112.10.

## 1111.06 Notice of Rule 234 Motion Relating to Application Not Involved in Interference

Whenever a party in interference brings a motion
under Rule 234 affecting an application not already
included in the interference, the Examiner of Inter-
ferences should at the time of setting the motion for
hearing send the Primary Examiner a written notice
of such motion and the Primary Examiner should
place this notice in said application file. (Order
3244, Revised.)

The notice is sent to the Primary Exam-
iner at the time the parties are notified that
the Rule 234 motion is set for hearing. The
notice is customarily sent to the division which
declared the interference since the application
referred to in the motion is generally examined
in the same division. However, if the applica-
tion is not being examined in the same division,
then the correct division should be ascertained
and the notice forwarded to that division.

This notice serves several useful and essential
purposes, and due attention must be given to it
when it is received. First, the Examiner is
cautioned by this notice not to consider ex parte,
questions which are pending before the Office
in inter partes proceedings involving the same
applicant or party in interest. Second, if the
application which is the subject of the motion is
in issue and the last date for paying the final
fee will not permit determination of the motion,
it will be necessary to withdraw the application
from issue. Form at 1112.04. Third, if the
application contains an affidavit under Rule 131,
this must be sealed because the opposing parties
have access to the application.

## 1111.07 Conversion of Application From Joint to Sole or Sole to Joint

Although, for simplicity, the subject of this
section is titled "Conversion of Application
from Joint to Sole or Sole to Joint," it includes
all cases where an application is converted to
decrease or increase the number of applicants.
See 201.03.

If the conversion papers are filed before the
preliminary statements are approved and con-
version is sought at that time, the Primary Ex-
aminer may request jurisdiction of the interfer-
ence for purpose of effecting the desired con-
version or jurisdiction of the interference may
be conferred on the Primary Examiner on the
Interference Examiner's own initiative. In
either event, the matter of effecting the con-
version is treated as an ex parte matter at this
stage and no papers are prepared for the inter-
ference file until the conversion is completed
and the interference is in condition for redecla-
ration. If necessary at this time, an ex parte
letter may be written to the party seeking con-
version pointing out any curable defects in the
conversion papers and interviews, limited to
this matter alone, may also be held. After con-
version has been completed, the proper redec- .
laration papers are prepared and forwarded to
the Interference Division.

If conversion is attempted during the motion
period, the matter is treated as an inter partes
matter, subject to opposition, and the Interfer-
ence Examiner may transmit it to the Primary
Examiner for determination, inter partes. If
conversion is permitted at this stage, redeclara-
tion of the interference is necessary and the
proper papers for this purpose are forwarded
to the Interference Division.

If conversion is attempted after the close of
the motion period but prior to the taking of any
testimony, the Interference Examiner may, at
his discretion, either transmit the matter to the
Primary Examiner for determination or defer
consideration thereof to final hearing for deter-
mination by the Board of Patent Interferences.
If transmitted to the Primary Examiner, the
matter is treated as outlined in the preceding
paragraph. Forms for converting a joint ap-
plication to a sole are given at 1112.09 (m) to
1112.09 (p) and these forms may be suitably
modified to apply to the situation where an ap-
plication with three or more applicants is con-
verted to a joint application with a lesser
number of applicants or where an application
is converted to increase the number of appli-
cants.

If conversion is attempted after the taking of
testimony has commenced, the Interference Ex-
aminer will generally defer consideration of the
matter to final hearing for determination by
the Board of Patent Interferences.

In any case where the Examiner must decide
the question of converting an application he
must, of course, determine whether the legal
requirements for such conversion have been sat-
isfied, just as in the ordinary ex parte treatment
of the matter.

A party may occasionally seek to substitute
an application with a lesser or greater number
of applicants for the application originally in-
volved in the interference. If this is attempted
before the preliminary statements are approved,
then the matter may be treated in the same man-
ner as an attempted conversion at this stage.
If substitution is attempted during the motion
period, then it should be treated as a motion
under Rule 234.

## 1111.08 Reissue Application Filed While Patent Is in Interfer- ence

Care should be taken that a reissue of a patent
should not be granted while the patent is in-
volved in an interference without approval of
the Commissioner.

(

If an application for reissue of a patent is filed
while the patent is involved in interference, that
application must be called to the attention of the
Commissioner before any action by the Examiner
is taken thereon. (Extract from Order 3193.)

Such an application should be promptly for-
warded to the Office of the Solicitor with an
appropriate memorandum. A letter with
titling relative to the interference is placed in
the interference file by the Commissioner and
copies thereof are placed in the reissue applica-
tion and mailed to the parties to the inter-
ference. This letter gives notice of the filing
of the reissue application and generally includes
a paragraph of the following nature :

The reissue application will be open to inspection
by the opposing party during the interference and
may be separately prosecuted during the interference,
but will not be passed to issue until the final deter-
mination of the interference, except upon the approval
of the Commissioner.

## 1111.09 Suit Under 35 U. S. C. 146 by Losing Party

When a losing party to an interference gives notice
in his application that he has filed a civil action
under the provisions of 35 U. S. C. 146, relative to
the interference, that notice should be called to the
attention of the Docket Branch in order that &
notation thereof can be made on the index of the
interference. (Notice of January 29, 1930, Revised.)

When notice is received of the filing of a suit
under 35 U. S. C. 146, further action is withheld
on the application of the party filing the suit.
No letter to that effect need be sent.

## 1111.10 Benefit of Foreign Filing Date

If a request for the benefit of a foreign filing
date under 35 U. S. C. 119 or under Section 1
of Public Law 690 is filed while an application
is involved in interference, the papers are to be
placed in the application file in the same manner
as amendments received during interference,
and appropriate action taken after the termina-
tion of the interference.

A party is not given the benefit of a foreign
filing date in the original declaration of an in-
terference, even though favorable action had
been stated in previous ex parte prosecution.
The party having a foreign filing date may
therefore find it desirable or necessary to file a
motion to shift the burden of proof under Rule
235 and the matter is then considered on an
inter partes basis.

## 1111.11 Patentability Reports

The question of Patentability Reports rarely
arises in interference proceedings but the

proper occasion therefor may occur in deciding
motions. If appropriate, Patentability Report
practice may be utilized in deciding motions
and the procedure should follow as closely as
possible the ex parte Patentability Report prac-
tice.

## 1111.12 Certified Copies of Part of an Application

Rule 241. Copies of part of application. When an ap-
plication is involved in an interference in which a part
only of the invention is included in the issue, the ap-
plicant may file certified copies, one for the record and
one for each opposing party, of the part or parts of the
specification and drawings, and other papers in the
file, which exclude merely the noninterfering disclosure,
and such copies may be used in the proceedings in place
of the complete application.

The Primary Examiner or Examiner in
charge of the division certifies the copies re-
ferred to in the preceding rule. This rule ap-
plies to earlier applications relied upon by &
party as well as applications directly involved
in the interference.

Certification should be withheld if the party
requesting it does not order the number of
copies required by the rule. In order to be
eligible for certification, the partial copies must
include the file wrapper of the application, all
of the original specification, claims, and draw-
ings which bears directly or indirectly on the
invention involved in the interference, or is in
any way necessary to an understanding thereof,
and also all of the Office actions and amendatory
papers which fall in this category. Only sep-
arate, distinct, and independent matter which
does not in any way relate to the subject matter
of the interference and is unnecessary to an
understanding thereof may be excluded from a
copy under Rule 241. Of course, affidavits un-
der Rule 131 and amplified affidavits under
Rule 204 of the same character are not included
in the Rule 241 copy. See Ex parte Donald W.
Kaiser, 1952 C. D. 3; 661 O. G. 10.

When the interference has terminated, any
copies under Rule 241 should be returned to the
Docket Branch together with the interference
file, to be disposed of by the Docket Branch.
See 1107.

## 1111.13 Consultation With Interfer- ence Examiner

In doubtful cases, or where the practice ap-
pears to be obscure or confused, the Examiner
should consult with the Interference Examiner,

since the latter may be able to suggest a course
of action which will avoid considerable diffi-
culty in the future treatment of the case.

## 1112 Letter Forms Used in Interfer- ences

It is obviously impossible to include forms
illustrative of every situation which may arise
in connection with an interference and this
section is necessarily limited to those forms
which are used most frequently in interference
practice.

For convenience in the preparation and for-
warding of the letter forms, under each title the
following information is given :

Form No. or type of paper for preparation
of form.

Number of copies to be prepared.

Person to whom papers are to be forwarded.
If papers are to be sent to the applicant, pat-
entee, or assignee, and there are joint applicants
or patentees or several assignees, copies should
be prepared for each of the joint applicants or
patentees and each of the several assignees.
Also, if two copies are to be sent to attorneys
in government-owned cases, two copies should
be prepared for such attorneys.

1112.01 Letter to Law Examiner Sub-
mitting Proposed Interfer-
ence for Correspondence
Under Rule 202

(Short (8" x 101/2") letterheads.)
(Original and carbon copy, both signed.)
(Forward both to Law Examiner.)
(Date.)

SIR: Conflict is found to exist between the
following applications and it is proposed to
suggest claims as indicated below :

Serial
268,554
TÍZ, 779
J. L. Brown.

No
307,819, division of 203,503
T. A. Smith.
165,202
F. A. Jones.
The application of Jones is ready for allow-
ance. (If no application is ready for allow-
ance, indicate that fact.)

Respectfully,

GREEN,
Assistant Examiner.

Yes

Yes Smith

Brown 2-12-33

10-13-33 Div. of 11-21-32

Jones 3-15-32

Yes

Yes 1

Yes

No 1

55.

Yes.

Yes

Yes.

Yes

No.

1 In using the above form, type the word "yes" opposite each claim
under the name of each applicant who can make the claim and "no"
under each who cannot.

## 1112.02 Letter Suggesting Claims for Interference (Form POL 90)

(Original for application file, carbon copy
for attorney or agent of record.)

(To be mailed by examining division)

The following claims, found allowable, are
suggested for purpose of interference. Appli-
cant should make same by
(allow
not less than 30 days) under the provisions of
Rule 203; failure to do so will be considered a
disclaimer of the subject matter involved :
(Copy claims, without numerals.)

Examiner.

1112.03
Same Attorney or Agent in
Applications of Conflicting
Interests
(Form POL 90)

(Original for each application file, carbon
copies for attorney or agent of record, each
applicant, and each assignee)

(To be mailed by examining division)

Attention is called to the fact that the attor-
ney (or agent) in this case is also the attorney
(or agent) in an application of another party
and of different ownership claiming substan-
tially the same patentable invention as claimed
in the above identified application.

Examiner.

Copies to :
Applicant.
Assignee.

(

1112.05 (c)

### 1112.04 Letter Requesting Withdrawal From Issue

(Short (8" x 101/2") letterhead or plain
paper.)
(Original for application file.)
(Forward to Supervisory Examiner.)
Application of
)
(Date)
2

John Doe
Serial No. 85,963)
Washing Machine) Withdrawal from Issue
Filed Feb. 14, 1933)
Allowed Mar. 6, 1935)

Hon. Commissioner of Patents:

SIR: It is requested that the above-entitled
application be withdrawn from issue for the
purpose of (a), (b), (c), (d), (e), (f), (see be-
low), or (other stated reason).

The final fee has not (or has) been paid.
Respectfully,

Examiner.

(a) Interference, another party having made
claims suggested to him from this application.

(b) Interference, applicant having made the
claims suggested to him.

(d) Rejecting claims
(specify claims)
on the implied disclaimer resulting from
failure to make the claims suggested to him,
under Rule 203.

(e) Informing applicant that the claims
cannot be allowed him because correspondence
under Rule 202 has developed the fact that
applicant is not the first inventor of their sub-
ject matter.

(f) Deciding a motion under Rule 234 in-
volving this application, the date set for hearing
the motion being subsequent to the ultimate date
for paying the final fee.

#### 1112.05 Declaration Papers

1112.05 (a) Letter to Examiner of
Interference

(Form PO-221)

(Original for interference file, carbon copy may
be prepared for retention in examining
division)

(Forward to Interference Division)

Prepared by properly filling in the blanks on
this form, setting forth all of the counts and

adding a table showing the relationship of the
counts to claims of the various parties. The
counts should be checked against the original
claims and the words "Counts compared" placed
at the end of the letter to show that the counts
had been compared with the claims. See
1102.01 (a).

1112.05 (b) Declaration Papers
Where One of the Parties
Has Two Applications.
Both Junior or Both Sen-
ior (In Effective Filing
Dates) to the Other Party

In the letter to the Examiner of Interference
(Form PO-221) the complete information of
all applications should be given, designating
the two applications of the common inventor by
letter. The tabulation of the counts should be
in the following form :

Counts:

Jones

Smith (A)

Smith (B)

This same tabulation is copied in each of the
letters to the parties (Form POL-76), being
certain to arrange the parties in alphabetical
order. The identification "Case A" is added
to the right of the address box in the letter
(Form POL-76) for that application of Smith
and that letter, after the printed portion, reads
as follows :

Presented in claims 5 and 6 of this applica-
tion.

The identification "Case B" is added to the
right of the address box in the letter (Form
POL-76) for Smith's other application and
that letter, after the printed portion, reads as
follows:

Presented in claims 3 and 7 of this
application.

The letters to the parties must clearly indicate
that two Smith applications are involved in the
interference and any differences in the two cases
should be indicated.

1112.05 (c) Letter to Each Party (In-
terference Notice)
(Form POL-76)

(Original for application or patent file, carbon
copies in accordance with Rule 209 (b))

Do not give serial number or filing date of any
other applicant

(Forward to Interference Division)

The interference number and date for filing
the preliminary statement will be filled in by the
Examiner of Interferences.

After printed matter reading, "The subject
matter involved in the interference is" continue
as follows: presented in claims 8 and 10 of this
application (or patent).

Your application, above identified, is a divi-
sion (or continuation) of Serial No.
(See Rule 207 (a).)
,
filed

The interference involves your application
(or patent) above identified and applications
filed by :

(Typist: the first alphabetical name)

John Brown, of Akron, Ohio, whose Post
Office address is Municipal Building, Akron,
Ohio, whose attorney is Jas. Robb, 36 Euclid
Avenue, Cleveland, Ohio, whose associate at-
torney is Robert Horn, Press Building, Wash-
ington, D. C., and whose assignee is the Garden
Implement Company, of Cleveland, Ohio.

(Typist: the second alphabetical name) .

Thomas Smith,
etc.

The relation of the counts of the interference
to the claims of the respective parties is as
follows :

Counts :

Brown

Smith

Taylor

(Typist : note alphabetical arrangement of parties.)
Counts compared.

(Insert appropriate paragraph or paragraphs
hereinafter.)

Examiner.

Copies to :
(See Rule 209 (b).)

(A) To party or parties not otherwise ready
for allowance add :

(1) "After termination of the interference
this application will be held subject to further
examination under Rule 266."

(2) "Claims
will be held subject to
rejection as unpatentable over the issue in the
event of an award of priority adverse to
applicant."

(B) To party ready for allowance, and if
applicable, add :

Paragraph (A) (2), above.

1112.06 Requests for Jurisdiction

##### 1112.06 (a) Request for Jurisdiction of Application Involved in Interference

(Short (8" x 101/2") Letterhead or plain
paper.)

(Original for application file.) .
(Forward to Supervisory Examiner.)

This form is used when it is desired to take
action solely on an application involved in an
interference, without disturbing the existing
interference.

Application of
(Date)

John Smith
Serial No. 85,963
Spraying Machine)
Filed Feb. 14, 1933)

Request for Jurisdiction

Hon. Commissioner of Patents:

SIR: Jurisdiction of the above-entitled ap-
plication, now involved in Interference No.
44,444, Andrews 1 v. Smith,1 is requested for the
purpose of (a), (b), (c), (d), or (other rea-
son).

(State briefly any further necessary infor-
mation.)

Respectfully,

Examiner.

(a) Suggesting claims thereto for interfer-
ence with another party and of entering such
claims if made, and of declaring such additional
interference.

(b) Entering an amendment which puts the
application in condition for another interfer-
ence, and of declaring such other interference.

(d) Entering and taking action on claims
copied from Patent No. ______ to ______ , with
which applicant requests an interference.

1112.06 (b) Request for Jurisdiction
of Interference

(Short (8" x 101/2") Letterhead or plain
paper.)

(Original for interference file.)
(Forward to Docket Branch.)
This form is used when it is desired to take
action in the interference which will result in
alteration of the existing interference.

1 Note alphabetical arrangement.

Interference No. 45,678, Henry Brown v. John
Smith and Edward Green

Request for Jurisdiction

Examiner of Interferences:

SIR: Jurisdiction of the above-entitled inter-
ference is requested for the purpose of (a), (b),
(c), or (other reason).
Respectfully,

Examiner.

(a) Adding, under the provisions of Rule
238, a new party who has made the claims which
are the issue of the above interference.

(May be used only prior to the taking of testi-
mony. If any testimony has been taken, see
Rule 238, and forms at 1112.09 (j) to 1112.09
(1).)

(b) Striking out count 2 which will form the
basis of a new interference.

(c) Converting the joint application of
Smith and Green to a sole application of Smith
(or substituting a sole application of Smith
for the joint application of Smith and Green;
or converting the sole application of Smith to
a joint application of Smith and Green; or sub-
stituting a joint application of Smith and
Green for the sole application of Smith).

(May be used only prior to the approval of
the preliminary statements. If conversion or
substitution is attempted at a later date see
1111.07.)

## 1112.07 Withdrawal of Interference Under Rule 237 (b)

(Short (8" x 101/2") letterhead or plain
paper.)

(Original for interference file.)

(Forward to Docket Branch.)

This form may be used only prior to the ap-
proval of the preliminary statements and must
not be used thereafter. Thereafter proceed-
ings must be in accordance with Rule 237 (a).
(See "Letter Forms Used in Interferences,"
1112.08.)

(Date.)

Interference No.
)

Henry Brown
V.

John Smith
1
Withdrawal

Examiner of Interferences :

SIR: The above identified interference, in
which preliminary statements have not been

approved, is hereby withdrawn in view of a
newly discovered reference which anticipates
all the counts in issue.

Respectfully,

Examiner.

1112.08
Primary Examiner Initiating
Dissolution of Interference
Rule 237 (a)

(Short (8" x 101/2") letterhead or plain
paper.)

(Original for interference file, carbon copy
for each party.)

(Forward to Docket Branch.)

This form is to be used after the approval of
the preliminary statements (if preliminary
statements have not been approved, interference
should be withdrawn-see Rule 237 (b) and
form at 1112.07) and need not be used if the in-
terference is before the Primary Examiner for
determination of a motion.

This form is also to be used when a reference
is found for a claim of a patent involved in
interference. See 1101.02 (f).

(Date.)

Examiner of Interferences:

SIR: Under the provisions of Rule 237 your
attention is called to the following patents :

Chambers ___ 169,520 Nov. 2,1875 91-18
Meyers ....____ 248, 764 Jan. 11, 1912 91-24

Counts 1 and 2 of Interference No. 45,678,
Brown v. Smith, are considered unpatentable
over either of these references.

(Apply the references to the affected counts
in sufficient detail to enable the parties to argue
the matter properly.)

Respectfully,

Examiner.

## 1112.09 Redeclaration

1112.09 (a) Redeclaring an Interfer-
ence Pursuant to a Deci-
sion on Motions

A greater variety of letters falls within this
category than any other group. It is impossible
to reproduce letter forms which will cover every
situation and it will therefore frequently be
necessary for the Examiner to compose his own
letters. In the following forms a relatively
complex redeclaration is illustrated, with cer-

tain counts stricken out, other counts added, an
application substituted, and the burden of proof
shifted. Simpler redeclarations will necessi-
tate deletion of portions of these forms; more
complex redeclarations will require longer let-
ters. The general rule should be observed of
giving the Examiner of Interferences complete
information in detail of any change in the in-
terference and giving the parties the same in-
formation except that all reference to serial
numbers or relative filing dates must be omitted.

## 1112.09 (b) Redeclaration After Deci- sion on Motion, Letter to Examiner of Interfer- ences

(Long (8" x 121/2") plain sheet.)

(Original for interference file, carbon copy
may be prepared for retention in examining
division.)

(Forward to Interference Division)

IN RE INTERFERENCE NO.
JONES V. BROWN V. SMITH

Examiner of Interferences:

SIR: Pursuant to the motion decision of the
Primary Examiner dated

(Date)

the above entitled interference is hereby rede-
clared as follows :

Count 2 is stricken out, and the following
counts are added :

Count 4 (Green's proposed count B) (Copy
count).

Count 5 (Smith's proposed count 9) (Copy
count).

The application of Thomas W. Green for a
Hand Plow, Serial No. 333,333, filed October
19, 1936, (division of Serial No. 222,222, filed
June 23, 1935, patented November 14, 1937, No.
2,142,794), whose Post Office address is Mu-
nicipal Building, Akron, Ohio, whose attorney
is Jas. Robb, 36 Euclid Avenue, Cleveland,
Ohio, whose associate attorney is Robert Horn,
Press Building, Washington, D. C., and whose
assignee is the Garden Implement Company,
of Cleveland, Ohio, is substituted for the ap-
plication of Brown formerly involved in the
interference.

In view of the granting of the motion to shift
the burden of proof by the party Jones, the
order of the parties is now Green v. Smith v.
Jones.

The relation of the counts of the interference
to the claims of the respective parties is as
follows :

Counts:

Green

Smith

Jones

Counts compared.

Examiner.
,

1112.09 (c)
Redeclaration After Deci-
sion on Motion, Letter to
Each Retained Party

(Form POL 90)

(Original for application or patent file, carbon
copies in accordance with Rule 209 (b))

(Forward to Interference Division)

Pursuant to the motion decision of the Pri-
mary Examiner dated
Interference
No.
is hereby redeclared as follows :
(Date)

Count 2 is stricken out, and counts 4 and 5,
which are presented in claims 19 and 20 (or 42
and 43 in the case of the other retained appli-
cation) of this application are added.

The application of Thomas W. Green, whose
Post Office address is Municipal Building,
Akron, Ohio, whose attorney is Jas. Robb, 36
Euclid Avenue, Cleveland, Ohio, whose asso-
ciate attorney is Robert Horn, Press Building,
Washington, D. C., and whose assignee is the
Garden Implement Company, of Cleveland,
Ohio, is substituted for the application of
Brown formerly involved in the interference.

The relation of the counts of the interference
to the claims of the respective parties is as
follows:

Counts :

Green 1

Jones 1

Smith 1

Counts compared.

Copies to :

(See Rule 209 (b).)

Examiner.

1 Note alphabetical arrangement.

1112.09 (g)

# 1112.09 (d) Redeclaration After Deci- sion on Motion, Letter to New Party

(Form POL 90)

(Original for application or patent file, carbon
copies in accordance with Rule 209 (b) )

(Forward to Interference Division)

Pursuant to the motion decision of the Pri-
mary Examiner dated
(Date)
your appli-
cation above identified is hereby substituted in
Interference No.
for the application
of Brown formerly involved therein.

The subject matter of the interference is pre-
sented in claims 23, 25, 26, and 27 of this
application.

Your application, above identified, is a divi-
sion of Serial No. 222,222, filed June 23, 1935,
patented November 14, 1937, No. 2,142,794 (See
Rule 207 (a).)

The interference involves your application
above identified and applications filed by :

John Jones,1 whose Post Office address is
whose attorney is
whose associate attorney is
?
and
whose assignee is
William Smith 1
etc.
9

The relation of the counts of the interference
to the claims of the respective parties is as
follows:

Counts :

Green 1

Jones 1

Smith 1

Counts compared.

,
Examiner.

Copies to:
(See Rule 209 (b).)
An interference brief (Form PO-222) must
also be prepared for the application file of the
new party.

It is unnecessary to prepare a letter for the
party who is being eliminated from the inter-
ference, since the motion decision is adequate
notice to him and the entry on the interference
brief (Form PO-222) of his case indicates that
he was eliminated from the interference.

\* Note alphabetical arrangement.

1112.09 (e)
Adding a Party Under
Rule 238, No Testimony
Taken

If no testimony has been taken it is necessary
to first request the Examiner of Interferences
for jurisdiction of the interference (see 1112.06
(b)) ; thereafter the interference may be rede-
clared as follows :

1112.09 (f)
Adding a Party (No Testi-
mony Taken), Letter to
Examiner of Interfer-
ences

(Long (8" x 121/2") plain sheet.)

(Original for interference file, carbon copy
may be prepared for retention in examining
division.)

(Forward to Interference Division)

Examiner of Interferences :

SIR: In accordance with the provisions of
Rule 238, the application of Andrew Jones,
Serial No.
filed
for

whose Post Office address is
whose
attorney is
and whose assignee is the

X. Y. Z. Company of
is hereby
added to the Interference Brown v. Smith, de-
clared March 5, 1936, No. 45,678.

The order of the parties is now as follows:
Jones v. Brown v. Smith.

The issue of the interference remains the
same.

The claims of the Jones application corre-
sponding to the issue are :

Counts :

Jones

3
4

Respectfully,

Counts compared.
Examiner.

1112.09 (g)
Adding a Party (No Testi-
mony Taken), Letter to
Each Original Party
(Form POL 90)

(Original for application or patent file, carbon
copies in accordance with Rule 209 (b) )

(Forward to Interference Division)

In accordance with the provisions of Rule 238
the application filed by Andrew Jones, whose

1112.09 (h)

# MANUAL OF PATENT EXAMINING PROCEDURE

Post Office address is
whose attor-
ney is
and whose assignee is the
X. Y. Z. Company of
is hereby
added to Interference No. 45,678, Brown1 v.
Smith 1 to which you are a party. The claims
of the Jones application corresponding to the
issue are :

Counts :
1

Jones
3
4

The new party is given until

within which to file the preliminary statement
required by Rules 215 et seq.

The issue of the interference remains
unchanged.

Examiner.
Counts compared.
Copies to:

(See Rule 209 (b).)

1112.09 (h) Adding a Party (No Testi-
mony Taken), Letter to
New Party
(Form POL 90)

(Original for application or patent file, carbon
copies in accordance with Rule 209 (b) )

(Forward to Interference Division)

In accordance with the provisions of Rule 238
your case above identified is hereby added to
Interference No. 45,678 in which no testimony
has been taken.

The preliminary statement required by Rules
215 et seg. must be filed on or before

The subject matter of the interference is pre-
sented in claims 3 and 4 of this application.

The interference involves your case above
identified, and

The application filed by Henry Brown,1
whose Post Office address is
whose
attorney is
and whose
assignee is

The application filed by William Smith,1
etc.

The relation of the counts of the interference
to the claims of the respective parties is as
follows:

Counts :

Brown 1

Jones 1

Smith 1

Examiner.
Counts compared.
Copies to :

(See Rule 209 (b).)

1 Note alphabetical arrangement.

1112.09 (i)
Adding a Party Under
Rule 238, Testimony
Taken

If testimony has been taken, it is not nec-
essary for the examiner to first request jurisdic-
tion of the interference and the forms used are
different, as follows:

1112.09 (j)
Adding a Party (Testi-
mony Taken), Letter to
Examiner of Interfer-
ences

(Long (8" x 121/2") plain sheet)

(Original for interference file, carbon copy may
be prepared for retention in examining
division.)
(Forward to Interference Division)

Examiner of Interferences :

SIR: It is requested that the application of
Andrew Jones, Serial No.
filed
,

for
whose Post Office address is
,
whose attorney is
and whose assignee
is the X. Y. Z. Company of
be added
to the interference of Brown v. Smith, declared
Jan. 5, 1936, No. 45,678, in which testimony has
been taken.

The order of the parties will then be as fol-
lows: Jones v. Brown v. Smith.

The issue of the interference remains un-
changed.

The claims of the Jones application corre-
sponding to the issue are:

Counts :

Jones

Respectfully,

Examiner.

Counts compared.

1112.09 (k)
Adding a Party (Testi-
mony Taken), Letter to
Each Original Party
(Form POL 90)

(Original for application or patent file, carbon
copies in accordance with Rule 209 (b) )
(Forward to Interference Division)

An application for patent has been filed by
Andrew Jones, whose Post Office address is

whose attorney is
and
whose assignee is the X. Y. Z Company of
claiming the subject matter of in-
terference No. 45,678, Brown 1 v. Smith,1 to
which you are a party. The claims of Jones'
application corresponding to the counts of the
issue are :

Counts :

Jones

Written objections to the admission of the
above entitled application to the interference,
with proof of service on the proposed new party
as well as the present parties, will be considered
if filed on or before

The issue of the interference remains un-
changed.

Examiner.

Counts compared.
Copies to:

(See Rule 209 (b).)

1112.09 (1) Adding a Party (Testi-
mony Taken), Letter to
New Party

(Form POL 90)

(Original for application or patent file, car-
bon copies in accordance with Rule 209 (b) )

(Forward to Interference Division)

Your case, above identified, is adjudged to
interfere with others, hereinafter specified,
which are now involved in an Interference No.
45,678, in which testimony has been taken.

Written objections of the present parties to
your admission to the interference, with proof
of service upon you, will be considered if filed
on or before

The subject matter of the interference is pre-
sented in claims 3 and 4 of this application.

The parties to the interference are;

Henry Brown,1 whose Post Office address is
whose attorney is
whose
assignee is Roe Manufacturing Company of

and

John Smith 1
etc.

1 Note alphabetical arrangement.

The relation of your claims and of the claims
of the parties to the counts of the issue is as
follows:

Counts :

Brown 1

Jones 1

Smith 1

Examiner.

Counts compared.
Copies to:
(See Rule 209 (b).)

## 1112.09 (m) Conversion of Joint Ap- plication to Sole During Interference

The following letter forms, 1112.09 (n) to
1112.09 (p), may be suitably modified to be used
in connection with other conversions decreasing
or increasing the number of applicants in an
application.

## 1112.09 (n) Letter to Examiner of Interferences

(Long (8" x 121/2") plain sheet.)
(Original for interference file.)
(Forward to Interference Division.)

Examiner of Interferences :

SIR: Interference No. 74,819, Wheat and
Tomlin v. Butler, is hereby reformed by chang-
ing the party Wheat and Tomlin as joint in-
ventors to Wheat as sole inventor.

The counts remain the same.

Respectfully,

Examiner.

1112.09 (o)
Changing Joint to Sole,
Letter to Resulting Sole
Party
(Form POL 90)

(Original for application file, carbon copies
in accordance with Rule 209 (b).)

(Forward to Interference Division)

The amendment with new oath and a dis-
claimer identifying this application as the sole
invention of Wheat formerly having status as a
joint inventor in the case, has been entered.

Interference No. 74,819, Butler 1 v. Wheat 1
and Tomlin, involving the above identified ap-
plication is hereby reformed, the party Wheat

and Tomlin being changed from Wheat and
Tomlin as joint inventors to Wheat as sole
inventor. The counts remain the same.

Copies to :
(See Rule 209 (b).)

Examiner.

1112.09 (p) Changing Joint to Sole,
Letter to Other Party
(Form POL 90)

(Original for application or patent file, car-
bon copies in accordance with Rule 209 (b) )
(Forward to Interference Division)

Interference No. 74,819, Butler 1 v. Wheat 1
and Tomlin, involving the above identified ap-
plication is hereby reformed, the party Wheat
and Tomlin as joint inventors being changed
to Wheat as sole inventor.

The counts remain the same.

Copies to :
(See Rule 209 (b).)

Examiner.

1 Note alphabetical arrangement.

## 1112.10 Letter Denying Entry of Amendment Seeking Further Interference

,
(With application or patent not involved in
present interference)
(Form POL 90)

(Original for application file and carbon copy
for attorney)

(To be mailed by examining division)

The amendment filed
(Date)

has not now
been entered since it does not place the case in
condition for another interference.

(Follow with appropriate paragraph, e. g.,
(a) or (b).)

(a) Applicant has no right to make claims
because (state reason briefly).
(Use where applicant cannot make claims for
interference with another application or where
applicant clearly cannot make claims of a
patent.) (b) Claims
are directed
to a species which is not presently allowable in
this case.

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