700

OCR transcription for search; preserved printed pages are authoritative

# Chapter 700 Examination of Applications

701
Statutory Authority for Examination

702
Requisites of the Application
702.01
Obviously Informal Cases

703
"General Information Concerning Patents" Sent
Instead of "Rules of Practice"

704
Search

705
Patentability Reports

705.01
Instructions re Patentability Reports

705.01 (a)
Nature of P. R., Its Use and Disposal

705.01 (b)
Sequence of Examination

705.01 (c)
Counting and Recording P. R.'s

705.01 (d)
Duplicate Prints of Drawings

705.01 (e)
Limitation as to Use

705.01 (f)
Interviews With Applicants

706
Rejection of Claims

706.01
Contrasted With Objections

706.02
Rejection on Prior. Art

706.02 (a)
Establishing "Well Known" Prior Art

708.03
Rejections Not Based on Prior Art

706.03 (a)
Nonstatutory Subject Matter

706.03 (b)
Barred by Atomic Energy Act

706.03(c)
Functional

706.03 (d)
Vague and Indefinite

706.03 (e)
Product by Process

706.03 (f)
Incomplete

708.03 (g)
Prolix

706.03 (h)
Nonstatutory Claim

706.03 (1)
Aggregation

706.03(j)
Old Combination

706.03(k)
Duplicate Claims; Double Patenting

706.03(1)
Mutiplicity

706.03 (m)
Nonelected Inventions

708.03 (n)
Correspondence of Claim and Disclosure
New Matter

706.03(0)
706.03 (p)
No Utility
706.03 (q)
Obvious Method

706.03 (s)

Statutory Bar

706.03 (t)

Other Assigned Application

706.03 (u)
Disclaimer

706.03 (v)

After Interference or Public Use Proceed-
ing

706.03 (w)
Res Judicata

706.03 (x)
Reissue

708.03 (y )
Improper Markush

706.03(z)
Undue Breadth

706.04
Rejection of Previously Allowed Claim

706.05
Rejection After Allowance of Application

706.06

Rejection of Claims Copied from Patent

706.07
Final Rejection

706.07(a)
When Proper on Second Action

706.07 (h)
When Proper on First Action

706.07 (c)
Premature

706.07(d) Withdrawal of Premature

706.07(e)
Withdrawal of Final Rejection, General
707
Examiner's Letter or Action

707.01
Primary Examiner Indicates Action for New
Assistant

707.01 (a)
Partial Signatory Authority

707.02
Actions which Require the Personal Attention
of the Primary Examiner

707.02(a)
Cases Up for Third Action and Five-Year
Cases

707.03
Sample of Conventional "First Action" Letter

707.04
Initial Sentence

707.05
Citation of References

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

707.05 (b)
References Cited By Applicant

707.05(c)
Grouped at Beginning of Letter

707.05 (d)
Reference Cited in Subsequent Actions

707.05 (e)
Data Used in Citing References

707.05(f)
Effective Dates of Declassified Printed
Matter

707.05 (g)
Incorrect Citation of References

707.06
Citation of Decisions, Orders and Notices

707.07
Completeness and Clarity

707.07 (a)
Action on Formal Matters

707.07 (b)
Requiring New Oath

707.07 (c)
Draftsman's Requirement

707.07 (d)
Language To Be Used in Rejections

707.07 (e)
Note All Outstanding Requirements

707.07 (f)
Answer All Material Traversed

707.07(g)
Plecemeal Examination

707.07 (h)
Notify of Inaccuracies in Amendment

707.07 (1)
Each Claim To Be Mentioned in Each
Letter

707.07(j)
State When Claims Are Allowable

707.07 (k)
Numbering Paragraphs

707.08
Review and Initialing by Assistant Examiner
707.00
Signing by Primary or Other Authorized
Examiner

707.10
Entry

707.11
Date

707.12
Mailing

707.13
Returned Office Action

708
Order of Examination

708.01
List of Special Cases

708.02
Petition to Make Special

708.03
Examiner Tenders His Resignation

700
Suspension of Action

709.01
Overlapping Applications by Same Applicant
or owned by Same Assignee

709.02
Actions Following Correspondence under Rule
202

710
Period for Response

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# MANUAL OF PATENT EXAMINING PROCEDURE

710.01 Statutory Period

710.01 (a) Statutory Period : How Computed

710.02
Shortened Statutory Period and Time Limit
Actions

710.02 (b)
Situations in Which Used : Shortened Stat-
@ ITOutory Period

710.02(c)
Situations in Which Used: Time Limit
Actions

710.02 (d)
Differences Between Shortened Statutory
and Time Limit Periods

710.02 (e)
Extension of Time

710.04
Two Periods Running

710.04 (a)
Copying Patent Claims

710.05
Period Ending on Saturday, Sunday or Holi-

day

710.06
Miscellaneous Factors Determining Date

711
Abandonment

711.01
Express or Formal Abandonment

711.02
Failure to Take Required Action During Statu-
tory Period

711.02 (a)
Insufficiency of Response

711.02(b)
Special Situations Involving Abandonment

711.02 (c)
Termination of Proceedings

711.03
Reconsideration of Holding of Abandonment :
Revival

711.03 (a)
Holding Based on Insufficiency of Response
711.03 (b)
Holding Based on Failure to Respond With-
In Period

711.03 (c)
Petitions Relating to Holding of Abandon-
ment

711.03 (d) Examiner's Statement on Petition

711.04 Disposition of Abandoned Applications

711.04 (a)
Pulling and Forwarding

711.04(b)
Ordering Abandoned Files

711.05 Letter of Abandonment Received After Appli-
cation is Allowed

711.06 Abstracts and Abbreviatures

711.06(a) Use of Abstract or Abbreviature as Refer-
ence

712
Abandonment for Failure to Pay Issue Fee (For-
feiture)

713
Interviews

713.01
General Policy, How Conducted

713.02
Interviews Prior to First Official Action

713.03
Interviews for "Sounding Out" Examiner Not
Permitted

713.04
Substance of Interview Must Be Made of
Record

713.05
Interviews Prohibited or Granted, Special
Situations

713.06
No Inter Partes Questions Discussed Ex Parte

713.07
Exposure of Other Cases

713.08
Demonstration, Exhibits, Models

713.09
Finally Rejected Application

713.10
Interview Preceding Filing Amendment Under
Rule 312

714
Amendments, Applicant's Actions

714.01
Signatures to Amendments

714.01 (a)
Unsigned or Improperly Signed Amend-
ment

714.01(b) Unsigned or Improperly Signed Amend-
ment, Disposal of

714.01 (c)
Signed by Attorney Not of Record

714.01 (d)
Amendment Signed by Applicant But Not
by Attorney of Record

714.01 (e)
Power of Attorney to a Firm
714.02
Must Be Fully Responsive

714.03
Amendments Not Fully Responsive, Action to
Be Taken

714.04
Claims Presented In Amendment with No At-
tempt to Point Out Patentable Novelty

714.05
Examiner Should Immediately Inspect

714.06
Amendments Sent to Wrong Group

714.07
Amendments Not in Permanent Ink

714.08
Telegraphic Amendment

714.09
Amendments Before First Office Action

714.10
Claims Added in Excess of Filing Fee

714.11
Amendment Filed During Interference Pro-
ceedings

714.12
Amendments After Final Rejection or Action
714.13
Amendments After Final Rejection or Action,
Procedure Followed

714.14
Amendments After Allowance of All Claims

714.15
Amendment Mailed Before, but Received in
Examining Division After Allowance

714.16
Amendment After Notice of Allowance, Rule
312

714.16(a)
Copied Patent Claims

714.16(b)
Filed with a Motion Under Rule 231

714.16 (c)
Additional Claims

714.16(d)
Handling

714.16(e)
Entry in Part

714.17
Amendment Filed After the Period for Re-
sponse Has Expired

714.18
Entry of Amendments

714.19
List of Amendments, Entry Denied

714.20
List of Amendments Entered in Part

714.21
Amendments Inadvertently Entered, No Legal
Effect

714.22
Entry of Amendments, Directions for

714.23
Entry of Amendments, Directions for, Defec-
tive

714.24
Amendment of Amendment

714.25
Discourtesy of Applicant or Attorney

715
Swearing Back of Reference-Affidavit Under
Rule 131

715.01
Reference Claims Foreign Filing Date

715.01 (a)
Reference a Joint Patent to Applicant and
Another

715.01 (b)
Reference and Application have Common
Assignee

715.01 (c)
Reference is Publication of Applicant's
Own Invention

715.02
General Rule as to Generic Claims

715.03
Exceptions and Practice Relative to Chemical
Cases

715.04
Who May Make Affidavit

715.05
Patent Claiming Same Invention

715.06
Affidavit Under Rule 131 Must Be Removed
Before Interference

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704

<!-- PageHeader="JAUS3 EXAMINATION OF APPLICATIONS TVAIA" -->

715.07 : Facts and Documentary Evidence

715.07 (#) Diligence | berryizen at beno wi moda

715.07 (b) Interference Testimony Sometimes Used

715:07 (€) Acts Relied UponMuet Have Been ;Car-
on birrode s ried Out in This Country

715.07(d)) Disposition of Exhibita

715.06 Passed Upon By Primary Examiner

715.00 Seasonable Presentation

716 Affidavits Traversing Rejections, Rule 132
717
File Wrapper
717.01 Papers in File Wrapper

717.01 (a) Arrangement of Papers in File Wrapper

717.01 (b) Prints

717.02 Date Entered on File Wrapper

717.02 (a) Statutory Period Ends On Sunday or Holl-
day
Name or Residence of Inventor or Title
Changed

717.02(b)

717.03
Classification During Examination

717.04
Index of Claims

717.05
Field of Search

717.06
Foreign Filing Dates

717.07
Related Applications

## 701 Statutory Authority for Examina- tion

35 U.S.C. 131. The Commissioner shall cause an ex-
amination to be made of the application and the alleged
new invention ; and if on such examination it appears
that the applicant is entitled to a patent under the law,
the Commissioner shall issue a patent therefor.

The main conditions precedent to the grant
of a patent to an applicant are set forth in
35 U.S.C. 101, 102, 103.

### 702 Requisites of the Application

The Examiner should be careful to see that
the application meets all the requisites set
forth in Chapter 600 both as to formal matters
and as to the completeness and clarity of the
disclosure. If all of the requisites are not
met, applicant may be called upon for neces-
sary amendments. Such amendments, how-
ever, must not include new matter.

### 702.01 Obviously Informal Cases

When an application is reached for its first
action and it is then discovered to be imprac-
tical to give a complete action on the merits
because of the paucity of disclosure, the fol-
lowing procedure may be followed: (1) A
reasonable search should be made of the in-
vention so far as it can be understood from the
disclosure, objects of invention and claims and
any apparently pertinent art cited; (2) Infor-
malities noted by Application Branch and de-
ficiencies in the drawing should be pointed out

by means of attachments to the Examiner's let-
ter (see 707.07(a)) ; (3) A requirement should
be made that the specification he revised to con-
form to idiomatic English and United States
practice; (4) The claims should be rejected as
failing to define the invention in the manner
required by 35 U.S.C. 112 if they are informal.
A blanket rejection is usually sufficient.

The Examiner should not attempt to point
out the specific points of informality in the
specification and claims .. The burden is on the
applicant to revise the application to render
it in proper form for a complete examination.

Applicants should make every effort to follow
U.S. practices and terminology when preparing
a case for filing. If this has not been done, a
prompt amendment should be made, avoiding
the introduction of new matter, but putting the
case in proper form.

For the procedure to be followed when only
the drawing is informal, see 608.02(a) and
608.02(b).

### 703 "General Information Concerning Patents" Sent Instead of "Rules of Practice"

The pamphlet "General Information Con-
cerning Patents" may be sent to an applicant
handling his own case when the Examiner
deems it advisable.

### 704 Search

After reading the specification and claims,
the Examiner searches the prior art.

The subject of searching is more fully
treated in Chapter 900. See 904 through
904.02. The invention should be thoroughly
understood before a search is undertaken.
However, informal cases, or those which can
only be imperfectly understood when they
come up for action in their regular turn are
also given a search, in order to avoid piece-
meal prosecution.

### PREVIOUS EXAMINER'S SEARCH

When an examiner is assigned to act on an
application which has received one or more ac-
tions by some other examiner, full faith and
credit should be given to the search and action
of the previous examiner unless there is a clear
error in the previous action or knowledge of
other prior art. In general the second Exam-
iner should not take an entirely new ap-
proach to the case or attempt to reorient the
point of view of the previous Examiner, or
make a new search in the mere hope of finding
something. See 717.05.

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705

## 705 Patentability Reports

Where an application, properly assigned to
one examining group, is found to contain one
or more claims per se classifiable in one or more
other groups, which claims are not divisible
inter se or from the claims which govern classi-
fication of the application in the first group, the
application may be referred to the other group
or groups concerned for a report as to the pat-
entability of certain designated claims. This
report will be known as a Patentability Report
(P.R.) and will be signed by the Primary Ex-
aminer in the reporting group.

The report, if legibly written, need not be
typed.

Note that the Patentability Report practice
is suspended, except in extraordinary circum-
stances. See 705.01 (e).

## 705.01 Instructions re Patentability Reports

In the prosecution of an application under
conditions authorized in the Notice of Novem-
ber 10, 1948, relating to Patentability Reports,
the following procedure should be observed.

When an application comes up for any ac-
tion and the Primary Examiners involved
agree that a Patentability Report is necessary,
the application will be forwarded to the proper
group with a memorandum attached, for in-
stance, For Patentability Report from Group
as to Claims
.

## 705.01(a) Nature of P.R., Its Use and Disposal

The Primary Examiner in the group from
which the Patentability Report is requested, if
he approves the request, will direct the prepa-
ration of the Patentability Report. This Pat-
entability Report will be written or typed on a
memorandum form and will include the cita-
tion of all pertinent references and a complete
action on all claims involved. The field of
search covered should be endorsed on the file
wrapper by the Examiner making the report.
When an Examiner to whom a case has been
forwarded for a Patentability Report is of the
opinion that final action is in order as to the
referred claims, he should so state. The Pat-
entability Report when signed by the Primary
Examiner in the reporting group will be re-
turned to the group to which the application is
regularly assigned.

The Examiner preparing the Patentability
Report will be entitled to receive an explana-

tion of the disclosure from the Examiner to
whom the case is assigned to avoid duplication
of work. If the Primary Examiner in a re-
porting group is of the opinion that a Pat-
entability Report is not in order, he should so
advise the Primary Examiner in the forward-
ing group.

### DISAGREEMENT AS TO CLASSIFICATION

Conflict of opinion as to classification may
be referred to an Examiner of Classification
for decision.

If the Primary Examiner in the group
having jurisdiction of the case agrees with the
Patentability Report, he should incorporate the
substance thereof in his action, which action
will be complete as to all claims. The Pat-
entability Report in such a case will not be
given a paper number but will be allowed to
remain in the file until the case is finally dis-
posed of by allowance or abandonment, at
which time it should be removed.

#### DISAGREEMENT ON PATENTABILITY REPORT

If the Primary Examiner does not agree
with the Patentability Report or any portion
thereof, he may consult with the Primary Ex-
aminer responsible for the report. If agree-
ment as to the resulting action cannot be
reached, the Primary Examiner having juris-
diction of the case need not rely on the Pat-
entability Report but may make his own action
on the referred claims, in which case the Pat-
entability Report should be removed from the
file.

### APPEAL TAKEN

When an appeal is taken from the rejection
of claims, all of which are examinable in the
group preparing a Patentability Report, and
the application is otherwise allowable, formal
transfer of the case to said group should be
made for the purpose of appeal only. The
receiving group will take jurisdiction of the
application and prepare the examiner's answer.
At the time of allowance, the application may
be sent to issue by said group with its clas-
sification determined by the controlling claims
remaining in the case.

### 705.01(b) Sequence of Examination

In the event that the Primary Examiners
concerned in a P.R. case cannot agree as to the
order of examination by their groups, the
Primary Examiner having jurisdiction of the
case will direct that a complete search be made

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405.01(e)

<!-- PageHeader="ERTOS EXAMINATION OF APPLICATIONS THAM" -->

of the art relevant to his claims prior to re-
ferring the case to another group for report.
The group to which the case is referred will
be advised of the results of this search.

If the Supervisory Primary Examiners are of
the opinion that a different sequence of search
is expedient, the order of search should be corre-
spondingly modified.

## 705.01(c) Counting and Recording P. R.'s

The forwarding of the application for a Pat-
entability Report is not to be treated as a
transfer by the forwarding group. When
the P.R. is completed and the application is
ready for return to the forwarding group,
it is not counted either as a receipt or action
by transfer. Credit, however, is given for the
time spent. See 1705.

A box is provided on each file wrapper
headed "P.R. Div.
" and the number of
the group making the P.R. is entered in
pencil.

The date status of the application in the
reporting group will be determined on the
basis of the dates in the group of original
jurisdiction. To insure orderly progress in the
reported dates, a timely reminder should be
furnished to the group making the P.R.

## 705.01(d) Duplicate Prints of Draw- ings

In Patentability Report cases having draw-
ings, the examiner to whom the case is as-
signed will furnish to the group to which the
case is referred, prints of such sheets of the
drawings as are applicable, for interference
search purposes. That this has been done may
be indicated by a pencil notation on the file
wrapper.

When a case that has had Patentability Re-
port prosecution is passed for issue or becomes
abandoned, NOTIFICATION of this fact will
AT ONCE be given by the group having
jurisdiction of the case to each group that
submitted a P.R. The Examiner of each such
reporting group will note the date of allow-
ance or abandonment on his duplicate set of
prints. At such time as these prints become
of no value to the reporting group, they may
be destroyed.

## 705.01(e) Limitation as to Use

The above outlined Patentability Report
practice is not obligatory and should be re-
sorted to only where it will save total examiner
time or result in improved quality of action

due to specialized knowledge. A saving of to.
tal examiner time that is required to give a
complete examination of an application is of
primary importance. Patentability Report
practice is based on the proposition that when
plural, indivisible inventions are claimed, in
some instances either less time is required for
examination, or the results are of better qual-
ity, when specialists on each character of
claimed invention treat the claims directed to
their specialty. However, in many instances a
single examiner can give a complete examina-
tion of as good quality on all claims, and in
less total examiner time than would be con-
sumed by the use of the Patentability Report
practice.

Where claims are directed to the same char-
acter of invention but differ in scope only,
prosecution by Patentability Report is never
proper.

Exemplary situations where Patentability
Reports are ordinarily not proper are as fol-
lows:

(1) Where the claims are related as a manu-
facturing process and a product defined by the
process of manufacture. The examiner having
jurisdiction of the process can usually give a
complete, adequate examination in less total
examiner time than would be consumed by the
use of a Patentability Report.

(2) Where the claims are related as a prod-
uct and a process which involves merely the
fact that a product having certain characteris-
tics is made. The examiner having jurisdic-
tion of the product can usually make a com-
plete and adequate examination.

(3) Where the claims are related as a com-
bination distinguished solely by the charac-
teristics of a subcombination and such sub-
combination per se. The examiner having
jurisdiction of the subcombination can usually
make a complete and adequate examination.

Because of the high percentage of new ex-
aminers, situations frequently arise where the
Patentability Report would of necessity be
made by an examiner who knows less about the
art than the examiner seeking the Patentabil-
ity Report. Then there are also situations
where the examiner seeking the report is suffi-
ciently qualified to search the art himself.

In view of these conditions which are ex-
pected to prevail for some time to come, it is
felt to be in the best interests of the Of-
fice to suspend the present Patentability Re-
port practice. Where it can be shown, however.
that a Patentability Report will save total
examiner time, exceptions may be permitted
with the approval of the Group Manager
of the group to which the application is as-
signed. The "Approved" stamp should be im-

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## MANUAL OF PATENT EXAMINING PROCEDURE

pressed on the memorandum requesting the
P.R. (Basis: Notice of October 8, 1956.)

### 705.01(f) Interviews With Applicants

In situations where an interview is held on
an application in which a Patentability Report
has been adopted, the reporting group may be
called on for assistance at the interview when
it concerns claims treated by them. (Basis:
Notice of November 12, 1948.) See 713 to
713.10 regarding interviews in general.

## 706 Rejection of Claims

Although this part of the Manual explains
the procedure in rejecting claims, the Examiner
should never overlook the importance of his
role in allowing claims which properly define
the invention.

Rule 106. Rejection of claims. (a) If the invention
is not considered patentable, or not considered patenta-
ble as claimed, the claims, or those considered unpat-
entable will be rejected,

(b) In rejecting claims for want of novelty or for
want of invention, the examiner must cite the best ref-
erences at his command. When a reference is complex
or shows or describes inventions other than that claimed
by the applicant, the particular part relied on must be
designated as nearly as practicable. The pertinence
of each reference, if not obvious, must be clearly ex-
plained and each rejected claim specified.

When an application discloses patentable
subject matter and it is apparent from the
claims and the Applicant's arguments that the
claims are intended to be directed to such pat-
entable subject matter, but the claims in their
present form cannot be allowed because of de-
fects in form or omission of a limitation, the
Examiner should not stop with & bare objec-
tion or rejection of the claims. The Exam-
iner's action should be constructive in nature
and when possible he should offer & definite
suggestion for correction.

If the Examiner is satisfied after the search
has been completed that patentable subject
matter has been disclosed and the record indi-
cates that the applicant intends to claim such
subject matter, he may note in the Office action
that certain aspects or features of the patenta-
ble invention have not been claimed and that
if properly claimed such claims may be given
favorable consideration.

Rule 112. Reexamination and reconsideration. After
response by applicant (rule 111) the application will
be reezamined and reconsidered, and the applicant will
be notified if claims are rejected, or objections or re-

quirements mede, In the same manner an after the first
examination. Applicant may respond to such Office ac-
tion, In the same manner provided in role 111, with er
without amendment, but any amendments after the
second Office action must ordinarily be restricted to
the rejection or to the objections or requirements made,
and the application will be again considered, and so on
repeatedly, unless the examiner has indicated that the
action is final.

## 706.01 Contrasted With Objection

The refusal to grant claims because the sub-
ject matter as claimed is considered unpatenta-
ble is called a "rejection." The term "rejected"
must be applied to such claims in the Exam-
iner's letter. If the form of the claim (as dis-
tinguished from its substance) is improper, an
"objection" is made. The practical difference
between a rejection and an objection is that a
rejection, involving the merits of the claim, is
subject to review by the Board of Appeals,
while an objection, if persisted in, may be
reviewed only by way of petition to the Com-
missioner.

An example of a matter of form as to which
objection is made is dependency of a claim on a
rejected claim, if the dependent claim is other-
wise allowable. See 608.01 (n).

## 706.02 Rejection on Prior Art

By far the most frequent ground of rejection
is on the ground of unpatentability in view of
the prior art, that is, that the claimed matter
is neither novel under 35 U.S.C. 102 nor non-
obvious under 35 U.S.C. 103. The language to
be used in rejecting claims should be unequivo-
cal. See 707.07(d).

A U.S. patent is a valid reference against an
application even though the patent date is af-
ter the filing date of an application provided
that the filing date of the patent is prior to the
filing date of the application. It is proper to
use such a patent as a basic or an auxiliary ref-
erence and such patents may be used as both
basic and auxiliary references. The doctrine of
the Alexander Milburn Co. v. Davis-Bournon-
ville Co. decision, 1926 C.D. 303; 344 O.G. 817,
has been thus construed In re Youker
(C.C.P.A.), 1935 C.D. 658; 461 O.G. 10, and in
Minn. Mining & Mfg. Co. v. Coe (C.A.D.C.)
1938 C.D. 100; 497 O.G. 766. See also Detrola
Corp. v. Hazeltine (U.S.S.C.) 1941 C.D. 811;
528 O.G. 245 and In re Gregg (C.C.P.A.), 1957
C.D. 284; 720 O.G. 227. The Milburn case doc-
trine has been restated and reaffirmed by the

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706.03 (a)

<!-- PageHeader="ARVOXXXAMINATION OF APPLICATIONS THAM" -->

U.S. Supreme Court in Hazeltine Research, Inc.
et al. v. Brenner, 147 U.S.P.Q. 429 (1965).
For the proper way to cite a patent granted
after the filing of an application, see 707.05 (e)
and the sample letter in 707.03. Rejections on
"old combination" are treated in 706.03(j).

## 706.02(a) Establishing "Well Known". Prior Art

Things believed to be known to those skilled
in the art are often asserted by the Examiner
to be "well known" or "matters of common
knowledge". If justified, the Examiner should
not be obliged to spend time to produce docu-
mentary proof. If the knowledge is of such
notorious character that judicial notice can be
taken, it is sufficient so to state. In re Mal-
colm, 1942 C.D. 589; 548 O.G. 440. If the ap-
plicant traverses such an assertion the Exam-
iner should cite a reference in support of his
position.

Failure of the applicant to seasonably chal-
lenge such assertions establishes them as ad-
mitted prior art. See In re Gunther, 1942 C.D.
382; 538 O.G. 744; In re Chevenard, 1944 C.D.
141; 500 O.G. 196. This applies also to asser-
tions of the Board. In re Selmi, 1946 C.D.
525; 591 O.G. 160; In re Fischer, 1942 C.D.
295; 538 O.G. 503.

## 706.03 Rejections Not Based on Prior Art

The primary object of the examination of an
application is to determine whether or not the
claims define a patentable advance over the
prior art. In too many instances this consid-
eration is relegated to a secondary position.
while undue emphasis is given to technical re-
jections. Where a major technical rejection
is proper (e.g. aggregation, lack of proper dis-
closure, undue breadth) such rejection should
be stated with a full development of the rea-
sons rather than by a mere conclusion coupled
with some stereotyped expression.

Certain technical rejections (e.g. negative
limitations, indefiniteness) should not be made
where the Examiner recognizing the limita-
tions of the English language, is not aware of
an improved mode of definition.

Rejections not based on prior art are ex-
plained in 706.03(a) to 706.03(y). IF THE
ITALICIZED LANGUAGE IN THESE

SECTIONS IS INCORPORATED IN THE
REJECTION, THERE WILL BE LESS
CHANCE OF A MISUNDERSTANDING
AS TO THE GROUNDS OF REJECTION.

706.03(a) Nonstatutory Subject Mat-
ter

Patents are not granted for all new and use-
ful inventions and discoveries. The subject
matter of the invention or discovery must come
within the boundaries set forth by 35 U.S.C.
101, which permits patents to be granted only
for "any new and useful process, machine,
manufacture, or composition of matter, or any
new and useful improvement thereof.

The term "process" as defined in 35 U.S.C.
100, means process, art or method, and includes
a new use of a known process, machine, manu-
facture, composition of matter, or material.

Judicial decisions, have determined the lim-
its of the statutory classes. Examples of sub-
ject matter not patentable under the Statute
follow:

### PRINTED MATTER

For example, a mere arrangement of printed
matter, though seemingly a "manufacture," is
rejected as not being within the statutory
classes.

#### NATURALLY OCCURRING ARTICLE

Similarly, a thing occurring in nature, which
is substantially unaltered, is not a "manufac-
ture." A shrimp with the head and digestive
tract removed is an example. Ex parte Gray-
son, 51 USPQ 413.

##### METHOD OF DOING BUSINESS

Though seemingly within the category of a
process or method, the law is settled that a
method of doing business can be rejected as not
being within the statutory classes. Hotel Se-
curity Checking Co. v. Lorraine Co., 160 Fed.
467.

##### SCIENTIFIC PRINCIPLE

A scientific principle, divorced from any
tangible structure, can be rejected as not
within the statutory classes. O'Reilly v. Morre,
15 Howard 62.

This subject matter is further limited by the
Atomic Energy Act explained in 706.03(b).

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103/3(0)

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706.00(B) Barred by Atomic Energy
Act

A limitation ca what can be patented la imposed by
the Atomic Energy Act of 1954. Section 151 (a) thereof
(42 U.S.C. 2181) reads as follows:

i No patent mounl hereafter be granted for any Joven-
tion or discovery which is useful solely in the utiliza-
tion of special nuclear material or atomic energy in
an atomic weapon.

The terms "atomic energy" and "special nuclear
material" are defined in Section 11 of the Act (42 U.S.C.
2014).

Sections 151(c) and 151(d) (42 U.S.C. 2181c and d)
set up categories of pending applications relating to
atomic energy that must be brought to the attention
of the U.S. Atomic Energy Commission. Under Rule
14(c), applications for patents which disclose or which
appear to disclose, or which purport to disclose, inven-
tions or discoveries relating to atomic energy are re-
ported to the Atomic Energy Commission and the Com-
mission will be given access to such applications, but
such reporting does not constitute a determination that
the subject matter of each application so reported is in
fact useful or an invention or discovery or that such
application in fact discloses subject matter in cate-
gories specified by the Atomic Energy Act.

Applications MUST be inspected promptly
when received to determine those which appear
to relate to atomic energy and those so related
MUST BE PROMPTLY FORWARDED to
the Patent Security Division for processing
under Rule 14(c), in order for the Commis-
sioner to fulfill his responsibilities under Sec-
tion 151(d) of the Act.

All rejections based upon Sections 151(a)
and 155 of the Atomic Energy Act MUST be
made only by Divisions 10, 44 and 46.

706.03(e) Functional

See Ex parte Ball et al., 1953 C.D. 4; 675
O.G. 5 In re Arbeit et al., 1953 C.D. 409;
677 O.G. 843 and Ex parte Stanley, 121 USPQ
621.

Section 112 of the Patent Act of 1952 con-
sists of three paragraphs, which read as fol-
lows:

The specification shall contain a written description
of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art
to which it pertains, or with which it is most nearly
connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor of
carrying out his invention.

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The specification chall conclude with one or more
claims particularly pointing out and distinctly. claim-
Ing the subject matter which the applicant regarde as
his invention. A chim may be written in independent
or dependent form, and if in dependent form, It shall
be construed to include all the limitations of the claim
incorporated by reference into the dependent claim.

An element in a claim for a combination may be
expressed as a means or step for performing a specified
function without the recital of structure, material, or
acts in support thereof, and such claim shall be con-
strued to cover the corresponding structure, material,
or acts described in the specification and equivalents
thereof.

Paragraph 3 of section 112 has the effect of
prohibiting the rejection of a claim for a com-
bination of elements (or steps) on the ground
that the claim distinguishes from the prior art
solely in an element (or step) defined as a
"means" (or "step"). coupled with a statement
of function. However this provision of para-
graph 3 must always be considered as subordi-
nate to the provision of paragraph 2 that the
claim particularly point out and distinctly
claim the subject matter. If a claim be found
to contain language approved by paragraph 3
such claim should always be tested additionally
for compliance with paragraph 2 and if it fails
to comply with the requirements of paragraph
2, the claim should be so rejected and the rea-
sons fully stated.

Paragraph 3 of section 112 makes no change
in the established practice of rejecting claims
as functional in situations such as the fol-
lowing:

1\. A claim which contains functional lan-
guage not supported by recitation in the claim
of sufficient structure to warrant the presence
of the functional language in the claim. An
example of a claim of this character may be
found in In re Fuller, 1929 C.D. 172; 388 O.G.
279\. The claim reads :

A woolen cloth having a tendency to wear
rough rather than smooth.

2\. A claim which recites only a single means
and thus encompasses all possible means for
performing a desired function. For an ex-
ample, see the following claim in Ex parte
Bullock, 1907 C.D. 93; 127 O.G. 1580:

In a device of the class described, means for
transferring clothes-carrying rods from one
position and depositing them on a suitable
support.

## 706.03(d) Vague and Indefinite

When the Examiner is satisfied that patenta-
ble novelty is disclosed and it is apparent to

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706.03(1)

the Examiner that the claims are directed to
such patentabie subject matter, he should al-
low claims which define the patentable novelty
with a reasonable degree of particularity and
distinctness. Some latitude in the manner of
expression and the aptness of terms should be
permitted even though the claim language is
not as precise as the Examiner might desire.

The fact that a claim is broad does not nec-
essarily justify a rejection on the ground that
the claim is vague and indefinite or incom-
plete. In non-chemical cases, a claim may, in
general, be drawn as broadly as permitted by
the prior art.

The rejection of a claim as indefinite would
appear to present no difficulties. On occasion,
however, a great deal of effort is required to
explain just what is wrong with the claim,
when writing the Examiner's letter. Although
cooperation with the attorney is to be com-
mended, undue time should not be spent trying
to guess what the attorney was trying to say in
the claim. Sometimes, a rejection as indefinite
plus the statement that a certain line is mean-
ingless is sufficient. The Examiner's action
should be constructive in nature and when pos-
sible he should offer a definite suggestion for
correction. Inclusion of a negative limitation,
such as a "metal, excepting nickel", may make
a claim indefinite. Expressions such as: "an-
hydrous", "colorless" and "non-poisonous" have
been permitted because they are definite and by
far the least cumbersome way to express the
limitation. The mere inclusion of reference
numerals in a claim otherwise allowable is not
a ground for rejection. But see Ex parte Os-
borne, 1900 C.D. 137; 92 O.G. 1797.

Alternative expressions such as "brake or
locking device" may make a claim indefinite if
the limitation covers two different elements.
If two equivalent parts are referred to such as
"rods or bars", the alternative expression may
be considered proper.

Still another way in which a claim can be in-
definite is where a non sequitur occurs. For
example, a claim is inferential and therefore
indefinite when it recites "said lever" and there
was no earlier reference or no antecedent in
the claim to a lever. An indirect limitation
also affords a ground of rejection as indefinite.
If a "lever" is set forth and, later in the claim,
"said aluminum lever" is recited, the claim is
rejected as indefinite.

## 706.03(e) Product by Process

An article which cannot be described in any
other manner, may be claimed by a process of
making it. In re Moeller, 1941 C.D. 316, 527
O.G. 559. Applicant must, however, make a

showing that the product cannot be described
except by reference to the process of making it,
In re Dreyfus and Whitehead, 1935 C.D. 886,
457 O.G. 479. Accordingly both product claims
described by characteristics and product-by-
process claims concurrently presented are in-
consistent. As a rule, the product-by-process
claims should be limited to one, unless it ap-
pears that there are material differences be-
tween the products produced by the processes
recited in the different claims. See also "Prod-
uct by Process Claims" ( Wolffe) 28 J.P.O.S.
852.

## 706.03(f) Incomplete

A claim can be rejected as incomplete if it
omits essential elements, steps or necessary
structural cooperative relationship of elements,
such ommission amounting to a gap between the
elements, steps or necessary structural connec-
tions. Greater latitude is permissible with re-
spect to the definition in a claim of matters not
essential to novelty or operability than with
respect to matters essential thereto. See also
706.03(d).

## 706.03(g) Prolix

Claims are rejected as prolix when they con-
tain long recitations of unimportant details
which hide or obscure the invention. Ex parte
Iagan, 1911 C.D. 10; 162 O.G. 538, expresses
the thought that very long detailed claims set-
ting forth so many elements that invention can-
not possibly reside in the combination should
be rejected as prolix. See also In re Ludwick,
1925 C.D. 306; 339 O.G. 393.

## 706.03(h) Nonstatutory Claim

Some applications when filed contain an om-
nibus claim such as A device substantially as
shown and described.

Such a claim can be rejected as follows:

Claim
is rejected for failing to par-
ticularly point out and distinctly claim the
invention as required in 35 U.S.C. 112.

For cancellation of such a claim by Examin-
er's Amendment, see 1302.04(b).

## 706.03(i) Aggregation

Rejections on the ground of aggregation
should be based upon a lack of cooperation be-
tween the elements of the claim. Many deci-
sions and some legal writers extend the term
to include old and exhausted combinations
(706.03(j)). Confusion as to what is meant

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706.03(1)

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can be avoided by treating all claims which in-
clude more than one element as combinations
(patentable or unpatentable) if there is actual
cooperation between the elements, and as ng-
gregations if there is no cooperation.

Example of aggregation: A washing ma-
chine associated with a dial telephone.

Example of old combination: An improved
carburetor claimed in combination with a gaso-
line engine.

A claim is not necessarily aggregative be-
cause the various elements do not function si-
multaneously. A typewriter, for example, is a
good combination. Neither is a claim necessar-
ily aggregative merely because elements which
do cooperate are set forth in specific detail.

## 706.03(j) Old Combination

The rejection on the ground of old combina-
tion (synonymous with "exhausted combina-
tion") requires the citation of a reference, but
is treated here because of its relation to aggre-
gation. The reference (not a combination of
references, of course) is cited, not to antici-
pate the claim, but to anticipate the broad
combination set forth in the claim. Moreover,
the cooperation and result between the ele-
ments in the reference must be the same as it
is in the claim.

Example : An improved (specifically recited)
carburetor claimed in combination with a gaso-
line engine. A reference is cited which shows
a carburetor combined with a gasoline engine.
This shows the broad combination to be old.
Both in the reference and in the claimed com-
bination, the cooperation between the carbu-
retor and engine is the same and the end result
is the same. The claimed combination is an
improvement over the prior art only because
of the improved carburetor. The carburetor
has separate status, since entire subclasses are
devoted to carburetors, claimed as such. A
reference is preferably cited to show the sepa-
rate status and development. (See 904.01 (d).)

Old combination rejections ordinarily are
based on 35 U.S.C. 112 (failure to point out the
invention).

## 706.03(k) Duplicate Claims; Double Patenting

Inasmuch as a patent is supposed to be lim-
ited to only one invention or, at most, several
closely related indivisible inventions, limiting
an application to a single claim, or a single
claim to each of the related inventions might
appear to be logical as well as convenient.

However, court decisions have confirmed sp-
plicant's right to restate (i.e., by plural claim-
ing) his invention in s reasonable number of
ways, Indeed, a mers difference in scope bo-
tween claims has been held to be enough.

Nevertheless, when two claims in an appli-
cation are duplicates, or else are so close in
content that they both cover the same thing,
despite a slight difference in wording, it is
proper after allowing one claim to reject the
other as being a substantial duplicate of the
allowed claim. Also, it is possible to reject
one claim on an allowed claim if they differ
only by subject matter old in the art. The lat-
ter ground of rejection is set forth in the fol-
lowing paragraph quoted from Ex parte
Whitelaw, 1915 C.D. 18; 219 O.G. 1237:

"Claim 54 is not patentable over claim 51
and claims 53, 55 and 56 are not patentable
over claim 50 in view of Comsteck, No. 590,657,
which shows that it is old to employ an engine-
casing in tools of this character. The claims
held patentable are considered as fully cover-
ing applicant's invention, and applicant can-
not be permitted to multiply his claims by
presenting alleged combinations which distin-
guish from the real invention only by including
elements which are old in the art and perform
no new function."

This rejection (the ex parte Whitelaw doc-
trine) is usually not applied if there are only
a few claims in the application.

Situations related to that given above are as
follows:

Conflicting subject matter in two applica-
tions of the same inventor, one of which is as-
signed, see Section 304.

Where there is a common assignee for two
or more applications by different inventors, see
Section 305.

Where the same inventor has two or more
applications for species or for related inven-
tions, see Chapter 800, particularly Sections
804-804.02, 806.04(h), 822 and 822.01 for dou-
ble patenting rejections of inventions not pat-
entable over each other.

APPLICATION FILED UNDER 35 U.S.C. 121

The Commissioner has determined that un-
der 35 U.S.C. 121, the Patent Office cannot re-
ject a divisional application on the parent pat-
ent if the divisional application is filed as a
result of a requirement for restriction made by
the Office even though the requirement for re-
striction relates to species. In re Joyce, 1958
C.D. 2; 727 O.G. 4. See also In re Herrick et
al., 1958 C.D. 1; 727 O.G. 4 where the Com-

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missioner ruled that a requirement for restric-
tion should not be made in an application claim-
ing more than five species if the examiner is of
the opinion that the various species are obvi-
ously unpatentable over one another.

## 706.03(1) Multiplicity

Rule 75(b). More than one claims may be presented,
provided they differ substantially from each other and
are not unduly multiplied.

An unreasonable number of claims; that is
unreasonable in view of the nature and scope
of applicant's invention and the state of the
art, affords a basis for a rejection on the
ground of multiplicity. A rejection on this
ground should include all the claims in the case
inasmuch as it relates to confusion of the issue.

To avoid the possibility that an application
which has been rejected on the ground of un-
due multiplicity of claims may be appealed to
the Board of Appeals prior to an examination
on the merits of at least some of the claims
presented, the Examiner should, at the time of
making the rejection on the ground of multi-
plicity of claims, indicate the number of claims
which in his judgment is sufficient to prop-
erly define Applicant's invention and require
the Applicant to select a number of claims, not
to exceed the number specified, for examina-
tion on merits. The Examiner should be rea-
sonable in setting the number to afford the
Applicant some latitude in claiming his inven-
tion.

If a rejection on multiplicity is in order the
examiner should make a telephone call explain-
ing that the claims are unduly multiplied and
will be rejected on that ground. He should
request selection of a specified number of claims
for purposes of examination.

If time for consideration is requested arrange-
ments should be made for a second telephone
call, preferably within three working days.

When claims are selected, a formal multi-
plicity rejection is made, including a complete
record of the telephone interview, followed by
an action on the selected claims.

When applicant refuses to comply with the
telephone request, a formal multiplicity rejec-
tion is made. No reference should be made to
the unsuccessful telephone call.

The Applicant's response to a formal multi-
plicity rejection of the Examiner, to be com-
plete, must either :

1\. Reduce the number of claims presented to
those selected previously by telephone, or if no
previous selection has been made to a number
not exceeding the number specified by the Ex-
aminer in the Office action, thus overcoming the

rejection based upon the ground of multiplicity,
or

2\. In the event of a traverse of said rejection,
applicant, besides specifically pointing out the
supposed errors of the multiplicity rejection is
required to confirm his selection previously
made by telephone, or if no previous selection
has been made, select certain claims for purpose
of examination, the number of which is not
greater than the number indicated by the exam-
iner. If the rejection on multiplicity is adhered
to, all claims retained will be included in such
rejection and the selected claims only will be
additionally examined on their merits. This
procedure preserves applicant's right to have
the rejection on multiplicity reviewed by the
Board of Appeals.

See also 706.03(k).

## 706.03(m) Nonelected Inventions

See 821 to 821.03. See particularly the last
paragraph of 821 for the necessity of rejecting
claims, which stand withdrawn because not
readable on the elected species, where appli-
cant has traversed the Examiner's holding.

## 706.03(n) Correspondence of Claim and Disclosure

Rule 117. Amendment and revision required. The
specification, claims and drawing must be amended and
revised when required, to correct inaccuracies of de-
scription and definition or unnecessary prolixity, and
to secure correspondence between the claims, the speci-
fication and the drawing.

Another category of rejections not based on
the prior art is based upon the relation of the
rejected claim to the disclosure. In chemical
cases, a claim may be so broad as to not be
supported by disclosure, in which case it is
rejected as unwarranted by the disclosure. If
averments in a claim do not correspond to the
averments or disclosure in the specification, a
rejection on the ground of inaccuracy may be
in order. It must be kept in mind that an
original claim is part of the disclosure and
might adequately set forth subject matter
which is completely absent from the specifica-
tion. Applicant is required in such an in-
stance to add the subject matter to the specifi-
cation. Whenever an objection or rejection is
made based on incomplete disclosure, the Ex-
aminer should in the interest of expeditious
prosecution call attention to Rule 118. If sub-
ject matter capable of illustration is originally
claimed and it is not shown in the drawing, the
claim is not rejected but Applicant is required
to add it to the drawing. See 608.01(1).

See 706.03 (z) for rejections on undue breadth.

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706:08(0)

706.03(0)1. New Matter | hend portos(*)

In the examination of an application fol-
lowing amendment thereof, the Examiner must
be on the alert to detect new matter. The pro-
hibition against new matter has been incorpo-
rated into the New Patent Code. See 35 U.S.C.
132

In amended cases, subject matter not dis-
closed in the original application is sometimes
added and a claim directed thereto. Such a
claim is rejected on the ground that it is drawn
to new matter. New matter includes not only
the addition of wholly unsupported subject
matter, but also, adding specific percentages or
compounds after a broader original disclosure,
or even the omission of a step from a method.
See 608.04 to 608.04 (c).

### 706.03(p) No Utility

A rejection on the ground of lack of utility
includes the more specific grounds of inopera-
tiveness, involving perpetual motion, frivolous,
fraudulent, against public policy. The former
practice of affording applicant an opportunity
for a refund of the filing fee in perpetual mo-
tion cases was discontinued. See 608.01 (p).

### 706.03(q) Obvious Method

An Applicant may invent a new and useful
article of manufacture. Once the article is
conceived, it often happens that anyone skilled
in the art would at once be aware of a method
of making it. In such a case, if applicant as-
serts both article and method claims, the arti-
cle claims are allowed but the method claims
may be rejected as being drawn to an obvious
method of making the article.

### 706.03(s) Statutory Bar

Another category of rejections not based on
the prior art finds a basis in some prior act of
applicant, as a result of which the claim is
denied him.

### ABANDONMENT OF INVENTION

Under 35 U.S.C. 102(c), abandonment of
the "invention" (as distinguished from aban-
donment of an application) results in loss of
right to a patent.

### OWN PRIOR FOREIGN PATENT

35 U.S.C. 102. Conditions for patentability; novelty
and loss of right to patent. A person shall be entitled
to a patent unless-
.
¢
¢
¢
.

(d) the invention was first patented or caused to
be patented by the applicant or his legal representatives

or assigns in a foreign country prier to the date of the
applications for patent in this country on an applica-
tion filled more than twelve months before the filing of
the application in the United States.

NOTE .- Section 4(b) of the Act of July 19,
1952, provides :

"Section 102(d) of Title 35, as enacted by section 1
hereot, shall not apply to existing patents and pending
application, but the law previously in effect, namely
the first paragraph of R.S. 4887, shall apply to such
patents and applications."

The statutory bar of prior foreign patenting
stated in the first paragraph of R.S. 4887 has
been changed as expressed in paragraph (d) of
Section 102 of the new law. An application
for United States patent filed more than one
year after the filing of an application for the
same invention in a foreign country is no
longer barred unless the foreign patent issued
before the United States application is filed.

The statute above quoted establishes four
conditions which, if all are present, establish a
bar against the granting of a patent in this
country:

(1) The foreign application must be filed
more than one year before the filing in the
United States (Modified by Public Law 690,
201.16).

(2) It must be filed by the applicant, his legal
representatives or assigns.

(3) The foreign patent must be actually
granted (e.g., by sealing of the papers in Great
Britain) before the filing in the United States.
Ex parte Gruschwitz et al., 138 U.S.P.Q. 505
discusses "patented" as applied to German
procedures.

(4) The same invention must be involved.
If such a foreign patent is discovered by the
Examiner, the rejection is made on the ground
of statutory bar.

The new law only applies to applications
filed after January 1, 1953.

### SUBMISSION TO LIBRARY UNNECESSARY

Such applications [those filed after Janu-
ary 1, 1953] should not be submitted as a rou-
tine matter to the Library to ascertain if the
foreign application has become a patent. Since
the foreign patent to be a bar under 35 U.S.C.
102(d) must have been granted before the filing
date in this country, the probability of the
foreign patent having issued after the date of
execution of the original oath and before the
U.S. filing date is so slight as to make such a
search ordinarily unproductive. The practice
with reference to cases filed before January 1,
1953 remains unchanged.

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## FOREIGN FILING WITHOUT LICENSE

35 U.S.C. 184. Filing of application in foreign coun-
try. Except when authorized by a license obtained
from the Commissioner a person shall not file or cause
or authorize to be filed in any foreign country prior to
six months after filing in the United States an applica-
tion for patent or for the registration of a utility model,
industrial design, or model in respect of an invention
made in this country. A license shall not be granted
with respect to an invention subject to an order issued
by the Commissioner pursuant to section 181 of this
title without the concurrence of the head of the depart-
ments and the chief officers of the agencies who caused
the order to be issued. The license may be granted
retroactively where an application has been inadvert-
ently filed abroad and the application does not disclose
an invention within the scope of section 181 of this title.

The term "application" when used in this chapter
includes applications and any modifications, amend-
ments, or supplements thereto, or divisions thereof.

35 U.S.C. 185. Patent barred for filing without license.
Notwithstanding any other provisions of law any per-
son, and his successors, assigns, or legal representa-
tives, shall not receive a United States patent for an
invention if that person, or his successors, assigns, or
legal representatives shall, without procuring the
license prescribed in section 184 of this title, have
made, or consented to or assisted another's making,
application in a foreign country for a patent or for the
registration of a utility model, industrial design, or
model in respect of the invention. A United States
patent issued to such person, his successors, assigns, or
legal representatives shall be invalid.

If, upon examining an application, the Ex-
aminer learns of the existence of a correspond-
ing foreign application which appears to have
been filed before the United States application
had been on file for six months, and if the in-
vention apparently was made in this country,
he shall refer the application to Licensing
and Review Section of Group 220, calling at-
tention to the foreign application. Pending
investigation of the possible violation, the ap-
plication may be returned to the Examining
Group for prosecution on the merits. When it
is otherwise in condition for allowance, the ap-
plication will be again submitted to Licensing
and Review Section of Group 220 unless the
latter has already reported that the foreign
filing involves no bar to the United States
application.

If it should be necessary to take action under
35 U.S.C. 185. Licensing and Review Section of
Group 220 will request transfer of the applica-
tion to it.

### OTHER STATUTORY BARS

Further, claims to an invention in public use
or on sale in the United States more than

twelve months before the effective U.S. filing
date are also rejected. 35 U.S.C. 102(b).

# 706.03(1) Other Assigned Application

As pointed out in 304, assignment of one of
several overlapping applications may be a
ground of rejection. See also 305 and 706.03
(k).

# 706.03(u) Disclaimer

Claims may be rejected on the ground that
applicant has disclaimed the subject matter in-
volved. Such disclaimer may arise, for exam-
ple, from the applicant's failure :

(a) to make claims suggested for interfer-
ence with another application under Rule 203
(1101.01(m)),

(b) to copy a claim from a patent when sug-
gested by the Examiner (1101.02(f)), or

(c) to respond or appeal, within the time
limit fixed, to the Examiner's rejection of
claims copied from a patent (see Rule 206(b)
and 1101.02(f)).

The rejection on disclaimer applies to all
claims not patentably distinct from the dis-
claimed subject matter as well as to the claims
directly involved.

# 706.03(v) After Interference or Pub- lic Use Proceeding

For rejections following an interference, see
1109 to 1110.

The outcome of public use proceedings may
also be the basis of a rejection. (See Rule 292.)

Upon termination of a public use proceedings
including a case also involved in interference.
in order for a prompt resumption of the inter-
ference proceedings, a notice should be sent to
the Board of Patent Interferences notifying
them of the disposition of the public use pro-
ceedings.

## 706.03(w) Res Judicata

A prior adjudication against the inventor on
the same or similar claims constitutes a proper
ground of rejection as res judicata. See Ex
parte Budde, 150 U.S.P.Q. 469; 828 O.G. 409.

The rejection should only be used when the
earlier decision was a final, appellate one, such
as a Board of Appeals decision where the time
limit for further remedies has expired, or a
decision by the Court of Customs and Patent
Appeals. But see 201.11, last paragraph, for a
special situation.

"When making a rejection on res judicata,
action should ordinarily be made also on the
basis of prior art."

See also 201.07.

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706.03(x) Reissue

35 U.S.C. 251 forbids the granting of & re-
issue "enlarging the scope of the claims of the
original patent" unless the reissue is applied
for within two years from the grant of the
original patent. This is an absolute bar and
cannot be excused. This prohibition has been
interpreted to apply to any claim which is
broader in any respect than the claims of the
original patent. Such claims may be rejected
as being barred by 35 U.S.C. 251. However,
when the reissue is applied for within two
years, the Examiner does not go into the ques-
tion of undue delay.

The same section permits the filing of a re-
issue application by the assignee of the entire
interest only in cases where it does not "enlarge
the scope of the claims of the original patent".
Such claims which do enlarge the scope may
also be rejected as barred by the statute.

A defective reissue oath affords a ground for
rejecting all the claims in the reissue appli-
cation. See 1401.08.

Note that a reissue application is "special"
and remains so even if applicant does not make
a prompt response.

## 706.03(y) Improper Markush Group

Ex parte Markush, 1925 C.D. 126; 340 O.G.
839, sanctions, in chemical cases, claiming a
genus expressed as a group consisting of cer-
tain specified materials. This type of claim is
employed when there is no commonly accepted
generic expression which is commensurate in
scope with the field which the applicant de-
sires to cover. Inventions in metallurgy, re-
fractories, ceramics, pharmacy, pharmacology
and biology, may be claimed under the Mar-
kush formula but it has consistently been held
to be improper to extend it to purely mechani-
cal features or process steps. It is improper to
use the term "comprising" instead of "consist-
ing of". Ex parte Dotter, 12 U.S.P.Q. 382.
Regarding the normally prohibited inclusion of
Markush claims of varying scope (generic and
subgeneric for example) in the same case, see
Ex parte Burke, 1934 C.D. 5; 441 O.G. 509.

The use of Markush claims of diminishing
scope should not, in itself, be considered a suffi-
cient basis for objection to or rejection of claims.
However, if such a practice renders the claims
indefinite or if it results in undue multiplicity,
an appropriate rejection should be made. This
practice with respect to Markush claims of
diminishing scope is being continued.

The materials set forth in the Markush group
ordinarily must belong to a recognized physi-
cal or chemical class or to an art-recognized

class. However, when the Markush group oo-
curs in a claim reciting a process or & combi-
nation (not a single compound), it is sufficient
if the members of the group are disclosed in
the specification to possess at least one prop-
erty in common which is mainly responsible
for their function in the claimed relationship,
and it is clear from their very nature or from
the prior art that all of them possess this prop-
erty. The test should be applied as liberally
as possible. Where & Markush expression is
applied only to a portion of a chemical com-
pound, the propriety of the grouping is deter-
mined by a consideration of the compound as
a whole, and does not depend on there being
a community of properties in the members of
the Markush expression.

A rejection of & Markush type claim based
on any of the grounds pointed out above relates
to the merits and is appealable.

## SUBGENUS CLAIM

A situation may occur in which a patentee
has presented a number of examples which, in
the examiner's opinion, are sufficiently repre-
sentative to support a generic claim and yet a
court may subsequently hold the claim invalid
on the ground of undue breadth. Where this
happens the patentee is often limited to species
claims which may not provide him with suit-
able protection.

The allowance of a Markush type claim under
a true genus claim would appear to be bene-
ficial to the applicant without imposing any
undue burden on the Patent Office or in any way
detracting from the rights of the public. Such
a subgenus claim would enable the applicant
to claim all the disclosed operative embodi-
ments and afford him an intermediate level of
protection in the event the true genus claims
should be subsequently held invalid.

The examiners are therefore instructed not
to reject a Markush type claim merely because
of the presence of a true genus claim embra-
cive thereof.

See also 608.01 (p) and 715.03.

## 706.03(z) Undue Breadth

In mechanical cases, broad claims may prop-
erly be supported by a single form of an ap-
paratus or structure. In re Vickers et al., 1944
C.D. 324; 564 O.G. 174.

In chemical cases, however, the disclosure of
a single species usually does not provide an
adequate basis to support generic claims. In
re Sol, 1938 C.D. 723; 497 O.G. 546. This is
because in chemistry it is not obvious from the
disclosure of one species, what other species
will work. In re Dreshfield, 1940 C.D. 351;
518 O.G. 255 gives this general rule: "It is well

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settled that in cases involving chemicals and
chemical compounds, which differ radically in
their properties it must appear in an appli-
cant's specification either by the enumeration
of a sufficient number of the members of a
group or by other appropriate language, that
the chemicals or chemical combinations in-
cluded in the claims are capable of accomplish-
ing the desired result." ) The article "Broader
than the Disclosure in Chemical Cases", 31
J.P.O.S. 5, by Samuel S. Levin covers this sub-
ject in detail.

# 706.04 Rejection of Previously Al- lowed Claims

A claim noted as allowable shall thereafter
be rejected only after the proposed rejection
has been submitted to the Primary Examiner
for consideration of all the facts and approval
of the proposed action.

Great care should be exercised in authorizing
such a rejection. See Ex parte Grier, 1923
C.D. 27; 309 O.G. 223; Ex parte Hay, 1909
C.D. 18; 139 O.G. 197.

PREVIOUS ACTION BY DIFFERENT EXAMINER

Full faith and credit should be given to the
search and action of a previous examiner un-
less there is a clear error in the previous action
or knowledge of other prior art. In general, an
examiner should not take an entirely new ap-
proach or attempt to reorient the point of view
of a previous examiner, or make a new search
in the mere hope of finding something.

Because it is unusual to reject a previously
allowed claim, the Examiner should point out
in his letter that the claim now being rejected
was previously allowed.

# 706.05 Rejection After Allowance of Application

See 1308.01 for a rejection based on a refer-
ence.

For rejection of claims in an allowed case
which has failed to make the date of a senior
application in correspondence under Rule 202,
see 1101.01 (i).

# 706.06 Rejection of Claims Copied From Patent

See 1101.02(f).

# 706.07 Final Rejection

Rule 115. Final rejection or action. (a) On the
second or any subsequent examination or considera-
tion, the rejection or other action may be made final,

whereupon applicant's response is limited to appeal in
the case of rejection of any claim (rule 191) or to
amendment as specified in rule 116.1 Petition may be
taken to the Commissioner in the case of objections
or requirements not involved in the rejection of any
claim (rule 181). Response to a final rejection or
action must Include cancellation of, or appeal from the
rejection of, each claim so rejected and, If any claim
stands allowed, compliance with any requirement or
objection as to form.

(b) In making such final rejection, the examiner
shall repeat or state all grounds of rejection then con-
sidered applicable to the claims in the case, clearly
stating the reasons therefor.

Before final rejection is in order a clear issue
should be developed between the Examiner and
applicant. To bring the prosecution to as
speedy conclusion as possible and at the same
time to deal justly by both the applicant and
the public, the invention as disclosed and
claimed should be thoroughly searched in the
first action and the references fully applied;
and in response to this action the applicant
should amend with a view to avoiding all the
grounds of rejection and objection. Switching
from one subject matter to another in the
claims presented by applicant in successive
amendments, or from one set of references to
another by the Examiner in rejecting in suc-
cessive actions claims of substantially the same
subject matter, will alike tend to defeat at-
taining the goal of reaching a clearly defined
issue for an early termination; i.e., either an
allowance of the case or a final rejection.

While the Rules no longer give to an appli-
cant the right to "amend as often as the Ex-
aminer presents new references or reasons for
rejection", present practice does not sanction
hasty and ill-considered final rejections. The
applicant who is seeking to define his invention
in claims that will give him the patent protec-
tion to which he is justly entitled should re-
ceive the cooperation of the Examiner to that
end, and not be prematurely cut off in the

prosecution of his case. But the applicant
who dallies in the prosecution of his case, re-
sorting to technical or other obvious subter-
fuges in order to keep the application pending
before the Primary Examiner, can no longer
find a refuge in the Rules to ward off a final
rejection.

The Examiner should never lose sight of the
fact that in every case the applicant is entitled
to a full and fair hearing, and that a clear issue
between applicant and Examiner should be de-
veloped, if possible, before appeal is prose-
cuted. However, it is to the interest of the
applicants as a class as well as to that of the

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706.07(e)

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public that prossbuticel of a case be confined to
as few actions as is consistent with a thorough
consideration of its merits
Neither the statutes nor the Rules of Practice
confer any right on an applicant to an extended
prosecution. Ex parte Hoogendam, 1939 C.D.
3; 499 O.G. 3.

## STATEMENT OF GROUNDS

In making the final rejection, all outstand-
ing grounds of rejection of record should be
carefully reviewed, and any such grounds re-
lied on in the final rejection should be reiter-
ated. They must also be clearly developed to
such an extent that applicant may readily judge
the advisability of an appeal unless a previous
(single) Office action contains a complete state-
ment supporting the rejection.

However, where a single previous Office ac-
tion contains a complete statement of a ground
of rejection, the final rejection may refer to
such a statement and also should include a re-
buttal of any arguments raised in the appli-
cant's response. If appeal is taken in such a
case, the examiner's answer should contain a
complete statement of the examiner's position.

A summary indicating the final disposition
of each claim is desirable and also a statement
that:

"The above rejection is made FINAL", or
"This is a FINAL rejection".

For amendments filed after final rejection,
see 714.12 and 714.13.

# 706.07(a) Final Rejection, When Proper on Second Action

Due to the change in practice as affecting
final rejections, older decisions on questions of
prematureness of final rejection or admission of
subsequent amendments do not necessarily re-
flect present practice. Under procedure which
became effective July 1, 1964, and modified on
September 1, 1966, second actions on the merits
shall be final, except where the examiner intro-
duces a new ground of rejection not necessitated
by amendment of the application by applicant,
c.g., a rejection of any claim not amended by
applicant where that rejection relies on newly
cited art.

See 809.02(a) for actions which indicate
generic claims not allowable.

In the consideration of claims in an amended
case where no attempt is made to point out the
patentable novelty, the Examiner should be on
guard not to allow such claims. See 714.01.
The claims, however, may be finally rejected
if, in the opinion of the Examiner, they are
clearly open to rejection on grounds of record.

706.07 (b) ... Final Rejection,
When
Proper on First Action

In certain instances, the claims of a new appli-
cation may be finally rejected in the first action,

This may be done if (1) the new application
is a continuation of or substitute for an earlier
application and (2) these claims would prop-
erly have been finally rejected on the next action
had they been presented in the earlier applica-
tion. A first action final rejection in's new
application which is a continuation-in-part is
usually not proper since, ordinarily, the subject
matter included in the claims was not present
in the parent case.

The period for response set in a first action
final should correspond to the period that would
have been set had the action been made in the
parent case.

# 706.07(c) Final Rejection, Prema- ture

Any question as to prematureness of a final
rejection should be raised, if at all, while the
case is still pending before the Primary Exam-
iner. This is purely a question of practice,
wholly distinct from the tenability of the re-
jection. It may therefore not be advanced as a
ground for appeal, or made the basis of com-
plaint before the Board of Appeals. It is re-
viewable by petition.

# 706.07(d) Final Rejection, With- drawal of, Premature

If, on request by applicant for reconsidera-
tion, the Examiner finds the final rejection to
have been premature, he should withdraw the
finality of the rejection.

# 706.07(e) Withdrawal of Final Re- jection, General

See 714.12 and 714.13, Amendments after
final rejection.

Once a final rejection that is not premature
has been entered in a case, however, it should
not be withdrawn at the applicant's request ex-
cept on the showing of Rule 116. This does
not mean that no further amendment or argu-
ment will be considered. An amendment that
will place the case either in condition for al-
lowance or in better form for appeal may be
admitted. Also, amendments complying with
objections or requirements as to form are to be
permitted after final action in accordance with
Rule 116(a). While the Office will continue
rigorous enforcement of Rule 116, citation of
new art. by the Examiner in a final rejection

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Will obviate further showing under Rale 116(b)
for any amendment necessitated by the new art.

The Examiner may withdraw the rejection of
finally rejected claims. If new facts or reasons
are presented such as to convince the Examiner
that the previously rejected claims are in fact
allowable; then the final rejection should be
withdrawn."Occasionally, the finality of a re-
jection may be withdrawn in order to apply a
new ground of rejection.

Although it is permissible to withdraw a final
rejection for the purpose of entering a new
ground of rejection, this practice is to be limited
to situations where a new reference either fully
meets at least one claim or meets it except for
differences which are shown to be completely
obvious. Normally, the previous rejection
should be withdrawn with respect to the claim
or claims involved.

The practice should not be used for applica-
tion of subsidiary references, or of cumulative
references, or of references which are merely
considered to be better than those of record.
Furthermore, the practice should not be used
for entering new non-reference or so-called "for-
mal" grounds of rejection such as those under
35 U.S.C. 112.

When a final rejection is withdrawn, all
amendments filed after the final rejection are
ordinarily entered.

# 707 Examiner's Letter or Action

Extract from Rule 104. (b) The applicant will be
notified of the examiner's action. The reasons for any
adverse action or any objection or requirement will
be stated and such information or references will be
given as may be useful in aiding the applicant to judge
of the propriety of continuing the prosecution of his
application.

# 707.01 Primary Indicates Action for New Assistant

After the search has been completed, action
is taken in the light of the references found.
Where the assistant Examiner has been in the
Office but a short time, it is the duty of the
Primary Examiner to go into the case thor-
oughly. The usual procedure is for the as-
sistant Examiner to explain the invention and
discuss the references which he regards as most
pertinent. The Primary Examiner may indi-
cate the action to be taken, whether restriction
or election of species is to be required, or
whether the claims are to be considered on
their merits. If action on the merits is to be

given, he may indicate how the references are
to be applied in cases where the claim is to be
rejected, or authorize allowance if it is not met
in the references and no further field of search
is known.

707.01(a) Partial Signatory Authority

Examiners who are delegated partial signa-
tory authority are expected to sign their own
actions with the exception of the following
actions which require the signature of the Pri-
mary Examiner :

Allowances
Quayle actions

Final rejections

Actions on amendments submitted after final
rejection

Examiners' answers on appeal

Interference declarations or modifications
Decisions on interference motions

Actions suggesting claims for interference
purposes
Actions involving copied patent claims
(1101.02(f))

Requests for jurisdiction for interference
purposes

Actions reopening prosecution

Requests for withdrawal from issue

Rule 312 amendments

Rejection of previously allowed claim
Final holding of abandonment for insufficient
response

Actions based on affidavit evidence (Rules 131
and 132)
Suspension of examiner's action
Reissue cases (decision on reissue oath)
Requests for an extension of time

707.02
Actions Which Require the
Attention of the Primary
Examiner

There are some questions which existing prac-
tice requires the Primary Examiner to be per-
sonally responsible for. The following actions
fall in this category :

Third action on any case (707.02(a)).

Action on a case pending 5 or more years
(707.02(a)).

Final rejection.

Initiating an interference (1101.01 (c) ).

First request for extension of time (710.02
(e)).

Disposition of an amendment in a case in
interference looking to the formation of an-
other interference involving that application
(1111.05).

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707,02(a)

Decisions on interference motions under
Rule 231; also, actions taken under Rule 237
(1105.02 to 1105.05).

Rejection of a previously allowed claim
(706.04).

Proposed rejection of a copied patent claim.
(If applicable to a patentee, see 1101.02(f).)
Classification of allowed cases (903.07).

Holding of abandonment for insufficient
response.

Suspension of Examiner's action (Rule 103).

Treatment of newly filed application which
obviously fails to comply with 35 U.S.C. 112
(702.01).

Consideration of the advisability of a pat-
entability report (705.01).

Requirements for restriction (803.01).

Withdrawal of final rejection (706.07(d) and
706.07(e)).

All Examiner's Answers on appeal (Rule
193). Note also 1208.01 where a new ground
of rejection or objection is raised, or a new refer-
ence is cited, in the Answer.

Decision on reissue oath.

Decision on affidavits under Rule 131
(715.08) and under Rule 132(716).

Initial review of streamlined continuation
cases (201.07).

For a list of actions that are to be submitted
to the Group Managers, see 1003, 1004, and
1005.

# 707.02(a) Cases Up for Third Action and Five-Year Cases

The Supervisory Primary Examiners should
impress their assistants with the fact that the
shortest path to the final disposition of an ap-
plication is by finding the best references on
the first search and carefully applying them.

The Supervisory Primary Examiners are ex-
pected to personally consider every application
which is up for the third official action with a
view to finally concluding its prosecution.

Any case that has been pending five years
should be carefully studied by the Supervisory
Primary Examiner and every effort made to
terminate its prosecution. In order to accom-
plish this result, the case is to be considered
"special" by the Examiner.

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707.04

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## 707.04 Initial Sentence

The initial sentence of each letter should in-
dicate the status of that action, as "This appli-
cation has been examined" if it is the first
action in the case, or, "This is in response to
amendment filed * * * " if such is the case.
Other papers received, such as supplemental
amendments affidavits, new drawings, etc.,
should be separately mentioned.

Preliminary amendment in a new case
should be acknowledged by adding some sen-
tence such as "Amendment filed (date) has
been received" following the initial sentence.
It should be noted, however, that in cases filed
before October 25, 1965 in which claims in excess
of the number supported by the filing fee are
presented before the first official action in the
case, action is given only on the claims originally
presented and applicant advised accordingly.

### 707.05 Citation of References

Rule 107. Oitation of references. If domestic pat-
ents be cited, their numbers and dates, the names of
the patentees, and the classes of inventions must be
stated. If foreign patents be cited, their nationality
or country, numbers and dates, and the names of the
patentees must be stated, and such other data must be
furnished as may be necessary to enable the applicant
to identify the patents cited. In citing foreign pat-
ents, the number of pages of specification and sheets
of drawing must be specified, and in case part only
of the patent be involved, the particular pages and
sheets containing the parts relied upon must be identi-
filed. If printed publications be cited, the author (if
any), title, date, pages or plates, and place of pub-
lication, or place where a copy can be found, shall be
given. When a rejection is based on facts within the
personal knowledge of an employee of the Office, the
data shall be as specific as possible, and the reference
must be supported, when called for by the applicant, by
the affidavit of such employee, and such affidavit shall
be subject to contradiction or explanation by the affi-
davits of the applicant and other persons.

# 707.05(a) Copies of Cited References Provided by Reference Or- der Center

Copies of cited references (except as noted
below) are automatically furnished without
charge to applicant together with the Office ac-
tion in which they are cited. Copies of the cited
references are also placed in the application file
for use by the Examiner during the prosecution.

Copies of references which are cited at the
time of allowance, in Ex parte Quayle actions,
and by applicant in accordance with 707.05(b)
and 708.02 are not furnished to applicant with
the Office action. Additionally, the practice of
furnishing, automatically and without charge,

copies of references cited in continuation appli-
cations if they had been previously cited in the
parent application has been discontinued. In
the rare instance where no art is cited in a con-
tinuation application, all the references cited
during the prosecution of the parent application
will be listed at allowance for printing in the
patent. Other continuing applications, includ-
ing continuation-in-part and divisional applica-
tions, are not affected by this change.

This service is furnished by the Reference
Order Center (R.O.C.) which is in charge of
(1) ordering copies of the cited U.S. patents;
(2) microfilming foreign and other references
supplied by the examiner; (3) mailing the ac-
tion with one copy of each cited reference; and
(4) promptly returning to the appropriate
Group the foreign and "other references", and
(5) after mailing, returning to the Group the
ribbon copy of the mailed action together with
a copy of each reference to be placed in the ap-
plication file.

To assist in providing this service, the Ex-
aminer should :

(a) Write the citation of the references on
3-part form PO-892, "Notice of References
Cited". (The rest of the action is written as
heretofore.)

(b) Place the original copy of PO-892 in the
file wrapper and give to the clerk with the com-
pleted office action for counting and typing as
usual.

(c) Write the application serial number on
the plastic index tab of a special folder. Insert
into the folder the two carbon copies of PO-
892 together with any Foreign and Other Ref-
erences cited in the action. (Do not enclose any
U.S. patents.)

(d) Place the folder in the "Out Box for
R.O.C."

Form PO-892 is completed, and the folder
prepared and forwarded to R.O.C. in all cases
in which a reference is to be provided, regard-
less of the type reference cited.

Foreign and Other References are copied and
returned to the Art Unit within 48 hours. If
it is not feasible to release such a reference from
the Art Unit, the Examiner should have two
copies made. These copies must be clearly
marked as such. Both copies are inserted into
the folder for forwarding to R.O.C.

If one copy of a reference is to be used for
two or more actions simultaneously, the folders
involved must be fastened together with an
explanatory note on top.

If Special Handling is desired, a "special"
sticker should be attached to the top of the
folder.

Jumbo U.S. Patents will be furnished to the
applicant, but will not be placed in the appli-

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707.08(e)

cation file. A tab card stamped "Jumbo Patent"
will be inserted in the file to account for the
missing reference.

Detailed instructions regarding the above
outlined procedure, and the procedure to be fol-
lowed in correcting an Office action prior to
mailing are found in Chapter 400 (Rev.) of the
Manual of Clerical Procedures, and the Memo-
randums of May 31, 1966, and March 29, 1967,
distributed to all Examiners.

## 707.05 (b) References Cited By Appli- cant

Applicants, attorneys and agents are hereby
advised that it is considered to be not only
proper but highly desirable that they inform
the Patent Office, in a separate paper either
within thirty days of the filing of an applica-
tion, or prior to the first Office action, which-
ever is later, of any prior patent or printed
publication which, in their opinion, may be
helpful to the Office in its examination of the
application. It is not the intention of the Pat-
ent Office to rely on such citations as a substi-
tute for all or any part of the official search, nor
as an admission by the applicant or attorney
that the cited art is anticipatory of any claim or
should form a basis for a rejection thereof. The
object in requesting a citation by the applicant
or attorney of prior art known to him is to pro-
vide a check on the official search and also to
facilitate such search in that an examiner who
is advised of prior art of a given degree of perti-
nence before beginning his search does not need
to spend time in considering art which is ob-
viously less pertinent, but which he would have
been required to consider if he were starting
without such advice. The Patent Office, if it uses
such art, will not rely in any way on the fact that
it was cited by the applicant or attorney, but will
treat it in exactly the same manner as art dis-
covered in the official search. It is definitely to
the applicant's advantage to have all pertinent
art of record. Any citation should be selective
and should avoid unnecessary duplication or
the inclusion of art of comparatively little
relevance.

Prior art cited by applicants, attorneys, or
agents within thirty days of the filing of an
application, or prior to the first Office action,
whichever is later, will be fully considered by
the Examiner, will be part of the official record,
and will be included in the list of references
cited in the patented file and in the printed
patent provided :

(a) the number of references cited is limited
to not more than five separate items, unless a
satisfactory explanation is given as to why
more than five citations are necessary ;

(b) one copy of each of the cited references
is submitted ;

(c) a detailed discussion of the references,
pointing out with the particularity required by
Kule 111 (b) and (c), the manner in which the
claimed subject matter distinguishes over the
references, is submitted.

Where applicant's citations of prior art are
submitted in accordance with the above pro-
cedures, they will be incorporated in the Ex-
aminer's list of reference citations and will not
be listed under a separate heading as heretofore.
The Examiner when preparing the action, will
fill out form PO-892 as usual with the follow-
ing exceptions. The Examiner will enter the sub-
mitted citations in the appropriate columns,
omitting the class and subclass. For references
other than patents, the Examiner will apply a
heading entitled "Applicant's Non-Pat. Cita-
tions" on form PO-892 ahead of the citation
data of the publication. In actions where no
references are to be provided (Allowance, Ex
parte Quayle, only applicant submitted refer-
ences relied upon), the Examiner will list the
submitted citations as usual with class and sub-
class on form PO-892. Since the file record will
indicate the presence of the submitted citations,
the Examiner does not have to point out in the
action the reasons for the citation of those refer-
ences not relied upon.

Reference Order Center (R.O.C.) will not
furnish copies of any patent for which the class
and subclass have been omitted on form
PO-892, or of any publication cited under the
heading "Applicant's Non-Pat. Citations."

References cited by applicants, attorneys, or
agents under the "special" examining procedure
for certain new applications (Section 708.02)
will be included in the list of references cited
in the patented file and printed patent.

Where applicant's submitted citations do not
comply with the above procedures, the paper
containing the citations will not be entered in
the file. The Examiner will not notify applicant
of non-compliance. The references will be cited
only if relied upon by the Examiner in his ac-
tion. Applicant will not be permitted to with-
draw the paper containing the improperly sub-
mitted citations from the application file.

All references appearing in Office actions will
be listed in the patent under a single heading
entitled "References Cited".

See 1302.12.

707.05(c) Grouped at Beginning of
Letter

In citing references for the first time, the
identifying data of the citation should be
placed on form PO-892 "Notice of References

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707.05(d)

Cited", a copy of which will be attached to the
typed sotion."No distinction is to be made be-
tween references on which a claim is rejected and
those formerly referred to as "pertinent". With
the arcoption of applicant submitted citations
(705.05(b), 708.02), the pertinent features of
references which are not used as a basis for
rejection, shall be pointed out briefly.

All U.S. patente (including reissues, designs,
etc.) are to be listed in strict numerical order.

Foreign patents are then to be listed, alpha-
betically arranged by country, with those from
each country in numerical order.

Other references are then listed, alphabeti-
cally arranged by author (by title, if no author
is given). Included in this category are Ger-
man allowed applications, Belgian and Nether-
lands printed specifications, abstracts, abbrevia-
tures and other publications. See 707.05 (e).

## 707.05(d) Reference Cited in Subse- quent Actions

Where an applicant in an amendatory paper
refers to a reference which is subsequently
relied upon by the Examiner, such reference
shall be cited by the Examiner in the usual
manner.

## 707.05(e) Data Used in Citing Refer- ences

Rule 107 (707.05 and 901.05(a) ) requires the
Examiner to give certain data when citing ref-
erences. The patent number, patent date, name
of the patentee, class and subclass (except ap-
plicant submitted citations), and the filing date,
if appropriate, must be given in the citation of
U.S. patents. See 901.04 for details concerning
the various series of U.S. patents and how to cite
them. Note that patents of the X-Series
(dated prior to July 4, 1836) are not to be
cited by number. Some U.S. patents issued in
1861 have two numbers thereon. The larger
number should be cited.

If the patent date of a U.S. patent is after
and the effective filing date of the patent is
before the effective U.S. filing date of the ap-
plication, the filing date of the patent must be
set forth along with the citation of the patent.
This calls attention to the fact that the par-
ticular patent relied on is a reference because
of its filing date and not its patent date. Simi-
larly, when the reference is a continuation-in-
part of an earlier-filed application which dis-
closes the anticipatory matter and it is neces-
sary to go back to the earlier filing date, the
fact that the subject matter relied upon was
originally disclosed on that date in the first
application should be stated.

In the rare instance where no art is cited in a
continuation application, all the references cited
during the prosecution of the parent application
will be listed at allowance for printing in the
patent. See 707.05 (a).

### CROSS-REFERENCES

Official cross-references should be marked
"X" and unofficial cross-references "uxr."

In citing U.S. patents an unofficial classifica-
tion is enclosed in parentheses, for example
"(96-24 F wxr)". Where only a portion of the
classification is unofficial, it alone is enclosed, as
in the citation 266 41(A) X. At the time of
allowance, when preparing the list of references
cited by the Examiner, the typist omits all par-
enthetically designated classification data.

### FOREIGN PATENTS AND PUBLISHED APPLICATIONS

In citing foreign patents, the patent number,
citation date, name of the country, name of the
patentee, and class and subclass (except appli-
cant submitted citations), must be given.

In actions where references are furnished, and
(1) less than the entire disclosure is relied upon,
the sheet and page numbers specifically relied
upon and the total number of sheets of drawing
and pages of specification must be included
(except applicant submitted citations) ; (2) the
entire disclosure is relied upon, the total number
of sheets and pages are not included, and the
appropriate columns on PO-892 are left blank.

În actions where no references are furnished,
the total number of sheets and pages should be
included except for applicant submitted cita-
tions.

Publications such as German allowed &p-
plications and Belgian and Netherlands printed
specifications should be similarly handled. If
the total number of sheets and pages in any
publication to be furnished (other than U.S.
patents) exceeds 15, the authorizing signa-
ture of the Group Manager on PO-892 is re-
quired. If the total number exceeds 30, the
signature of the Operation Director is required.
Applicants who desire a copy of the complete
foreign patent or of the portion not "relied on"
must order it in the usual manner.

See 901.05(a) for a chart in which foreign
language terms indicative of foreign patent and
publication dates to be cited are listed. Foreign
language terms indicating printed applications,
which are to be cited as publications, are keyed
to footnote (3) of said chart.

### PUBLICATIONS

See 711.06(a) for citation of abstracts and
abbreviatures. See 901.06(c) for citation of
Alien Property Custodian publications.

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### EXAMINATION OF APPLICATIONS

707.05(e)

In citing a publication, sufficient information
should be given to determine the identity and
facilitate the location of the publication. The
data required by Rule 107 (Sec. 707.05) with
the specific pages relied on identified together
with the SCIENTIFIC LIBRARY call num-
ber will suffice. The call number appears on the
"spine" of the book if the book is thick enough

and, in any event, on the back of the title page.
Books on interlibrary loan will be marked
with the call number of the other library, of
course. THIS NUMBER SHOULD NOT BE
CITED. If the copy relied upon is located
only in the Group making the action (there
may be no call number), the additional infor-
mation, "Copy in Group
" should be given.

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Examples of nonpatent bibliographical cits-
tions:
Winslow, C. E. A. Fresh Air and Ventila-
tion. N.Y., E. P. Dutton, 1926. p. 97-112.
TH7653.W5.

Singer, T. E. R. Information and Communi-
cation Practice in Industry. N.Y., Reinhold,
1958. Chapter 8, p. 157-165, by J. F. Smith,
Patent Searching. T175.S5.

Machinery's Handbook, 16th ed. N.Y., In-
dustrial Press, 1959. p. 1526-1527. TJ151.M3
1959.

Calvert, R. Patents (Patent Law). In En-
cyclopedia of Chemical Technology, ed. by R. E.
Kirk and D. F. Othmer. N.Y., Interscience
Encyclopedia. Vol. 9, 1952, p. 868-890. TP9.
E68.

Hine, J. S. Physical Organic Chemistry.
N.Y., McGraw-Hill, 1956, p. 81. QD476.H5.

Noyes, W. A., Jr. A Climate for Basic Chem-
ical Research. In Chem. & Eng. News. 38(42) :
p. 91-95. Oct. 17, 1960. TP1.1418.

Note: In this citation, 38 is the volume num-
ber, 42 the issue number, and 91-95 the page
numbers.

If the original publication is located outside
the Office, the Examiner should immediately
order a photocopy of at least the portion relied
upon and indicate the class and subclass in
which it will be filed. The Office action MUST
designate this class and subclass.

Whenever, in citing references anywhere in
the application file the titles of periodicals are
abbreviated, the abbreviations of titles used in
Chemical Abstracts and printed in the list of
periodicals abstracted by Chemical Abstracts
should be adopted with the following excep-
tions: (1) the abbreviation for the Berichte der
deutschen chemischen Gesellschaft should be
Ber. Deut. Chem. rather than Ber., and (2)
where a country or city of origin is a necessary
part of a complete identification, the country or
city of origin should be added in parentheses;
e.g., J. Soc. Chem. Ind. (London).

#### 707.05(f) Effective Dates of Declassi- fied Printed Matter

In using declassified material as references
there are usually two pertinent dates to be con-
sidered, namely, the printing date and the pub-
lication date. The printing date in some in-
stances will appear on the material and may be
considered as that date when the material was
prepared for limited distribution. The publi-
cation date is the date of release when the ma-
terial was made available to the public .* If

the date of release does not appear on the
material, this date may be determined by ref-
erence to the Office of Technical Services,
Commerce Depkithicht. o nonphy 00 ... 09

In the use of any of the above noted mate-
rial as an anticipatory publication, the date of
release following declassification is the effec-
tive date of publication within the meaning
of the statute.

For the purpose of anticipation predicated
upon prior knowledge under 35 U.S.C. 102(a)
the above noted declassified material may be
taken as prima facie evidence of such prior
knowledge as of its printing date even though
such material was classified at that time.
When so used the material does not constitute
an absolute statutory bar and its printing date
may be antedated by an affidavit under Rule
131.

*See Ex parte Harris et al., 79 U.S.P.Q. 438.

#### 707.05(g) Incorrect Citation of Ref- erences

Where an error in citation of a reference is
brought to the attention of the Office by appli-
cant, a letter correcting the error and restarting
the previous period for response, together with
a correct copy of the reference, is sent to appli-
cant. Where the error is discovered by the Ex-
aminer, applicant is also notified and the period
for response restarted. In either case, the Ex-
aminer is directed to correct the error, in ink,
in the paper in which the error appears, and
place his initials on the margin of such paper,
together with a notation of the paper number
of the action in which the citation has been cor-
rectly given. See 710.06.

Form POL-316 is used to correct an erro-
neous citation or an erroneously furnished
reference. Clerical instructions are outlined in
the Manual of Clerical Procedures. Sec. 410.C
(2) (3).

In any case otherwise ready for issue, in
which the erroneous citation has not been for-
mally corrected in an official paper, the Ex-
aminer is directed to correct the citation on an
Examiner's Amendment form POL-37.

If a FOREIGN patent is incorrectly cited ;
for example, the wrong country is indicated
or the country omitted from the citation, the
General Reference Branch of the Scientific
Library may be helpful. The date and num-
ber of the patent are often sufficient to deter-
mine the correct country which granted the
patent.

To correct a citation prior to mailing, either
before or after sending the typed action to
Reference Order Center (R.O.C.), see the
Memorandum of March 29, 1967, distributed to

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707.06.TOT

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all Examiners, or the Manual of Clerical Proce-
dures, Sec. 410.C(1).

# 707.06 Citation of Decisions, Orders and Notices

In citing published decisions, both the C.D.
and the O.G. citation should be given if the
case is reported in these publications. The
U.S., C.C.P.A., Federal Reporter or U.S.P.Q.
citation should also be given when it is con-
venient to do so.

In citing a manuscript decision which is
available to the public but which has not been
published, the tribunal rendering the decision
and complete data identifying the paper should
be given. Thus, a decision of the Board of
Appeals which has not been published but
which is available to the public in the patented
file should be cited, as "Ex parte ____ , deci-
sion of the Board of Appeals, Patent No.
paper No.
pages."

Decisions found only in patented files should
be cited only when there is no published deci-
sion on the same point. Any such decision
which is frequently cited should be called to
the attention of the appropriate Director to
stermine if it would be advisable to have it
published.

The citation of manuscript decisions which
are. not available to the public should be
avoided. If an Examiner believes that a par-
ticular manuscript decision not open to public
inspection would be useful, he may, call it to
the attention of the appropriate Director who
will determine whether steps should be taken
to release it for publication.

When a Commissioner's Order, Notice or
Memorandum is cited in any official action, the
date of the order, notice or memorandum or
the Official Gazette in which the same may be
found should also be given.

## 707.07 Completeness and Clarity

Rule 105. Completeness of ezaminer's action. The
examiner's action will be complete as to all matters,
except that in appropriate circumstances, such as mis-
joinder of invention, fundamental defects in the appli-
cation, and the like, the action of the examiner may be
limited to such matters before further action is made.
However, matters of form need not be raised by the ex-
aminer until a claim is found allowable.

Whenever, upon examination, it is found that
the terms or phrases of modes of characteriza-
tion used to describe the invention are not
sufficiently consonant with the art to which the
invention pertains, or with which it is most
nearly connected, to enable the Examiner to
make the examination specified in Rule 104, the
Examiner should make a reasonable search of

the invention so far as it can be understood from
the disclosure. The action of the Examiner
may be limited to a citation of what appears to
be the most pertinent prior art found and a
request that applicant correlate the terminology
of his specification with art-accepted termi-
nology before further action is made.

A suitable form for this action is as follows:
"A preliminary examination of this applica-
tion indicates that the following terminology
(or properties or units of test data, etc)
which appear(s) at page(s) . . . of the speci-
fication is (are) so different from those gen-
erally accepted in the art to which this inven-
tion pertains that it is difficult or impossible
to make a reliable search.

Applicant is therefore requested to provide
a sufficient elucidation of these terms (or prop-
erties or test data) or correlation thereof with
art-accepted terminology so that a proper com-
parison with the prior art can be made.

A SHORTENED STATUTORY PERIOD
FOR RESPONSE TO THIS ACTION IS
SET TO EXPIRE (date)."

### 707.07(a) Action on Formal Matters

In every instance requirements to correct in-
formalities noted on Form PO-152 (rev. 6/67)
by the Head of the Application Branch and
Draftsman's criticisms of the drawings noted on
Form PO-948 should be made in the first letter.
The aforementioned forms comprise three
copies each, the second and third copies being
mailed to the applicant along with the Exami-
ner's letter in which they are referred to as at-
tachments. Other informalities noted by the
Examiner should also be made in the first letter.

Every action on the merits should be com-
plete and thorough as to the merits.

### 707.07(b) Requiring New Oath See 602.02.

#### 707.07(c) Draftsman's Requirement

When a copy of Form PO-948 containing the
Draftsman's criticism of the drawings (see 707 .-
07 (a) ) is attached to the first letter by the Ex-
aminer, he should also state in the letter that
correction as indicated or submission of the new
drawing may be deferred pending the indica-
tion of allowable subject matter. See also 608 .-
02(a), 608.02(e), 608.02 (s).

## 707.07(d) Language To Be Used In Rejecting Claims

Where a claim is refused for any reason re-
lating to the merits thereof it should be "re-
jected" and the ground of rejection fully and
clearly stated, and the word "reject" must be

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used. The Examiner should designate the
statutory basis for any ground of rejection by
express reference to a section of 35 U.S.C. in the
opening sentence of each ground of rejection.
If the claim is rejected as too broad, the reason
for so holding should be given; if rejected as
indefinite the Examiner should point out where-
in the indefiniteness resides; or if rejected as in-
complete, the element or elements lacking should
be specified, or the applicant be otherwise ad-
vised as to what the claim requires to render it
complete !!

In general, the most usual ground of rejec-
tion is based on prior art under either 35 U.S.C.
102 or 35 U.S.C. 103.

## 35 U.S.C. 102 (ANTICIPATION OR LACK OF NOVELTY)

The distinction between rejections based on
35 U.S.C. 102 and those based on 35 U.S.C. 103
should be kept in mind. Under the former, the
claim is anticipated by the reference. No ques-
tion of obviousness is present. It may be ad-
visable to identify a particular part of the ref-
erence to support the rejection. If not, the
expression "rejected under 35 U.S.C. 102 as
clearly anticipated by" is appropriate.

## 35 U.S.C. 103 (OBVIOUSNESS)

In contrast, 35 U.S.C. 103 authorizes a rejec-
tion where to meet the claim, it is necessary to
modify a single reference or to combine it with
one or more others. After indicating that the
rejection is under 35 U.S.C. 103, there should
be set forth (1) the difference or differences in
the claim over the applied references, (2) the
proposed modification of the applied references
necessary to arrive at the claimed subject mat-
ter, and (3) an explanation why such proposed
modification would be obvious.

Everything of & personal nature must be
avoided. Whatever may be the Examiner's
view as to the utter lack of patentable merit
in the disclosure of the application examined,
he should not express in the record the opinion
that the application is, or appears to be, devoid
of patentable subject matter. Nor should he
express doubts as to the allowability of allowed
claims or state that every doubt has been re-
solved in favor of the applicant in granting
him the claims allowed.

The Examiner should, as a part of the first
Office action on the merits, identify any claims
which he judges, as presently advised, to be
allowable and/or should suggest any way in
which he considers that rejected claims may be
amended to make them allowable. If the Ex-
aminer does not do this, then by implication it

will be understood by the applicant or his attor-
ney or agent that in the Examiner's opinion, as
presently advised, there appears to be no allow-
able claim nor anything patentable in the sub-
ject matter to which the claims are directed.

### IMPROPER REJECTIONS

An omnibus rejection of the claim "on the
references and for the reasons of record" is
stereotyped and usually not informative and
should therefore be avoided. This is especially
true where certain claims have been rejected
on one ground and other claims on another
ground.

A plurality of claims should never be
grouped together in a common rejection, unless
that rejection is equally applicable to all claims
in the group.

Cumulative (multiple) or "pyramid" rejec-
tions should ordinarily be avoided, the best
references only being used. Of course, if the
ground of rejection seems likely to be antedated
under Rule 131, a backup rejection utilizing
other art may be employed. In addition, when
a rejection is under 35 U.S.C. 102, it may be
proper to further reject the claim under 85
U.S.C. 103 if (1) the 35 U.S.C. 102 reference
does not disclose the applicant's "inventive con-
cept", or (2) the propriety of the 35 U.S.C. 102
rejection depends upon a particular interpre-
tation of the claim.

## 707.07(e) Note All Outstanding Re- quirements

In taking up an amended case for action the
Examiner should note in every letter all the
requirements outstanding against the case.
Every point in the prior action of an Exam-
iner which is still applicable must be repeated
or referred to, to prevent the implied waiver
of the requirement.

As soon as allowable subject matter is found,
correction of all informalities then present
should be required.

## 707.07(f) Answer All Material Trav- ersed

Where the requirements are traversed, or
suspension thereof requested, the Examiner
should make proper reference thereto in his
action on the amendment.

Where the applicant traverses any rejection,
the Examiner should, if he repeats the rejec-
tion, take note of the applicant's argument and
answer the substance of it.

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If a rejection of record is to be applied to
& new or amended claim, specific identification
of that ground of rejection, as by citation of
the paragraph in the former Office letter in
which the rejection was originally stated,
should be given.

ANSWERING ASSERTED ADVANTAGES

After an Office action, the response (in addi-
tion to making amendments, etc.) may fre-
quently include arguments and affidavits to the
effect that the prior art cited by the Examiner
does not teach how to obtain or does not in-
herently yield one or more advantages (new
or improved results, functions or effects),
which advantages are urged to warrant issue
of a patent on the allegedly novel subject mat-
ter claimed.

If it is the Examiner's considered opinion
that the asserted advantages are without sig-
nificance in determining patentability of the
rejected claims, he should state the reasons for
his position in the record, preferably in the
action following the assertion or argument
relative to such advantages. By so doing the
Applicant will know that the asserted ad-
vantages have actually been considered by the
Examiner and, if appeal is taken, the Board of
Appeals will also be advised.

The importance of answering such argu-
ments is illustrated by In 're Herrmann et al.,
1959 C.D. 159; 739 O.G. 549 where the appli-
cant urged that the subject matter claimed
produced new and useful results. The court
noted that since Applicants' statement of ad-
vantages was not questioned by the Examiner
or the Board of Appeals, it was constrained
to accept the statement at face value and there-
fore found certain claims to be allowable.

## 707.07(g) Piecemeal Examination

Piecemeal examination should be avoided
as much as possible. The Examiner ordi-
narily should reject each claim on all valid
grounds available, avoiding, however, undue
multiplication of references. (See 904.02.)
Moreover, when there exists a sound rejection
on the basis of prior art which discloses the
"heart" of the alleged invention (as distin-
guished from prior art which merely meets the
terms of the claim), secondary rejections on
technical grounds ordinarily should not be
made. Where a major technical rejection is
proper (e.g., aggregation, lack of proper dis-
closure, undue breadth), such rejection should
be stated with a full development of the rea-
sons rather than by a mere conclusion coupled
with some stereotyped expression. Certain

technical rejections (e.g. negative limitations,
indefiniteness) should not be made where the
examiner, recognizing the limitations of the
English language, is not aware of an improved
mode of definition.

20: 159199197 11

### 707.07 (h) Notify of Inaccuracies in Amendment

#### See 714.23.

### 707.07(i) Each Claim To Be Men- tioned in Each Letter

In every letter each claim should be men-
tioned by number, and its treatment or status
given. Since a claim retains its original nu-
meral throughout the prosecution of the case,
its history through successive actions is thus
easily traceable. Each action should conclude
with a summary of rejected, allowed and can-
celled claims.

Claims retained under Rule 142 and claims
retained under Rule 146 should be treated as
set out in 821 to 821.03 and 809.02(a).

See 1109.02 for treatment of claims in the
application of losing party in interference.

The Index of Claims should be kept up to
date as set forth in 717.04.

## 707.07(j) State When Claims Are Al- lowable

ALLOWABLE EXCEPT AS TO FORM

When an application discloses patentable
subject matter and it is apparent from the
claims and the Applicant's arguments that the
claims are intended to be directed to such
patentable subject matter, but the claims in
their present form cannot be allowed because
of defects in form or omission of a limitation,
the Examiner should not stop with a bare ob-
jection or rejection of the claims. The Exami-
ner's action should be constructive in nature
and when possible he should offer a definite
suggestion for correction. Further, an Exam-
iner's suggestion of allowable subject matter
may justify his indicating the possible desira-
bility of an interview to accelerate early agree-
ment on allowable claims.

If the Examiner is satisfied after the search
has been completed that patentable subject
matter has been disclosed and the record indi-
cates that the Applicant intends to claim such
subject matter, he may note in the Office action
that certain aspects or features of the patent-
able invention have not been claimed and that
if properly claimed such claims may be given
favorable consideration.

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10.708

<!-- PageHeader="GROGN EXAMINATION OF APPLICATIONSAUZAM" -->

"If a claim is otherwise allowable but is de-
pendent on a cancelled claim er on a rejected
claim, the Office action should state that the
claim would be allowable if rewritten in inde-
pendent form.

## EARLY ALLOWANCE OF CLAIMS

Where the Examiner is satisfied that the
prior art has been fully developed and some of
the claims are clearly allowable, he should not
delay the allowance of such claims. The prac-
tice of some Examiners of never allowing a
claim in the early actions, when the afore-
mentioned conditions exist, is a handicap to
attorneys or agents. Such practice is also a
hardship on the inventor in his attempts to
negotiate for the exploitation of his invention.

## 707.07(k) Numbering Paragraphs

It is good practice to number the paragraphs
of the letter consecutively. This facilitates
their identification in the future prosecution of
the case.

## 707.08 Reviewing and Initialing by As- sistant Examiner

The full surname of the Examiner who pre-
pares the Office action will, in all cases, be typed
below the action on the left side. The telephone
number below this should be called if the case
is to be discussed or an interview arranged.

After the action is typed, the Examiner who
prepared the action reviews it for correctness.
If this Examiner does not have the authority
to sign the action, he should initial the action
above the typed name, and forward to the au-
thorized signatory Examiner for signing.

## 707.09 Signing by Primary or Other Authorized Examiner

Although only the original is signed, the word
"Examiner" and the stamped name of the signer
should appear on the original and copies.

## 707.10 Entry

After the original copy has been signed by
the authorized signatory Examiner, the typist
places it in the file wrapper and enters in black
ink on the outside of the wrapper, under "Con-
tents", the character of the action.

### 707.11 Date

The date should not be typed when the
letter is written, but should be stamped on all

copies of the letter after it has been signed
by the authorized signatory Examiner and the
copies are about to be mailed.

707.12 Mailing

In cases where no references are to be pro-
vided by R.O.C., the copies are mailed by the
Group after the original, initialed by the As-
sistant and signed by the authorized signatory
Examiner, has been placed in the file.

In cases where cited references are to be pro-
vided, the original and copies after signing are
forwarded by the clerk to Reference Order Cen-
ter (R.O.C.) for mailing. The file with a copy
of the action is retained in the Group. After the
copies are mailed by R.O.C., the original is re-
turned for placement in the file.

## 707.13 Returned Office Action

Letters are sometimes returned to the Office
because the Post Office has not been able to de-
liver them. The Examiner should use every
reasonable means to ascertain the correct ad-
dress and forward the letter again, after
stamping it "remailed" with the date thereof
and redirecting it if there be any reason to
believe that the letter would reach applicant
at such new address. If the Office letter was
addressed to an attorney, a letter may be writ-
ten to the inventor or assignee informing him
of the returned letter. The period running
against the application begins with the date of
remailing. (Ex parte Gourtoff, 1924 C.D. 153;
329 O.G. 536.)

If the Office is not finally successful in de-
livering the letter, it is placed, with the en-
velope, in the file wrapper. If the period dat-
ing from the remailing elapses with no com-
munication from applicant, the case is for-
warded to the Abandoned Files Unit.

## 708 Order of Examination

Rule 101. Order of examination. (a) Applications
filed in the Patent Office and accepted as complete ap-
plications (rules 53 and 55) are assigned for examina-
tion to the respective examining divisions having the
classes of inventions to which the applications relate.
Applications shall be taken up for examination by the
examiner to whom they have been assigned in the or-
der in which they have been filed.

(b) Applications which have been acted upon by
the Examiner, and which have been placed by the ap-
plicant in condition for further action by the Examiner
(amended applications) shall be taken up for action
in such order as shall be determined by the Commis-
sioner.

Effective July 1, 1964, each Examiner will give ori-
ority to that application in his docket, whether amended

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oz new, which has the oldest effective U.S. fling date.
Except as rare circumstances may Justify Group Sup-
ervisors in granting! individual exceptions, this basic
policy applies to all applications.

Whether a given application has an effective U.A.
filing date earlier than its actual filing date is deter-
mined by whether the disclosure of a parent care ad-
equately supports any claim or claims of the later
case. Examiners are responsible for making this de-
termination.If at any time an Examiner determines
that the "effective filing date" status of any applica-
tion differs from what the records show, he should so
inform the Clerk of Group, who should promptly amend
the records to show the correct status, with the date
of correction.

The new order of examination for each Examiner
will continue top priority for those special cases hav-
ing a fixed 60-day due date, such as Examiner's An-
swers and Decisions on Motions. Most other cases
still remaining in the "special" category ( for example,
reissues, interference cases, cases made special by

petition, cases fredy for Baci conchision, etc.) will
continue in this category, with the Arst effective U.S.
filing date among them normally controlling priority.

## 708.01 List of Special Cases

Rule 102. (a) Advancement of examination. Appli-
cations will not be advanced out of turn for examina-
tion or for further action except as provided by these
rules, or upon order of the Commissioner to expedite
the business of the Office, or upon a verified showing
which, in the opinion of the Commissioner, will justify
so advancing it.

(b) Applications wherein the inventions are deemed
of peculiar importance to some branch of the public
service and the head of some department of the Gov-
ernment requests immediate action for that reason, may
be advanced for examination.

Certain procedures by the Examiners take
precedence over actions even on special cases.

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708.02

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For example, all pepers typed and ready for
signature should be completed and mailed.

All issue cases returned with a "Printer Wait-
ing" slip must be processed and returned within
the period indicated.

Cases in which practice requires that the
Examiner act within 60 days, such as decisions
on motion (1105.06) and Examiner's answers
(1208), necessarily take priority over special
cases without specific time limits. Such cases
should be taken up for action at least 30 days
before the 60-day period expires, to guarantee
completion within the 60-day limit.

If an Examiner has a case which he is satis-
fied is in condition for allowance, or which he
is satisfied will have to be finally rejected, he
should give such action forthwith instead of
making the case await its turn.

The following is a list of special cases (those
which are advanced out of turn for examina-
tion) :

(a) Applications wherein the inventions are
deemed of peculiar importance to some branch
of the public service and when for that reason
the head of some department of the Govern-
ment requests immediate action and the Com-
missioner so orders (Rule 102).

(b) Cases made special as a result of a peti-
tion. (See 708.02.)

Subject alone to diligent prosecution by the
applicant, an application for patent that has
once been made special and advanced out of
turn for examination by reason of a ruling
made in that particular case (by the Commis-
sioner or an Assistant Commissioner) will con-
tinue to be special throughout its entire course
of prosecution in the Patent Office, including
appeal, if any, to the Board of Appeals; and
any interference in which such an application
becomes involved shall, in like measure, be
considered special by all Patent Office officials
concerned.

(c) Applications for reissues (Rule 176).

(d) Cases remanded by an appellate tribunal
for further action.

(f) Applications which appear to interfere
with other applications previously considered
and found to be allowable, or which it is de-
manded shall be placed in interference with an
unexpired patent or patents (Rule 201).

(g) Cases ready for allowance, or ready for
allowance except as to formal matters.

(h) Cases which are in condition for final
rejection. (See Order 3084 above.)

(i) Cases pending more than five years,
including those which, by relation to a prior

United States application, have an effective
pendency of more than five years. Ses 707.02
(a) and 710.02(b), item (d)
See also 714.13 and 1207.

## 708.02 Pedition to Make Special

As noted in 708.01, certain cases may be ad-
vanced for examination out of turn as a result of
a petition to make special. The categories of
such special cases are noted below.

MANUFACTURE OR INFRINGEMENT

Petitions to make special may be based on the
grounds of prospective manufacture or actual
infringement (as explained in Form PO-94)
or the inability of the applicant to interest
capital due to the lack of a patent or of an
Ofice action indicating patentable subject
matter.

## AGE OR ILL HEALTH

Petitions to make special may be based on a
verified showing that the age (65 or older) or
state of health of the applicant is such that he
might not be available to assist in the prosecu-
tion of the application, if it were to run its
normal course, or be alive at the time of the
grant to derive any benefit from his patent.

## CONTINUING APPLICATION

Petitions to make special a continuing appli-
cation may be based on an allegation that the
application contains only claims which have
been held allowable in the parent case or claims
differing therefrom only in matters of form
or by immaterial terminology. The Examiner
is requested to make a report stating whether
the allegation in the petition is correct and
including a list of the references over which
the claims were allowed, unless such references
have been listed in the petition. If, in the
opinion of the Examiner, the claims in the ap-
plication do not qualify it for special status
as above noted, but he is able to determine from
inspection that the application is allowable in
matters of substance or that the claims are oth-
erwise such as would, by reason of the previous
prosecution, be clearly subject to immediate
final action, he should report the fact.

SPECIAL EXAMINING PROCEDURE FOR CERTAIN
NEW APPLICATIONS-ACCELERATED EXAMINA-
TION

A new application may be granted special
status provided that applicant (and this term

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includes applicant's attorney or agent) conour-
rently:

(a) Submits a written petition to make
special.

(b) Agrees not to prosecute more than ten
claims at any time. Should the pending appli-
cation contain more than ten claims when the
request for special status is filed, an amendment
or an election without traverse must be proposed
at that time to reduce the number for prosecu-
tion to not more than ten. The amendment or
election will be entered only if the special status
is granted.

(c) Presents all claims directed to a single
invention or if the Onice determines that all the
claims presented are not obviously directed to
a single invention will make an election without
traverse as a prerequisite to the grant of special
status.

The election may be made by applicant at the
time of filing the petition for special status.
Should applicant fail to include an election with
the original papers or petition and the Office
determines that a requirement should be made,
the established telephone restriction practice
will be followed.

If otherwise proper, examination on the
merits will proceed on claims drawn to the
elected invention.

If applicant refuses to make an election with-
out traverse, the application will not be further
examined at that time. The petition will be
denied on the ground that the claims are not
directed to a single invention, and the applica-
tion will await action in its regular turn.

Divisional applications directed to the non-
elected inventions will not automatically be
given special status based on papers filed with
the petition in the parent case. Each such
application must meet on its own all require-
ments for the new special status.

(d) Submits a statement that a pre-examina-
tion search was made, and specifying whether
by the inventor, attorney, professional search-
ers, etc., and listing the field of search by class
and subclass, publication, chemical abstracts,
foreign patents, etc.

(e) Submits one copy each of the references
deemed most closely related to the subject mat-
ter encompassed by the claims.

(f) Submits a detailed discussion of the ref-
erences, which discussion points out, with the
particularity required by Rule 111 (b) and (c),
how the claimed subject matter is distinguish-
able over the references. Where applicant indi-
cates an intention of overcoming one of the ref-
erences by affidavit under Rule 131, the affidavit
must be submitted before the application is
taken up for action, but in no event later than
one month after request for special status.

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Ta those instances where the request for this
special status does not meet all the prerequisites
set forth above, applicant will be notified and
the defects in the request will be stated. The
application will remain in the status of a new
application awaiting action in its regular turn.
In those instances where a request is defective
in one or more respects, applicant will be given
one opportunity to perfect the request. If per-
fected, the request will then be granted.

Once a request has been granted, prosecution
will proceed according to the procedure set
forth below; there is no provision for "with-
drawal" from this special status.

Following is the special examining proce-
dure :

1\. The new application, having been granted
special status as a result of compliance with the
requirements set out above will be taken up by
the Examiner before all other categories of ap-
plications except those clearly in condition for
allowance and those with set time limits, such as
Examiner's Answers, Decisions on Motions, etc.,
and will be given a complete first action which
will include all essential matters of merit as to
all claims. The Examiner's search will be re-
stricted to the subject matter encompassed by
the claims. This first action will terminate with
the setting of a three-month shortened period
for response.

2\. During the three-month period for re-
sponse, applicant is encouraged to arrange for
an interview with the Examiner in order to re-
solve, with finality, as many issues as possible.
In order to afford the Examiner time for reflec-
tive consideration before the interview, appli-
cant or his representative should cause to be
placed in the hands of the Examiner at least one
working day prior to the interview, a copy
(clearly denoted as such) of the amendment
that he proposes to file in response to the Exam-
iner's action. Such a paper will not become a
part of the file, but will form a basis for discus-
sion at the interview.

3\. Subsequent to the interview, or responsive
to the Examiner's first action if no interview
was had, applicant will file his "record" re-
sponse. The response at this stage, to be proper,
must be restricted to the rejections, objections,
and requirements made. Any amendment
which would require broadening the search field
will be treated as not a proper response.

4\. The Examiner will, within one month from
the date of receipt of applicant's formal re-
sponse, take up the application for final dispo-
sition. This disposition will constitute either a
final action which terminates with the setting
of a three-month period for response, or a no-
tice of allowance. "No further response will be
made by the Examiner after a final action with

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the exceptions that (a) an Examiner's Answer
may be prepared in response to an appeal brief,
or (b) the application may be passed to issuel
\5. A personal interview after final Office ac-
tion will not be permitted unless requested by
the Examiner. However, telephonic interviews
will be permitted where appropriate for the
purpose of correcting any minor matters which
remain outstanding.

See 822 O.G. 2.

Each petition to make special, regardless of
the ground upon which the petition is based and
the nature of the decision, is placed of record
in the application file, together with the decision
thereon. The petition and the decision will be
entered in the application by the Office where the
petition is ruled on. The petition, together with
any attached papers and supporting affidavits,
will be given a single paper number and entered
by that number in the "Contents" of the file.
The decision will be accorded a separate paper
number and so entered in the "Contents" of the
file.

In order to insure entries in the "Contents"
of the application file in proper order, the clerk
in the examining group will be expected to
make certain that all papers prior to a petition
have been entered in the application file before
forwarding it for consideration.

## 708.03 Examiner Tenders His Resig- nation

Whenever an Examiner tenders his resigna-
tion, the Supervisory Primary Examiner should
see that he spends his remaining time as far as
possible in winding up the old complicated cases
or those with involved records and getting as
many of his amended cases as possible ready for
final disposition.

If the Examiner has considerable experience
in his particular art, it is also advantageous
to the Office if he indicates (in pencil) in the
file wrappers of cases in his docket, the field
of search or other pertinent data that he con-
siders appropriate.

## 709 Suspension of Action

Rule 105. Suspension of action. (a) Suspension of
action by the Office will be granted at the request of
the applicant for good and sufficient cause and for a
reasonable time specified. Only one [such] suspension
may be granted by the primary examiner; any further
suspension must be approved by the Commissioner.

(b) If action on an application is suspended when
not requested by the applicant, the applicant shall be
notified of the reasons therefor.

Active by the examiner may be suspended by order
of the Commissioner in the case of applications owned
by the United States whenever publication of the in-
vention by the granting of a patent thereon might be
detrimental to the public safety or defense, at the re-
quest of the appropriate department or agency.

Suspension of action (Rule 103) should not
be confused with extension of time for reply
(Rule 136). It is to be noted that a suspension
of action applies to an impending Office action
by the examiner whereas an extension of time
for reply applies to action by the applicant.

The second paragraph of the Rule provides
for a suspension of Office action by the ex-
aminer on his own initiative, as in Secs. 709.01
and 1101.01(i).

## 709.01 Overlapping Applications by Same Applicant or Owned by Same Assignee

Examiners should not consider ex parte,
when raised by an applicant, questions which
are pending before the Office in inter partes
proceedings involving the same applicant or
party of interest. (See ex parte Jones, 1924
C.D. 59; 327 O.G. 681.)

Because of this where one of several appli-
cations of the same inventor or assignee which
contain overlapping claims gets into an inter-
ference it was formerly the practice to suspend
action by the Office on the other applications
in accordance with Ex parte McCormick, 1904
C.D. 575; 113 O.G. 2508.

Now, partly in view of In re Seebach, 1937
C.D. 495; 484 O.G. 503 the prosecution of all
the cases not in the interference is required to
be carried as far as possible, by treating as
prior art the counts of the interference and by
rejections forcing the drawing of proper lines
of division. See 1111.03.

## 709.02 Actions Following Correspond- ence Under Rule 202

See 1101.01(i).

## 710 Period for Response

See Chapter 1200 for period for response
when appeal is taken or court review sought.

## 710.01 Statutory Period

Extract from Rule 135. (a) If an applicant falls to
prosecute his application within six months after the
date when the last official notice of any action by the

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Coffee was sielied to time, or within auch shorter time
as may be fixed (rule 188), the application will becorde
abandoned.

The normal statutory period for response to
an Office action is six months. 35 U.S.C. 133.

# 710.01 (a) Statutory Period, How Computed

The period is computed from the day of the
mailing of the Office action to the date of re-
ceipt by the Office of applicant's response. No
cognizance is taken of fractions of a day and
applicant's response is due on the corresponding
day of the month six months or any lesser num-
ber of months specified after the Office action.

Response to an Office action dated August
30 is due on the following February 28 (or 29
if it is a leap year), while a response to an
Office action dated February 28 is due on Au-
gust 28 and not on the last day of August. Ex
parte Messick, 1930 C.D. 6; 400 O.G. 3. The
same reasoning would apply for any period less
than six months.

The date of receipt of a response to an Office
action is given by the "Office date" stamp
which appears on the responding paper. See
505.

In some cases the Examiner's letter does not
determine the beginning of a statutory re-
sponse period. For example, the Examiner
may write a letter adhering to a final rejection,
in which case the statutory response period
running from the date of the final rejection is
not disturbed. In all cases where the statutory
response period runs from the date of a previ-
ous action, a statement to that effect should be
included at the end of the letter.

## 710.02 Shortened Statutory Period and Time Limit Actions

Under Rule 136 (35 U.S.C. 133) an appli-
cant does not always have six months within
which to respond to an Ofice action. He may
be required to respond in a shorter period, not
less than 30 days, whenever it is deemed "neces-
sary or expedient". Some conditions deemed
"necessary or expedient" are listed in Section
710.02(b).

In other situations, for example, the rejection
of a copied patent claim, the Examiner may
require applicant to respond on or before a
specified date. These are known as time limit
actions and are established under authority of
35 U.S.C. 6. Some situations in which time
limits are set are noted in Section 710.02(c).
The time limit requirement should be typed in
capital letters.

Cars should be exercised to set a date which
is not a Saturday, Sunday or holiday.

Furthermore, the legend "SHORTENED
TIME FOR REPLY" is stamped on the first
page of every action, including all carbon
copies in which a shortened time for reply has
been set. This legend is applied preferably
just under the date stamp so prominently that
a person looking merely for the mailing date
of the action and not reading the action as a
whole cannot reasonably avoid seeing the
legend.

710.02(b)
Shortened Statutory Pe-
riod: Situations in Which
Used

Under the authority given him by 35 U.S.C.
133 (Sec. 710.02) the Commissioner has di-
rected the Examiners to set a shortened period
for response to every action. The length of
the shortened statutory period to be used de-
pends on the type of response required. Some
specific cases of shortened statutory period for
response to be given are:

THIRTY DAYS
Requirement for restriction or
election of species-no claim re-
jected
814

To file express abandonment-
drawings transferred
608.02(1)

Two MONTHS

Winning party in terminated in-
terference to reply to unan-
swered Office action.

1109.01

Where, after the termination of an inter-
ference proceeding, the application of the
winning party contains an unanswered office
action, final rejection or any other action, the
Primary Examiner notifies the applicant of
this fact. In this case response to the Office
action is required within a shortened statutory
period running from the date of such notice.
See Ex parte Peterson, 1941 C.D. 8: 525 O.G. 3.
Ex parte Quayle

When an application is in condition for
allowance, except as to matters of form, such
as correction of drawings or specification, a
new oath, etc., the case will be considered
special and prompt action taken to require cor-
rection of formal matters. Such action should
include a statement that prosecution on the
merits is closed in accordance with the deci-
sion in Ex parte Quayle, 1935 C.D. 11; 453
O.G. 213, and should conclude with the setting
of a shortened statutory period for response.

Multiplicity rejection-no other
rejection
706.03(1)

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vd short od 7Auf o.THREE Morens ot roupail
To respond to any Office action on the merits.
PERIOD FOR RESPONSE RESTARTED
Incorrect citation by Examiner- re-
gardless of time"remaining : in
original period.
710.06

The above periods may be changed under
special, rarely occurring circumstances.

There are other periods for response set
forth in the Rules of Practice. For example,
applicant will still have 60 days (not two
months) to respond to a new ground of re-
jection in the Examiner's Answer (Rule 193).
A shortened statutory period may not be
less than 30 days.

## 710.02(c) Time-Limit Actions: Situ- ations in Which Used

As stated in 710.02, 35 U.S.C. 6 provides
authority for the Commissioner to establish
rules and regulations for the conduct of pro-
ceedings in the Patent Ofice. Among the
Rules are certain situations in which the
Examiner sets a time limit within which some
specified action should be taken by applicant.
Some situations in which a time limit is set are :

(a) Rule 203 provides that in suggesting
claims for interference :

The parties to whom the claims are suggested will be
required to make those claims (I. e., present the sug-
gested claims in their applications by amendment)
within a specified time, not less than 30 days, in order
that an interference may be declared.

See 1101.01 (j), and 1101.01 (m).

(b) Rule 206 provides :

Where claims are copied from a patent and the ex-
aminer is of the opinion . . . that none of the claims
can be made, he shall state in his action why the appli-
cant 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.

See 1101.02(f).

(c) When applicant's action is not fully re-
responsive to the Office action, the Examiner
may give applicant one month or the remainder
of the set statutory period, whichever is longer,
to complete his response. See third paragraph
of Rule 185 which reads as follows:

When action by the applicant Is a bona fide attempt
to advance the case to final action, and is substantially
a complete response to the examiner's action, but con-
sideration of some matter or compliance with some re-
quirement has been Inadvertently omitted, opportunity
to explain and supply the omission may be given before
the question of abandonment is considered.

(d) In applications filed on or after October
25, 1965, applicant is given one month or the
remainder of the set statutory period, which-
ever is longer, to remit any additional fees re-
quired for the submission of an amendment in
response to an Office action.
See 607 and 714.03.

(e) To ratify or otherwise correct an un-
signed amendment, applicant is given one
month or the remainder of the set statutory
period, whichever is longer.

See 714.01 (b).

(f) Where application is otherwise allowable
but contains a traverse of a requirement to re-
strict, one month is given to cancel claims to
nonelected invention or species or take other
appropriate action. See Rules 141, 144, and
809.02(c), 821.01.

(g) If there is a defect in the format of a
streamlined continuation application which can
be corrected, applicant is given one month to
correct the defect.

See 201.07.

## 710.02(d) Difference Between Short- ened Statutory and Time- Limit Periods

The distinction between a limited time for
reply and a shortened statutory period under
Rule 136 should not be lost sight of. The pen-
alty attaching to failure to reply within the
time limit (from the suggestion of claims or the
rejection of copied patent claims) is loss of the
subject matter involved on the doctrine of dis-
claimer. A rejection on the ground of dis-
claimer is appealable. On the other hand, a
complete failure to respond within the set stat-
utory period results in abandonment of the
entire application. This is not appealable, but
a petition to revive may be granted if the delay
was unavoidable. Further, where applicant re-
sponds a day or two after the time limit, this
may be excused by the Examiner if satisfac-
torily explained; but a response one day late
in a case carrying a shortened statutory period
under Rule 136, no matter what the excuse.
results in abandonment ; however, if asked for
in advance extension of the period may be
granted by the Examiner, provided the exten-
sion does not go beyond the six months' period
from the date of the Office action. See also
1101.02(f).

### 710.02(e) Extension of Time

Extract from Rule 136. (b) The time for reply, when
a time less than six months has been set, will be ex-
tended only for good and sufficient cause, and for a

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reasonable time specified. Any request for such ex-
tension must be filed on or before the day on which
action by the applicant is due, but in no case will the
mere filing of the request effect any extension, Only
one extension may be granted by the primary examiner
in his discretion; any further extension must be ap-
proved by the Commissioner. In no case can any ex-
tension carry the date on which response to an action
is due beyond six months from the date of the action.

It should be very carefully noted that neither
the Primary Examiner nor the Commissioner
has authority to extend the shortened statutory
period unless request for the extension is filed
on or before the day on which applicant's ac-
tion is due. While the shortened period may
be extended within the limits of the statutory
six months' period, no extension can operate to
extend the time beyond the six months.

Compare, however, Rule 135 (c) and 714.03.
Any request under Rule 136(b) for extension
of time must state a reason in support thereof;
under the present policy the application of the
Rule will entail only a limited evaluation of the
stated reason.

This liberality will not apply to

(1) any requests for more than one-month
extension, and

(2) second and subsequent requests for ex-
tension of time.

All first requests for extension of time regard-
less of the number of months involved will be
decided by the Primary Examiner. All re-
quests subsequent to the first request for exten-
sion of time to respond to an office action will
be forwarded to the Group Manager for action.

If a request for extension of time is filed in
duplicate and accompanied by a stamped re-
turn-addressed envelope, the Office will indicate
the action taken on the duplicate and return it
promptly in the envelope. Utilization of this
procedure is optional on the part of applicant.

In implementing this procedure, the action
taken on the request should be noted on the
original and on the copy which is to be returned.
The notation on the original, which becomes a
part of the file record, should be signed by the
person granting or denying the extension, and
the name and title of that person should also
appear in the notation on the copy which is
returned to the person requesting the extension.

When the request is granted, no further ac-
tion is necessary; when it is denied, a formal
letter of denial, as presently used, giving
the reason for denial, should be forwarded
promptly after the mailing of the duplicate.

Request for extension of time may be made by
hand delivery of a duplicate copy of a request
which has been filed. Prompt consideration is
given and the action taken communicated to
applicant at the earliest practicable time; if an
attorney's copy as well as the duplicate copy is
submitted, it is sufficient to merely indicate on
both copies that the extension will be granted.

If the request for extension is not presented
in duplicate, the applicant should be advised
promptly and in writing regarding action taken
on the request so that the file record will be com-
plete. (See Appendix III, form para. 25.)

The filing of a timely response to a final re-
jection having a shortened statutory period for
response will operate to extend the period for
appeal or filing of a continuing case an addi-
tional month, but in no case to exceed six
months from the date of the final action. (See
714.13.)

### 710.04 Two Periods Running

There sometimes arises a situation where two
different periods for response are running
against an application, the one limited by the
regular statutory period, the other by the lim-
ited period set in a subsequent Office action.
The running of the first period is not sus-
pended nor affected by an ex parte limited
time action or even by an appeal therefrom.
For an exception, involving suggested claims,
see 1101.01 (n).

### 710.04(a) Copying Patent Claims

Where, in an application in which there is an
unanswered rejection of record, claims are
copied from a patent and all of these claims
are rejected there results a situation where two
different periods for response are running
against the application. One period, the first.
is the regular statutory period of the unan-
swered rejection of record, the other period is
the limited period set for response to the re-
jection (either first or final), established under
Rule 206. The date of the last unanswered
Office action on the claims other than the
copied patent claims is the controlling date of
the statutory period. (Ex parte Milton, 164
Ms. D. 1, 63 USPQ 132 and Ex parte Nelson,
164 Ms. D. 361, 26 J.P.O.S. 564.) See also
1101.02(f).

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710.05 Period Ending on Saturday,
Sunday or Holiday

Ruis T. Times for taking action; espiration on Sater-
day, Sunday, or holiday. Whenever periods of time
are specified in these rules in days, calendar days are
intended. When the day, or the last day, fixed by stat-
ute or by of under these rules for taking any action or
paying any fee in the Patent Omce falls on Saturday,
Sunday, or on a holiday within the District of Colum-
bia, the action may be taken, or the fee paid, on the
next succeeding day which is not a Saturday, Sunday,
or a holiday. See rule 304 for time for appeal or for
commencing civil action.

The holidays in the District of Columbia
are: New Year's Day, January 1; Washing-
ton's Birthday, February 22; Memorial Day,
May 30; Independence Day, July 4; Labor
Day (first Monday in September); Veterans'
Day, November 11; Thanksgiving Day (fourth
Thursday in November) ; Christmas Day, De-
cember 25; Inauguration Day (January 20,
every four years). Whenever a holiday falls
on a Sunday, the following day (Monday) is
also a holiday. Ex. Order 10,358; 17 F.R. 5269.

When a holiday falls on a Saturday, any ac-
tion or fee due on the preceding day (Friday)
must be filed on that day even though, by reason
of Public Law 86-362, the Patent Office is
closed.

When an amendment is filed a day or two
later than the expiration of the period fixed by
statute, care should be taken to ascertain
whether the last day of that period was Satur-
day, Sunday or a holiday in the District of
Columbia, and if so, whether the amendment
was filed or the fee paid on the next succeed-
ing day which is not a Saturday, Sunday or a
holiday.

An amendment received on such succeeding
day which was due on Saturday, Sunday or a
holiday is endorsed on the file wrapper with
the date of receipt. The Saturday, Sunday
and/or holiday is also indicated.

### 710.06 Miscellaneous Factors Deter- mining Date

Where the citation of a reference is incorrect
and this error is called to the attention of the
Office before the expiration of the period for
response, a new period for response starts from
the date of the Office letter giving the correct
citation. The previous period is restarted re-
gardless of the time remaining. See 707.05 (g)
for the manner of correcting the record where
there has been an erroneous citation.

Where for any reason it becomes necessary
to remail any action (707.13), the action should
be correspondingly redated, as it is the re-mail-
ing date that establishes the beginning of the
period for response.Es parte Gourtoff, 1924
C.D. 158; 329 O.G. 536.

A supplementary action after a rejection ex-
plaining the references more explicitly or giv-
ing the reasons more fully, even though no
further references are cited, establishes a new
date from which the statutory period runs.

If for any other reason an Office action is
defective in some matter necessary for a proper
response applicant's time to respond begins
with the date of correction of such defect. An
example is an action rejecting a claim on a
reference which is not cited at all nor already
of record.

#### 711 Abandonment

Rule 135. Abandonment for failure to respond within
time limit. (a) If an applicant fails to prosecute his
application within six months after the date when the
last official notice of any action by the Office was malled
to him, or within such shorter time as may be fixed
(rule 136), the application will become abandoned.

(b) Prosecution of an application to save it from
abandonment must include such complete and proper
action as the condition of the case may require. The
admission of an amendment not responsive to the last
oficial action, or refusal to admit the same, and any
proceedings relative thereto, shall not operate to save
the application from abandonment.

(c) When action by the applicant is a bona fide at-
tempt to advance the case to final action, and is sub-
stantially a complete response to the examiner's action,
but consideration of some matter or compliance with
some requirement has been inadvertently omitted, op-
portunity to explain and supply the omission may be
given before the question of abandonment is considered.

(d) Prompt ratification or filing of a correctly signed
copy may be accepted in case of an unsigned or im-
properly signed paper.

(See rule 7.)

Rule 158. Express abandonment. An application may
be expressly abandoned by filing in the Patent Office a
written declaration of abandonment, signed by the ap-
plicant himself and the assignee of record, if any, and
identifying the application. Except as provided in
Rule 262 an application may also be expressly aban-
doned by filing a written declaration of abandonment
signed by the attorney or agent of record.

Abandonment may be either of the invention
or of an application. This discussion is con-
cerned with abandonment of the application
for patent.

An abandoned application, in accordance
with Rules 135 and 138, is one which is re-

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moved from the Office docket of pending onses
through:

1\. formal abandonment

a by the applicant, himself (acquiesced in
by the assignee if there be one), or

b. by the attorney or agent of record, or
2. failure of applicant to take appropriate
action within a specified time at some stage in
the prosecution of the case.

Where an applicant, himself, formally aban-
dons an application and there is a corporate as-
signee, the acquiescence must be made through
an officer whose official position is indicated.

See 608.02 (1).

See 712 for abandonment for failure to pay
issue fee.

#### 711.01 Express or Formal Abandon- ment

Applications may be expressly abandoned
as provided for in Rule 138. When a letter
expressly abandoning an application (not in
issue) is received, the Examiner should
acknowledge receipt thereof, indicate whether
it does or does not comply with the require-
ments of Rule 138, and if it does comply, state
that the application is abandoned and that it
is being sent to the Abandoned Files Unit.
However, in the case of an application in issue,
express abandonments which are received be-
fore the issue fee is paid are acknowledged by
the Head of the Issue and Gazette Branch; in
those cases where the issue fee has been paid
and the patent to be issued has received its
date and number, express abandonments must
be approved by the Commissioner, and under
these circumstances, approval depends upon a
showing of sufficient cause for waiting so long
before deciding to abandon the application.

In view of the doctrine set forth in Ex parte
Lasscell, 1884 C.D. 66; 29 O.G. 861, an amend-
ment canceling all of the claims, even though
said amendment is signed by the applicant
himself and the assignee, is not an express
abandonment. Such an amendment is re-
garded as non-responsive and should not be

entered, and applicant should be notified las
explained in 714.08, 714.05. But see 608.02 (1)
for situation where application is abandoned
along with transfer of drawings to a new appli-
cation.

### 711.02 Failure To Take Required Ac- tion During Statutory Period

Rule 135 specifies that an application be-
comes abandoned if applicant "fails to prose-
cute" his application within the fixed statutory
period. This failure may result either from

1\. failure to respond within the statutory
period, or

2\. insufficiency of response, i.e., failure to
take "complete and proper action, as the condi-
tion of the case may require" within the statu-
tory period (Rule 135).

Abandonment by entire failure to respond
presents no problems.

Nor is there ordinarily any particular diffi-
culty when an amendment reaches the Office
(not the Group) after the expiration of the
statutory period. The case is abandoned and
the remedy is to petition to revive it. The Ex-
aminer should notify the applicant or attorney
at once that the application has been aban-
doned. The late amendment is endorsed on the
file wrapper but not formally entered. (See
714.17.)

To pass on questions of abandonment, it is
essential that the Examiner know the dates
that mark the beginning and end of the statu-
tory period under varying situations. Appli-
cant's response must reach the Office within the
set statutory period for reply dating from the
mailing of the Office letter. (See 710 to 710.06.)

### 711.02(a) Insufficiency of Response

Abandonment may result in a situation
where applicant's reply is within the statutory
period but is not fully responsive to the Office
action. But see 710.02(c), par. (c). See also
714.02 to 714.04.

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# 711.02(b) Special" Situations Involv- ing Abandonment

The following situations involving questions
of abandonment often arise, and should be spe-
cially noted :

1\. Copying claims from a patent when not
suggested by the Patent Office does not consti-
tute a response to the last Office action and will
not save the case from abandonment, unless the
last Office action relied solely on the patent for
the rejection of all the claims rejected in that
action.

2\. A case may become abandoned through
withdrawal of, or failure to prosecute, an ap-
peal to the Board of Appeals. See 1215.01 to
1215.04.

3\. Likewise it may become abandoned
through dismissal of appeal to C.C.P.A. or
civil action, where there was not filed prior to
such dismissal an amendment putting the case
in condition for issue or fully responsive to the
Board's decision. Failure to perfect an ap-
peal as required by CCPA Rule 25. See 1215.05
and 1216.01.

4\. Where claims are suggested for interfer-
ence near the end of the statutory period run-
ning against the case, see 1101.01(n).

5\. When drawings are transferred under
Rule 88. See 608.02(1).

## 711.02(c) Termination of Proceed- ings

"Termination of proceedings" is an expres-
sion found in 35 U.S.C. 120. As there stated,
a second application is considered to be co-
pending with an earlier case if it is filed before
(a) the patenting, (b) the abandonment of, or
(c) other termination of proceedings in the
earlier case. "Before" has consistently been
interpreted, in this context, to mean "not later
than".

In each of the following situations, proceed-
ings are terminated :

1\. When the issue fee is not paid and the ap-
plication is abandoned for failure to pay the
issue fee, proceedings are terminated as of the
date the issue fee was due and the application is
the same as if it were abandoned on that date
(but if the issue fee is later accepted, on petition,
the application is in a sense revived). See 712.

2\. If an application is in interference involv-
ing all the claims present in the application as
counts and the application loses the interfer-
ence as to all the claims, then proceedings on
that application are terminated as of the date

appeal or review by civil action was due if no
appesl or civic action was filed.

5\. Proceedings are terminated in an applica-
tion after decision by the Board of Appeals
as explained in Section 1214.06.

4\. Proceedings are terminated after a deci-
sion by the court as explained in Sections
1215.05 and 1216.01.

## 711.03 Reconsideration of Holding of Abandonment; Revival

When advised of the abandonment of his
application, applicant may either ask for recon-
sideration of such holding, if he disagrees with
it on the basis that there is no abandonment in
fact; or petition for revival under Rule 137.

## 711.03(s) Holding Based on Insuffi- ciency of Response

Applicant may deny that his response was
incomplete.

While the Examiner has no authority to act
upon an application in which no action by ap-
plicant was taken during the statutory period,
he may reverse his holding as to whether or
not an amendment received during such period
was responsive and act on a case of such char-
acter which he has previously held abandoned.
This is not a revival of an abandoned appli-
cation but merely a holding that the case was
never abandoned. See also 714.03.

## 711.03(b) Holding Based on Failure To Respond Within Period

When an amendment reaches the Patent
Office (not the Examining Group) after the
expiration of the statutory period and there is
no dispute as to the dates involved, no question
of reconsideration of a holding of abandonment
can be presented,

However, the Examiner and the applicant
may disagree as to the date on which the statu-
tory period commenced to run or ends. In this
situation, as in the situation involving suffi-
ciency of response, the applicant may take issue
with the Examiner and point out to him that
his holding was erroneous.

# 711.03(c) Petitions Relating to Aban- donment

Rule 157. Revival of abandoned application. An ap-
plication abandoned for failure to prosecute may be
revived as a pending application if it is shown to the
satisfaction of the Commissioner that the delay was

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711.03 (4)

ana voléablez/ A petition | to mevite an abandoned ep-
plication must be accompanied by a verified showing
of the causes of the delay, by the proposed response
unless it has been previously filed, and by the petition
fee.

A petition to revive an abandoned applica-
tion should not be confused with a petition
from an Examiner's holding of abandonment.
Abandonment may result not only from insuffi-
ciency of response but also from entire failure
to respond, within the statutory period follow-
ing an office action.

Where the holding of abandonment is predi-
cated on the insufficiency of the response, or
disagreement as to controlling dates the peti-
tion from such holding comes under Rule 181
and does not require a fee.

Where the applicant acquiesces in the hold-
ing of [abandonment, or where the petition
from such holding is denied, applicant's only
recourse, so far as concerns the particular case
involved, is by petition to revive.

See 712 for a petition for late payment of the
issue fee.

# 711.03(d) Examiner's Statement on Petition Relating to Aban- donment

ON PETITION TO REVIVE

When an application is received by the Ex-
aminer accompanied by both the petition to
revive and the accompanying form (POL-
269), the Examiner will complete the report
form which will then be forwarded to the
Commissioner. No communication will be sent
to the applicant by the Examiner and no credit
will be given for an action.

## ON PETITION TO SET ASIDE EXAMINER'S HOLDING

Rule 181 states that the Examiner "may be
directed by the Commissioner to furnish a
written statement within a specified time set-
ting forth the reasons for his decision upon the
matters averred in the petition, supplying a
copy thereof to the petitioner". Often, how-
ever, the question is passed upon without a
statement being requested, if the issue raised
is clear from the record. Unless requested,
such a statement should not be prepared. See
1002.01.

# 711.04 Disposition of Abandoned Ap- plications

Extract from Rule 14. Abandoned applications may
be destroyed after twenty years from their filing date,

except those to which particular attention has been
called and which have been marked for preservation.
Abandoned applications will not be returned.

As explained in 1302.07, a retention label is
used to indicate applications not to be de-
stroyed.

## 711.04(a) Palling and Forwarding

The files and drawings of abandoned applica-
tions are pulled and forwarded to the Aban-
doned Files Unit on a bi-weekly basis in ac-
cordance with the chart in Section 505.E(1) of
the Manual of Clerical Procedure.

They should be carefully scrutinized by the
appropriate examiner to verify that they are
actually abandoned. A check should be made
of files containing a decision of the Board of
Appeals for the presence of allowed claims to
avoid their being erroneously sent to the Aban-
doned Files Unit.

## 711.04(b) Ordering Abandoned Files

Abandoned files may be ordered by Ex-
aminers by sending (through the Messenger
Service) a completed Form PO-125 to the
Abandoned Files Unit. The name and art unit
of the individual Examiner ordering the file
should appear on the form and the file will be
sent to him through the Messenger Service.

Abandoned files more than ten years old
which have not been marked for permanent
retention are stored in a nearby Federal Rec-
ords Center. Orders for files in this group
require at least two days for processing. The
file should be returned promptly when it is no
longer needed.

## EXPEDITED SERVICE

Examiners may expedite service by ordering
abandoned files by telephone.

# 711.05 Letter of Abandonment Re- ceived After Application Is Allowed

Receipt of a letter of abandonment while an
application is allowed, is acknowledged by the
Issue and Gazette Branch. When the issue fee
has been paid and the patent to issue has re-
ceived its date and number, the abandonment
may not be accepted without a showing of the
reasons for such a late abandonment. Ap-
proval of the Commissioner is necessary. (See
Rule 313.) If a letter of abandonment is re-
ceived after the due date of the issue fee, the
Docket Branch prepares and sends the ac-
knowledgment.

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(8)701:06

711.06 6/Abstracts and Abbreviatures

The search files contain a number of printed
abstracts and abbreviatures of abandoned ap-
plications.

Abstracts were prepared in accordance with
the Notice of January 25, 1949, 019 O.G. 258.
Each abstract includes a summary of the dis-
closure of the abandoned application, and in ap-
plications having drawings, a figure of the
drawing. The publication of such abstracts was
discontinued in 1953.

Abbreviatures were prepared in accordance
with the procedure indicated in the Notice of
October 13, 1964, 808 O.G. 1. Each abbrevia-
ture contains a specific portion of the diselos-
ure of the abandoned application, preferably
a detailed representative claim, and, in applica-
tions having drawings, a figure of the drawing.
The publication of such abbreviatures was dis-
continued in 1965. Requests must have been
received prior to September 24, 1965 for con-
sideration for publication.

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711.0%(a)

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## 711.06(a) Use of Abstract or Abbre- viature as Reference

It is important that these publications not be
referred to as patents or as applications. The
effective date is not the filing date but the date
of publication in the Official Gazette. They
may be used alone or in combination with other
prior art in rejecting claims. In any case in
which matter in the application file is used as a
reference it should be used only as evidence of
matters of public knowledge on the date of the
publication of the abstract or abbreviature.
Abstracts and abbreviatures, as publications,
are listed with "Other References" in the cita-
tion thereof.

Citation of abbreviature :

Brown, abbreviature of application Serial
No.
Published

O.G.
.,
(List classification as usual).

Citation of abstract :
Smith, abstract of application Serial
No.
Published
-,

O.G.
,
(List classification as usual).

See 901.06(d).

# 712 Abandonment for Failure To Pay Issue Fee (Forfeiture)

Rule 316. Application abandoned for failure to pay
issue fee. If the fee specified in the notice of allow-
ance is not paid within three months from the date
of the notice the application will be regarded as aban-
doned. Such an abandoned application will not be
considered as pending before the Patent Office.

If the issue fee or portion thereof specified in the
notice of allowance is not timely paid but is submitted,
with the fee for delayed payment, within three months
of its due date with a verified showing of sufficient
cause for the late payment, it may be accepted by the
Commissioner as though no abandonment had ever
occurred.

Rule 317. Delayed payment of balance of the issue
fee; lapsed patents. Any remaining balance of the
issue fee is to be paid within three months from the
date of notice thereof and, if not paid, the patent lapses
at the termination of the three-month period. If this
balance is not timely paid but is submitted, with the
fee for delayed payment, within three months of its
due date with a verified showing of sufficient cause for
the late payment, it may be accepted by the Commis-
sioner as though no lapse had ever occurred.

An application abandoned by reason of fail-
ure to pay the issue fee was formerly referred to
as a forfeited application.

When the three months' period within which
the issue fee might have been paid has expired,

the file is returned by the Issad and Gadette
Branch to the Examining Group. Certain eler-
ical operations are performed and the file and
drawing are forwarded to the Abandoned Files
Unit. When the issue fee is not paid and the
application is abandoned, proceedings are ter-
minated as of the date the issue fee was due.
The application is abandoned on that date (but
if the issue fee is later accepted, on petition, the
application is in a sense revived). During the
three month period following such abandon-
ment, it is possible to petition the Commissioner
to have the application issued as a patent. Such
petition must be supported by a verified show-
ing of sufficient cause for the late payment, and
accompanied by the proper issue fee and the fee
for late payment. If such a petition accom-
panied by the required fees is not filed within
the three month period following the abandon-
ment (six months after the date of the notice of
allowance) and granted, such abandoned appli-
cation cannot be revived. In this respect an
abandoned application that has passed through
the six months' period indicated in Rule 316
differs in status from an application that has be-
come abandoned under the provisions of Rules
135 and 136 in that the latter may be revived
under the provisions of Rule 137.

# 713 Interviews

The personal appearance of_an applicant,
attorney, or agent before the Examiner pre-
senting matters for the latter's consideration
is considered an interview.

# 713.01 General Policy, How Con- ducted

Rule 133. Interviews. (a) Interviews with exam-
iners concerning applications and other matters pend-
ing before the Office must be had in the examiners'
rooms at such times, within office hours, as the respec-
tive examiners may designate. Interviews will not
be permitted at any other time or place without the
authority of the Commissioner. Interviews for the
discussion of the patentability of pending applications
will not be had before the firs oficial action thereon.
Interviews should be arranged or in advance.

Interviews are permissible on any working
day except during periods of overtime work.

An interview should normally be arranged
for in advance, as by letter, telegram or phone
call, in order to insure that the Primary Exam-
iner and/or the Examiner in charge of the ap-
plication will be present in the Office. When a
second division is involved (Patentability Re-
port), the availability of the second Examiner
should also be checked. (See 705.01(f).) An

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713.01

appointment for interview "once arranged
should be kept. Many applicants and attorneys
plan trips to Washington in reliance upon such
appointments. When, after an appointment has
been made, circumstances compel the absence
of the examiner or examiners necessary to an
effective interview, the other party should be
notified immediately so that substitute arrange-
ments may be made. When a telephone call is
made to an Examiner and it becomes evident
that a lengthy discussion will ensue or that the
Examiner needs time to restudy the situation,
the call should be terminated with an agree-
ment that the Examiner will call back at s speci-
fied time. Such a call and all other calls origi-
nated by the Examiner may be handled through
the FTS (Federal Telecommunications System)
even though a collect call had been authorized.
It is helpful if amendments include the complete
telephone number with area code and extension,
preferably near the signature of the writer.
The unexpected appearance of an attorney or
applicant requesting an interview without any
previous notice to the Examiner may well jus-
tify his refusal of the interview at that time,
particularly in an involved case. An Examin-
er's suggestion of allowable subject matter may
justify his indicating the possibility of an in-
terview to accelerate early agreement on allow-
able claims.

An interview should be had only when the
nature of the case is such that the interview
could serve to develop and clarify specific is-
sues and lead to a mutual understanding be-
tween the Examiner and the applicant, and
thereby advance the prosecution of the applica-
tion. Thus the attorney when presenting him-
self for an interview should be fully prepared
to discuss the issues raised in the Office action.
When it is obvious that the attorney is not so
prepared, an interview should not be permitted.

The Examiner should not hesitate to state, if
such be the case, that claims presented for con-
sideration at the interview require further
search and study. Nor should the Examiner
hesitate to conclude an interview when it ap-
pears that no common ground can be reached
nor when it becomes apparent that the appli-
cation requires further amendment or an addi-
tional action by the Examiner.

It is the duty of the Primary Examiner to
see that an interview is not extended beyond a
reasonable period even when he does not per-
sonally participate in the interview.

During an interview with an applicant who
is prosecuting his own case and is not familiar
with Office procedure the Examiner may make
suggestions that will advance the prosecution

of this case; this lies wholly within his discre-
tion. Too much time, however, should not be
allowed for such interviews.

To offset any increased rigor of prosecution
(under the procedure effective July 1, 1964),
Examiners may grant one interview after final
rejection. See 718.09.

Where the response to a first complete action
includes a request for an interview or a tele-
phone consultation to be initiated by the exam-
iner, or where an out-of-town attorney under
similar circumstances requests that the exam-
iner defer taking any further action on the case
until the attorney's next visit to Washington
(provided such visit is not beyond the date
when the Office action would normally be
given), the examiner, as soon as he has consid-
ered the effect of the response, should grant
such request if it appears that the interview or
consultation would result in expediting the case
to a final action.

Where agreement is reached as a result of an
interview, applicant's representative should be
advised that an amendment pursuant to the
agreement should be promptly submitted. If
the amendment prepares the case for final ac-
tion, the examiner should take the case up as
special. If not, the case should await its turn.

Consideration of a filed amendment may be
had by hand delivery of a duplicate copy of said
amendment.

Early communication of the results of the
consideration should be made to applicant; if
requested, indicate on attorney's copy any agree-
ment; initial and date both copies.

Although entry of amendatory matter usu-
ally requires actual presence of the original
paper, examiner and clerical processing should
proceed as far as practicable based on the dupli-
cate copy. The extent of processing will depend
on each amendment.

## EXAMINATION BY EXAMINER OTHER THAN THE ONE WHO CONDUCTED THE INTERVIEW

Sometimes the Examiner who conducted the
interview is transferred to another group or
resigns, and the examination is continued by
another Examiner. If there is an indication
that an interview had been held, the second
Examiner should ascertain if any agreements
were reached at the interview. Where condi-
tions permit, as in the absence of a clear error
or knowledge of other prior art, the second
Examiner should take a position consistent
with the agreements previously reached. See
812.01 for a statement of telephone practice in
restriction and election of species situations.

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713.02

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

713.02 Interviews Prior to First Off.
cial Action

Prior to the first action and, obviously, prior
to filing, no interview is permitted. However,
in the Examiner's discretion, a limited amount
of time may be spent in indicating the field of
search to an attorney, searcher or inventor.

SEARCHING IN GROUP

Searching in the group should be permit-
ted only with the consent of the Primary Ex-
aminer.

EXPOUNDING PATENT LAW

The Patent Office cannot act as an ex-
pounder of the patent law, nor as a counsellor
for individuals.

# 713.03 Interview for "Sounding Out" Examiner Not Permitted

Interviews that are solely for the purpose of
"sounding out" the Examiner, as by a local at-
torney acting for an out-of-town attorney,
should not be permitted when it is apparent that
any agreement that would be reached is condi-
tional upon being satisfactory to the principal
attorney.

# 713.04 Substance of Interview Must Be Made of Record

The substance of an interview must always
be made of record in the application, particu-
larly where agreement between attorney and
the Examiner is reached. Rule 133 (second
paragraph) specifically requires that:

(b) In every instance where reconsideration is re-
quested in view of an Interview with an examiner, a
complete written statement of the reasons presented at
the interview as warranting favorable action must be
filed by the applicant. An interview does not remove
the necessity for response to Office actions as specified
in rules 111, 135.

This is further brought out by the following
Rule :

Rule 2. Business to be transacted in writing. All
business with the Patent Office should be transacted in
writing. The personal attendance of applicants or
their attorneys or agents at the Patent Office is un-
necessary. The action of the Patent Office will be based
exclusively on the written record in the Office. No at-
tention will be paid to any alleged oral promise, stipu-
lation, or understanding in relation to which there is
disagreement or doubt. .

To insure that any mutually acceptable con-
clusions reached at an interview aro understood
by both parties, a memorandum summarizing

these conclusions and the significance of any
exhibita considered ; or demonstrations made
should be prepared in duplicate and signed by
both parties to the interview, and a copy should
be retained by each. Tho copy retained by the
examiner will be kept in the application file
until prosecution is completed. Such proce-
dure will not, however, relieve applicant of his
responsibility under the second paragraph of
Rule 183.

In those cases where an interview is had but
no agreement is reached, the examiner should
place an informal memorandum in the file to
this effect. The memorandum should be suffi-
ciently complete to make clear to others the
issues resolved and/or discussed in the inter-
view.

Some Examiners prepare, for their own in-
formation, informal notes setting forth what
occurred at the interview. These informal
notes do not become an official part of the
record. A convenient arrangement is to make
the notes on 4 by 6 cards which may be re-
tained with the file wrapper by means of the
slits in the flap. All notes should be removed
from the file at the time of allowance.

The memoranda discussed above are not an
official part of the record, and should be re-
moved from the file if and when the case is
passed to issue.

EXAMINER TO CHECK FOR ACCURACY

Applicant's summary of what took place at
the interview should be carefully checked to
determine the accuracy of any statement at-
tributed to the examiner during the interview.
(a) If there is an inaccuracy and it bears di-
rectly on the question of patentability, it should
be pointed out in the next Office letter. If
the claims are allowable for other reasons of
record, the Examiner should withhold allow-
ance by means of an Ex parte Quayle action
until the record is clarified. (b) If the inac-
curacy does not bear directly on the question
of patentability, the case may be sent to issue,
if allowable for reasons of record, but the Ex-
aminer should send a letter setting forth his
version of the statement attributed to him.

An inaccuracy with respect to an argument
presented at the interview; e.g., including in
the summary of the interview an argument not
then presented, should be treated as in (a) or
(b) above.

# 713.05 Interviews Prohibited or Granted, Special Situations

Saturday interviews, see 713.01.

Except in unusual situations, no interview is
permitted after the brief on appeal is filed or
after a case has been passed to issue.

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713.05

An interview may be appropriate before ap-
plicant's first response when the Examiner has
suggested that allowable subject matter is
present or where it will assist applicant in judg-
ing the propriety of continuing the prosecution.

Patent Office employees are forbidden to hold
either oral or written communication with a

disbarred attorney regarding an application
unless it be one in which said attorney is the
applicant. See 105.

Interviews are frequently requested by per-
sons whose credentials are of such informal
character that there is serious question as to
whether such persons are entitled to any infor-

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<!-- PageHeader="KEAMINATION OF APPLICATIONS" -->

713.09

mation under the provisions of Rule 14. In
general, interviews are not granted to anyone
who lacks proper authority from the applicant
or attorney of record in the form of _ paper
on file in the case. A MERE POWER TO
INSPECT IS NOT SUFFICIENT AU-
THORITY FOR GRANTING AN INTER-
VIEW INVOLVING THE MERITS OF
THE APPLICATION.

However, interviews may be granted to per-
sons who are known to be the local representa-
tives of the attorney in the case, even though
their power of attorney be not of record in the
particular application. When prompt action
is important an interview with the local repre-
sentative may be the only way to save the ap-
plication from abandonment. (See 408.)

If the person seeking the interview is un-
known to the Examiner but has in his posses-
sion a copy of the application file, the Exami-
ner may accept his statement that he is the
person named as the attorney of record or an
employee of such attorney.

Interviews normally should not be granted
unless the requesting party has authority to
bind the principal concerned.

The availability of personal interviews in the
"Conference Period", which is the time between
the filing of applicant's thorough first response
and a concluding action by the examiner, for at-
torneys resident or frequently in Washington
is obvious. For others more remote, telephone
interviews may prove valuable. However, pres-
ent Office policy places great emphasis on tele-
phone interviews initiated by the Examiner.
For this reason, it is no longer deemed neces-
sary for an attorney to request a telephone
interview as specified in the old Optimum Ex-
amining Procedure memos. See 408.

The Examiner, by making a telephone call,
may be able to suggest minor, probably quickly
acceptable changes which would result in
allowance. If there are major questions or
suggestions, the call might state them concisely,
and suggest a further telephone or personal
interview, at a prearranged later time, giving
applicant more time for consideration before
discussing the points raised.

For an interview with an examiner who does
not have negotiation authority, arrangements
should always include an examiner who does
have such authority, and who has familiarized
himself with the case, so that authoritative
agreement may be reached at the time of the
interview.

## GROUPED INTERVIEWS

For attorneys remote from Washington who
prefer personal interviews, the grouped inter-

view practice is effective. The cases they wish
to discuss may include some applications which
will not be up for action for many months. If
in any such case there is a prearranged inter-
view, with agreement to file a prompt supple
mental amendment putting the case as nearly
as may be in condition for concluding action,
prompt filing of the supplemental amendment
gives the case special status, and brings it up
for immediate special action.

# 713.06 No Inter Partes Questions Dis- cussed Ex Parte

The Examiner may not discuss inter partes
questions em parte with any of the interested
parties. For this reason, the telephone number
of the Examiner should not be typed on Deci-
sions on Motions or any other interference
papers. See 1111.01.

## 713.07 Exposure of Other Cases

Prior to an interview the Examiner should
arrange his desk so that files, drawings and
other papers, except those necessary in the in-
terview, are placed out of view. See 101.

713.08 Demonstration, Exhibits,
Models

The invention in question may be exhibited
or demonstrated during the interview by a
model thereof which may be sent to the Office
prior to the interview where it is received in
the model room and forwarded to the group.
A model is not to be received by the Examiner
directly from the applicant or his attorney.
See 608.03 and 608.03(a).

Oftentimes a model or exhibit is not given
into the custody of the Office but is brought
directly into the group by the attorney solely
for inspection or demonstration during the
course of the interview. This is permissible.
Demonstrations of apparatus or exhibits too
large to be brought into the Office may be
viewed by the Examiner outside of the Office,
(in Washington) with the approval of the Pri-
mary Examiner. It is presumed that the wit-
nessing of the demonstration or the reviewing
of the exhibit is actually essential in the de-
veloping and clarifying of the issues involved
in the application.

### 713.09 Finally Rejected Application

Normally, one interview after final rejection
is permitted. However, the intended purpose
and content of the interview must be presented
briefly, either orally or in writing. With the
approval of the Primary Examiner, an inter-
view may be granted if the Examiner is con-
vinced that disposal or clarification for appeal

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#### 713.10

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

may be accomplished with only nominal further
consideration. Interviews merely to restate
arguments of record or to discuss new limita-
tions which would require more than nominal
reconsideration or new search should be denied.
See 714.18.

713.10 Interview Preceding Filing
Amendment Under Rule 312

After a case is sent to issue, it is technically
no longer under the jurisdiction of the Pri-
mary Examiner, Rule 312. An interview with
an Examiner that would involve a detailed
consideration of claims sought to be entered
and perhaps entailing a discussion of the prior
art for determining whether or not the claims
are allowable should not be given. Obviously
an applicant is not entitled to a greater degree
of consideration in an amendment presented
informally than is given an applicant in the
consideration of an amendment when formally
presented, particularly since consideration of
an amendment filed under Rule 312 cannot be
demanded as a matter of right.

Requests for interviews on cases already
passed to issue should be granted only with
specific approval of the Group Manager upon
a showing in writing of extraordinary circum-
stances.

##### 714 Amendments, Applicant's Action

Rule 115. Amendment by applicant. The applicant
may amend before or after the first examination and
action, and also after the second or subsequent exam-
ination or reconsideration as specified in rule 112 or
when and as specifically required by the examiner.

See also 714.12.

## 714.01 Signatures to Amendments

To facilitate any telephone call that may be-
come necessary, it is recommended that the com-
plete telephone number with area code and ex-
tension be given, preferably near the signature.
Note 605.04 to 605.05 (a) for a discussion of sig-
natures to the application.

## 714.01(a) Unsigned or Improperly Signed Amendment

An unsigned amendment or one not properly
signed by a person having authority to prose-
cute the case is not entered. This applies, for
instance, where the amendment is signed by
one only of two applicants and the one signing
has not been given a power of attorney by the
other applicant. An amendment signed by a
person whose name is known to have been re-
moved from the registers of attorneys and
agents under the provisions of Rule 347 or
Rule 348 is not entered. The file and un-

entered amendment are submitted to the Office
of the Solicitar for appropriate action.

714.01(b) Unsigned or Improperly
Signed/ Amendment,Dis-
posał of

When an unsigned amendment or -an im-
properly signed amendment is received it is
returned, but when there is not sufficient time
for the return of the paper for signature be-
fore the expiration of the time allowed by law
within which to take proper action, the Ex-
aminer will endorse such amendment on the
file wrapper and notify the applicant of the
status of the case.

The Examiner in carrying out the provisions
of the above paragraph gives applicant one
month to furnish a duplicate amendment prop-
erly signed, or to ratify the amendment already
filed. [See Rule 135, 711.]

Informal amendments which are to be re-
turned will be forwarded to the Correspond-
ence and Mail Branch with a memorandum giv-
ing the name and address of the attorney, or
other person to whom correspondence is to be
sent (from file wrapper), the date of the last
Office action in the case and a statement as to
why the paper is to be returned. The Corre-
spondence and Mail Branch will cancel the
impression of the receiving stamp and conduct
the correspondence incident to the return of
the papers. Note 717.01 on return of papers
entered on File Wrapper.

Before returning unsigned or improperly
signed amendments, the Examiner should call
in the local representative of the attorney if
there be one, as he may have authority to sign
said attorney's name to the amendment.

## 714.01 (c) Signed by Attorney Not of Record

Where an amendment is filed, signed by an
attorney whose power is not of record, he
should be notified that the amendment cannot
be entered and similar notification sent to the
applicant in person and to the attorney of
record, if there be one. If this is after the death
of an attorney of record, see 406.

714.01(d) Amendment Signed by Ap-
plicant But Not by Attor-
ney of Record

If an amendment signed by the applicant
is received in an application in which there
is a duly appointed attorney, the amendment
should be entered and acted upon. Attention
should be called to Rule 35. The customary

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714.03

two carbon copies of the notion should be pre-
pared, one only being sent to the attorney and
the other direct to Applicant. The notation :
"Copy to applicant" should appear on the
original and on both copies.

# 714.01(e) Power of Attorney to a Firm

See 402.03, 402.04, 402.04 (a).

714.02 Must Be Fully Responsive

Rule 111. Reply by applicant. (a) After the Office
action, if adverse in any respect, the applicant, if he
persist in his application for a patent, must reply
thereto and may request re-examination or reconsid-
eration, with or without amendment.

(b) In order to be entitled to re-examination or re-
consideration, the applicant must make request there-
for in writing, and he must distinctly and specifically
point out the supposed errors in the examiner's action ;
the applicant must respond to every ground of objec-
tion and rejection in the prior Office actlou (except
that request may be made that objections or require-
ments as to form not necessary to further considera-
tion of the claims be held in abeyance until allowable
subject matter is indicated), and the applicant's action
must appear throughout to be a bona fide attempt to
advance the case to final action. A general allegation
that the claims define invention without specifically
pointing out how the langauge of the claims patentably
distinguishes them from the references does not com-
ply with the requirements of this rule.

(c) In amending an application in response to a re-
jection, the applicant must clearly point out the patenta-
ble novelty which he thinks the claims present in view
of the state of the art disclosed by the references cited
or the objections made. He must also show how the
amendments avoid suc 1 references or objections. (See
rules 135 and 136 for time for reply.)

Compliance with or discussion of a require-
ment for the correction of formal matters may
be deferred by applicant until allowable subject
matter is indicated. See 707.07(a).

Formal matters generally include drawing
corrections, correction of the specification and
the presentation of a new oath. However, the
line between formal matters and substance is
not sharp, and the determination of the merits
of a case may sometimes require that drawing
corrections, corrections of the specification and
the presentation of a new oath be insisted upon
prior to allowance of a claim.

Rule 119. Amendment of claims. The claims may be
amended by canceling particular claims, by presenting
new claims, or by rewriting particular claims as in-
dicated in Rule 121. The requirements of Rule 111 must
be complied with by pointing out the specific distinc-

tions belleved to render the claims patentable over the
references in presenting arguments in support of new
claims and amendmenta.

An amendment submitted after a second or
subsequent non-final action which is otherwise
responsive but which increases the number of
claims drawn to the invention previously acted
upon is not to be held nonresponsive for that
reason alone.

The prompt development of a clear issue re-
quires that the responses of the applicant meet
the objections to and rejections of the claims.
Applicant should also specifically point out the
support for any amendments made to the dis-
closure. See 706.03 (n).

Responses to requirements to restrict are
treated under 818.

# 714.03 Amendments Not Fully Re- sponsive, Action To Be Taken

If there is sufficient time remaining in the
six months' statutory period or set shortened
period when applicant's amendment is found
to be not fully responsive to the last Office
action, a letter should at once be sent applicant
pointing out wherein his amendment fails to
fully respond coupled with a warning that the
response must be completed within the time
period in order to avoid the question of aban-
donment. See 714.05.

Where a bona fide response to an Examiner's
action is filed before the expiration of a per-
missible period, but through an apparent over-
sight or inadvertence some point necessary to a
complete response has been omitted,-such as
an amendment or argument as to one or two of
several claims involved or signature to the
amendment,-the Examiner, as soon as he
notes the omission, should require the appli-
cant to complete his response within a specified
time limit (one month) if the period has
already expired or not sufficient time is left to
take action before the expiration of the period.
If this is done the application should not be
held abandoned even though the prescribed
period has expired. See Rule 135 (c). Similarly,
where there is an informality as to the fee in
connection with an amendment presenting addi-
tional claims in a case filed on or after October
25, 1965, the applicant is notified by the clerk
on form POL 319. See 607 and 714.10.

The Examiner must exercise discretion in
applying this practice to safeguard against
abuses thereof.

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714.04

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

The practice outlined above does not apply
where there has been a deliberate omission of
come necessary part of a complete response.
For example, if an election of species has been
required and applicant does not make election
because he holds the requirement to be wrong.
the amendment on its face is not a "bona fide
attempt to advance the case to final action"
(Rule 135), and the Examiner is without au-
thority to postpone decision as to abandonment.

If there be ample time for applicant's reply
to be filed within the time period, no reference
is made to the time limit other than to note in
the letter that the response must be completed
within the statutory period dating from the
last Office action.

# 714.04 Claims Presented in Amend- ment With No Attempt To Point Out Patentable Novelty

In the consideration of claims in an amended
case where no attempt is made to point out the
patentable novelty, the claims should not be
allowed. (See Rule 111, 714.02.)

An amendment failing to point out the pat-
entable novelty which the applicant believes to
exist in his case may be held to be nonresponsive
and a time limit set to furnish a proper re-
sponse if the statutory period has expired or
almost expired (714.03). However, if the
claims as amended are clearly open to rejection
on grounds of record, a final rejection should
generally be made.

# 714.05 Examiner Should Immediately Inspect

Actions by Applicant, especially those filed
near the end of the statutory period, should be
inspected immediately upon filing to determine
whether they are completely responsive to the
preceding Office action so as to prevent aban-
donment of the application. If found inade-
quate, and sufficient time remains, applicant
should be notified of the deficiencies and
warned to complete the response within the
statutory period. See 714.03.

All amended cases when put on the Exam-
iner's desk should be inspected by him at once
to determine:

If the amendment is properly signed
(714.01).

If the amendment has been filed within the
statutory period, set shortened period or time
limit (710).

If the amendment is fully responsive. See
714.03 and 714.04.

<!-- PageFooter="Rev. 15. Jan. 1908" -->

If the changes made by the amendment war-
rant transfer.

If the case is special. See 708.01.

If claims suggested to Applicant for inter-
ference purposes have been inserted.

If there is a traverse of a requirement for
restriction. See 818.03(a)

If "easily erasable" paper has been used or
other non-permanent method of preparation or
reproduction. See 714.07.

If applicant has cited references. See
707.05(b) and 1302.12.

If a terminal disclaimer has been filed. See
508.01 and 1403.

## ACTION CROSSES AMENDMENT

A supplemental action is usually necessary
when an amendment is filed on or before the
mailing date of the regular action but reaches
the examining group later. The supplemental
action should be promptly prepared. It need
not reiterate all portions of the previous action
that are still applicable but it should specify
which portions are to be disregarded, pointing
out that the period for response runs from the
mailing of the supplemental action. The ac-
tion should be headed "Responsive to amend-
ment of (date) and supplemental to the action
mailed (date)".

# 714.06 Amendments Sent to Wrong Group

See 508.01.

# 714.07 Amendments Not in Perma- nent Ink

Rule 52(a) requires "permanent ink" to be
used on papers which will become part of the
record and In re Benson, 1959 C.D. 5; 744
O.G. 353 holds that documents on so-called
"easily erasable" paper violate the requirement.
The fact that Rule 52(a) has not been com-
plied with may be discovered as soon as the
amendment reaches the examining group or,
later, when the case is reached for action. In
the first instance, applicant is promptly noti-
fied that the amendment is not entered and is
required to file a permanent copy within 1
month or to order a copy to be made by the
Patent Office at his expense. Physical entry
of the amendment will be made from the per-
manent copy.

If there is no appropriate response within
the 1 month period, a copy is made by the

<!-- PageBreak -->

<!-- PageHeader="EXAMINATION OF APPLICATIONS" -->

714.12

Patent Office, applicant being notified and re-
quired to remit the charges or authorize charg-
ing them to his deposit account.

In the second instance, when the non-per-
manence of the amendment is discovered only
when the case is reached for action, similar
steps are taken, but action on the case is not
held up, the requirement for a permanent copy
of the amendment being included in the Office
action.

Xeroprinting or good carbon copies on satis-
factory paper are acceptable. But see In re
Application Papers Filed Jan. 20, 1956, 706
O.G. 4.

# 714.08 Telegraphic Amendment

When a telegraphic amendment is received,
the telegram is placed in the file but not entered.
If confirmation of this amendment by a properly
signed formal amendment does not follow in
due time, the applicant is notified that proper
confirmation is required; otherwise, the tele-
gram will not be accepted as a response to the
former Office action. If he does confirm
promptly, the amendment is entered. (See Ex
parte Wheary, 1913 C.D. 253; 197 O.G. 534.)

The same test as to completeness of response
applies to an amendment sent by telegraph as
to one sent by mail. See 714.02.

# 714.09 Amendments Before First Office Action

An amendment filed before the first Office
action, even one filed along with the original
application, does not enjoy the status of part of
the original disclosure. See 608.04(b).

In the case of Rule 147 (unexecuted) appli-
cations, an amendment stating that, "This is a
division of application Serial No. ________. , filed
"should accompany the application,
but no other amendments to the specification
or drawing should be requested until the appli-
cation has received its serial number and filing
date.

# 714.10 Claims Added in Excess of Filing Fee

The new Fee Act, effective October 25. 1965,
provides for the presentation of claims added in
excess of filing fee. On payment of an addi-
tional fee (see 607), these excess claims may be
presented any time after the application is filed,
which of course, includes the time before the first

action. This provision, it should be empha-
sized, does not apply in the case of applications
filed before October 25, 1965." In the case of
applications filed before October 25, 1965 an
amendment presenting claims after filing but
before the application is reached for action
ordinarily will not be entered (in whole or in
part) if the new total of claims would exceed
the number covered by the filing fee. The fact
of, and reasons for, nonentry shall be included
in the first action.

714.11 Amendment Filed During In-
terference Proceedings

See 1111.05.

# 714.12 Amendments After Final Re- jection or Action

Rule 116. Amendments after jinal action. (a) After
final rejection or action (rule 115) amendments may
be made cancelling claims or complying with any re-
quirement of form which has been made, and amend-
ments presenting rejected claims in better form for
consideration on appeal may be admitted ; but the ad-
mission of any such amendment or its refusal, and any
proceedings relative thereto, shall not operate to re-
lieve the application from its condition as subject to
appeal or to save it from abandonment under rule 185.

(b) If amendments touching the merits of the appli-
cation be presented after final rejection, or after ap-
peal has been taken, or when such amendment might
not otherwise be proper, they may be admitted upon a
showing of good and sufficient reasons why they are
necessary and were not earlier presented.

(c) No amendment can be made as a matter of right
in appealed cases. After decision on appeal, amend-
ments can only be made as provided in rule 198, or
to carry into effect a recommendation under rule 196.

Once a final rejection that is not premature
has been entered in a case, applicant no longer
has any right to unrestricted further prosecu-
tion. This does not mean that no further
amendment or argument will be considered.
Any amendment that will place the case either
in condition for allowance or in better form
for appeal may be entered. Also, amendments
complying with objections or requirements as
to form are to be permitted after final action in
accordance with Rule 116(a). Ordinarily,
amendments filed after the final action are not
entered unless approved by the Examiner. See
706.07(e), 714.13 and 1207.

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# 714.18 714.13 Amendments After Final Rejce- tion or Action, Procedure Followed

Any amendment timely filed after a final re-
jection should be immediately considered to de-
termine whether it places the application in
condition for allowance or in better form for
appeal. In all instances in which such an
amendment places an application in condition
for allowance, before preparing it for allow-
ance, applicant, or his representative if one is
currently of record in the application, should be
notified promptly of this fact by means of form
letter POL-255.

Such a letter is important because it may act
as a safeguard against a holding of abandon-
ment. It may avoid an unnecessary appeal.
Every effort should be made to mail the letter
before the statutory period expires.

## FINAL REJECTION-TIME FOR RESPONSE

The filing of a timely response to a final re-
jection having a shortened statutory period for
response will operate to extend the period for
appeal or filing of a continuing case an addi-
tional month, but in no case to exceed six months
from the date of the final action.

An object of this practice is to obviate the
necessity for appeal or filing a continuing case
merely to gain time to consider the examiner's
position in reply to an amendment timely filed
after final rejection.

Present practice relating to the treatment of
amendments after final rejection will continue
to apply and failure to file a response during
the three-month period will, as heretofore, re-
sult in abandonment of the application. In
any case where this one-month extension ap-
plies and an amendment is officially received
during this additional month, the amendment
will not be entered or responded to unless it
prima facie places the application in condition
for allowance (e.g., cancels all rejected claims,
fully complies with all examiner suggestions,
requirements, etc.)

Also, during this additional month no ap-
plicant- or attorney-initiated interview will be
permitted.

ENTRY NOT A MATTER OF RIGHT

It should be kept in mind that applicant
cannot, as a matter of right, amend any finally
rejected claims, add new claims after a final
rejection (see Rule 116) or reinstate previously
canceled claims. Except for the provisions of
items 3 and 4 of 714.20, applicant's failure to
properly respond within the statutory period
results in abandonment.

See also 1207 and 1211.

## No APPEAL FILED

In the event that the amendment does not
place the case in better form for appeal, nor in
condition for allowance, applicant should be
promptly informed of this fact, whenever pos-
sible, within the statutory period. The refusal
should not be arbitrary. The proposed amend-
ment should, at least, be given sufficient con-
sideration to determine whether it obviously
places any of the claims in condition for al-
lowance or would simplify the issues on appeal.
Ordinarily, the specific deficiencies of the
amendment need not be discussed. The reasons
should be concisely expressed. For example,

(1) the claims, if amended as proposed, would
not avoid any of the rejections set forth in the
last Office action, and thus the amendment
would not place the case in condition for allow-
ance or in better condition for appeal,

(2) the claims, if amended as proposed,
would avoid the rejection on indefiniteness but
would not avoid the rejection on the references.
The amendment will be entered upon the filing
of an appeal,

(3) the claims as amended present new is-
sues requiring further consideration or search,

(4) since the amendment presents additional
claims without canceling a corresponding num-
ber of finally rejected claims it is not consid-
ered as placing the application in better con-
dition for appeal; Ex parte Wirt, 1905 C.D.
247; 117 O.G. 599.

Applicant should be notified, if it is a fact,
that certain portions of the amendment would
be acceptable as placing some of the claims in
better form for appeal or comply with objec-
tions or requirements as to form, if a separate
paper were filed containing only such amend-
ments. Similarly, if the proposed amendment
to some of the claims would render them allow-
able, applicant should be so informed. This is
helpful in assuring the filing of a brief con-
sistent with the claims as amended. A state-
ment that the final rejection stands and that the
statutory period runs from the date of the final
rejection is also in order.

The use of POL-303, 303a as outlined in a
memo to all Examiners, dated October 27, 1965,
expedites the practice after final rejection.

If no appeal has been filed within the statu-
tory period for response and no amendment has
been submitted to make the case allowable or
which can be entered in part (see 714.20), the
case stands abandoned.

## FINAL, ACTION AND PRE-APPEAL

The prosecution of an application before the
examiner should ordinarily be concluded with
the final action. However, one personal inter-

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view and one written response by applicant may
be entertained after such final action if circum-
stances warrant. Thus, only one request by sp-
plicant for a personal interview after final
should be granted, but in exceptional circum-
stances, a second personal interview may be
initiated by the examiner if in his judgment
this would materially assist in placing the ap-
plication in condition for allowance.

Any amendments submitted under Rule 116
(a) and Rule 116(b) for purposes of appeal
should be presented in the first response after
final action and will be considered as heretofore;
if any amendments are submitted after the ex-
aminer's reply to such first response, they should
be refused entry as not warranted at this stage
of prosecution, even though such amendments
allegedly present rejected claims in better condi-
tion for appeal. (See 1207.) Similarly, no affi-
davit should be considered if presented later
than with the first response after final unless a
showing is made under Rule 116(b). How-
ever, if an affidavit is presented with or as a first
response after final and prior to a Notice of
Appeal it should be entered and considered
without requiring a showing under Rule 116(b).

The practice will be continued of advising
applicant by means of the recently introduced
form letter (POL-303) as to the disposition of

proposed amendments to the claims and as to
the effect of any argument or affidavit sub-
mitted in the first response after final action.

If a response subsequent to the first response
after final action is received before appeal and
which on its face clearly places the application
in condition for allowance, it should be entered
and a notice of allowability (POL-255)
promptly sent to applicant; if such subsequent
response does not on its face place the applica-
tion in condition for allowance, it should not
be considered further (unless, in the examiner's
judgment, there are only minor matters which
could be readily cleared up in a telephone inter-
view leading to a notice of allowance) and
should be refused entry. A form letter (POL-
309) will be used for notification that such
subsequent responses do not place the applica-
tion in condition for allowance.

Requests for extension of the shortened statu-
tory period for reply after final action, under
Rule 136(b), will be considered by the Primary
Examiner; petitions for further extensions will
be decided by the Group Manager.

It should be noted that, under Rule 181 (f),
the filing of a Rule 181 petition will not stay
the period for reply to an Examiner's action
which may be running against an application.
See 1207 for appeal and post-appeal procedure.

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()MAIS

In the consideration of any proposed amend-
ment, a new reference may be discovered which
is pertinent to the claires as amended. ( The
practice set forth in 1207 should be followed.

### 714.14 Amendments After Allowance of All Claims

Under the decision in Ex parte Quayle, 1985
C.D. 11; 453 O.G. 213, after all claims in a
case have been allowed the prosecution of the
case on the merits is closed even though there
may be outstanding formal objections which
preclude making the action final.

Amendments touching the merits are treated
in a manner similar to amendments after final
rejection, though the prosecution may be con-
tinued as to the formal matters. See 714.12
and 714.13.

See 607 for additional fee requirements.

### 714.15 Amendment Mailed Before, But Received in Examining Division After Allowance

Where an amendment, even though prepared
by applicant prior to allowance, does not reach
the Office until after the notice of allowance
has been mailed, such amendment has the
status of one filed under Rule 812. Its entry
is a matter of grace. For discussion of amend-
ments filed under Rule 812, see 714.16 to
714.16(e).

If, however, the amendment is filed in the
Office, but is not received by the Examiner
prior to the mailing out of the notice of allow-
ance, it has the same standing in the case as
though the notice had not been mailed. Where
the case has not been closed to further prose-
cution, as by final rejection of one or more
claims, or by an action allowing all of the
claims, applicant may be entitled to have such
amendment entered even thoughit may be
necessary to withdraw the application from
issue. Such withdrawal, however, is unneces-
sary if the amendatory matter is such as the
Examiner would recommend for entry under
Rule 312.

As above implied, the case will not be with-
drawn from issue for the entry of an amend-
ment that would reopen the prosecution if the
Office action next preceding the notice of allow-
ance closed the case to further amendment,
i.e., by indicating the patentability of all of
the claims, or by allowing some and finally
rejecting the remainder.

ar After en applienit has been notified that the
dlamnie are all allowsbis, farther prosentica of
the merity of the cese is a matter of grace and
not of right (Ex parte Quayhey1955 C.D. 11;
488.O.G. 918). To this extent the practice
aSecting the status of an amendment received
in the Office on the date of mailing the notice
of allowance, as set forth in Ex parte Miller,
1998 C.D. 86; 805 O.G. 419, is modified.

### 714.16 Amendment After Notice of Allowance, Rule 312

Rule SI2. Amendments after allowance, Amendments
after the notice of allowance of an application will
not be permitted as a matter of right, but may be made,
If the printing of the specification has not begun, on
the recommendation of the Primary Examiner, ap-
proved by the Commissioner, without withdrawing the
case from issue.

The Commissioner has delegated the ap-
proval of such recommendation to the Group
Managers.

A supplemental cath is not treated as an
amendment under Rule 312, see 603.01.

After the Notice of Allowance has been
mailed, the application is technically no longer
under the jurisdiction of the Primary Ex-
aminer. He can however, make Examiner's
Amendments (See 1302.04) and has authority
to enter amendments submitted after Notice of
Allowance of En application which embody
merely the correction of formal matters in the
specification or drawing, or formal matters in a
claim without changing the scope thereof, or the
cancellation of claims from the application,
without forwarding to the Group Manager for
approval. (Basis: Order 3311.)

Amendments other than these require ap-
proval by the Group Manager. He also
establishes Group policy with respect to the
treatment of Order 3311 amendments directed
to trivial informalities which seldom affect sig-
nificantly the vital formal requirements of any
patent; namely, (1) that its disclosure be ade-
quately clear, and (2) that any invention pres-
ent be defined with sufficient clarity to form an
adequate basis for an enforceable contract.

"Consideration of an amendment under Rule
312 cannot be demanded as a matter of right.
Prosecution of a case should be conducted be-
fore, and thus be complete including editorial
revision of the specification and claims at the
time of the Notice of Allowance. However,
where amendments of the type noted are shown
(1) to be needed for proper disclosure or pro-
tection of the invention, and (2) to require no

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# MANUAL OF /PATENT RXAMINING PROCEDURE

<!-- PageHeader="31416(a)" -->

substantial amount of additional work on the
part of the Office; they may be considered and,
proper, entry may be recommended by the
Primary Examiner.

The requirements of Rule 111(c) (714.02)
with respect to pointing out the patentable
novelty of any claim sought to be added or
amended, apply in the case of an amendment
under Rule 812, es in ordinary amendments.
See 718.04 and 713.10 regarding interviews.
As to amendments affecting the disclosure, the
scope of any claim or that add a claim, the re-
marks accompanying the amendment must
fully and clearly state the reasons on which
reliance is placed to show: (1) why the amend-
ment is needed; (2) why the proposed
amended or new claims require no additional
search or examination; (3) why the claims are
patentable and, (4) why they were not earlier
presented.

NOT To BE USED FOR CONTINUED PROSECUTION

Rule 312 was never intended to provide a
way for the continued prosecution of appli-
cation after it has been passed for issue. When
the recommendation is against entry, a detailed
statement of reasons is not necessary in sup-
port of such recommendation. The simple
statement that the proposed claim is not obvi-
ously allowable and briefly the reason why is
usually adequate. Where appropriate, any one
of the following reasons is considered suffi-
cient: (1) an additional search is required, or
(2) more than a cursory review of the record
is necessary, or (3) the amendment would in-
volve materially added work on the part of the
Office, e.g. checking excessive editorial changes
in the specification or claims.

Where claims added by amendment under
Rule 312 are all of the form of dependent
claims, some of the usual reasons for non-entry
are less likely to apply although questions of
new matter, sufficiency of disclosure, or undue
multiplicity of claims could arise.

See 607 and 714.16(c) for additional fee
requirements.

# 714.16(a) Amendments Under Rule 312, Copied Patent Claims

See 1101.02(g) for the procedure to be fol-
lowed when an amendment is received after no-
tice of allowance which includes one or more
claims copied or substantially copied from a
patent.

The entry of the copied patent claims is not
a matter of right. See 714.19 item (4).

See 607 and 714.16(c) for additional fee
requirements.

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# 714.16(b) Amendment" Under Rule 312 Filed With a Motion Under Rule 231

Where an amendment filsd with a motion
under Rule 281 (*) (3) applies to a case in issue;
the amendment is not entered unless and until
the motion has been granted. See/1105.03.115

# 714.16(c) Amendment Under Rule 312, Additional Claims

If the application was filed on or after Octo-
ber 25, 1965, and the amendment under Rule 812
adds claims (total and independent) in excess
of the number previously paid for, additional
fees are required. The amendment is not con-
sidered by the Examiner unless accompained by
the full fee required. See 607 and 35 U.S.C. 41.

# 714.16(d) Amendments Under Rule 312, Handling

AMENDMENTS NOT UNDER ORDER 3311

Amendments under Rule 312 are sent by
the Mail and Correspondence Branch to the
Issue and Gazette Branch which, in turn, for-
wards the proposed amendment, file, and draw-
ing (if any) to the group which allowed the
application. In the event that the class and
subclass in which the application is classified
has been transferred to another group after
the application was allowed, the proposed
amendment, file and drawing (if any) are
transmitted directly to said other group and
the Issue and Gazette Branch notified. If the
Assistant Examiner who allowed the applica-
tion is still employed in the Patent Office but not
in said other Group, he may be consulted about
the propriety of the proposed amendment and
given credit for any time spent in giving it
consideration.

The amendment is PROMPTLY considered
by the Examiner who indicates thereon
whether or not its entry is recommended. It
should be kept in mind that the words "rec-
ommended" or "not recommended" are used
instead of "entered" or "not entered".

If the amendment is favorably considered, it
is entered and a notice of entry (POL-271) is
prepared. An "Entry Recommended under
Rule 312" stamp is then applied to the amend-
ment and to the notice of entry (under the
printed word "Report"). The Primary Exam-
iner indicates his approval by signing under
the recommendation on the amendment and by
stamping and signing his name under the rec-
ommendation on the notice of entry.

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If the Examiner's recommendation is com-
pletely adverse, a raport giving the reasons for
non-entry is typed on the notice of disapproval
(POL-271) and signed by the Primary Exam-
mer

The file, drawing, and unmailed notices
are forwarded to the Group Manager for con-
sideration, approval, and mailing.

For entry-in-part, see 714.16(e).

The filling out of the appropriate form by
the clerk does not signify that the amendment
has been admitted; for, though actually en-
tered it is not officially admitted unless and
until approved.

See 607 and 714.16(c) for additional fee
requirements.

## AMENDMENTS UNDER ORDER 3311

Amendments concerning merely formal mat-
ters do not require submission to the Group
Manager prior to entry. See 714.16. The notice
of entry (POL-271) is date stamped and mailed
by the examining group. If such amendments
are disapproved either in whole or in part, they
are handled like those not under Order 3311.

# 714.16(e) Amendments Under Rule 312, Entry in Part

The general rule that an amendment cannot
be entered in part and refused in part should
not be relaxed, but when, under Rule 312, an
amendment, for example, is proposed contain-
ing a plurality of claims or amendments to
claims, some of which may be entered and some
not, the acceptable claims or amendments
should be entered in the case. If necessary,
the claims should be renumbered to run con-
secutively with the claims already in the case.
The refused claims or amendments should be
canceled in lead pencil on the amendment.

The Examiner should then submit a report
(POL-271) recommending the entry of the ac-
ceptable portion of the amendment and the non-
entry of the remaining portion together with
his reasons therefore. The claims entered
should be indicated by number in this report.

Handling is similar to complete entry of a
Rule 312 amendment.

If the application was filed on or after Octo-
ber 25, 1965, entry in part is not recommended
unless the full additional fee required, if
any, accompanies the amendment. See 607,
714.16(c).

# 714.17 Amendment Filed After the Pe- riod for Response Has Expired

When an application is not prosecuted
within the period set for response and thereafter

an amendment is filed, such amendment shall
bø endorsed on the file wrapper of the applica-
tion, but not formally entered and the Examiner
shall immediately notify the applicant that the
amendment was not filed within the time period
and therefore cannot be entered. The applicant
should also be notified that the application is
abandoned.

## 714.18 Entry of Amendments

Amendments are stamped with the date of
their receipt in the group. It is important
to observe the distinction which exists between
the stamp which shows the date of receipt
of the amendment in the group ("Group Date"
stamp) and the stamp bearing the date of re-
ceipt of the amendment by the Office ("Office
Date" stamp). The latter date, placed in the
left-hand corner, should always be referred to
in writing to the applicant with regard to his
amendment.

The amendment or letter is placed in the file,
given its number as a paper in the application,
and its character endorsed on the file wrapper
in red ink.

When several amendments are made in an ap-
plication on the same day no particular order
as to the hour of the receipt or the mailing of
the amendments can be assumed, but considera-
tion of the case must be given as far as pos-
sible as though all the papers filed were a com-
posite single paper.

After entry of the amendment the applica-
tion is "up for action." It is placed on the
Examiner's desk, and he is responsible for its
proper disposal. The Examiner should imme-
diately inspect the amendment as set forth in
714.05. After inspection if no immediate or
special action is required, the application
awaits re-examination in regular order.

Amendments or other papers filed in cases
before the Law Examiner should be promptly
forwarded to him.

# 714.19 List of Amendments, Entry Denied

The following types of amendments are or-
dinarily denied entry :

1\. An amendment presenting an unpatent-
able claim, or a claim requiring a new search
or otherwise raising a new issue in a case whose
prosecution before the Primary Examiner has
been closed, as where

(a) All claims have been allowed,

(b) All claims have been finally rejected ( for
exceptions see 714.12, 714.13, and 714.20(4) )

(c) Some claims allowed and remainder
finally rejected. See 714.12 to 714.14.

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3\. Substitute specification that has not been
required and is not needed. See Rule 125,
608.01 (q) and #14.90. If the Examiner ap-
proves, it may be entered.

3\. A patent claim suggested by the Ex-
aminer and not presented within the time
limit setfor a reasonable extension thereof,
unless entry is authorized by the Commis-
sioner. See 1101.02 (f).

4\. While copied patent claims are generally
admitted even though the case is under final
rejection or on appeal, under certain condi-
tions, the claims may be refused entry. See
1101.02(g).

5\. An unsigned or improperly signed amend-
ment or one signed by a disbarred attorney or
any person having no authority.

6\. An amendment filed in the Patent Office
after the expiration of the statutory period or
set time limit for response. See 714.17.

7\. An amendment so worded that it cannot
be entered with certain accuracy. See 714.23.

8\. An amendment cancelling all of the
claims and presenting no substitute claim or
claims. (711.01.)

9\. An amendment in a case no longer within
the Examiner's jurisdiction with certain ex-
ceptions in applications in issue (714.16), ex-
cept on approval of the Commissioner.

10\. Amendments to the drawing held by the
Examiner to contain new matter are not en-
tered until the question of new matter is set-
tled. This practice of non-entry because of
alleged new matter, however, does not apply
in the case of amendments to the specification
and claims.

11\. An amendatory paper containing objec-
tionable remarks that, in the opinion of the
Examiner, brings it within the condemnation
of Rule 3, will be submitted to the Commis-
sioner with a view toward its being returned
to applicant. See 714.25.

12\. Amendments not in permanent ink.
Amendments on so-called "easily erasable
paper." See In re Benson, 1959 C.D. 5; 744
O.G. 353.

13\. In an application filed before October 25,
1965, an amendment filed before the first ac-
tion increasing the number of claims when the
total of claims would be in excess of those sup-
ported by the filing fee. See 714.10.

14\. In an application filed on or after October
25, 1965, an amendment presenting claims (total
and independent) in excess of the number pre-
viously paid for, and

(a) not accompanied by any portion of the
fee required, or

(b) prior to the first Office setion or not in
response to an Office notion; and not Gocom-
pained by the full fee required, er

(c) the authorization for a charge against a
Deposit Account is not in the form of a separate
paper (2 copies).

While amendments falling within any of the
foregoing categories should not be entered by
the Examiner at the time of filing, a subse-
quent showing by applicant may lead to entry
of the amendment.

# 714.20 List of Amendments Entered in Part

To avoid confusion of the record the general
rule prevails that an amendment should not be
entered in part. As in the case of most other
rules, the strict observance of its letter may
sometimes work more harm than would result
from its infraction, especially if the amend-
ment in question is received at or near the end
of the statutory period. Thus,

(1) An "amendment", presenting an un-
called-for and unnecessary substitute specifica-
tion along with amendatory matter, as amend-
ments to claims or new claims, should be
entered in part, rather than refused entry in
toto. The substitute specification should be
denied entry and so marked, while the rest of
the paper should be entered. The case as thus
amended is acted on when reached in its turn,
the applicant being advised that the substitute
specification has not been required and is not
necessary and therefore has not been entered,
and that any desired changes in the original
specification must be made by specific amend-
ments. See also Rule 125, 608.01 (q).

It may be noted in this connection, however,
that the fact that a substitute specification, in
the opinion of the Examiner, contains new
matter is not in itself a proper reason for re-
fusing entry thereof.

(2) An amendment under Rule 312, which
in part is approved and in other part disap-
proved, is entered only as to the approved
part. See 714.16(e).

(3) In a case having some claims allowed
and others finally rejected, where an amend-
ment is received at or near the close of the
statutory period cancelling the finally rejected
claims and presenting one or more new ones
which the Examiner cannot allow, the amend-
ment, after the statutory period has ended, is
entered to the extent only of cancelling the
finally rejected claims. Of course, if any of
the new claims were, in the Examiner's opin-

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714.28

ion, patentable, they too would be entered.
The applicant is notified that the new claims
which are held unpatentable have not been
admitted, and at the same time the case is
passed for issue.

(4) Where all of the claims are under final
rejection and the amendment cancels these
claims and presents new ones, only some of
which are deemed allowable by the Examiner,
the same practice is followed as indicated in
(3).

(5) In a case having all claims allowed and
some formal defect noted, where an amend-
ment is presented at or near the close of the
statutory period curing the defect and adding
one or more claims some or all of which are
in the opinion of the Examiner not patentable,
or will require a further search, the procedure
indicated in (3) is followed. After the statu-
tory period has ended, the amendment in such
a case will be entered only as to the formal
matter and to any of the newly presented
claims that may be deemed patentable.

(6) In an amendment accompanying a mo-
tion granted only in part, the amendment is en-
tered only to the extent that the motion was
granted. See 1108.

NOTE: The Examiner writes "Enter" in ink
and his initials in the left margin opposite the
enterable portions.

# 714.21 Amendments Inadvertently En- tered, No Legal Effect

If the clerk inadvertently enters an amend-
ment when it should not have been entered,
such entry is of no legal effect, and the same
action is taken as if the changes had not been
actually made, inasmuch as they have not been
legally made. Unless such unauthorized entry
is deleted, suitable notation should be made on
the margin of the amendatory paper, as "Not
Officially Entered".

If it is to be retained in the file an amendatory
paper, even though not entered, should be given
a paper number, and appropriately endorsed
on the file jacket, as by "Not Entered". See
714.01(b) for discussion of an instance of an
amendment which is not retained.

# 714.22 Entry of Amendments, Direc- tions for

Rule 121. Manner of making amendments. (a) Eras-
ures, additions, insertions, or alterations of the Office
file of papers and records must not be physically
entered by the applicant. Amendments to the applica-
tion (excluding the claims) are made by filing a paper
(which should conform to Rule 52), directing or re-

questing that sperifiled amendments be made The ex-
act word or words to be stricken out or Inserted by sald
amendment must be specified and the precise point
Indicated where the deletion or insertion is to be made.

(b) Except as otherwise provided herein, a particu-
lar claim may be amended only by directions to cancel
or by rewriting such claim with underlining below the
word or words added and brackets around the word or
worda deleted. The rewriting of a claim in this form
will be construed as directing the cancellation of the
original claim; however, the original claim number
followed by the parenthetical word "amended" must
be used for the rewritten claim. If a previously re-
written claim is rewritten, underlining and bracketing
will be applied in reference to the previously rewritten
claim with the parenthetical expression "twice
amended," "three times amended," etc., following the
original claim number.

(c) A particular claim may be amended in the man-
ner indicated for the application in Rule 121 (a) to the
extent of corrections in spelling, punctuation, and typo-
graphical errors. Additional amendments in this
manner will be admitted provided the changes are
limited to (1) deletions and/or (2) the addition of no
more than five words in any one claim. Any amendment
submitted with instructions to amend particular claims
but failing to conform to the provisions of paragraphs
(b) and (c) may be considered non-responsive and
treated accordingly.

(d) Where underlining or brackets are intended to
appear in the printed patent or are properly part of the
claimed material and not intended as symbolic of
changes in the particular claim, amendment by rewrit-
ing in accordance with paragraph (b) above shall be
prohibited.

(e) In reissue applications, both the descriptive por-
tion and the claims are to be amended as specified in
paragraph (a) above.

# 714.23 Entry of Amendments, Direc- tions for, Defective

The directions for the entry of an amend-
ment may be defective, as, inaccuracy in the
line designated, or lack of precision where the
word to which the amendment is directed oc-
curs more than once in the specified line. If it
is clear from the context what is the correct
place of entry, the amendatory paper will be
properly amended in the examining group,
and notation thereof, initialed in ink by the Ex-
aminer, who will assume full responsibility for
the change, will be made on the margin of the
amendatory paper. In the next Office action
the applicant should be informed of this altera-
tion in his amendatory paper and the entry of
the amendment as thus amended. He will also
be informed of the nonentry of an amendment
where defective directions and context leave
doubt as to the intent of applicant.

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714.24 "Amendment of Amendment

Rule 184. Amendment of amendments. When an
amandatory clause is to be amended. it should be
wholly rewritten and the original Insertion cancelled,
so that no interlineations or deletions shall appear in
the clause as Anally presented. Matter cancelled by
amendment can be reinstated only by a subsequent
amendment presenting the cancelled matter as a new
Insertion.

However, where a relatively small amend-
ment to a previous amendment can be made
easily without causing the amendatory matter
to be obscure or difficult to follow, such small
amendment should be entered.

# 714.25 Discourtesy of Applicant or At- torney

Rule 8. Business to be conducted with decorum and
courtesy. Applicants and their attorneys or agents
are required to conduct their business with the Patent
Ofice with decorum and courtesy. Papers presented
in Violation of this requirement will be submitted to
the Commissioner and will be returned by his direct
order. Complaints against examiners and other em-
ployees must be made in communications separate
from other papers.

If the attorney is discourteous in the remarks
or arguments in his amendment, either the dis-
courtesy should be entirely ignored or the
paper submitted to the Supervisory Examiner
with a view toward its being returned.

## 715 Swearing Back of Reference-Affi- davit Under Rule 131

Rule 131. Affidavit of prior invention to overcome
cited patent or publication. (a) When any claim of
an application is rejected on reference to a domestic
patent which substantially shows or describes but does
not claim the rejected Invention, or on reference to a
foreign patent or to a printed publication, and the
applicant shall make oath to facts showing a comple-
tion of the invention in this country before the filing
date of the application on which the domestic patent
issued, or before the date of the foreign patent, or
before the date of the printed publication, then the pat-
ent or publication cited shall not bar the grant of a
patent to the applicant, unless the date of such patent
or printed publication be more than one year prior to
the date on which the application was filled in this
country.

(b) The showing of facts shall be such, in charac-
ter and weight, as to establish reduction to practice
prior to the effective date of the reference, or concep-
tion of the invention prior to the effective date of the
reference coupled with due diligence from said date to
a subsequent reduction to practice or to the filing of

the application, Original exhibits of drawings or rec-
orda, or phietocopies thereof, must accompany and form
part of the amdavit or their sbeence satisfactorily
explained.

Any printed publication dated prior to an
applicant's effective filing date, or any domestic
patent of prior filing date, which is in its dis-
closure pertinent to the claimed invention, is
available for use by the examiner as a reference,
either basic or auxiliary, in the rejection of the
claims of the application.

Such a rejection may be overcome, in certain
instances noted below, by applicant's filing of
an affidavit under Rule 181, known as "swear-
ing back" of the reference.

Affidavits under Rule 131 may be used :

(1) Where the date of the foreign patent or
that of the publication is less than one year
prior to applicant's effective filing date.

(2) Where the reference, a U.S. Patent, with
a patent date less than one year prior to appli-
cant's effective filing date, shows but does not
claim the invention.

Affidavit under Rule 131 is not appropriate
in the following situations:

(1) Where reference publication date is
more than one year back of applicant's effective
filing date. Such a reference is a "statutory
bar".

(2) Where the reference U.S. patent claims
the invention. See 1101.02(a).

(3) Where reference is a foreign patent for
the same invention to applicant or his legal
representatives or assigns issued prior to the
filing date of the domestic application on an
application filed more than twelve months prior
to the filing date of the domestic application.

(4) Where the effective filing date of appli-
cant's parent application or an International
Convention proved filing date is prior to the
effective date of the reference, affidavit under
Rule 132 is unnecessary and the reference is
not used. See 201.11 to 201.15.

(5) Where the reference is a prior U.S. pat-
ent to the same entity, claiming the same inven-
tion, the question involved is one of "double
patenting."

(6) Where the reference is the disclosure of
a prior U.S. patent to the same party, not co-
pending, the question is one of dedication to
the public.

Should it be established that the portion of
the patent disclosure relied on as the reference
was introduced into the patent application by
amendment and as such was new matter, the
date to be overcome by the affidavit is the date
of the amendment. In re Williams et al., 1935
C.D. 229; 454 O.G. 535.

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715.01 (a)

It should be kept in mind that it is the re-
jection that is withdrawn and not the refer-
ence.

### 715.01 Reference Claims Foreign Fil- ing Date

The effective date of a United States Patent
for use as a prior art reference is not affected
by the foreign filing date to which the patentee
may be entitled under 35 U.S.C. 119. In re
Hilmer, 833 O.G. 13, 149 USPQ 480 (CCPA
1966) ; Lily et al. v. Brenner, 153 USPQ 95
(C.A.D.C. 1967). The reference patent is effec-
tive as of the date the application for it was filed

in the United States (35 U.S.C. 102(e) and
103). Hazeltine Research, Inc. et al. v. Bren-
ner, 824 O.G. 8 (U.S. Supreme Court 1965).

# 715.01(a) Reference a Joint Patent to Applicant and Another

When subject matter disclosed but not
claimed in a patent issued jointly to S and an-
other is claimed in a later application filed by
S, the joint patent is a valid reference unless
overcome by affidavit under Rule 131. In re
Strain, 1951 C.D. 252; 648 O.G. 5. Disclaimer
by the other patentee should not be required.
But see 201.06.

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# 715.01 (b) Reference and Application Have Common Assignee

The mere fact that the reference patent
which shows but does not claim certain sub-
ject matter and the application which claims
it are owned by the same assignee does not
avoid the necessity of filing an affidavit under
Rule 131. The common assignee does not ob-
tain any rights in this regard by virtue of
common ownership which he would not have
in the absence of common ownership. In re
Beck et al., 1946 C.D. 398; 590 O.G. 357; Pierce
v. Watson, 124 U.S.P.Q. 356.

# 715.01(c) Reference Is Publication of Applicant's Own Invention

Unless it is a statutory bar, a rejection on a
publication may be overcome by & showing
that it was published either by applicant him-
self or in his behalf Ex parte Lemieux, 1957
C.D. 47; 725 O.G. 4; Ex parte Powell et al.,
1938 C.D. 15; 489 O.G. 231.

## CO-AUTHORSHIP

Where the applicant is one of the co-authors
of a publication, cited against his application,
he is not required to file an affidavit under
Rule 181. The publication may be removed
as a reference by filing a disclaiming affidavit
of the other authors. Ex parte Hirschler, 110
U.S.P.Q. 384.

### 715.02 General Rule as to Generic Claims

A reference applied against generic claims
may (in most cases) be antedated as to such
claims by an affidavit under Rule 131 showing
completion of the invention of only a single
species, within the genus, prior to the effec-
tive date of the reference (assuming, of course,
that the reference is not a statutory bar or a
patent claiming the same invention). See,
however, 715.03.

### 715.03 Practice Relative to Chemical Cases

In chemical cases, where generic claims have
been rejected on a reference which discloses a
species not antedated by the affidavit, the re-
jection will not ordinarily be withdrawn un-
less the applicant is able to establish that he
was in possession of the generic invention
prior to the effective date of the reference.
In other words, the affidavit under Rule 131
must show as much as the minimum disclosure

required by a|patenti specification to furnish
support for a generic claim.

"The principle is well established in chem-
ical cases, and in cases involving compositions
of matter, that the disclosure of a species in a
cited reference is sufficient to prevent a later
applicant from obtaining generic claim." In
re Steenbock, 1936 C.D. 594; 478 O.G. 495.

Where the only pertinent disclosure in the
reference is a single species, which species is
antedated by the affidavit, the reference is
overcome. In re Stempel 1957 C.D. 200: 717
O.G. 886.

### MARKUSH TYPE GENUS CLAIM

Where a claim reciting a Markush group
is· rejected on a reference disclosing but not
claiming a specific member of the group, the
reference cannot be avoided by an affidavit un-
der Rule 131 showing different members of the
group.

#### 715.04 Who May Make Affidavit

A. The Inventor.

B. One of two joint inventors is accepted
where suitable excuse is given for failure of
the other applicant to sign. In re Carlson et
al, 1936 C.D. 95; 462 O.G. 479.

C. The Assignee or other party in interest
when it is not possible to produce the affidavit
of the inventor. Ex parte Foster, 1903 C.D.
213; 105 O.G. 261.

#### 715.05 Patent Claiming Same Inven- tion

When the reference in question is a patent
claiming the same invention as applicant and
its issue date is less than one year prior to the
filing date of the application being examined,
applicant's remedy, if any, must be by way of
Rule 204 instead of Rule 131. The Examiner
should therefore take note whether the status
of the patent as a reference is that of a PAT-
ENT or a PUBLICATION. If the patent is
claiming the same invention as the application,
this fact should be noted in the Office letter.
The reference patent can then be overcome
only by way of interference. Note, however,
35 U.S.C. 135, 1101.02(f).

#### 715.06 Affidavit Under Rule 131 Must Be Removed Before Interfer- ence

Where an application in which an affidavit
under Rule 131 has been filed is to be involved
in an interference, the affidavit must be sealed

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715.07

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in an envelope -properly labeled before for-
warding the application to the interference
division.

The same practice obtains with respect to a
Rule 131 affidavit in the file of an application
made the subject of a motion under Rule 294
or 235.

Under the practice established in Ferris v.
Tuttle, 1940 C.D. 5; 521 O.G. 523, the Rule
181 affidavit is thrown open to the opposing
party or parties to the interference at the time
the preliminary statements are opened. See
1101.03 and 1102.01.

#### 715.07 Facts and Documentary Evi- dence

The essential thing to be shown under Rule
131 is priority of invention and this may be
done by any satisfactory evidence of the fact.
FACTS, not conclusions, must be shown by the
evidence accompanying an affidavit under Rule
131. For example:

1\. As shown in attached sketches.

2\. As shown in attached blueprints.

3\. As indicated by accompanying model.

4\. As shown in attached photographs.

5\. As shown in reproductions of notebook
entries.

6\. If verbal disclosures were made instead
of the above, supporting statements by the wit-
ness will be acceptable.

7\. If the dates of the exhibits have been
removed or blocked off, the matter of dates can
be taken care of in the body of the oath.

The dates in the oath may be the actual dates
or, if the applicant does not desire to disclose
his actual dates, he may merely allege that the
acts referred to occurred prior to a specified
date.

A general allegation that the invention was
completed prior to the date of the reference is
not sufficient. Ex parte Saunders, 1883 C.D.
23; 23 O.G. 1224.

"If the applicant made sketches he should so
state, and produce and describe them; if the
sketches were made and lost, and their contents
remembered, they should be reproduced and
furnished in place of the originals. The same
course should be pursued if the disclosure was
by means of models. If neither sketches nor
models are relied upon, but it is claimed that
verbal disclosures, sufficiently clear to indicate
definite conception of the invention, were made
the witness should state as nearly as possible
the language used in imparting knowledge of
the invention to others." Ex parte Donovan,
1890 C.D. 109; 52 O.G. 309.

The affidavit must state FACTS and pro-
duce such documentary evidence and exhibits

ini support /themof as are available to show
conception and completion of invention IN
THIS COUNTRY, the conception at least be-
ing at s dote prior to the effective date of the
reference. Where there has not been reduction
to practice prior to the date of the reference,
the applicant must show diligence in the com-
pletion of his invention from a time just prior
to the date of the reference continuously up to
the date of an actual reduction to practice or
up to the date of filing of his application,
which constitutes a constructive reduction to
practice. Rule 131. In this connection, note
the following:

A conception of an invention, evidenced by
disclosure, drawings, and even a model, is not
a complete invention under the patent laws,
and confers no rights on an inventor, and has
no effect on a subsequently granted patent to
another, UNLESS HE FOLLOWS IT WITH
REASONABLE DILIGENCE BY SOME
OTHER ACT, such as an actual reduction to
practice or filing an application for a patent.
Automatic Weighing Mach. Co. v. Pneumatic
Scale Corp., Limited, 1909 C.D. 498; 139 O.G.
991.

Conception is the mental part of the inven-
tive act, but it must be capable of proof, as by
drawings, complete disclosure to another per-
son, etc. In Mergenthaler v. Scudder, 1897
C.D. 794; 81 O.G. 1417, it was established that
conception is more than a mere vague idea of
how to solve a problem; the means themselves
and their interaction must be comprehended
also.

The facts to be established under Rule 131
are similar to those to be proved in interfer-
ence. The difference lies in the way in which
the evidence is presented. If applicant dis-
agrees with a holding that the facts are in-
sufficient to overcome the rejection, his remedy
is by appeal from the continued rejection.

#### 715.07(a) Diligence

Where conception occurs prior to the date of
the reference, but reduction to practice is after-
ward it is not enough merely to allege that ap-
plicant had been diligent. Ex parte Hunter,
1889 C.D. 218; 49 O.G. 733.

What is meant by diligence is brought out in
Christie v. Seybold, 1893 C.D. 515; 64 O.G.
1650. In patent law, an inventor is either dili-
gent at a given time or he is not diligent ; there
are no degrees of diligence. A man may be
diligent within the meaning of the patent law
when he is doing nothing, if his lack of activity
is excused.

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Note, however; that only diligence before re-
duction to practice is a material consideration.
The "lapes of time between the completion or
reduction to practice of an invention and the
filing of an application thercon" (Ex parte
Merz, 75 U.S.P.Q. 296) is not relevant to
Rule 131 affidavit.

# 715.07(b) Interference Testimony Sometimes Used

In place of an affidavit the testimony of the
applicant in an interference may be sometimes
used to antedate a reference in lieu of a Rule 131
affidavit.

The part of the testimony to form the basis
of priority over the reference should be pointed
out. Ex parte Bowyer, 1939 C.D. 5; 505
O.G. 759.

715.07(c)
Acts Relied Upon Must
Have Been Carried Out in
This Country

The affidavit must contain an allegation that
the acts relied upon to establish the date prior
to the reference were carried out in this country.
See 35 U.S.C. 104.

# 715.07(d) Disposition of Exhibits Submitted as Evidence to Support Facts

Exhibits, such as those filed as part of an
affidavit under Rule 131, that are too bulky to
be placed in the application file are retained in
the Examining Group until the case is finally
disposed of. When the case goes to issue (or
abandonment) the exhibits are sent to the Model
and Receiving Room, notation to this effect
being made on the margin of the affidavit. See
608.03 (a).

# 715.08 Passed Upon by Primary Ex- aminer

The question of sufficiency of affidavits under
Rule 131 should be reviewed and decided by a
Primary Examiner. (Basis: Order 2712.)

# 715.09 Seasonable Presentation

Affidavits under Rule 131 must be seasonably
presented. Ex parte Berg, 1906 C.D. 36; 120
O.G. 903; Ex parte Romunder, 1910 C.D. 121;
157 O.G. 209; Ex parte Hale, 49 U.S.P.Q. 209;
Ex parte Bowyer, 1939 C.D. 5; 505 O.G. 759.

For affidavits under Rule 131 filed after ap-
peal see Rules 195 and 1212.

# 716 Affidavits Traversing Rejections, Rule 132

Rule ISe. Amtadoite traversing grounds of rejection.
When any claim of an application is rejected on ref-
erence to a domestic patent which substantially shows
or describes but does not claim the invention, or on
reference to a foreign patent, or to a printed publi-
cation, or to facts within the personal knowledge of
an employee of the Onice, or when rejected apon
mode or capability of operation attributed to a reter-
ence, or because the alleged invention is held to be
inoperative or lacking in utility, or frivolous or in-
jurious to public health or morals, affidavits traversing
these references or objections may be received.

NOTE THAT RULE 132 IS NOT APPLI-
CABLE TO A REJECTION BASED ON A
U.S. PATENT WHICH CLAIMS THE RE-
JECTED INVENTION.

Hereafter, it shall be the responsibility of
the Primary Examiner to personally review
and decide whether affidavits submitted under
Rule 132 for the purpose of traversing grounds
of rejection, are responsive to the rejection and
present sufficient facts to overcome the rejec-
tion. (Basis: Notice of December 15, 1959.)

This rule sets forth the general policy of the
Office consistently followed for a long period
of time of receiving affidavits evidence tra-
versing rejections or objections, Ex parte
Gresselin, 1896 C.D. 39; 76 O.G. 1573. The enu-
meration of rejections in the rule is merely exem-
plary. All affidavits presented which do not
fall within or under other specific rules are to
be treated or considered as falling under this
rule.

Certain legal principles and standards have
been established respecting affidavit evidence.
Some are applicable to all affidavits, while
others are applicable only to particular types
of affidavits, as indicated below. The critical
factors and standards are summarized as an
aid or guide to the examiners in evaluating such
affidavits. Affidavits timely filed (i.e. before
final action or appeal) should be acknowledged
and commented upon in the action following
filing. See Sec. 707.02. If an affidavit is filed
later and entered (See Rule 195) similar action
should be taken.

The following criteria are applicable to all
affidavits submitted under this rule :

(1) Affidavits must be timely or seasonably
filed (i.e. before final rejection or appeal) to be
entitled to consideration. In re Rothermel et
al., 1960 C.D. 204; 755 O.G. 621. Affidavits
not timely filed must meet the requirements of
Rule 195.

(2) Affidavits must set forth facts, not merely
conclusions. In re Pike et al., 1950 C.D. 105;

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633 O.G. 680. The facts presented in the afr-
davits must be pertinent to the rejection. In
re Renstrom 1949 C.D. 306; 624 O.G. 5. Other-
wise, the affidavits have no probative value.

(3) Affidavits should be scrutinized closely
and the facts presented weighed with care.
The amant's interest is a factor which may be
considered, but the affidavit cannot be disre-
garded solely for that reason. In re McKenna
et al., 1953 C.D. 251; 674 O.G. 9; Bullard &
Co. v. Coe 1945 C.D. 13; 573 O.G. 547.

Rule 132 affidavits may be classified in five
groups, and such affidavits must conform, in
addition, to the established criteria and stand-
ards for the group into which they fall. These
groups and the applicable standards are :

# COMPARATIVE TESTS OR RESULTS

Affidavits comparing applicant's results with
those of the prior art must relate to the ref-
erence relied upon and not other prior art-
Blanchard v. Ooms 1946 C.D. 22; 585 O.G. 175
-, and the comparison must be with disclosure
identical (not similar) with that of the refer-
ance. In re Tatincloux 1956 C.D. 102; 702
O.G. 964. Otherwise, the affidavits have no
probative value.

Where the comparison is not identical with
the reference disclosure, deviations therefrom
should be explained-In re Finley, 1949 C.D.
284; 624 O.G. 262-and if not explained should
be noted and evaluated, and if significant, ex-
planation should be required. In re Arm-
strong 1960 C.D. 422; 759 O.G. 4. Otherwise,
the affidavits may be entitled to little weight.

Where the comparison shows unexpected re-
sults or advantages, it should be compared with
the application disclosure, since recitals of the
specification are controlling. Abbott v. Coe,
1940 C.D. 13; 512 O.G. 3. In re Rossi 1957
C.D. 130; 717 O.G. 214. Advantages not dis-
closed carry little or no weight in establishing
patentability.

Affidavits setting forth advantages and as-
serting that despite familiarity with the art,
the claimed subject matter was not obvious to
affiants, do not afford evidence of non-obvious-
ness, where the advantages relied upon are
merely those which would result from follow-
ing the teaching of the prior art. In re Hen-
rich 1959 C.D. 358; 747 O.G. 793.

## OPERABILITY OF APPLICANT'S DISCLOSURE

Since it is the Examiner's duty to pass upon
the operativeness of any invention which he is
called upon to examine he is free to express
his opinion on that question so long as he
gives reasons for his holding with clarity and

completeness. Therefore, he need not support
every rejection on inoperativeness with refer-
ences or amdavits. In re Quattlebeum 84
U.S.P.Q. 383.

Affidavits attempting to show that the struc-
ture deemed inoperative was seen in operation
by persons who vouch for its operability, are
insufficient. In re Perrigo, 1931 C.D. 512, 411
O.G. 544.

Where the invention involved is of such a
nature that it cannot be tested by known sci-
entific principles, theoretical arguments in af-
fidavit form are unacceptable, and the only
satisfactory manner of overcoming the rejec-
tion is to demonstrate the operability by con-
struction and operation of the invention.
Buck v. Ooms 1947 C.D. 33; 602 O.G. 177. In
re Chilowsky 1956 C.D. 155; 704 O.G. 213.

## INOPERABILITY OF REFERENCES

Since every patent is presumed valid (35
U.S.C. 282), and since that presumption in-
cludes the presumption of operability-Metro-
politan Eng. Co. v. Coe 1935 C.D. 54; 455 O.G.
3-Examiners should not express any opinion
on the operability of a patent. Therefore af-
fidavits attacking the operability of a patent
cited as a reference, though entitled to consid-
eration, should be treated, not as conclusive of
the factual matter presented, but rather as an
expression of opinion by an expert in the art.
In re Berry, 137 U.S.P.Q. 353. See also In
re Lurelle Guild 1953 C.D. 310; 677 O.G. 5.
Opinion affidavits need not be given any weight.
In re Pierce 1930 C.D. 34; 390 O.G. 265; In
re Reid 1950 C.D. 194; 635 O.G. 694.

Further, since in a patent it is presumed that
a process if used by one skilled in the art will
produce the product or result described there-
in, such presumption is not overcome by a mere
showing that it is possible to operate within
the disclosure without obtaining the alleged
product. It is to be presumed also that skilled
workers would as a matter of course, if they
do not immediately obtain desired results, make
certain experiments and adaptations, within
the skill of the competent worker. The fail-
ures of experimenters who have no interest in
succeeding should not be accorded great weight.
Bullard v. Coe 1945 C.D. 13; 573 O.G. 547;
In re Michalek 1947 C.D. 458; 604 O.G. 223;
In re Reid 1950 C.D. 194; 635 O.G. 694.

Where the affidavit presented asserts inop-
erability in some features of the patent as to
which it was not relied upon, the matter is of
no concern. In re Wagner, 1939 C.D. 581; 407
O.G. 1041.

Where the affidavit asserts inoperability of
the process disclosed in the reference for pro-

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(a) :717.02

ducing the claimed product, which product is
fully disclosed in the reference, the matter is
of no concern. In re Attwood 1958 O.D. 204;
780 O.G. 790.

Where the affidavit presented asserts that the
reference relied upon is inoperative, it is ele-
mentary that the claims presented by appli-
cant must distinguish from the alleged in-
operative reference disclosure; therefore the
matter is of no concern. In re Crecelius 1937
C.D. 112; 474 O.G. 465. In re Perrine 1940
C.D. 465; 519 O.G. 520. In re Crosby 1947
C.D. 35; 595 O.G. 5.

Affidavit by patentee that he did not intend
his device to be used as claimed by applicant is
immaterial. In re Pio 1955 C.D. 59; 691 O.G.
454.

## COMMERCIAL SUCCESS

Affidavits submitting evidence of commercial
success can have no bearing in a case where
the patentability over the prior art is not in
doubt. In re Jewett et al 1957 C.D. 420; 724
O.G. 225. In re Troutman, 1960 C.D. 308;
757 O.G. 556.

Affidavits showing commercial success of a
structure not related to the claimed subject
matter has neither significance nor pertinence.
In re Kulieke 1960 C.D. 281; 756 O.G. 288.

Affidavits which attribute commercial suc-
cess to the invention "described and claimed"
or other equivalent indefinite language have
little or no evidenciary value. In re Troutman
1960 C.D. 308; 757 O.G. 556.

Where affidavits show commercial success it
must appear that such success resulted from
the invention as claimed. In re Hollingsworth
1958 C.D. 210; 730 O.G. 282. Otherwise the
affidavit showing is non-pertinent.

## SUFFICIENCY OF DISCLOSURE

Affidavits presented to show that the disclo-
sure of an application is sufficient to one skilled
in the art are not acceptable to establish facts
which the specification itself should recite. In
re Smyth 1951 C.D. 449; 651 O.G. 5.

Affidavits purporting to explain the disclo-
sure or to interpret the disclosure of a pending
application are usually not considered. In re
Oppenauer 1944 C.D. 587; 568 O.G. 393.

## 717 File Wrapper

### 717.01 Papers in File Wrapper

Full details are given in the Manual of Cleri-
cal Procedures. Papers that do not become a

permanent part of the record should not be
gatered on the "Contents" of the file wrapper
(jacket). No paper entered on the "Contents"
should ever be withdrawn or returned to ap-
plicant without special authority of the Com-
missioner. Certain oaths executed abroad are
returned but & copy is retained in the file. See
604.04(a).

## 717.01 (a) Arrangement of Papers in at abril boi File Wrapper

Until revision for allowance, the specifica-
tion, amendments and all other communications
from applicant are fastened to the left side (cen-
ter fold) of the file jacket. They are in inverse
chronological order; that is, the communica-
tion with the latest "Mail Room" date is on top.
A similar arrangement is followed on the right
side, where Office actions and other communica-
tions from the Office are fastened, except that
the print is always kept on top for the con-
venience of the Examiner.

Where amendments are submitted in dupli-
cate, the carbon copy is destroyed except where
the duplicate is received within the time pe-
riod for response and the original is late. In
this latter situation both copies are placed in
the file. The "original" (ribbon copy) is en-
tered with reference made to the carbon copy.

If the attorney wishes a receipt for any pa-
per filed, this may be had by enclosing with
the paper a self-addressed postal card identi-
fying the paper. The mail-room receiving-
stamp will be placed on the card, and the card
dropped in the outgoing mail.

## 717.01(b) Prints

The prints of the drawing are fastened in-
side the file wrapper by the Application
Branch, and shall always be kept on top. A
paper number is assigned by the Clerk of the
group.

The prints shall always be kept on top of
the papers on the right of the file wrapper.

All prints and inked sketches subsequently
filed to be part of the record should be en-
dorsed with the date of their receipt in the
office and given their appropriate paper num-
ber.

## 717.02 Data Entered on File Wrapper

See also 707.10, 717.01.

If the Examiner notices an error in any of
the data originally entered on the file wrap-
per, he should have it corrected by the Appli-
cation Branch.

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717.02 (a)

# MANUAL OF/PATENT EXAMINING PROCEDURE

If an error is noticed in the name or ad-
dress of the sesignes, it should be corrected by
the Assignment Branch.

All of the above entries are either typed or
made in black ink. Such changes by amend-
ment as change of address or of attorney are
entered in red ink by the clerk of the group,
the original entry being canceled but not
erased.

717.02(a)

Statutory Period Ends on
Saturday, Sunday or Holi-
day

See 710.05.

# 717.02(b} Name or Residence of In- ventor or Title Changed

The distinction between "residence" and Post
Office address should not be lost sight of.

Sec. 605.04(c) explains the procedure to be
followed concerning sending the application to
the Assignment Branch and the Application
Branch when Applicant changes name.

Unless specifically requested by applicant,
the residence will not be changed on the file.
For example, if a new oath gives a different
residence from the original, the file will not
be changed.

# 717.03 Classification During Examina- tion

When a new case is received in an Examin-
ing Group, the classification of the case and the
initials or name of the Examiner who will ex-
amine it or other assigned docket designation
are noted in pencil in the upper lefthand corner
of the drawing (first sheet) and in the des-
ignated spaces on the file wrapper. These
notations should be kept current. When the
application is sent to issue, the notations then
appearing on the drawing should not be erased.
They may be useful in classifying an incoming
continuing application to which drawings may
have been transferred and in assigning it to an
Examiner already familiar with the subject
matter.

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008 molas0
717.07

# 717.04 Index of Claims

Constant reference is made to the "Index of
Claims" found in the inside of the file wrap-
per of all applications. It should be kept up
to date so as to be a reliable index of all claims
standing in a case, and of the amendment in
which the claims are to be found.

A column has been designated on the new
file wrapper (Form PO-436) for the entry of
the final numbering of allowed claims. The
preprinted series of claim numbers appearing
on the old jacket (Form PO-136) has been
retained and continues to refer to claim num-
bers as originally filed.

A line in ink should be drawn below the
number corresponding to the number of claims
originally presented. Thereafter, a line in ink
should be drawn below the number correspond-
ing to the highest numbered claim added by
each amendment. Just outside the Index of
Claims form opposite the number correspond-
ing to the first claim of each amendment there
should be placed the letter designating the
amendment.

As any claim is canceled a line should be
drawn through its number.

## 717.05 Field of Search

In each action involving a search, the Exam-
iner shall encorse, on the flap of the file wrap-
per, the classes and subclasses and publications
searched, the date when the search was made
or was brought up to date and the Examiner's
initials, all entries being in BLACK INK.
Great care should be taken, inasmuch as this
record is important to the history of the ap-
plication.

# 717.06 Foreign Filing Dates

See 1302.06.

# 717.07 Related Applications

The file wrapper should identify earlier filed
related applications. See 202.02.

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