Intro

Printed page 1

Printed page 2

Printed page 3

Printed page 4

Printed page 5

Printed page 6

Printed page 7

Printed page 8

Printed page 9

Printed page 10

Printed page 11

Printed page 12

Printed page 13

Printed page 14

Printed page 15

Printed page 16

Printed page 17

Printed page 18

Printed page 19

Printed page 20

Printed page 21

Printed page 22

Printed page 23

Printed page 24

Printed page 25

Printed page 26

Printed page 27

Printed page 28

Printed page 29

Printed page 30

Printed page 31

Printed page 32

Printed page 33

Printed page 34

Printed page 35

Printed page 36

Printed page 37

Printed page 38

Printed page 39

Printed page 40

Printed page 41

4 printed pages contain little extracted OCR body text; searchable legal-body completeness has not been established for those pages.

OCR transcription for search; preserved printed pages are authoritative

# MANUAL OF

# PATENT EXAMINING PROCEDURE

ORIGINAL EDITION

DEPARTMENT OF COMMERCE
UNITED STATES OF AMERICA

U.S. DEPARTMENT OF COMMERCE
Patent and Trademark Office

REEL NUMBER
2

BOOK NUMBERS

## U. S. DEPARTMENT OF COMMERCE Patent Office Washington

## MANUAL OF PATENT EXAMINING PROCEDURE Third Edition

Supplemental Instructions Regarding Revision No. 1

The attached revised pages are to be substituted for those in the Manual having
corresponding page numbers. The list of the attached Revision Notice No. 1 is to be
checked to make certain that the set of pages received is complete.

Information and instructions published in Change Notices 1 - 1 through 1 - 19
have been included in these revised pages. Accordingly, these Change Notices should
be removed and discarded. However, those of the 2-1, and 2-2 series should be
retained.

Ernest A. Faller
Editor, MPEP

Important changes in procedure appear in the following sections:

604.01

States not requiring Notary's Seal

608.02(a)

New Drawing Requirements in Allowable Cases

608.02(c)

Drawing (or Print) Available for Interference Search

707.05(e)

Citation of Publications

707.07

Specification Differs from Art Terminology

708.01

"Special" Cases

710.02(b)

Shortened Period Situations

711.04(b)

Ordering Abandoned Files

901.05(b)

Citation of Foreign Patents

901.05(d)

Translator's Services at Examiner's Desk

901.06(a)

Alternate Versions of Foreign Patent - Assistance by Library

903.03

Classification of Foreign Patents

903.07(b)

Issuing Patent in another Group - Prints Forwarded Promptly

903.08(a)

Transferring New Applications

1002.02

Handling of Petitions

1004 -

Actions Submitted to Directors

1005

Actions Submitted to Group Supervisory Examiners

1101.01

Defer Interference Until One Case Allowable

1101.01(b)

Applicants of Commonly Assigned Cases Notified of Interference Election

1101.02

Interference with Patent - Broadest Claim to be a Count

1101.02(a)

Patent Claims Copied - More Complete Affidavit Required

1105.06

Decisions on Interference Motions - Use of Soft Copies

1112.08

Avoid Reference to Patent Claims in letter under Rule 237

1302.06

"None" entered on File Wrapper if No Foreign Priority

1302.09

"None" entered on File Wrapper if No Parent Case

1302. 12

German Allowed Applications listed under "Other References"

1308.01

Action Following Quality Control Review

## U.S. DEPARTMENT OF COMMERCE Patent Office Washington

## MANUAL OF PATENT EXAMINING PROCEDURE Third Edition

### Instructions Regarding Revision No. 2

The attached revised pages are to be substituted for those in the Manual
having corresponding page numbers. The page numbers are listed on the
reverse of this page to provide a means for determining that your set is
complete.

Information and instructions published in Change Notices 2-1 through
2-10 have been included in these revised pages. Accordingly, these Change
Notices should be removed and discarded.

ERNEST A. FALLER
Editor, MPEP

Your attention is especially directed to the changes referred to below :

107.01

Security Cases

201.11

Reference to Parent Case

201.14 (b)

Reissue-Foreign Priority Claim

202.03

Serial Number of Foreign Priority Appli- cation (and Patent)

408

Telephoning Attorney

602

Declaration in Lieu of Application Oath

604.01

Rubber Stamped "Seal"

608.02 (a)

Protoprint in Lieu of Formal Drawing- Comparison Charge

706.02

Reference Entitled to Foreign Filing Date

706.07 (a)

Final Rejection

706.07 (e)

Amendment after Final-Rule 116(b)

707.05

References Cited by Applicant

707.07 (d)

Language Used in Rejections-Suggesting Amendments

708

Order of Examination

710.02 (b)

Shortened Statutory Periods

710.05

Friday before Holiday a "Mail Date"

710.06

Incorrect Citation-Time for Response

713.01

Examiner Suggests Interview -- Interview after Final

714.12

Extra Copy of Extensively Amended Claim

714.16

Trivial Rule 312 Amendments

714.20) 714.23)

Examiner writes "Do not enter" in ink

904

Extent of First Search

1002

Prompt (00 days) Filing of Rule 181 Peti- tions

1101.02

Interference with Patent-Documentary Evidence by Junior Applicant

1208

Appeal Conference

1302.12

Listing of References

### List of Replacement Pages

Title

page

101

191

52.1

103

192.1

107

199

108.1

209

10.1

113

211

117

213

12.1

127

217

135

219

155

225

156.1

227

26.1

159

233

161

235

165

236.1

34.1

169

243

171

247

172.1

249

38.1

175

251

176.1

253

165

257

189

275

### U.S. DEPARTMENT OF COMMERCE PATENT OFFICE WASHINGTON, D.C. 20231

160.5068

### MANUAL OF PATENT EXAMINING PROCEDURE Third Edition

#### Instructions Regarding Revision No. 3

The attached revised pages are to be substituted for those in
the Manual having corresponding page numbers. A list is provided
on the reverse side and may be checked to make certain that the set
of pages received is complete.

Information and instructions published in Change Notices 2 - 11
through 2 - 18 have been included in these revised pages. Accordingly,
these Change Notices should be removed and discarded.

Ernest A. Faller
Editor, "PEP

Important changes in procedure appear in the following sections:

102

Status Information

707.03

Sample Office Action

707.05 (a)

Numerical Listing of References

707.05 (e)

Specify Portion of Foreign Patent which is Relied Upon.

707.08

Negotiation Authority Indicated in Office Action

711.06

Publication of Abbreviatures

901.05 (a)

Citation Date for U.S.S.R. patent

901.05 (b)

Netherlands Printed Applications

905.01

Orders for Photocopies

1101.02

Interference with Patent -- Rule 204 (c)

1302.04
1302.12
}

Examiner's Amendment not to be Used to
Cite Reference not to Correct Citation

Appendix III contains selected form paragraphs.
List of Replacement Pages

Title Page

251

26.1

255-1

255-3

Comprise Appendix III

255-5

96.1

135

137

139

155

171

193

199

221

225

249

## U. S. DEPARTMENT OF COMMERCE Patent Office Washington MANUAL OF PATENT EXAMINING PROCEDURE Instructions Regarding Revision No. 4

The attached revised pages are to be substituted for those in the Manual
having corresponding page numbers. The page numbers listed on the reverse
of this page provide a means for determining that your set is complete.

Information and instructions published in Change Notice 2 - 19, 2 - 20,
2 - 21 and 2 - 23 through 2 - 31 have been included in these revised pages.
Accordingly, these Change Notices should be removed and discarded.

Ernest A. Faller
Editor, MPEP

Your attention is especially directed to:

602.04(a)

Declaration in Lieu of Oath -- Ribboning of Papers Unnecessary

608.02(x)

Drawing Correction -- OG Figure

702.01

"Foreign Type" Case

706.07(b)

Final Rejection on First Action

713.01

Federal Telecommunications System

714.01

Attorney's Telephone Number on Amendments

714.09

Rule 147 Application -- Preliminary Amendment

714.10

Claims (Exceeding Filing Fee) Added Before First Action

903.07 } 903.08(a)

Resubmission for Classification

905.02

Automatic Furnishing of Soft Copies

1002

Effect of Rule 181 Petition on Period for Response

1208

Appeal to Board -- Leave All Soft Copies in File

ROHAMMOD 10 173MIRAN2020

List of Replacement Pages

Title Page

34.1

101

105

107

145

147

151

153

156.1

159

189

211

251

## U. S. DEPARTMENT OF COMMERCE Patent Office Washington MANUAL OF PATENT EXAMINING PROCEDURE Instructions Regarding Revision No. 5

The attached revised pages are to be substituted for those in the Manual having
corresponding page numbers. Chapter 1100 has been replaced as a unit because of
the extensive changes in interference practice based on new Rules of Practice effec
tive July 1, 1965.

reI
Former Chapter 1100 should NOT be discarded. It should be transferred to
the back of the Manual and will continue to govern interferences declared prior to
July 1, 1965. Change Notice 2 - 22 dealing with hearings on motions should be
retained and will be in force with respect to such interferences.

Change Notices 5 - 1 and 5 - 2 should be discarded. In 1101.03, the text
differs from 5 - 2 with respect to the sealing of affidavits.

Ernest A. Faller
Editor, MPEP

(

The page numbers listed on the reverse of this sheet provide a means for
determining that your set is complete.

(

(Over)

HOHEMMOD TO THOMTHAYGO .BU
epilJO tas149
hojenirasw
BRUCHDOHA DAMMIMAXA THITAY TO JAUHAM
& coMi notetysH antragsR enoltoutant

List of Replacement Pages

Title Page

185

187

189*

101

193

163

195

165

197

167

199

169

201

171

203

173

205*

175

251

177

273

179

283

181

285

183

\* Reverse side blank

### Instructions Regarding Revision No. 6

Submitted herewith is Revision No. 6 of the Manual of Patent Examining Procedure, Third
Edition.

The revised pages are to be substituted for those in the Manual having corresponding page
numbers.

This revision incorporates certain revised practices embodied in Change Notices 5-3 and
6-1 through 6-5, as well as certain changes in the Rules of Practice and changes in the Statutes.
Note should be made of pages which reproduce or refer to the new Rules and Statutes, for the
pages superseded thereby may still be pertinent to applications filed before October 25, 1965.

For the guidance of all users of the Manual the changes are recapitulated as follows:

The term "final fee" has been changed to -- issue fee -- on those pages where other changes
have been made. See 203. 04 (page 19) and 307 (page 22). These are exemplary only. A new
page has not been reproduced where this changed term would constitute the only change to be made.
The words "examining divisions, " "supervisory examiner" and "principal examiner" have been
changed to -- examining groups -- , -- Group Manager -- and -- Supervisory Primary Examiner -- ,
respectively, on those pages where other changes have been incorporated. See 203. 08 (page 20),
707.02 (page 77) and 707. 02 (a) (page 77), for example. See also 1005. A new page has not been
reproduced where a single term or designation of this nature would constitute the only change to be
made.

203\. 07 has been rewritten in line with the new issue fee provisions affecting allowed appli-
cations which became effective October 25, 1965. 203. 08 has been revised to indicate the modi-
fied handling of "status letters" and to set forth in the last paragraph an additional type of inquiry
relating to pending applications. 304 has been corrected to remove an obvious typographical
error in the heading.

602\. 03 has been rewritten in its entirety to incorporate the substance of the Notice of July
22, 1965, (Series No. 6-1). 607 and 607. 01 have been modified in accordance with the new law
effective October 25, 1965. 608. 02 (1), 608.02 (k) and 608.02 (1) have been modified to set forth
the procedure for transferring drawings between applications, in accordance with the Notice of
September 9, 1965. 706.03 (n) now includes a further instruction where "new matter" may be.
involved, as contained in the Notice of August 13, 1965. 706. 07 (e) sets forth current practice
following final rejections as contained in the Notice of August 11, 1965. 707.02 now specifies
certain Examiner's Answers on appeal in the list of actions which require the attention of the
Primary Examiner. 710.02 (b) lists the shortened periods for response to be set in different
types of office actions in accordance with the current practice.

712 has been rewritten to set forth new Rules 316 and 317 and to explain further the status of
an application which has become abandoned for failure to pay the issue fee. 713.01, 713. 05 and
713. 09 have been substantially expanded to reflect the present practice in the conduct of inter-
views in the general case, in special situations, after final rejection and after issue.

714\. 02 adds the substance of the Notice of August 13, 1965 and a further instruction in facili-
tating the prosecution. 714. 10 states the effect of the new fee law in submitting excess claims.
A new first paragraph has been added to 715. 01 relating to the effective date of a U. S. patent,
especially as applicable to a Rule 131 situation. 717. 03 explains the advantage in maintaining
certain pencil notes on the drawing and file wrapper. (Notice of July 22, 1965, Series No. 6-2).

903\. 07 adds the substance of the Notice of June 18, 1965, relating to the processing of
applications being passed to issue. 1005 has been revised by eliminating one of the categories
(old No. 2) and by adding a further explanatory paragraph. A revision has also been made in
1208\. 01 involving certain approval to be obtained in making a new rejection in the Examiner's
Answer on appeal. 1302. 04 adds the substance of the Notice of August 18, 1964, and also in-
cludes a change in the Examiner's Amendment practice. See also 1302.12. 1302. 10 restates
the portion relating to certain notations on drawings referred to in 717.03. The short

paragraph comprising 1302. 13 has been revised. 1308 substitutes new Rule 313. 1308. 02 has
been eliminated and 1308. 03 has been renumbered as 1308. 02. The last paragraph of 1309. 02
has been eliminated and the provision of the new fee law regarding issue fees for reissue appli-
cations is set forth. 1505 has been revised in accordance with new fee law.

Certain changes have also been made in the index pages, as well as in the "table of contents"
pages at the beginning of certain chapters.

Within the size limitations of Revision No. 6, many pages have not been substituted which
would contain solely changes of a minor nature or errors in typography which have come to the
Editor's attention. It is anticipated that these will be embodied in subsequent revisions.

W. B. Penn, Editor
Manual of Patent Examining Procedure

List of Replacement Pages

Title Page

Revision List

102.1

107

113

151

161

213

213.1

221

223

225

227

233

237

251

271

101

285

287

\>108.1

### U.S. DEPARTMENT OF COMMERCE PATENT OFFICE WASHINGTON, D.C. 20231

## MANUAL OF PATENT EXAMINING PROCEDURE Errata Regarding Revision No. 6

A corrected page 78 is hereby submitted to replace the one erroneously
inserted in Revision No. 6.

New pages 108. 1 and 113 are hereby submitted to remove the obvious
printer's defect of carrying out the last three lines of former page 108 onto
page 113.

In 706.07(a), line 14, "six" should be ---- four ----.

(

### MANUAL OF PATENT EXAMINING PROCEDURE

#### Instructions Regarding Revision No. 7

Submitted herewith 18 the group of pages constituting Revision No. 7 of the Manual of
Patent Examining Procedure, Third Edition. Proper substitution for those pages in the Manual
having corresponding page numbers may be made forthwith.

This revision incorporates certain changes embodied in Notices and memoranda as la-
dicated below.

For the guidance of all users of the Manual the changes may be recapitulated as follows:

In Chapter 200, the term "forfeited" has been superseded by the new terminology -- aban-
donment for failure to pay issue fee --- See the Chapter heading and 203. 04 and 203.07.

In 201. 06, fifth paragraph, and 201. 11, page 10, column 2, certain exceptions are noted
in the category of those applications which should be indicated as divisional and continuing
applications.

In 608. 01 (n) language has been clarified regarding dependent claims.

In 608.02 explanatory matter has been added to the paragraph "Illustration Subsequently
Required. " Also, a new paragraph "Waiving of Corrections" (Change Notice 7-3) has been
added to this section. The text of 608. 02 (b) has been rewritten. In 608. 02 (x) the paragraph
"New Drawings Prepared by Patent Office" has been rewritten to embody Change Notice 7-4.

Page 62, the heading 714. 13 has been modified.

Page 65, "Supervisory Examiner" has been changed to --- Group Manager ---. Other
changes of a similar nature have been made on appropriate pages where major revisions appear.

In 706. 01 language has been clarified. In 706. 02 (page 67) reference has been made to
a pertinent decision of the U. S. Supreme Court.

In 706.03 (c) a new sentence has been added to the second paragraph of 35 U. S. C. 112
as approved July 24, 1965.

Page 79, a slight revision has been made in the sample letter.

The text has been slightly revised in 707.05.

In 708.02 the new Special Examining Procedure for Certain New Applications has been
added.

Language changes appear in 708.03.

710.01 (a), 710.02, 710.02 (b) and 710.02 (c) have been modified to delineate more
clearly the categories of time limit actions and actions in which Shortened Statutory Periods
are set.

In 711.02 (c) final fee has been changed to --- issue fee ---. 711.03 and 711.03 (d)
have been rewritten. Minor corrections have been made in 711. 06 and 712.

In 714. 13, reference is made to the new procedure to be followed in treating amend-
ments after final.

901.05 (b) now incorporates the statement of the use of German Utility Models as refer-
ences as noted in Change Notice 7-1.

Additional text material has been added to 1109 and 1109.01.

1208 has been expanded to include the procedure to be followed in saving time in
preparing the Eraminer's Answer on appeal, Change Notice 7-2.

1302.04 has been revised to explain the procedure in citing references on allowance
of an application (Change Notice 7-5).

1302\. 05 has been amplified by referring back to the new procedure 608. 02.

1302.12 has been revised to explain more clearly the procedure in listing references
at time of allowance. A sentence has been added to 1302. 13.

Several index pages have also been modified in line with changes in the text.

The last change notice in Series 7 is Change Notice 7-5.

The Editor is cognizant of numerous other changes still to be made in matters of a
minor nature and in matters involving perfecting language and improvement in typography,
indexing and the like. It is anticipated that these will be incorporated in future revisions.

The cooperation of numerous professionals both in and out of the Office in recom-
mending improvements on the Manual is noted with appreciation and is further solicited.

W. B. Penn, Editor
Manual of Patent Examining Procedure

List of Replacement Pages

Title Page Revision List

102.1

139

193

194. 1 (Added)

211

52.1 (Eliminated)

213 (Reverse side blank)

213.1

54.1 (Added)

221

223

225

226.1 (Added)

247

249

251

253

90.1 (Added)

257

261

269 271

### MANUAL OF PATENT EXAMINING PROCEDURE

### Instructions Regarding Revision No. 8

Submitted herewith is Revision No. 8 of the Manual of Patent Examining Procedure,
Third Edition. The accompanying pages may be inserted in the Manual forthwith to re-
place those pages having corresponding page numbers and as further indicated below.

For the guidance of all users of the Manual the following brief explanations are
submitted:

201\. 07 headed "Continuation" now incorporates the Commissioner's Memorandum
relating to the filing of "Continuation" applications using the same drawings and speci-
fication of the pending application.

Some modifications have been made in 710.02 (b) relating to Shortened Statutory
Periods. Also, "One Month" has been changed to --- Thirty Days ---. 710.02 (c) now
adds (f) and (g) time limit situations. 713.02 and 713.09 cross references are noted to
other sections. 714. 13 has been extensively revised to incorporate the new procedure
in treating amendments after final action.

Page 117, new index heading 812.01 has been added to indicate the new paragraph
on page 128 setting forth the telephone practice in restriction and election of species
situations. 809 adds portions of the memorandum "Prosecution after Final Action" re-
lating to handling of linking claims. 809.03 refers to 809. 813 and 817 have been ex-
tensively revised. The sample restriction letter on pages 130 - 131 has been deleted.

Page 159 has been corrected to refer to ---. Group Managers ---. 1004 and 1005
have additional listings in the matters to be submitted to the Directors and Group
Managers, respectively.

Chapter 1100 on Interference has been revised in several sections, e.g. 1101.01 (1)
where the correct Rules are now noted ; 1101. 01 (o) where the last portion of the final
portion has been rewritten; 1101.02 (a) where extensive additions have been made;
1101.02 (c) where paragraph (4) has been rewritten and also 1101.02 (f), 1101.01 (a),
1105. 03 and 1107 where significant changes in text have been made. "Docket Branch"
has been replaced by --- Interference Service Branch --- in several sections.

1207 has added thereto the current procedure in treating amendments after final
action during the appeal and post-appeal stages. 1208.01, 1208. 02 and 1214. 07 have
added text material.

1302\. 04 is now revised to incorporate the procedure set forth in the Notice of
February 24, 1966 relating to Examiner's amendments to cite new references.

The Index has also been extensively revised in an attempt to bring it up to date.
Numerous other changes are still to be made.

With this Revision the contents of all Change Notices from Series 1 through Series
8, insofar as they reflect current practice, are now incorporated in the text of the
Manual. Accordingly, the Change Notice sheets Series 1 through 8 need no longer be
appended to the Manual.

### List of Replacement Pages

Title Page
Revision List

9
10.1

177

179

90.1

181

183

187

197

102.1

211

102\. 3 (Added)

213.1

117

217

125

221

127

223

129

257

132 (Blank)

259

159

271

161 (Reverse side blank)

273

169

283

171

285

173

287

175

176\. 1(Added)

213 (Reverse side blank)

131

### U.S. DEPARTMENT OF COMMERCE Patent Office Washington

## MANUAL OF PATENT EXAMINING PROCEDURE

### Instructions Regarding Revision No. 9

Submitted herewith is the group of pages constituting
Revision No. 9 of the Manual of Patent Examining Procedure,
Third Edition. Proper substitution for those pages in the
Manual having corresponding page numbers may be made forth-
with. The page numbers listed on the reverse side of this
page provide a means for determining that your set is
complete.

Information and instructions published in Change
Notice 9-1 have been included in these revised pages.
Accordingly, this Change Notice needs no longer be appended
to the Manual.

Paul M. Coughlan, Jr.
Editor, MPEP

For the guidance of all users of the Manual attention
is especially directed to:

707.05 (e)

Indication of Unofficial Classification

711

Express Abandonment by Attorney or Agent

714.16 (b)

Rule 312 Amendment with Motion under Rule 231

714.16 (c)

Rule 312 Amendment - Additional Claims

714.16 (d)

Handling Rule 312 Amendments

1101.01

Interferences between Applications - Difference in Effective Filing Dates

1102.01 (a)

Interference Memorandum - Applications Listed and Indication of Count

1302.04

Examiner's Amendment to Amend or Cancel Claims

(

(over)

## List of Replacement Pages

Title Page

117

119

133

54.1*

137

147

153

165

166.1*

(Added )

173

90.1

177

179

102.1

181

103

221

105

222.1*

(Added )

113

251

\*
Reverse side blank

(

## U. S. DEPARTMENT OF COMMERCE Patent Office Washington, D. C. 20231

## MANUAL OF PATENT EXAMINING PROCEDURE

### Instructions regarding Revision No. 10

Submitted herewith is the group of pages constituting
Revision No. 10 of the Manual of Patent Examining Procedure,
Third Edition. Proper substitution for those pages in the
Manual having corresponding page numbers may be made forth-
with. The page numbers listed on the reverse side of this
page provide a means for determining that your set is
complete.

Information and instructions published in Change
Notice 10-1 (Second Action Rejection, 829 0. G. 1755)
have not been included in these revised pages. Accordingly,
this Change Notice should be retained.

Paul M. Coughlan, Jr.
Editor, MPEP

For the guidance of all users of the Manual attention
is especially directed to:

201.07

Streamlined Continuation

201.13

Identity of Inventors

303

Endorsing Assignments on Pending Applications

306

Assignment of Division, Continuation, Substitute, and Continuation-in-Part Applications

602

Authentication of Original Application Oath

608.01(a)

Arrangement of Application

706.03(w)

Res Judicata

706.03(y)

Improper Markush Group

710.02(e)

Extension of Time

1402.01

Correction of Error in Joining Inventor

(over)

## понаммор до тизманаяла де до 901420 Jnej89 18SOS.O.G .codentdaew

## LIST OF REPLACEMENT PAGES

Title Page

10.1*

90.1

12.1*

113

155

233

34.1*

237

251

255*

156.1 (Eliminated)

\* Reverse side blank.

COMMERCE

U. S. DEPARTURE
Patent C.
Washington.
20231

# MANUAL OF PATENT FIANTTHING PROCEDURE Instructions Regarding Revision No. 11

Submitted herewith is the group of pages constituting
Revision No. 11 of the Manual of Patent Examining Procedure,
Third Edition. Proper substitution for those pages in the
Manual having corresponding page numbers may be made forth-
with. The page numbers listed on the reverse side of this
page provide a means for determining that your set is
complete.

Information and instructions published in Change
Notices 11-1 through 11-7 have been included in these revised
pages. Accordingly, these Change Notices should be removed
and discarded.

Paul M. Coughlan, Jr.
Acting Editor, MPEP

For the guidance of all users of the Manual attention
is especially directed to:

502

Hand Delivery of Duplicate Copy of Papers

608.01(b)

Abstract of the Disclosure

608.01 (c)

Background of the Invention

608.01 (m)

Form of the Claims

608.02(d)

Illustration in Drawings

706.03(1)

Telephone Practice in Multiplicity Rejections

707.07(d)

Language Used in Rejecting Claims

1111.14

Correction of Error in Joining Inventor

1208

Failure to Argue Rejection in Brief

(Over)

IESOS

## List of Replacement Pages

Title Page

90.1

26.1*

98.1* (added)

101

135

163

199

211

48.1* (added)

213*

221

225

72.1* (added)

243

245*

253

255*

## U. S. DEPARTMENT OF COMMERCE Patent Office Washington, D.C. 20231

### MANUAL OF PATENT EXAMINING PROCEDURE, 3rd Edition

Revision No. 12
S
20.TO9

The accompanying pages, constituting Revision 12,
should be substituted in the Manual.

Information and instructions published in all previous
Change Notices except 12-8 have been included in the Manual.
Accordingly, these Change Notices may be discarded, o: Only
Change Notice 12-8 should be retained.

The sections listed below include the changes pub-
lished in Change Notice 12-1 through 12-7, 12-9 and 12-10.

Eugene G. Botz
Acting Editor, MPEP

201.11
Continuity Between Applications (12-5)

305.02(a) Rejection of One Application On the Other (12-1)

706.07(a)
Final Rejection, When Proper On Second Action (12-3)

708.02
Special Examination (12-9)

710.02(e) Extension of Time (12-2)

715.01
809
Claims Linking, Distinct Inventions (12-6)

Reference Claims Foreign Filing Date

809.02(a) Election Required-Generic Claim Not Allowable (12-6)

812.01

Telephone Practice in Restriction Situations (12-6)
Citation of Art (12-6)

813
818
Election and Response (12-6)

1105.06
Form of Decision Letter (12-4)

1208
Examiner's Answer (12-7)

The sections listed below include changes not published
in the Change Notices of the twelfth (12) series;

The back side of the Title Page contains information of
special interest to Manual Owners outside the Patent Office.

607
Filing Fee

608.01(n) Dependent Claims

608.02(i) Transfer of Drawings From Prior Applications

(over)

2
BOHEMMOD 30 102011A130 .8 .0
95 1130 99359

IESOS .. 0.0 , nosyoldasw

707.01

(a)

Partial Signatory Authority

707.05

(a)

References Cited by Applicant (relocated)

714.10

Claims Added in Excess of Filing Fee

800

Restriction; Double Patenting-Subject Index

1005

Matters Submitted to Group Managers (item 14)

1101

Preliminaries to an Interference (item f)

1207

Amendment Filed With or After Appeal

( first six paragraphs deleted)

1216.01

Appeal to Court of Custom and Patent Appeals

1302.03

Status Letter of Allowability - POL-255

1402

Certificates of Correction - Office Mistake

Please use this list of page numbers for determining
that your set of revised pages is complete.

Title Page

108.1*

211

115

217

117

219*

10.1*

119

221

72.1*

120.1*

222.1*

121

225*

123

233

125

38.1*(eliminated)

127

129

80.1*(added)

131*

42.1* (added)

133

159

48.1

90.1

161*

102.1

163

54.1*

102.3*

1.87

107

209

*Reverse side blank

# IMANUAL OF PATENT EXAMINING PROCEDURE, 3rd. Ed. Change Notice SERIES NO. 12 - 8

March 7, 1967

## CHAINS OF CONTINUING APPLICATIONS

In view of a recent decision of an enlarged panel of the Board of Appeals the
p. artice involving applications which claim the benefit of earlier filing dates, under
3. U. S. C. 120, shall be as follows:

When an applicant has filed a plurality of applications disclosing common
subject matter, a later filed application can only obtain the benefit of the filing date
of an earlier filed copending application or of one copending with the earlier filed
application. For example, in a chain of four successively file applications wherein
no more than two were copending at any one time, the last filed application is not
entitled to the benefit of the date of the first filed application.

The Group Manager should be informed and keep a record of situations
wherein an applicant is refused the benefit of an earlier filing date in accordance
with this notice.

Richard A. Wahl
Assistant Commissioner

## 23DAS U.S. DEPARTMENT OF COMMERCE Patent Office Washington, D.C. 20231 MANUAL OF PATENT EXAMINING PROCEDURE Third Edition

### Instructions Regarding Revision No. 13

The pages constituting Revision No. 13 of the Manual
of Patent Examining Procedure, Third Edition, are transmitted
herewith. These pages should be inserted in the Manual to
replace those pages having corresponding page numbers, or as
additional pages. The page numbers listed on the reverse side
of this sheet provide a means for determining that your set
is complete.

Information and instructions published in all previous
Change Notices, insofar as they reflect current practice, through
13-3, with the exception of 12-8, have been incorporated into the
Manual. Accordingly, these Change Notices need no longer be ap-
pended to the Manual. Only Change Notice 12-8 should be retained.

The Acting Editor is cognizant of the many errors and
omissions in the Index and Appendices. It is anticipated that
these will be corrected in a future revision.

George F. Mautz
Acting Editor, M.P.E.P.

For the guidance of all users of the Manual, attention
is especially directed to:

104
Power to Inspect Application

201.07
Streamlined Continuation

303
Endorsing Assignments on Pending Applications

607
Filing Fee

707.05(a)
Copies of Cited References Provided by Reference
Order Center

707.05(b)
References Cited by Applicant

707.07(d)
Language To Be Used In Rejecting Claims

710.02 (c)
Time Limit Actions: Situations In Which Used
711.06
Abstracts and Abbreviatures

714.16(c)
Amendment Under Rule 312, Additional Claims

714.19
List of Amendments, Entry Denied

901.05
Foreign Patents

901.05(a)
Citation Data

Foreign Language Names of Months

Foreign Language Names and Abbreviations for the
United States of America

Foreign Patent Data

Charge for Pending Application Files

905.05
1302.07
Use of Retention Labels to Preserve Abandoned
Companion Applications (In Issue)

1401.11
Allowance and Issue (Reissue)

(

### LIST OF REPLACEMENT PAGES

90.1

10.1* (added)

103

105

113

137

42.1*

138.1 (added)

139

157*

222.1*

80.1

223

225

226.1(eliminated) 233

CU-121 UNITED STATES GOVERNMENT
For
(11-63)
(Pres. by
A.O. 200-10

#### Memorandum

10
: All Holders of Manual of Patent
Examining Procedure

FROM
: W. Stolwein, w. Italien
Acting Editor, M.P.E.P.

U.S. DEPARTMENT OF COMMERCE
PATENT OFFICE

DATE: September 19, 1967

In reply refer to:

SUBJECT: Revision 13 to M.P.E.P.

This is to inform you that the page numbered 10.1
in Revision 13 does not replace the existing 10.1, identi-
fied as Rev. 12, Apr. 1967. Therefore, it is necessary
to retain the Rev. 12 page 10.1 and renumber it as 10.2
since it will follow the new 10.1 in Revision 13.

# MANUAL OF PATENT EXAMINING PROCEDURE Buo.(150Third Edition

# Instructions Regarding Revision No. 14

Revision No. 14, which is transmitted herewith, includes
pages to be substituted for pages with corresponding numbers
presently in the Manual and also pages to be added thereto in
their proper sequence.

A checklist of pages for the entire Third Edition through
Revision 14 has been added. The assistance of the staff of the
Scientific Library in comparing this list with library records
is noted with appreciation.

Three new sections (1710-1710.02) which are concerned
with U.S. - German - Search Exchange have also been added. These
sections, while following Section 1705 physically, do not follow
it numerically because additional insertions numbered 1706-1709
will be forthcoming.

The sample action in Section 707.03 has been deleted as
obsolete. The elimination of obsolete form paragraphs from
Appendix III has been delayed pending further procedural changes
which will affect this Appendix.

Only Change Notices 12-8 and 15-1 should be retained
since the substance of all other Notices is now incorporated
into the Manual.

Walter Stolwein
Acting Editor, M.P.E.P.

The sections listed below are of special interest:

201.06

Division

201.07
Continuation

608.01(p)

Completeness

608.02

Drawing

707.07(a)

Action On Formal Matters

707.07(c)

Draftsman's Requirement

Extension Of Time

710.02 (e)
(Incorporates Change Notice 14-1)

(

## 714.13

1208
1710
1710.01
1710.02

Amendments After Final Rejection
Or Action Procedure Followed
(Incorporates Change Notice 14-1)
Examiner's Answer
U.S. - German Search Exchange
U.S. Origin Applications
German Origin Applications
(1710 - 1710.02 incorporate
Change Notice 14-3)

LIST TO DETERMINE WHETHER REVISION 14 PAGES ARE COMPLETE

Title Page

VII*

8.1*

79 (eliminated)

10.1

90.1

102.1

102.3

105

127

48.1

161

211

222.1

245

*added

## MANUAL OF

## PATENT EXAMINING PROCEDURE Third Edition, November 1961

DEPARTMENT OF COMMERCE
UNITED STATES OF AMERICA

U.S. DEPARTMENT OF COMMERCE . PATENT OFFICE

Rev. 14, Oct. 1967

For sale by the Superintendent of Documents, U.S. Government Printing Office,
Washington, D.C. 20402. Catalog No. C 21.15:961. Subscription Price $8.50
per year: 82.50 additional for foreign mailing.

The Patent Office does not handle the sale of the Manual, distribution of notices and
revisions or change of medres of those on the subscription fist.

Correspondence relating to any of the above items should be sent to the Superin-
tendent of Documents at the following address:
Superintendent of Documents
Mail List Section
P.O. 1583
Washington, D.C. 20102

Employees of the Fatent Offes muld direct their orders for the Manual, replacement
pages, notices, and revisions to the Scientific Library.

First Edition, November 1949

Revision 1, November 1950

Revision 2, December 1951

Revision 3, May 1952

Second Edition, November 1953

Revision 1, April 1855

Revision 2, June 1956

Revision & June 1057

Revision & July 1858

Third Edition, November 1961

Revision 1, January 1964

Revision 2, November 1964

Revision 3, January 1965

Revision 4, April 1906

Revision 5, July 1965

Revision 6, October 1965

Revision 7, January 1966

Revision 8, April 1966

Revision 9, July 1966

Revision 10, October 1966

Revision 11, January 1967

Revision 12, April 1967

Revision 13, July 1967

Revision 14, October 1967

## Foreword

This Manual is published to provide examiners in the Patent Office with
a reference work on the practice and procedure within the Office as it relates
to their duties and operations. It contains instructions to examiners, as well
as other material in the nature of information and interpretation, and gen-
erally outlines the current procedure which the examiners are required or
authorized to follow in appropriate cases in the normal examination of
applications.

Examiners will continue to be governed as in the past by the applicable
statutes, the Rules of Practice, decisions, and orders and instructions issued
by the Commissioner, the Director, Patent Examining Operation, or the Super-
visory Examiners. Orders and Notices still in force which relate to the subject
matter included in this Manual are incorporated and identified as such. Orders
and Notices, or portions thereof, relating to the examiners' duties and functions
included in this Manual which have been omitted or not incorporated in the
text may be considered obsolete. Interference procedure not directly involv-
ing the Primary Examiner is not included in this Manual and, therefore,
Orders and Notices relating thereto remain in force.

Subsequent changes in practice and other revisions will be incorporated
in the form of substitute or additional pages for the Manual.

DAVID L. LADD
Commissioner.

NOVEMBER 15, 1961.

## Acknowledgments

Preparation of the text of the Third Edition was directed by Ernest
A. Faller, Editor, under the supervision of Manuel C. Rosa, Director, Patent
Examining Operation.

The Supervisory Examiners, Isaac G. Stone, Norman H. Evans, Burn-
ham Yung Kwai, Sam Spintman, John S. Hull, Thomas F. Murphy, Harvey
E. Kauffman and George A. Gorecki took an active part in this work,
especially in rewriting Chapter 700.

Others who assisted were Pasquale J. Federico, Hyman B. Freehof,
Examiners-in-Chief; Joseph Schimmel, Deputy Solicitor; Samuel Levin,
La Verne L. Williams, Interference Examiners; and Florence A. Hoffman,
Division Clerk.

Suggestions for improving the form and content of the Manual are
always welcome. They should be addressed to:

Commissioner of Patents,
Washington, D.C. 20231

4.3.9.M. adı ło nousib3 6;hi ] an) 70 198 stalqmo) s mmol o'l' bobos/ asgn"! lo tilised
\+ notival dauoniT

DI AVOR87/3X 30 BETALT

## Contents

Pago

Checklist of Pages

Introduction

Chapter 100 Secrecy and Access

200 Types, Cross-Noting, and Status of Applications

300 Ownership and Assignment

400 Representative of Inventor or Owner

500 Receipt and Handling of Mail and Papers

600 Parts, Form and Content of Application

700 Examination of Applications

800 Restriction; Double Patenting

117

900 Prior Art, Classification, Search

137

1000

Matters Submitted to Commissioner, Directors and Group Managers.

159

1100

Interference

163

1200

Appeal

209

1300

Allowance and Issue

221

1400

Correction of Patent

229

1500

Design Patents.

235

1600

Plant Patents

239

1700

Miscellaneous

243

Appendix I

Table of Orders and Notices

247

Appendix II

List of Decisions Cited

253

Appendix III

Form Paragraphs

255.1

Index

257

## Checklist of Pages Needed To Form a Complete Set of the Third Edition of the M.P.E.P. Through Revision 14 DATES OF REVISIONS 1-14

Rev. No.

1
2
8
5
6
7

Date

Rev. No.

Dale

Jan. 1964

Apr. 1966

Nov. 1964

July 1966

Jan. 1905

Oct. 1966

Apr. 1965

Jan. 1967

July 1965

Apr. 1967

Oot. 1965

July 1967

Jan. 1966

Oct. 1967

Page

Revision No.

Page

Revision No.

Title Page (2 sides)

14-14

III-IV

Unrevised

Chapter 700

V-VI

14-14

VII

61-62

13-13

63-64

14-13

Introduction

Unrevised

65-66

7-7

67-68

12-7

1-2

69-70

5-5

Chapter 100

71-72

12-11

72.1

3-4

11-13

73-74

12-12

5-6

5-5

75-76

12-12

77-78

14-14

Chapter 200

80.1-80.2

13-13

7-8

13-14

81-82

14-14

8.1

83-84

13-13

9-10

14-14

85-86

13-13

10.1-10.2

14-14

87-88

12-12

11-12

14-10

89-90

12-13

12.1

90.1-90.2

13-14

1-1

91-92

13-18

14.1

93-94

13-13

15-16

2-unrevised

95-96

13-13

17-18

1-13

97-98

11-11

19-20

13-13

98.1

99-100

8-8

Chapter 300

101-102

11-11

21-22

13-12

102.1-102.2 102.3

14-14 14

Chapter 400

103-104

13-13

105-106

14-14

23-24

Unrevised

107-108

4-12

25-26

Unrevised-2

108.1

26.1

109-110

Unrevised

27-28

Unrevised

111-112

1-1

29-30

Unrevised

113-114

13-13

Chapter 500

115-116

12-12

31-32

11-11

Chapter 800

Chapter 600

117-118

12-2

119-120

12-12

33-34

11-11

120.1

34.1

121-122

12-12

35-36

14-13

123-124

12-12

37-38

12-12

125-126

12-12

39-40

13-13

127-128

14-14

41-42

11-13

129-130

12-12

42.1

131

48-44

11-11

133-134

12-unrevised

45-46

14-14

135 -- 136

11-11

47-48

14-14

48.1-48.2

14-14

Chapter 900

49-50

14-14

51-52

14-14

137-138

13-13

53-54

14-14

138.1-138.2

13-13

54.1

139-140

13-13

55-56

12~12

141-142

1-1

57-58

4-7

143-144

1-unrevised

59-60

12-12

145-146

4-4

Revision No.

Page

Revision No.

147-148

9-9

Chapter 1700

149-150 (one page) 151-152

1 6-8

243-244

11-11

153-154

9-9

245-246

14-14

155-156

10-10

157

Chapter 1100 (old)

Chapter 1000

163-164 165-166

Unrevised 2-2

159-160

8-12

167-168

Unrevised

161

169-170 171-172

2-2 2-3

Chapter 1100 (new)

172. 1 173-174

3 Unrevised-1

163-164

12-12

175-176

2-2

165-166

9-9

176. 1

166.1

177-178

1-1

167-168

5-5

179-180

Unrevised

169-170

5-8

181-182

Unrevised

171-172

8-8

183-184

Unrevised

172.1

185-186

2-2

173-174

8-9

187-188

Unrevised

175-176

8-8

189-190

2-4

176.1

191-192

2-2

177-178

9-9

192. 1

179-180

9-8

193-194

3-Unrevised

181-182

8-9

195-196

1-1

183-184

8-8

196. 1

185-186

5-5

197-198

Unrevised

187-188

12-12

199-200

3-3

189-190

5-blank page

201-202

Unrevised

193-194

7-7

203-204

1-1

194. 1

204.1

195-196

5-5

205-206

Unrevised

197-198

5-8

207-208

Unrevised

199-200

11-5

201-202

5-5

Appendix I

203-204

5-5

205

247-248 249-250

2-7 7-3

Chapter 1200

251-252

10-10

209-210

12-12

Appendix II

211-212

14-14

213

253-254

11-11

213. 1-214

8-1

255

215-216

Unrevised

217-218

12-12

Appendix III

219

255. 1-255.2

(Revision number not on

Chapter 1300

255. 3-255. 4 255. 5-255.6

these pages-distributed with Revision 3)

221-222

12-12

222. 1

Index

223-224

13-13

257-258

8- Unrevised

225-226

13-13

259-260

Unrevised-8

227-228

6-6

261-262

7-Unrevised

Chapter 1400

263-264

Unrevised

265-266

Unrevised

229-230

Unrevised-1

267-268

Unrevised

231-232

1-unrevised

269-270

Unrevised-7

233-234

13-13

271-272

8-7

273-274

5-8

Chapter 1500

275-276

2 -* Unrevised

235-236

2-2

277-278

Unrevised

236. 1

279-280

Unrevised

237-238

6-10

281-282 283-284

Unrevised 8-8

Chapter 1600

285-286 287-288

8-8 8-8

239-240

Unrevised

Change Sheet

12-8

241-242

Unrevised

Change Sheet

15-1

*Revision number does not appear on this page-distributed with Revision 2.

# Introduction

# Constitutional Basis

The Constitution of the United States pro-
vides :

"ART. 1, SEC. 8. The Congress shall have
power ... To promote the progress of science
and useful arts, by securing for limited times
to authors and inventors the exclusive right to
their respective writings and discoveries."

# Statutes

Pursuant to the foregoing provision of the
Constitution, Congress has passed a number of
statutes under which the Patent Office is or-
ganized and our patent system is established.
The provisions of the statutes can in no way
be changed or waived by the Patent Office.
Prior to January 1, 1953, the law relating to
patents consisted of various sections of the Re-
vised Statutes of 1874, derived from the Pat-
ent Act of 1870 and numerous amendatory and
additional acts. These statutes, as well as old
Title 35 of the United States Code, were com-
piled and reprinted several times prior to Jan-
uary 1, 1953, in a pamphlet entitled "Patent
Laws".

By an Act of Congress approved July 19,
1952, which came into effect on January 1,
1953, the patent laws were revised and codi-
fied. With certain exceptions applying to
applications filed and patents issued before
January 1, 1953, this law governs all cases in
the Patent Office. The patent law is Title 35
of the United States Code, which contains 95
sections numbered from 1 to 293, with gaps
in the numbering between various chapters of
the title. In referring to a particular section
of the new patent code the citation is given,
for example, as, 35 U.S.C. 31. The current
edition of the pamphlet "Patent Laws" re-
prints the patent code and some additional
statutes. The pamphlet also contains tables
showing where subject matter comparable to
present title 35 may be found in prior statutes,
and where subject matter of prior statutes will
be found in new title 35.

# Rules of Practice

One of the sections of the patent statute,
namely, 35 U.S.C. 6, authorizes the Commis-

sioner of Patents, subject to the approval of
the Secretary of Commerce, to establish regula-
tions, not inconsistent with law, for the con-
duct of proceedings in the Patent Office.
These regulations are set forth in a Patent
Office booklet entitled "Rules of Practice of the
United States Patent Office in Patent Cases".
The Rules of Practice have a long history,
going back to pamphlets of general informa-
tion to the public first issued in 1836. The
content has been determined by history, tra-
dition and other factors. Primarily the func-
tion of the Rules of Practice is to advise the
public of the regulations which have been
established in accordance with the statutes and
which must be followed before the Office. But
the Patent Office Rules of Practice have al-
ways additionally included, as numbered rules,
informational material, copies of sections of
the patent statutes, purely internal procedure,
and the like. It goes without saying that the
Rules of Practice govern the Examiners. as
well as applicants and their attorneys.

# Commissioner's Orders and Notices

From time to time, the Commissioner of
Patents has issued Orders and Notices relating
to various specific situations that have arisen
in operating the Patent Office. Notices and
circulars of information or instructions have
also been issued by the Supervisory Examiners
under authority of the Commissioner. Orders
and Notices have served various purposes in-
cluding directions to the examiners giving
them instruction, information, interpretations
and the like. Some may be for the informa-
tion of the public, advising what the Office will
do under specified circumstances.

# Decisions

In addition to the statutory regulations, the
actions taken by the Examiner in the examina-
tion of applications for patents are to a great
extent governed by decisions on prior cases.
Those dissatisfied with an Examiner's action
may have it reviewed. In general, it may be
stated that from that portion of the Exam-
iner's action pertaining to objections on formal
matters, a petition for review may be taken
to the Commissioner of Patents (1002) and

# MANUAL OF PATENT EXAMINING PROCEDURE

from that portion of the Examiner's action
pertaining to the rejection of claims on the
merits, an appeal may be taken to the Board
of Appeals (1201). The distinction is set
forth in Rules 181 and 191. The decision of
the Commissioner on formal matters is final

but the decision of the Board of Appeals on
questions passed on by it may be carried to
the courts. See 1216. In citing decisions as
authority for his actions, the Examiner should
cite the decision in the manner set forth in
707.06.

Printed page 1

Printed page 2

Printed page 3

Printed page 4

Printed page 5

Printed page 6

Printed page 7

Printed page 8

Printed page 9

Printed page 10

Printed page 11

Printed page 12

Printed page 13

Printed page 14

Printed page 15

Printed page 16

Printed page 17

Printed page 18

Printed page 19

Printed page 20

Printed page 21

Printed page 22

Printed page 23

Printed page 24

Printed page 25

Printed page 26

Printed page 27

Printed page 28

Printed page 29

Printed page 30

Printed page 31

Printed page 32

Printed page 33

Printed page 34

Printed page 35

Printed page 36

Printed page 37

Printed page 38

Printed page 39

Printed page 40

Printed page 41

OCR transcription for search; preserved printed pages are authoritative

Setzen Sie Ihre Recherche in ChatGPT oder Claude fort