1000

OCR transcription for search; preserved printed pages are authoritative

Section 10. EXAMINATION OF ATTLICATIONS

10-1.

Examination as To Merito

-1-1.

Requisites of the Description

-1-2.

Original Clain May be Basis For Disclosure

-1-3.

Claim Necessary

-1-4.

Breadth of Claim

-1-5.

Publications Available to Examiner

-1-6.

Ordering Soft Copies

-1-7.

Classification of a Patent Can Be Obtained From Classification Division

-1-8.

Prints of Foreign Patents

-1-9.

Translation of Foreign Patents

-1-10.

Patentod Files .

-1-11.

Files of Abandoned Applications

-1-12.

Search To Be Noted-

-1-4.

"General Information Concerning Patents" Sont Instead of "Rules of Practice"

-1-15.

Examiner Must Not Cast Shadow On Patent

-1-16.

Discourtesy of Attorney

-2.

Signatures to Actions and Responses

-2-1.

Initialing; By Assistant And Signing By Primary or Acting; Primary

-2-3.

Unsigned Amendment

-2-4.

Disposal of

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10-2-5.

Tolegran Amendment

-2-6.

Signed by Attorney Not of Record

-2-7.

Amendment Signed by Applicant But Not by Attorney of Record

-2-8.

lower of Attorney to a Firm

-2-9.

Assistant to Attorney Si,mu Amendment After Attorney Dios

-3.

Actions Which Require the Personal Attention of the Primary Examinor

- 1, .

Dual Prosecution

-1, -1 .

Definition

-4-2.

Purpose

-4-3.

Jurisdiction and Responsibilities of Division to Which Case is Assigned

4-4.

Jurisdiction and Responsibilities of Division to Which Case is Forwarded

-4-5.

Timo of Initiation, and forwarding of File

-1,-6.

Tues of Examsmotion In Division

-1,-7.

Soquente of Examination Between Divisions

-4-8.

Boggicoment. of Division

-4-0.

Whon Case Ja Transferred

-4-[().

When Dant Trouvention Is Not Proper

-4-11.

Drapetlas

-% -12.

Impression Br ignary

-4-13.

Forms of Office Action and Response

-4 -14.

Details of Handlin :

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10-5.

Sequence of Examination,
Special Cases

-5-1.

Definition and List

-5-2.

letition to fato Special

-5-3.

Ironpt Attention To "Ir inter waiting" Casos

-5-4.

Examiner Tenders His Resignation

-S.

Suspension er action

-5-1.

Overlapping Actions By Same Applicant Or Owned By Dame Assignee

-6-2.

Actions Following Correspondenco Under Rule 23-2

-7.

Atomic Energy Act

-S .

Rejection of Claims

-F-1.

Contrasted with Objection

-8-2.

Statutory Classos

-2-2.1.

Printed Mattor

-£-2.2.

Occurring: in Nature

-1-2.3.

Method of Doin- Business

-3-2.4.

Scientifi: Irineiplo

-P-3.

On frior art

-. ....

Not based on irier Art, Listed

-2-5.

Functional

-1-6.

Indefinite

-1-7.

Incompleto

-8-8.

irolix

......

Aggregation

-9-10.

Old Combinati: n

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10-8-11.

Dependent Claim

-8-12.

Unpatentable over other claim

-8-13.

Multiplicity

-8-14.

Miajoinder (before election)

-8-15.

Inaccurate

-8-16.

New Matter

-8-17.

No Utility

-8-18.

Obvious Method

-8-19.

More function of machine

-8-20.

Statutory Bar

-8-21.

Abandonment, dedication

-8-22.

Misjoinder (after election)

-8-23.

Earlier assigned case

-8-24.

Loser of interference

-8-25.

Estóprel

-8-26.

Defective reissue oath

-8-41.

Statement of rejection

-8-42.

Troviously allowed claim

-8-43.

After allowance of application

-8-44.

Claims copied from patent

-8-45.

Final rojection

-8-46.

When proper

-8-47.

When proper on first action

-8-18.

Prema tur e

-8-49.

Withdrawal of promnturo

-8-50.

Withdrawal generally

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10-5.

Examiner's setter of Action

-9 (a)

Sufficiency of Disclosure Must First. be De bormined

.9 (b)

Primary Examiner Indicates Action For dow Ass is tant

-9 (c)

Sample of Conventional "First Action" Lotter

-9-1.

Initial Ben tonce

-0-2.

Citation of References

-0-3.

Grouped at Beginning of Letter

~0.4.

Roferences Applicd

-9-5.

References Fortinent

-9-5.1.

References Cited in Subsequent Actions

-9-6 (a)

Data

-9-6 (b)

Effective Dates of Declassified Printed Matter

-9-7.

Citation of Decisions, Ordors and Notices

-0-8.

Completeness and Clarity

.. 0-8 (a)

Detorment of Action on formal Matters

__ 8 (b)

Requiring new bath

-.... 8. (c)

brattson's te miromint

**** (d)

Language to be land in dejections

-0.0.

Format Requirements

4.10.

tobe all Outstanding Requirementa

.0.11.

maver all interial Traversaed

.0.12.

jiecemeal Irosecution

.9.13.

Notify of inaccuracies in Mondment

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10-0-14.

Each Claim to be Mentioned In Each Letter

-0-15.

State When Claims Aire Allowable Except As To Form

-0-15.1.

Specifie Actions

-0-16.

Number ing iaragraphs

-9-17.

office Letters To Have One inch Margin Left Side of Fare

~9-18.

Typing Letters

-9-19.

Review by Assistant Examiner

-9-20.

Entry

-9-21.

Date

-9-22.

Mailing

-9-23.

Number of Copies Mailed

-9-24.

Returned Office action

-10.

Examiner's Amendment

-10 (a)

Amendments That May be made By Examiner

-10 (b)

Title of Invention

-10 (c)

Cancelation of Non- Statutory Claim

-10 (d)

Data of Copending Application Referred To Should be Brought up to Date

-10 (0)

Hurt ring: of Claims Voed In Examiner's Amondmont

-11.

Forind for response (joc. 14 -3-il)

-11-1.

Statutory

-11-2.

How Computed

-11-3.

Shortened Statutory feriod And Time Limit actions

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10-11-4.

Approval of Time Jet

-11-5.

situations in which used

-11-6.

Statutory

-11-7.

Non-Statutory

-11-8.

Differences Between shortened and Time Limit

-11-9.

Extension of

-11-10.

Three Year Period, Government Owned Cases

-11-11.

Two Periods Running

-11-12.

Copying Patent Claims

-11-13.

Factors Affecting or Determining Dates

-11-14.

Date of Receipt of Applicant's Action

-11-15.

Feriod Ending on Sunday or Holiday

-11-16.

Miscellaneous l'actors Determining Date

-11-17.

Actions on Appeals

-11-18.

Boards Decisions

-11-19.

Dismissals

-11-20.

Citing; Now Reference in Examiner's Statement , "Movey"

-11-21.

Court, Decisions

-11-22.

Actions in Interference

-11-23.

ireliminary Acti ons

-11-24.

Decision

-11-25.

Termination

-11-26.

Petitions

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10-12.

Abandonment, Forfeiture

-12 (a)

Abandoned and Forfeited applications not vited

-12-1.

Abandonment By won-Statutory Disclaimer

-12-2.

Failure To Take Required Action During Time For iod

-12-2 (a)

Disposal of Amendment Filed After Case Is Abandoned

-12-2 (b)

Special Cases involving Abandonment

-12-3.

Reconsideration of Holdin: of; Revival

-12-4.

nolibi ne Based on insufficiency Of Response

-12-5.

Holding Based on Failure To Respond within feriod

-12-6.

Petitions (Relating to Holding of Abandonment )

-12-7.

Examiner 's Statement

-12-8.

Disposal of Abandoned Files

-12-9.

Pulting, Counting, Listing;

-12-9 (a)

Listing of Forfeited Casos

-12-10.

Destruction of Abandoned Files

-12-12.

whorc Office Action la Returned As Undeliverable

-12-12 (a)

Letter of Al indonment Received Aftor Application is Allowed

-13. Swearing Back of Reference - affidavit Undor Rulo 18-1

-13 (a)

Reference intent Entitled To Foreign Filing

-13 (b)

General Rule (Genus and Spoelen)

-13 (c)

Exceptional and practice Relativo To Chonica Casos

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10-13-1.

who May Make

-13-2.

latent Claimin : Jare Invention

-13-2. (a)

Affidavit Under Rule 18-1 must Be Removed Botero Intorforonce

-12-3.

Facts and Documentary Evidence

-13-3. (a)

Diligence

-13-3. (b)

Reduction to practice

-13-3. (c)

Interferonce statements and Testimony Some times Used

-13-3. (d)

Acts Relied Upon Must Have Been Carried Out In This Country

-13-4.

Exhibits

-13-5.

fassed Upon By Frimary Examiner

-14.

Affidavits Traversing or Supporting References

-15.

Interviews

-15-1.

General olicy, hov Conducted

-15-1. (a)

No Interview lermitted lrior To First Official Action

-15-1. (b)

Interviews for bounding Out" amminer et Permitted

-:::. ()

theface of interview hust. De

-15-1. (1)

Interview with Dis bant AMMIR

-1-1. (0)

. inter aarte meation: Discur de! 32 Jarte

- 1 :.. ..

Return of Ober Vant

-! : - 3.

Para tration, Exhibits, Faxet

.15-1 .

Finally Rejected applies ten

-14-5.

Mol -1

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10-16.

Amendments, Applicant's Actions

-16-1.

Must Be Fully Responsive

-16-2.

Claims Presented in Amendment With No Attempt to Point Out Patentable Novelty

-16-3.

Examiner Should Immediately Inspect

-16-3. (a)

Amendment for Signature

-16-4.

Amendment to Determine if Within Time Period for Response

-16-5.

Amendment to Determine If Fully Responsive

-16-6.

Amendment to Determine if Changes Made Warrant Transfer

-16-7.

Amendment to Determine if It Is Special

-16-8.

Amendment to Determine if Claims Are Copied for interference

-16-9.

Amendments Sent to Wrong Division

-16-10.

Amendments Not in Permanent Ink

- 16-11.

Telegraphic Amendment

-16-12.

Amendments Before First Office action

-16-13.

Claims Added in Excess of Filing Fee

-16-14.

Amendments After Final Rejection or Allowance

-16-15.

Amendment Mailed Before, But Received in Examining; Division After Allowan ce

-16-16.

Iractice Where Copied Patent Clalmo Are filed in A Case in Issue

-16-17.

Amendment After Allowance Undor Rule 34.2 (Old Rule 78)

-16-20.

Amendment Under Rule 34.2 (78) Cancellin: Claims

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10-16-21.

Actarenta Inder ule W ... (78), copied Front. Ele ;

-1 -22.

inder atle 34.2 178;,

co : Mer of vlh:

-16-24.

Pendente vier .(), mindlin :

-1 :- 25.

amendments tinder ale .. . (% ), pandlin , entry in fart

-1-17.

sonda at Filed after the forlod for Response has expired

-!.- 10.

entry of Amendments

-16-31.

shotidments Mitry Denied

-1992.

List of Amondrents waterog in fart

-16-33.

At advents in tovertentity altered, a Logil Effect

-15-35.

atry of aarmaments, Directions for

-15-36.

stry et ancadments, Mirceti . 58 for Dercoli Ve

--- 3

(0)

Atendit of Amendment

-.....

whendi: pit .:: Clor! ': mbir:

- : . - 1%. .. ......

. . .... ....... -125.

Asv er Holiday

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10-17-15.

-17-16.
-17-17.
-17-18.
-17-19.
-17-20.
-17-21.

Classification During Examination
index of Claims
Field of Search
Foreign Filing Dates
Related Applications
Allowed Case Data
Patented File

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Section 3. 32 .. .. 3301 02 5 11: 300

de BANANAANTENNE BANAN E-
HEREARE DE UN FOLLOWING THE TORONTO
Som NIbestimmt ANNANANYONE CON Within
the suaviet s' the Ex. die's work. Rotations of Acho ..

stanite of the :. that's inv ation, at thus on ible tho
Ewarner to make an intoti om hunta ion of the merits
Ho LOV JEY.
DE LA Ident to theInternet
BANANA AAVON WANTED NA Boe. 4926, R.S .;
say person who has invent al or Ji covered
thy ies and vascul art, siching, umif cture, or
sausition of water, or my new and may'ul in-
IWISH WEGOT, of Who Is Vat is-
covered md som dly repro brod my listint
at det variety of Jant, other then " tuber-
gor ged ] tab, not known be used by others
in this country, before his invention eris-

10-1-1.

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and process of aring, constructing, compounding, ind
using it, in such full, leas, ind concise, ind exact
tor:is as to enable my Jerson Skilled in the PL or
Beionce to which it : portaing, os with which it is post
nearly connected, to man, construct, compound, and 130
the sane; ind in the case of a tichine he shal explifa
the principle: whoroos, m. the best modo in which he has
contantiated relying the principle, so as to distinguish
it from other inventions.

As this forms the coasider ision on the irt of the
inventor in roturn for which he receives protection, the
Examiner should be e reful to seo Min' the description
is full, clos . mai conciso, on: call upon the pylicant
for all necessary aufifications or malmente . Such
mandatory matter, however, must [ 1] within the confines
of the original di belo: re; other. the, it is not admissible
to the case. While miendmonts to the specification and
clai is involving now attor re entered, much patter is
required to be cancelled from the specification, and the
claims affected are rejected. A "how : third amendmont of
the de mine is not entered.

# 10-1-2. Original Clain My so Basis For Diselo ire

In establishing a disclosure ag lie int isiy rely not
only on the specification ad rawing is filed but also on
the original claims if their content justifies it.
1 ::- 1-3.
Clair Neces : : DI

See, 4802 R.S. also combine. the Mex liens
shill rti ula ly point out, and distinctly clat : the
part, i provement, os condia til while he pt md
his invention or discovery, The por'ion of the : diga-
tion in which he does Mis Mart the ela w elain.
this is the lost 1 oft : ert of Ble G': Mon, 28
it is the . Minition of the .. ... which Mitla is
re nind.

articul. in which the 1. fail to define correctly
ap Lic ml's invoalim, i' should be al llen w the
Co It : fini' ely wointel ut.

subject aber disclose included in the alienation,
the Examiner then searches the ring ile ged in
:teat : ad other printed doennien'a. any such doenist

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1 -1-4.
Breadth of CHINA

Tho breadth of a el tin shoot ' always bo e refully
acted; the is, the Exciter should be fully were of
What the ol in dons no cell for, WHEN it does
require. For, there is bags tror ein : lato the
sl :1 lit : ions imported from the @ celfi : cion or draw-
ing. In the case of a machine, if a chair is trolly atthod,
i ja weil to draww an elegant a sketch of its subject
sitter, to botter visualize the bro ath of the cl. t ; and
this should be kept in mind while se irchin : the caso.
While the picture of the patent or publication
that most nearly roseslos hat of the application will
of course most readily res ona to the structural pocit ::-
tions of the el tins, the attor of function or use must
not be verlo ked in the selection of a reference. Or-
din rily, the basic reference should be from the same
art ab the application; at any rate it should have the
some basic function. That is, a toa mixer may be
reference Pr . concrete mixer; a brick-cutting; machine
For a biscuit-cutting machine; for in euch instance the
afrinsito function of the two devices is the 8 10.
10-1-5.
Publications Available to Exprimer

There are B me publications kept in every division
ad onek assist int Ex miner should mseap sin what they
tra in his division and whether or not many of them is like-
1 to bey on the clac. assimer to Min. There is a
Scientific Library in the Office, with which the assistant
Examiner in the patent Office hould com int himself
sufficiently to know when it is likely to afford him
estist nes in his examination of m election. The
Library cont .ins co ies of for tent: to which the
ENVIAR UN DIVANOUNA AMERICANA
i'm at ne dice one these money med .
1 .1-0.
undering Soft Contas

or Extent Copy Sales Brush. No on Types ofher th ut Mose
with a printed
so the Chin of the Branch Whose ap prov ... Mares", if

Context of attento til :. twenty five anta each
Gestalten gets edhynes my should be
oxorsisot in their use. It is a disable to shine in the
Ji An Flo ors copies Of MOHER GUNNAR
other ci asses. This will avoid a quali te bpwhen the
. Maintenant in
A FILM.

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# 10-1-7. Classification of a haunted Intent

To find out who classification of a domestic patent
whose classification does not great on the copy at hand,
the Classici tion Division should be consulted.
10-1-8.
Trinta of Foreign Patents

lrints of foreign patents classified in arts in
other divisions en be had by at Ex minor if he thinks
the patents would be of frequent use in his own ela s.
Otherwise, he can borrow from the thedivision the
patent needed for a particular eme.

10-1-9.
Translation of Foreign latents

In foreign patents, us in domestic, the Examiner
should refer to the specific ition for every fe'uro in
the drawing he does not thoroughly understand. A trans1 ;-
for in the Scientific Library is available to assist the
Examiner with the specifications in my lon do with
which he is not familiar. Ty ed transl tions can be had
if necessary.

10-1-10.
patented Files

In the examin tion of an a lic tion it is sometimes
necessary to inspect Le application papers of some pre-
viously (rixtel ) tent. This is always true in the case of
a roissue ... lication.

Patented files may be obtained in the Record Room
by filling out slips (Form No. 126 or PO-124, according to
whether or not the files are to be taken tro the room) ,
found there, with tho necessary d ta and avin these
slips to the el rk in charge. The patonted files a c drawn
from the shelves and distributed, the slips being retained
by the clerk as a chir c. The patented file should be
promptly returned when the Exanino. has finished with it.

1 -1-11.
Filos of Abandoned avalid ations

Films of abandoned as Jic tions say be obtained in
tho sitio way.

10-1-12.
Search to be Noted

Tho search haivin . boon completed, the Examiner will
nike an endorsement in ink, on the left hand page of Cho
ogen filo wrispor, ab tin: the classes and sub-el is ies of
domestic and forel a Patients and the publication in which
Bericht fer I ferences has been ade, tomather with ho dao
of the search ind h; Ex miner's initi ila. In subsequent

<!-- PageBreak -->

sations, if further search is made, notation of the addi-
tional Mold errore honderdon file

Sent Instead of "Rules of Practice"

When wir in the ex min tion of a artis ti a !he
Kaminey des it advisable to send a copy of the Rules
of iretico to the au lieut i F ht. midiate, the small
pamphlet en itled "General Information Concerning " Latents"
should be sent instead unless there is some particular
reason for stadin the cop of the Rules.

10-1-15. Ex Ther List Nat Cast Shadow of Mahonb

Everything of . Html if we us. De avoided ..:
Also must everything which would est a shadow on the-
tent if rated, as for oxatt Je, a statement that "every
doubt has been resolved in favor of the client in
cr ating hin the claims allowed".

10-1-16.
Discourtesy of attorney

Rule 1.3 Business to be Conducted With
Decorum n' Courtesy. applicants and their
en FAIT. PODE
violation of this requirement vil by mb-
mitted to Ta Commissione: nt will 50
returned by his direct water. Complaints
n . inst Examiners and other employees must
bo at in con un'essions pon rato fro:1

.. . .

1\. .: 1.

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a carbon copy of the letter is also pride. Both
copies, together with the rough crift, if there be one,
und the file To put on the Salut ... Ex miner's dask,
who will comp tro she co y wit the rough draft, paying
particular attention to the date of th references. If
my corrections are to be ihde, he will note them in
le .d pencil and return the pors to the stonographer for
correction. when the correct ons have been , roperly nado,
or when there are no corrections required, the assistant
Examiner will initial 'ac origin il copy and place 'he
file with the two copies of no Jotter on the desk of the
prim my Examiner for his inspection mid for is signaturo
to the origin il co y. Carbon ce ios should not be signed
y the _s isstant or primary.
10-2-3.
Unsigned amendment

an unsigned mondment or ono he proporly signed by
i person having authority to rosecute the caso is not
ontered. This applies where the amendment is signed by
one only of two inventors.

10-2-4.
Unsigned amendment , Disposal of

When An unsigned monument or on ist, soporly gignod
mondriont is received, And More is not sufficient tiro
for the return of the ar for si arture before the
expiration of the ti e li wos oy l is within which to
the propor iction, the Examitor will antorso muc mond -
ment on the file writer and notify the a lic at of the
st .tus of the c .se.

The present ,rictice se aires the Examiner in
carrying out the provisions of Above . traigre;l. to give
«, licat a specifion time was 20 days, to Furnish
du lic .te miendoont properly si ned, or 'o ratify tho
amondmen' alroady filed.

Informal mendmen's which are to be rotur .od will
bo forwardod to the Executive Officer with _ memor andum
giving the name and address of the attorney, the Isto of
the last office metion in the case alder at tement as to
why the paser is to be returned. Who Executive Officer with
c incol the impression of the receiving ; at si no conduct
the correspondoneo ingigant to the return of the ; . pors.
oforo 'shin ; action as prescribed in tho procoding
(P. P 2, the Exeriner sh ali c all in 'he loc il re rosen-
itivo of the firm, if there be me, as se gy h.ve il-
thority so si n the mondent,.

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1 .- 2-5.
To love At Last ent

Whon : tele por ond cent in receiv i th to alue it
in the file, on neAndere . It when
: sabatoht docs no follow fa at the, .te at 1.
notified that power ratifie tion is ramired: . treviso,
the tele we will not be served sin atgt
ANA, KO WA ISCHEN. DE TO WORK,
1: 7 0 .. : 54; ) 13 C.D. 253) .

The Same Lost a La con latener if France
applies to an condiment sent by tole geh es 'e one went
by :1.11.
10-2-6.
Signed by attorney Not of Record

where ai anendment signed by an tternay whose
power is hot of record is filed, both e attorney and
wwwplic .t ao ao ified that the csendment o mnot bo
entored.

whon the Bx miner's letter is ad ach ch .factor
th t che : s .muitory ; oriod for csendment runs from the
d to of . previous .ction, . statement to th .b effect
should be ide At the end of the lottor na the date from
which the statutory period mas riven.
10-2-7.
amendment Si, no: by applic.a.t
t Hot by attorney of Record

If at mendment si ned by the applicant is received
in in application in which there is a duly appointed attor-
noy, ho amendment should be mntored and seted upon. At.
Lention should be e .lled to Rule 6.5 and . copy of the
letter should be mailed to the a Bient, avell s to
tho attorney.

10-2.5.
Hvor Of AL OR MIA_ FAIL

Where's over of attorney is given to a first And
in cantat of God in numbers, en tant should be
wirhed with the fire name; or if 1. fim mme is started
or wewillen, the nature of one of the mother of the
Mini shots sor bone th ke firt nos.
Where the power is given to Bever .] individu Ju
by n., the wrest testo constitute a firm When
til jen, monument af Rodi the name of
one of the individu de or with the cimi a ne is re arde4
poparis .i. 000.

the name of . nelley of When the bull. it
is not a tro, un sim card.

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an amendment in which the name of the Attorney or
Firm, stamped, ty, od or written is followed by the word
"per" and the initials or signature of a stranger to the
record is not properly signed.

# 10-2-9. assistant to attorney Signs Anendden , after attorney Dies

1
An amendment, signed by an assistant in the office
of the Attorney, the 1. stor having dicd, may, with the
ap. rov. 1 of Jo Com issicher, bo mitted, subject to
future ratification.

10-3.
actions Which Require the Personal
Attention of the Primary Examiner

The Primary Examiner, though responsible for all of
the setions and decisionais de in the conduet of the worl.
of his division, must, in view of the amount of that work,
delo ato to the experienced wad polisble assist A Ex miners
of his division ju hority to : sa on . ny of the questions
to be decided in the prosecution of 4 888. There re sono
questions, " wever, Which distin rules of ond & ro wire
the Primary Exminer personally to decide, No followijo.
actions fall in this e :sopory:

1\. Third ction en ny e so. (Joe thisi following

2\. action on . come sending 5 or are 2016. (300
third Poliowinesr fagh)

3\. Fin .1 Rojection.

4\. Withdr and of Find! Reactioa.

5\. Decision on Reissue 0.5l.

6\. Decision on s fid vit, undor Rulo 18.1.

7\. . Sealing; of Rulo 1. . ] Affidavit prior to inter-
feronce.
1

8\. Setting up in interference.

9\. Disposition of an arnohent in a caso in inter-
feronce looking to the formation of mother
interference involving tant apple tien.

10\. Decisions on Interference Lotions unger lele 29.8
to 25.5; IN, well mot honderd9.

11\. Rejection of . previously Lady di.

13\.

16\. Treatment, ' Sal; Vil die, die tim Mich.
obviously Pila to pos ly with Section 4:50 R.S.
595 0.0. 14! . Con Pollosin Hr pr!
ings ro admiten pified by. 300 Bo-
cond foll wing1)

<!-- PageBreak -->

viously faite to disclose it invention with tho el pis
LA mir EN GOD. . R.P. , OF WHEAT FRONTALE TOP
intention is directed to with a plication,

qquirement, the duration of such shortened period, if ses.
being detestaed b the Frisszy Examiner in accord. : 00
with the co .; Ionity of the case, the " vision of the
jecific tia necess en, al fine necessary for con un-
tinta aplicat. These actions, in 11 cases.
DE La of Mother parched Statutory w rin de det.
hud Rendthed to the Supervisory Examiners for
: 2V . NO, U.S. 145.

scontin. Malin .tr. Te Chef De Martin

le dr. win sion Pile. The letter should po l'ionally 85 40
that fio furnish stel drawings within the Line
stated will be Maken a tefficient basis for holding The
lie tion "bondoned. This letter of the Primary Ex : poor

now : mein ction. It Comal dring

Case. t . for Third
action at Five-Yer Casa

wat potes seos on the fire. se reh at tirrally

every Ementa it: prosecution.

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any c .se that is Doch sending: fivo yoars sh uld be
carofully studied by the Principal Examiner in every effort
made to terminate its prosecution. In order to accomplish
this result, the case is o be considered "special" by the
Examiner.

1 -4.
Dual Prosecution

10-4-1.

## Definition

Whore a case contains, in addition to the claims
which control its classification, othor cl ims which,
though not divisible from the con: rollin,: claims, aro
por se clasifi blo in Art in mo hor examining division,
as in the case of old combination claims ind ol ins to
an element or subcombination thorein, the Ex minor to
whom the case is :sai ned nay require the Exantner who
has the class to which he second . rons of ol 1: port ins
to make in action thereon which will be called by the
Examiner to whom the case is : signed flow :1 ! his action
on his group of cla ins.

This rictice is known as "Dual Prosecution" (D.1. ).
More thin one other division mity be involved.
10-4-2.
Purpose

Dual Prosecution is based on the proposition that
when plural, indivisible inventions are claimod, in many
instances oithor Less time is required for ex miin bion,
or the results are of better quality, when specialists on
cach cher .ctor of claimed invention treat the claims di-
rected to their specialty. A saving of the tot 1 tino
that is required to give a thorough examination of an
application is of pris wy import itee.

# 10-4-3. Jurisdiction an. Responsibilities of Division to Which Case is assigned

The a Hottin will be considered as regularly
Assigned to My Alvielen havia Le , everning elf a, and
will be entered on the official perlator of the division.
Jach : viajem will want oner J Jurisdiction of h: apli-
cation Tom ford WAR, Will receive mener men-
mambo, I wil til .Il ens including be notice of
:11:47 100 .

The sections Allen by the yard Ex minera in
Du Eurostention can be Kin not.
Where diver att ar craflittig views on ward. in of
Jo on ISH FORMA Che ERING, IL P
impossible to make Mese vine, it will Men benge-
essary for the Examiner to what We can tanto

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1 .************* TECHNICIEN ON

Which .... he WAS another
... Where my for. Chopontelimon ki:
own ci ....... , It may be necessary for him to Hearen other
divisjons, including ivisions having jurisdiction of
der alte dukecom. He is rinvily responsible for
Lin corr sel ferr ar i mo Bile ase.

10-4-4.
Jurisdiction me Responsi ilities of
Division to which Case in Forwarded

The Examiner to whom the case is formed,

Hereor bent explicat done with the
wie win TONA Examiner Kvin thof
.: , at his irres retive of father the cor unie tion
ho Letto er atie of allow no.

divisi :...

Ting of initiation,
HA NON FALL OF MAN

ivi: .....
1.4 -1.
The Exception
Division to Which Forwarded
Com under Dual Prosecution Have . 1; cela
Stone" in the division which com rie. The order

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10-4-7. Sequence of Examination Between Divisions

Ordinarily, the Easther to whom the case is Pop-
w.rded will ac sch lis claims, ty e bis action, m. ro-
turn the file with the tyred copies of the action to the
Examiner having general jurisdiction before any of her
seich is nide.

other sequences .f examination and letter writing
many be worked out, botwoon the Exauthors to fit a particular
C:30.

If an a, reement c mmnot be reached, the Examiner hav-
in . - jurisdiction of the e a must mike the first search and,
withou hecess arily writing a letter, send 'he references
to the othor Ax miner who will e ke his se reh and vri'o
his action.

Tho Examiner h ving jurisdiction of the case nd
boing primarily responsible det minos the so ,nonce of
ex mination mongst the various other : ivisions to insure
a proper disposal of the cuse.

10-4-8.
Requirement of Division

As a menor I rulo division is not required when
a case is under Jul Prosecution. However, if division
does devejo; the Examinor mavias eneral jurisdiction.
nd.os the requirement for ivision. On the other and,
when allins forwarded to another Examiner under Dual.
Prosecution are found to ne divisible between themselves,
the latter dx atiner my ro pire division between his
Several cl .imu.

10-4-9.
when case Is Transferred

Whon .a] claims boine icted on by bis tivist n
having anord harisdiction are emcalled the case should
be te na? ered to the other division, even though tho cise
may be ready for allowme at That time. This is an ex-
now'ion to the artetico onils est in section 15-2-10.

10-4-10.
When Dund Prosecution is Not Proper

In many jast mees : sin Jo Examiner om ive a
complete extraction of Is on quality on all el
( nella, Che west kole da mother division)
int in los ot .t ex : fiaer t the ta a would be e hanned by
DI Potencion. Duel Frosten in is not obli by and
sh ult be son det oniy where it will save to' \ ez aniner
they will end In travel ality of action due to
sagoializo4 hnow! are. Bxes i ry sito :tions Are as follows:
(1) Where claims re directed to the site ch if ietor
of invention bu differ in secpe aty, Dual Prosecution is
HOVOR ;POPUP.

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in MON dd .. . FRMEHRNON WO-
facture, NO MAILED VARIATION ANCONA
CALMANATURALMENTE
JIMMY DE

(*) Where 're el this be related ... . combination
Thin withon modely by the cannetorates of subcom-
bin ie m. such subordination per se, the examination
can whyDe co Themtouteby the Examiner
: vin hristi ation of the abb-coasin .tion.

10-4-11.
Disputes

Disputer oftheen Ex raiders as to classific tion of
cli is, . noage of okch'titien, propriety of int'i itine
Dual Prosecution, nethe like should be submitted to
the way Extintor of Classification for determination.
10-4-12.
Supervision by Juin owy

With a view to reluein . Dual Prosecution ctions to
only those site tiens where i is really natal, the
Tre Ux Mal er fully supervi ... Lerininis-
tration of Jul Prosecution petice in their respective
division: 1, ME gust of china to inathens
Where said on the Line will be saved, or anality of
action i por i, due to a sind hold knowledge of another
Einer.

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also, the division h ving pour A jurisdiction of
the application, when dating; nd . ilin the composito
action in one envelope, will give all the parts of the com-
posito action its own division the room numbers and the Same
per umbr. It owa action will have only the apar nun-
ber, while the actions by the other ifvisions will ! ivo
tie ..... mber ries & letter. Thus win that the t-
tion And three sections nie was to be selfmed a pep mubor
%, the number of at the back of the File would be Followed
by "," And "b", 1.o .-- "7, a, b. " The division milling the
co. posite action will also try lespermite For
number plus lottor to the tribe right hand corner of tho
actions by the other divisions i.e. --- "q" and "7b".
The a icht should Be Only one Ten og 10 :
· compraste cellen, which should be ffected to Mudivision
! ving juri idiation. It is perisai lo ha iglpful if apali-
e nt divilina his response into seeti ms correspondiar to
the composito action.

When :ny Examiner to whom we ise has been Porw :pod
t hos an action which ho considors is in condition to be
ndo fin 1, he shall indie to this fact by at tin, "An
issue has been te ched is to clins 2, 5, 4, etc.," but
ho oh Il not uso the word "fin (" in tagjecti at. Who
Examiner complotin; tho tetion when :ho e so is in condi-
tion for fin il rejection shill onumer. to All he claims
in the case, specifying there divan mal thus. rejected
und shall st. to "This action is FIN. L. "

10-4-14.
Details of landline

The cloric 1 procedure for ballin Dual Prosecu-
sion is fully tro ited in the Clerk's Mom.l.

When : case is sont out for Dy 1 fra. 1on 1
print of the drawing is or tered for the second division.
Each division clark weeps . c. rd recording the date on
the @ 30. The Examiner in och division pats credit for
exclamation he mio. when a case is Mailly is one of
the Ad Mat in the med .

Whon & so that s : { D .. prosecution in Wood
for time, noslic Mon of As fee will . mer even
by Muy Avled m . viI. Juris Mellon 0 0kg
other division I HVISin MANY del FORO-
cuitjon. The Bastar 8 10: 3 ch "o' her" 411 : # 11!
KOMMANDO ANNAMARIA 110
of WWW.
MAMANVENNENEother divi-
son of the sun ment is, Mon ade of the 0,,
withdrw ] from Long, . total, 3. Faites, etc. If :1.
str iriala receives no Ach wielen Linda 51%

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in notice of Expunali,
Jool :1 0:50s

definition mi_ist

.vijftien in the Extent office te elssi-
My riansap, ad remup for
undsin wareur onor of filing, those in the samo
: : : invention Dela examined nd dispor, 30 1
s ramcable, in the order in which the respective appli-
C. DiSAN .Ve been completed.

following dass have reference over .Il other

() .letos Wherein the Ly ations are
bones of souliar i sort les to on bench
searchlie Service , an ne t' the son

Alberto mor; but in his een it
. LADY Of ERROR Of + + det-
from be vou rosenthal Ber to Har bor is sonor

11.1

.11

... ta must be obliged for the

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intorforenco, if such should result, may be
declarod as rostly as ogbiblo .

Whon : proposed fundament to map die-
tion involved in interference contains claims
copied from : siteas which of it is the Examiner doos
not beliove to be flag ble in said application,
he obtaina jurist . Lo, enters the foundant,
acta when Feel that once in aute the Limit
for respondo. The case is then speci :1 until this
question is finally adjudicated. an exception to
this procedure is ade where tho ap lication it
the time of forming the interioronce was closed to
further ex L'arte prosecution and the disclosure
of the a diction will, prima facie, not support
the patent elios copiod. a further excoption is
nade where the prosecution of tho ap lication is
closed before the irimary Examinor and ho copiod
patent elites rel te to an invention distinct
from that claimed in the application; Ex Porto
Shohan 1941 C.D. 1, 522 0.4. 501.

(f) any case this h's scon pending five years should
be carefully studied by che rincipal Examinor and
every effort made co torin ito i's prosecution. In
order to Accon lish his result, 'he caso is to be
considered "special" by the Ex miner.

(c) One of the best ways to ox odite our work is to
take such action s will conclude the prosecution
of an ap lic tien . a Basedily as possible, for once
the prosecution i .. closed, thit case is "wator over
the dal."

It has been sho bhiform prietico of this office
for years to allow any lication forthwith when it
in known to be in condition for issue. this is rood
business, mi alatt. be followed in every ip lication
Where, IT I Ne THING Which Of COURSE alu be
completo as to the . ficant to re tions for allowance,
or from the examin ers knowi dre of the case, he
bis retched the conclusion that She e ise should be
either allowsfor finally wej che. In other words,
if m Bamain ar had a caon which he is satisfied is
in condition for il exameo ,or which he is satisfied
will have to be finally raj etel, he should give
such ction forthwith laste ad of md. in : the cise
wilt, its turn.

This will not only expedite business but will
avoid the necessity, at a later date, of prince-
vi win the case or h vin . it studied do novo by ,
HOW stab at fa fo vom tt the . bist nt who
Popsaly hoi the case ts fort the office.

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This practice when he voll ved in
ovary e Be where it to ossible.
(h) Where to Pira action by the Examiner
thon na sic ion is listyod to . se mipomont
for division, che e lie tia will i've ftor
be given reference in tho o des of camii ..
Lion ever other applications revistaly neted
upon thatil it is rocelval ate eti a moon
MI FINAL, PRINCIPALMENTE
Front Per DO the Same requirement
Por division.

10-5-2.
Petition to ile Special

sp lie itions will not be aiv need for examination
excepting upon water of the Commissioner either to expedite
the business of the office or upon : voritiod showing
which in the minion of the vor dasimer will justify
so advancing: it.

a petition to make special in original application
or any other application requiring a south is sent to
bio examining civiolon to which the e se is assigned for
report of aproxiabe date when We use Will be reached
for action in it retter wwas. The potition is not.
entered in the file; but the Ex. nor should no e on his
calendar & the day worked the serial number of the
te lication wird Med to my mind Re 000
Will not me V cloud the WAR Ak The report date
Forms . Creto in the Commissiongg's decisi a out the poti-
tion. The Examiner forwards the petition Another with his
ro ort tettewow Ba sar br margarina to the Somais-
sioner or the casi is a commissioner sho doci is Me :oti-
tions to ein a noi .1.

** ** ANWEND De MARCHI
js: "ilod, mob @titi a .int . no De autor :: in De
je Li a :1.

will bo pferd I. M. I MIEI
:im !: gre timhor in: nly
AMANHATOTALMENTE
Nomadin Me THAT THE LASTPer
I'm AND UNDER A TREEPROTI
immateri. br ....... V. d. h. ENTRELA MIA

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determine from inspection that she g lie tion is allow-
able in m.tters of subst mice or that he claims are othor-
wise such As would by ro son of the previous ;rosocution
be clearly subject, to immediato final ction he should
report tht Pct.

all other ; otitions with r pasta to : ke m pli-
cation asoci 1 : oula og fort rudt with the file to tho
Law Examiner accom, nied by are ort indicating when the
o se will be reached for action i .. its regul ir courso.

( The petition to mike apreci il ir, and when, granted
becomes a sort of the file poeord. tarwise it is plicod
in the niacellaneous correspondance file. )

10-5-3. romat attention to "Triater Waiting" Cases

all "Triater Waiting" nel'e bient chut roceivo
inmediato attention. Ho auch aplic tion should be kept
on the lesk for more than three office nos, except in
cases where the rule obviously en not be olied.

the pointin wat delivery of a atire ia me my
bo ret rdod by dol y in . sin le inst inco.
11-5-4.
Exprimer Conders His Resignation.

Whenever * ** **** twee his wayof tion, the
Prinei; I Should see that Assist at sponda bis po-
mining: tie a for a ass . la ht'a 'ing up bio cid
wort Lic tel c :we were with involved recevrais and not-
ting: ib many of his sades 0 803 :3 0 : 1. J . ready for
fini Es. oaitich.

10-6.
Justand one Action

Une sa ending of etiam be the office for .
" som ble time," unter Rule 14.3 may be fr abod by
the Ex onnor; out any further webpension requires the
roval of the Commissioner. In no instance should such
extension go beyond the statutory period dating from the
last Offico netion. If so, the case would become abandoned.
Jeo Ex F. rto Horaog ot at., 1905 C.D. 216,116 O.G. 2009.

It is to be noted that suspensions undor this Rule
Bro i'mted with respect to Im; ondin: office actions, -not
actions by applicants, That is, if the case in awaiting
action by applicant ho has the statutory or not shortoned
portod within which to respond. While the shortenod period
may bo ostendod within the limits of the statutory oriod,
no bus; chaion can epetite to extend the stubery period.

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Suspension under Rule 14.3 which is at the in-
stance of the applicant, is to be distinguished from
suspensions originating with the examiner, as, where
an applicant has two applications whose clales are
directed to overla ping subject matter and one of them
becomes i valved in an interference, action on the other
application is, under the MeCormick (1904 C.D. 575)
practice, sometimes suspended pending the termination
of the interference. No suspension, however, is nec-
essary where the subject matter claimed in the said
"other" application is patentably distinct from the
disclosure of the opposing party to the interference.

# 10-6-1. 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. (Sce ex parte
Jones, 1924 C.D. 59; 327 O.G. 681) .

Where one of several applications of the same
inventor or assignee which contain overla ping claims
gets into an interference it was formerly the practice
to suspend action by the Office on the other applica-
tions. No:, 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 not only the counts
of the interference, but also the disclosures of all the
adverse rarties and by rejections forcing the drawing of
proper lines of division. In some instances, suspension
of action by the Office can not be avoided.

## 10-6-2. Actions following Correspondence Under Rile 23-2

Whore the junior party, as now required by Rule
23-2, states under oath a date of an act which if proven
would establish thit he had conceived the claimed inven-
tion prior to the filin ; date of the senior applicant,
the law examiner thon approves the examiner's proposal to
suggest clairs.

Whore the junior party fails thus to overcome the
senior party's filin : date, the proposed interference is
disapproved by the law examiner, in which ovont, the jun-
ior applicant is advised by the primary examiner, that
action on his case is suspended for a period not exceed-
ing six months, while the application of the senior party,
if in allowable condition, is sent to issuo.

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10-7.

## Atomic Energy Act

Not all new and useful inventions are patentable
under the law. The invention must be within the "statu-
tory classes". See 10-8-2. In the case of plant patents,
see 18-1.

A further limitation on what can be patented is
imposed by the Atomic Energy Act, Public Law 585, 590 O.G.
195:

(1) No patent shall hereafter be granted for any
invention or discovery which is useful solely in the pro-
duction of fissionable material or in the utilization of
fissionable material or atomic energy for a military
weapon. Any patent granted for any such invention or
discovery is hereby revoked, and just compensation shall
be made therefor.

(2) No patent hereafter granted shall confer any
rights with respect to any invention or discovery to the
extent that such invention or discovery is used in the
production of fissionable material or in the utilization
of fissionable material or atomic energy for a military
weapon. Any rights conferred by any patent heretofore
granted for any invention or discovery are hereby re-
voked to the extent that such invention or discovery is
so used, and just compensation shall be made therefor.
Sec. 11, (a) .

Sec. 5 (a) (1) defines "fissionable material" as
follows:

"As used in tlus act, cho term "fissionmable na-
teriol' means plutonium, uranium enriched in the iso-
tope 235, any other material which the Commission de-
termines to be capable of releasing substantial quan-
tities of energy through nuclear chain reaction of the
material, or any material artificially enriched by any
of the foregoing; but does not include source materials,
as defined in Section 5 (b) (1)."

See: Notice, September 9, 1946 ATOMIC ENERGY
ACT OF 1946.

Rejection of Application under Public Law 585.

Whenever an application is considered by the
Patent Office Atomic Energy Committee to be barred from
issuance as a patent by the Atomic Energy Act, Public
Law 585, 79th Congress, Jurisdiction of such applica-
tion will be vested in a Supervisory Examiner member

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of said commaittoo for rejection under the Act. Jan. 31.
1947. (Order 5199).

The actual rejection is prepared and mailod in
the Supervisory Examiner's Office. Such cases are
listed by the Examiner in the Examinin : division, and
the list, sent to the Commissioner's Office. Periodi -
cally, the applications on the list are turned over to
the intent, Office Atomic Energy Committee, for consid-
eration.

Thus an inventer in this particular field is
precluded from obtaining a patent, even though he has
something "new", "useful" and otherwise patentable.

10-8.
Rejection of Claims

Section 4886 of the Revised Statutes (3-2)

Rule 14.6. Rejection of Claims. If
the invention is not considered patentable,
or not considered patentable as claimed, the
claims, or any of the : are rejected, the re-
fusal of a patent or the refusal in the form
requested being; expressed by the rejection of
claims.

Section 4886 of the Revised Statutes enumerates
certain conditions to be fulfilled before the inventer
nay secure a patent. A shortcoming in respect to any
one of them will result in a rejection.

10-8-1.
Contrasted With Objection

Rule 14.6 indicates that the refusal to grant
claims is called a "rejection" and this term must be
used in the Exanimer's letter. if the form of a claim
is improper and not its substance, an "objection" is
made. The practical difference between a rejection and
an objection is that a rejection, being; a matter of the
merits may be taken to the Board of Appeals for review
while an objection, if rorsisted in, may be taken to
the Commissioner by way of petition.

Example of objection: A series of dependent.
cinins not in jumedia te consecutive order. :- 9-1 .

The requirements of Section 4886 that the claimed
matt r be "new", useful", not in "puldie use for more
than a year before the date of filing," etc., may be
likened to a series of obstacles in a steeplechase.

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The applicant must at least hurdle all of these prior
to obtaining his patent.

10-8-2.
Statutory Classes

The categories of "Art, machine, manufacture,
composition of matter" in Section 4886 are referred
to as the "Statutory Classes" of invention. See 3-4
to 3-10. Judicial decisions have determined the limits
of these classes.

10-8-2.1. For example, a mere arrangement of printed
matter, though seemingly a "manufacture", is rejected
as not being within the statutory classes.

10-8-2.2. Similarly, a thing occurring; in nature,
which is substantially unaltered, is not a "manu-
facture". A shrimp with the head and di postive tract
removed is an example.

10-8-2.3. Though seemingly within the category of an
"art" or method, the law is settled that a method of
doing business can be rejected as not being within the
statutory classes.

10-8-2.4. A scientific principle, divorced from any
tangible structure, such as the effect of ether when
used in operations, can be rejected as not within the
statutory classes.

10-8-3.
Rejections 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 not "new" and
patentable. The reference relied upon is identified
and the claim is accordingly rejected either because
it is fully met therein or unpatentable thereover, if
there is a difference between the empirements of the
claim and the showing or this prior art.

In the event that there is m invention involved
in combining sevoral elements of two or more prior
structures, the rejection is made on the combination
of the several references. See 10-9-8.

10-2-4.
Rejections not based on Frior Art

Although they constitute a small percentage of
all rejections made, mention must be made of a number
of rejections which may be ap ropriate despite the fact

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that no pertinent prior art is discovered in the
search. The sxminer's function is not to scrutinize
ench claim with the idea of rejecting it on some far -
fetched technical ground. Nevertheless, claims which
are vagne, functional, incomplete or unduly multi-
plied should be recognized as such and rejected. The
rejectability of the claim may be garont from tho
claim itself, may arise from its relation to other
claims, or to the disclosure, or may be based upon
a prior act of the inventor .

Dividing into these four categories :

Claim by itgolf

Sub Section

not in statutory class

2

Functional

5

Vague and indefinite

6

Incomplete

7

irolix

8

Awgremitive

9

Relation to other claims

Dependent directly on more than one

11

Unpatontable over other claims

12

Multiplicity

13

Lisjoinder (before election)

14

Relation to disclosure

Angecurato

15

Now matter

16

Lacking: utility

17

Obvious method of Making or Using

18

Here function of machine

19

irior act of inventor

Statutory our

20

abandonacht

21

ditsjoindor (after clection)

22

Bari ier vasi ned application

23

laborfaroase er inblic nac

24.

broccoli##:

24,

Estopper

29

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10-8-5.

Functional

Claras which ass rejected as functional are so
broad in seere tric it is coumidores to be amnist
pun : ic policy t allow them, even though they do not
rend upon any prior art. \ so-called "single means"
claim, such as:

"in a Device of the class described,
neans for tengaferries. clothes-carrying.
rods from one position and depositing
them on a suitable support."

covers overy po sible m: ms for accomplishing the
desired rosult.

Zx parte Bullock, 19 7 9 ... 93; 127 v.v. 1580.
As is an gestad in meidoriak v. Lehgason, 1924 v. D.
407; 320 o. w. 227, a clain which defines a method
only by its result may be properly rejected as func-
tional. Holland v. ferkins Glue. 1928 C.D. 266; 372
O.G. 517, a'riies the dcetrine of functionality to
product claims and holds then to be invalid if tho
product is defined only by its desirable properties.
This rejection is not based on the prior art and is
to be distinguished from a rejection as differing from
the notor art only a functional statement. G. E. v.
Wabash, 1938 C.D. 813; 401 0.0. 469. Obviously this
Inst-mentioned rejection requires that the Examiner
find in the prior art everything called for by the
claim with the exception of a functional limitation.
The rejection as functioned je ecru times confused with
a rejection of a claim ne being the sere function of
the machine. Bee 10-8-10,

1.0-8-6.
indefinito, Terrorer Markush

The rejection of a claim os indefinite would
appear to present no difficulties. En recacion, how-
over, a great dent of rent Lamm fred to explain
just what is eron ; with Wie is, thion writing the
Examiner'a lottor. Attbrach cooperation with the
attornoy is to be comnondet, miete time should not
be spent trying to flute out what the attorney was
trying to say in the claim. Somot ines, a rejection
as indefinito ilus th str stunt that line 4 1: mean-
inglese de sufficient. Meldes of a negative limita-
tion, much as a "getal, sxeopting; Bickol", may make
n clola indefinite. Bqpressions such as: "anhydrous",
"colorless" and "non-pois nous" have boon permitted

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because they are definite and by far the least, cum-
bersome way to express the limitation.

Alternative expression such as "brake or lock -
ing device" may make a claim indefinite ir tho lim-
itation covers two different elements. If two equiv-
alent parta are referred to such as "rods or wires".
the alternative expression may be considorod proper.
Markush type claims (Ex parte Markush, 1925 C.D.
126; 340 0.0. 839), although alternative in form,
may be allowed if they come within the special cir-
cumstances upon which the decision was based; namely,
such a paucity of language that a term, commensurate
with the chemical field which applicant is entitled
to cover, does not exist. If this is not the case,
the claim is rejectod as containing an improper
Markush grouping.

Still another way in which a claim can be
indefinite is where a non-sequitur occurs. For
example, a claim is inferential and therefore in-
definite when it recites "said lever" and there was
no carlier reference in the claim to lever. An
indirect limitation also affords a ground of re-
jection as indefinite. If "a lever" is set forth
and, later in the claim, "said non-ferrous lever"
1s recited,, the claim is rejected an indefinite.

10-8-7.
Incomplete

A claim can be rejected as incomplete. For
example, a claim to a bicycle "consistius" of a
frame and a front wheel is obviously faulty. It
should be kept in mind, however, that the term
"comprising" in synonymous with "including;" and
need not be followed by a recital of all the parto
of the device.

10-8-8.

## Prolix

Outrageously Ion ;; claims can be rejected
as protix. Ax parte lagan 1911 C.D. 10; 162 0.6.
538 oxpress ino thought that very long, detailed
claims set forth so many elements that invention
cannot possibly reside in the combination recited.

10-8.0.
Accreration

Rejectiona on the ground of aggregation
should be based upon a lack of cooperation between
the elements of the claim. No prior art should bo

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relied upon in this rejection. Many decisions and some
legal writers extend the torm to include old and ex-
hausted combination (10-8-10). The last-mentioned ro-
jections, however, involve the state of the art, and
cooperation is present. Confusion as to what is mount
can be avoided by treating: all claims which include
more than one clement as combinations (patentable or
unpatentable) if there is aetin] cooperation between
the elements, and as aggregations if there is no co-
operation.

Claim

Co-OF

Frior Art

Ground of Rejection

Section

A B

TTO

I more

wwwvocation

10-8-9

A B

YE3

B '٣

Ho invention to combine A and B

10-8-3

A B'

Sa me as in

A B

Old combination, if B' has separato stats

10-8-10

Example of aggrecation: A washing machine combined
with a dial tele phone.

Example of old combination: an improved carburetes
clained in combination with a gasoline engine.

A cinin is not necessarily aggregative because the
various elements do not function simultaneously. A typo-
writer, for example, is a good combination.

10-8-10.
Old Combination

The rejection on the round of old continut ion
(synonymous with "exhausted combination") requires the
citation of a referenco, but is treated horo because of
its relation to acremation. Tho reference in cited, not
to anticipato the claim, as In 10-8-3 but to maticipnte
the broad combination set forth in the claim. Moreover,
in the reference, the cooperation between the olenents
must be the sane os it is in the claim. Finally, the
specific olement, or mb-combination which is claimed
must have separato status in the art.

Example: An improved (specifically rocited)
carburetor claimed in combination with a gasoline oncino.
A reference io cited which shows a carburoter combinod
with a gasoline ongdne. This shows the broad combina-
tion to bo old. Doth in the ref ronce and in the claimod

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combination, the cooperation between the carbureter
and engine is the same. The claimed combination is
an improvement over the prior art only because of the
improved carbureter. The carbureter has soparate
status, since an entire subclass is devoted to car-
bureters, claimed as such.

10-8-11. Directly dependent on more than one other Claim
1

In the second category of rejections not based
on the prior art where the relation of the claim to
other claims is the basis for the rejection, is in-
cluded the case of a claim directly dependent on more
than one other claim.

Casos prepared abroad sometimes contain claims
of this type :

Claim 6, Machine as in claims 1-5, in which,
etc.

10-2-12.
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
lorical as well as convenient. However, court de-
cisions have confirmed applicant's right to restate
(i.e. by rlura! claiming) his invention in a reason-
able number of ways. Indeed, a mere difference in
scope between claims has been held to be enough.

Nevertheless, when two claims are duplic ites,
or else are to close in content that they both cover
the same thing, despite a slight difference in word-
ing, it in proper to reject claim 2, for example,
ns unratentablo over allowed claim 1.

'This rejection may also be given where appli-
cant has similar claims in each of two different ap-
plications. It may then be expressed as a rejection
to avoid possible double patenting. See Sec. 9. It
is di carly improper to grant more than one patent to
an applicant for a single invention, even though the
severai applications were to issue on the same day.
To do so would result in double jatenting. Two
patents i: suing; on different dates would extend the
monopoly for more than the statutory torm of seven-
teen years. The rejection is also made in the case

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of applications, filed by different inventors but owned
by the same assignce.

In making the rejection, the other application
(or ratent, if it has matured into one) must be iden-
tified and the specific claim referred to therein. The
fact that the subject matter now claimed was disclosed
in the other case does not, by itself, justify a re-
jection. See 9-9.

10-8-13.
Multiplicity

An unreasonable number of claims; that is, un-
reasonable in view of the complexity of applicant's
invention and the state of the art, afford a basis for
a rejection on the ground of multiplicity. The Exam-
iner may, in his letter, indicate the number of claims
which, in his opinion, would be adequate. Doe Rulo
10.4.

10-8-14.
Misjoinder

When division is required, it is advisable to
reject all the claims on the ground of misjoinder. This
is consistent with the philosophy of Steinmetz v. Allen,
1904 C.D. 703, 109 O.G. 549, which first held u require-
ment for division to be an appealable matter. Compare
10-8-22.

10-8-15,
inaccurate

The third category of rejections not based on
the prior art is based upon the relation of the re-
jected claim to the disclosure. The clearest case is
where the claim does not even read on applicant's own
disclosure in which event a rejection as inaccurato or
unwarranted is made. Where the individual members of a
Markush group are of broad scope, each such member should
ordinarily be supported by a disclosure of at least one
specific example. Each member of the Markush group should
be regarded as if it constituted the ontire claim and re-
quires the same support as would such claim. It must be
kept in mind that an original claim is part of the dis-
closure and, in the cane of something very simple, might
adequately set forth subject matter which is completely ab-
sent from the specification. In such a caso, tho rojection
is not given. Applicant is required to add the subject
matter to the specification. If subject matter capable
of illustration is claimed and it is not shown in the draw-
ing, applicant is required to add it to the drawing.

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10-8-16.
Hew Matter

In amended cases, subject matter not disclosed
in the original application is sometimes added and a
clnim directed thereto. Such a claim in re jocted on
the ground that it is drawn to new matter. Now matter
includes not only the addition of whololy unsupported
subject matter, but also, adding: specific porcentajes
or compounds after a broader original disclosure, or
even the omission of a step from a method. Doubts
as to new matter are resolved against applicant.

10-8-17.
Ho Utility

A rejection on the ground of lack of utility
includes the more specific grounds of inoperativo-
ness, involving; perpetuai motion, frivolous, fraud-
ulent and neainat public policy.
In connection with
the Inst-named, fre 10-8-4.

10-8-18.
Obvious Method

An applicant may invent a new and useful
article of manufacture. Once the article is thought
of, anyone skilled in the art would at once be aware
of a method of making it. If applicant asserts both
article and method ciaims, the article claims are
allowed but the method claims are rejected as being
drawn to the obvious mo thed of making the article.
Similarly, method claims to the obvious method of
using a new device may be rejected.

10-8-10.
Mero Function

Judicial decisions on mere function of the
machine, like these on aggregation, cannot be fitted
into a single pattern. There is logie, as well as
precedent, in Finitin :: such rejections to the follow-
in: cases: pirat, method claims only should be re-
jected. Compare to-8-5. Second, applicant's dis-
closed machine is emsidored. Third, the method must
be such that it cannot be carried out by hand, nor
by a michine which differs mator lat ly from appli-
sant's. The rejection, which is rarely availed of .
appears to be based upon the theory that, in such
cases, claims to the machine alone suffice. of
course, if avplient's arching is not new, the method
claim: are more revity handled by rejecting them as
being non itintable in view of the ordinary operation
of the prior nachine.

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10-8-20.
Statutory Bar

The fourth category of rejections not based on
the prior art finds a basis in some prior act of appli-
cant, as a result of which the claim is denied him.

Section 4887 of the Revised Statutes deprives
an inventor of the right to obtain a patent if, for ox-
ample, he has "patented or caused to bepatented" the
same invention in a foreign country on an application
filed more than twelve months prior to his United States
filing date. If such a foreign patent is discovered by
the Examiner, the rejection is made on the ground of a
statutory bar. An applicant who permits his invention
to go into public use in the United States more than
twelve months before his filing date is similarly re-
Jected.

10-2-21.

## Abandonment

An applicant who expressly abandons his inven-
tion (See 10-12) and subsequently asserts claims thereto
may be rejected on the ground of abandonment or dedica-
tion.

10-2-22.
Non-Elected Group

After a requirement for division has boon made
and complied with, claims to the non-elected group are
rejected on the ground of misjoinder. Claims to non-
elected species are rejected is not readable on the
glected anecies. Just when and in what manner appli-
cant mado the election should be point o out. Compare
10-8-14.

10-8-23.
Assigned Application

Assignment of an application conveys title, not
only to the subject matter originally claimed, but to
any patentable subject matter in the case. As a con-
sequence, if there are two applications, one assigned
and one unassigned, any claim in the lotter which reads
upon the disclosure of the assigned application is re-
jected for that reason. The equities involved aro brought
out in Ez parte Maclaughlin 1891 C. D. 67; 55 0.G. 863 and
citation of this decision in the Office letter is advis-
able. Sec 5-9.

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10-8-24.

## Interference

Following an interference, the losing party
is informed that the claims corresponding; to the
counts stand finally rejected in view of the adverse
termination of the interference, the latter beim:
identified by its number. Claims which nre consid-
ered unpatentable over the issue of the interference
are rejected for that reason. The outcome of public
use proceedings may also be the basis of a rejection.
If there has been a disclaimer, a concession of prior-
ity or an abandonment of the contost, no rejection is
necessary. These acts are construed as a direction
to cancel the claims involved. Rule 28.2.

10-8-25.

## Estoppel

The losing party to an interferonce may have
claims in his caso which could have been added to the
interference by appropriate motion but which were not.
This failure to act results in a rejection of such
claims on the ground of estoppel. This is perhaps the
simplest example of an estoppel, but the principle
involved underlies all of the numerous situations in
which the rejection is made: that is, an applicant
is precluded or "estopped" from urging tho rejected
claims because of some prior action he took or failed
to take. The rejections discussed in Sections 10-8-20,
10-8-21, and 10-8-23 are all based on ostoppel but,
in view of the application of the term "estoppel" to
other branches of the law, and in equity jurisprud-
ence, the more specific reasons for the rejections
should be civon in those casen.

10-8-26.
Defective Reisane Oath

A defective rejame oath affords n ground for
rejecting; all the claims in the reissue application.
10-8-41.
Statement of Rejection

Section 10-0 discusses the general content and
arrangement of the Examiner's letter. In rojocting;
claims on any of the technical grounds treated above,
use of the underlined words, such an indefinite, in-
accurate, etc. ives applicant at once an indication
of the Examiner 's position, and a brief pointing out
of where the indefiniteness or inaccuracy occurs
enablos him to fu ly understand the Examiner's poni.
tion. Numerous citations of decisions are not re-
quired, and, should an"usually extensive philosophical

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discussion be required to explain a "technical" rejection,
it is doubtful that such rejection is appropriate.

If a change in the claim, which can be briefly
explained to applicant, would obviate the rejection,
it is best to suggest the change. "Blanket rojections"
such as those in which a large number of claims are
groupod together, rejected on the sase grounds, and a
very sketoly explanation given create an impression
of alipshod work on the part of the Examiner. In the
event that the statod grounds do not apply equally well
to each of the claims in the group, such rejections
should not be nade.

10-8-42.
Rejection of Previously Allowed Claim

A claim noted as allowable shall thereafter be
rejected only after the proposed rejection his boon
submitted to the Primary Examiner or, in his absence,
to the Assistant Chief, for consideration of ull the
facts and approval of the proposed action.

Great care should be exercised i :. authorizing
such a rejection. (order 3157) .

### 10-8-43. Rejection after Allowance of Application

If a reference is found for an allowod claim in
an application that is in issue, or for a claim allowed
by a higher tribunal, the Primary Examiner in a letter
addressed to the Commissioner requests, if the case is
in issue, that the application be withdrawn from issue
for the purpose of applying the new reference. This
letter should cite the reference, and, if need be,
briefly state its application. Upon a: proval of this
request by the Commissioner, the letter is taken to
the Issue and Gazette Branch and the allowed apt lica-
tion is stamped "Withdrawn" over the allowance signa-
ture of the Primary Examiner. It is then returned to
the division from which it came; tho clork enters the
withdrawal from issue on her register, and the appli-
cation is thus restored to its former status as a pend-
ing application awaiting action of the Examiner. The
Examiner at once writes a letter in the case citing
the new reference or references against the claim or
claims bolleved to bo met thereby and rejecting such
claims.

If the Examiner's prop sed action is not ap-
proved, the letter requesting jurisdiction should not
be placed in the file.

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For rejection of claims in un allowed onse
which has failed to make the date of a senior appli-
cation in correspondence under Rule 23.2, see Bcc. 13
10-8-44.
Rejection of Cluins
Copied from patent

Where copied jatont claims are, in the opinion
of the Examiner, unpatentable to the applicant on any
ground not also applicable to the patenteo, ou, in-
sufficient disclosure or a reference whose date is
junior to that of the patente, the rejection of the
claims on such ground should be made by the Examiner
without referring the case to the Commissioner. But
where the ground of rejection is oqually applicable
to the patent, permission to make such rejection must
be obtained from the Commissioner.

10-8-45.
Final Rejection

Rule 15.3. Final rejection or action.
On the first or any subsequent re-examination
or reer:s deration, the rejection or other
action may be made final, whereupon appli-
cont's response is limited to appeal in the
onse of rejection of any claim (lule 32.1),
or to amendment au specified in Rule 16.2.
Petition may be taken to the Commissioner
in the case of objections or requirements
not involved in the rejection of my clan
(Rule ) .. ]).

1\. muihin ;: such final rejection, the
kxantser shall repeat or stato all grounds
of rejection then considered applicable to
the clairs in the case, clearly stating the
reasons therefor .

Before Stant rejection is in order a clear is-
que should be aveloped between Examiner and applicant.
To bring; the Teaogation to as spoedy conclusion as
possible and at the same time to deal justly by both
the applicaint rod the public, the invention no dis-
closed and einised arald be thoroughly searched in
the First actich and tie: references fuily uppliod;
and in response to talo oction the a plicant should
mmend with o flow to avoiding; the references in a
patentable "i" while still conservim; his righta to
as brood protection as the state of the prior art ad-
mits. Switching from one subject matter to another

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in the claims presented by applicant in successive amend-
ments or from one set of references to another by the Ex-
aminer in rejecting in successive actions cinins of sub-
stantially the same subject matter will alike 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 Rule 15.3 no longer gives to an applicant
the right to "amend as often as the ixaminor prosents
new references or reasons for rejection", prosent prac-
tice does not sanction hasty and ill-considered final
rejections. The applicant who is seeking to dofine his
invention in claims that will give him the patent pro-
tection to which he is justly entitled should receive
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,
resorting; to technical or other obvious subterfuges in
order to keep the application pending: before the Primary
Examiner, can no longer find a refuge in Rule 15.3 to
ward off a final rejection.

However, the Examiner should never lose sight of
the fact that in every case the applicant is ontitled
to a full and fair hearing, and that a clear issue be-
twoen applicant and Examiner should be developod if pos-
sible, bofore appeal is prosecuted. The point eupha-
sized is that after a properly entered final rojoction
is made in a case, it should definitely man that what-
ever further prosecution the case may have beroro the
Primary Examiner must be had within the ensuing six
months. It is to the interest of the applicants as a
class as well as to that of the public thet prosocu-
tion of a case be confined to as few actions as is con-
sistent with a thorough consideration of its merits.

Ex parte Hoogendam 1939 C,D. 3; 499 0.0. 3,
states the attitude of the Office on the matter of final
rejections. The position therein taken holds that
neither the Statutes nor the Rules of irnetice confer
any right on an applicant to a more extended proaccu-
tion of his application than is comprised in an "exam-
ination" and a "re-examination" theroof. it Is recop-
nized, however, that the equities in a given case may
Justify a largor number of Office netiens than the two
specified in the Statute.

For forn paragraphs to be used in final actions,
see Section 10-9-14.

For amendmenta filed after final rejection, see
Section 10-16-14.

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10-8-46.
Final Rejection, when Proper

Due to the change in practice as affecting; final
rejections, decisi na that were rendered prior to the
amendment of old aule 68 (new rute 15.3) on questions
of prematureness of final rejection or adalasjon of
subsequent mendment .: do not necessarily reflect pres-
ent practice. Where a claimed subject matter has boen
held unpatentahle over a reference or combination of
references, finality of rejection cannot be avoided
by presenting that subject matter anow in a re-wordod
claim, especially ir the state of prosecution of the
onne la beyond the second Office action; nor con final
action be forestalled by adding: to the claim limita-
tions clearly disclosed in the reference patent .

It may therefore bo proper to make the rejection
final, oven though the references are applied and com-
bined in a manner different from that omployed in the
prior office actions .

In the consideration of claims in an mmended
case where no attempt is mode to point out the patent-
able novolty, the Brantner should be on quard not to
allow such claims. Doc 10-16-2. The clajus, howover.
may be finally rejected if, is the opinion of the Ex-
miner, they are clearly opon te rojeetien on grounda
of record.

### 10-8-47. Final Rejection when iroger on First action

In certain ina ances, the claims of u now ap-
plication moy he rejected on the first action. This
may be done when the chains of the now application aro
similar to those of an ourlier amplicitien filed by
the same applicant, and te the eldre of the earlier
application were rejected on grounds which are also
applicable marines the claims of the new application.
Such procedure is quite consistent with the provisions
of dule 15.3, since the action on the chains in the new
application is, in effect, a "re-examination" or a
"recondi toritica" er det. i had been treated pre-
vlously in the sar ;fer afor lication.

10-8-48.
Finn ejection, Argenture

The series should mar, spinat premature
final reject ona. la prorature final rejection may te-
ault from fatture to permit : full development of clear-
cut issues, exercertay in cases involving complex machines
or processo4. Er, afin, if the Manier wait until
the final rejection before giving an ade o :te expl it-
tion of the application of the references afrinat tre
chains, Buch final rejection may be prem ture. this

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would hold even if the references and reasons relied on
in the final rejection are the sono as those advanced in
a prior office action.

Any mestion as to promotoreness of a fini re-
Jection should be raised, if at nil, while the case in
still pending before the Primary examiner. This is purely
n question of practice, wholly distinct from the ton ibil-
ity of the rojoetion. it may therefore not be advanced
as a ground for appeal, or made the basis of complaint
before the Board of appeals.

10-8-49. Final to jection, withdrawal of icenature

If no request by applicant for roconsideration,
the xxaminor finds the fint er jection to have been pro-
mature, he should withdraw tho final rojoction.

face " final rejection that is not preinture has
been entered in a case, however, it should not be with-
drawn except on the showin : required by nulo 16.2. 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 will, as a matter of course, be nanistod.

10-8-50.
Withdrawal of wind Rejection

The Examiner may withdraw the rejection of finally
rejectod claims whenever he doons the conditions appropri-
nto for such action. If. for example, now facts of reasons
are presented to convince the Romiiher that the previously
rejected claims are in fhet allowible, then the final ro-
Jection should bo withdrawn. Noto: 18-8-49.

10-9

Examiner's Letter of Action

#### 10-9 (a) Sufficiency of Disclosure Must First Bo Determined

To be entitled to an examination, the specification
must so describe the alleged invention "as to onable any
person akilled in the art or acionce to which the inven-
tion or discovery apportaing, or with which it is most
nearly connected, to nato, construct, compound, and use
tho onme." (Rule 10.1). Before any search is undertakon
the Examiner mmat have a through understanding of appli-
cant's invention and he must beaffected that the above
requirements are met. If it is found that the application
obviously fails to disclose an inven wwon with the clarity
required by Sec. 4888 Revisod Statutes, the Examiner in
his first action, should call attention to The Statute

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and require that the application be properly revised.
A shortened statutory period may be set for compliance
with this requirement, the duration of such shortened
period, if set, being determined by the Primary Ex-
aminer in accordance with the complexity of the case,
the revision of the specification necessary, and the
time necessary for communication with the applicant.
These actions, in all cases, regardless of whether a
shortenod statutory period is set, should bo submitted
to the Supervisory Examiner for approval. It should
be noted that the action outlined above should be
taken as soon as possible and preferably immediately
after the case reaches the division. A proposed form
to carry out the above is given below:

A proliminary examination of this application
discloses that it fails to comply with Sec. 4888 R. S.
in that the invention is not presented with sufficient
clarity to make possible an intelligent examination on
the merits in a reasonable time.

FORM

In accordance with Rule 67, it is required that
this application be revised to conform with the practice
before this Office within the shortened statutory period
hereinafter set to avoid any question of abandonment.

THE SHORTENED STATUTORY PERIOD FOR RESPONSE TO
THIS ACTION IS SET TO EALIRE
.

If the disclosure is satisfactory it should be
determined whether full action on the merits is to be
given or the condition of the case is such as to nec-
essitate a requirement of division and/or election of
species. The action to be taken determines the extent
of the search. If the Examiner discovers that the ap-
plication belongs in another division, ho should trans-
fer the application. Bee 7-2.

#### 10-9 (b). Primary Indicates Action For New Assistant

After the search has been completed, action is
taken in the light of the references found. Where
tho assistant examiner has been but a short time in
the Office, it is the duty of the Primary Examiner
to go into the case thoroughly. The usual procedure
is for the Assistant Examiner to explain the invention
and discuss the references which he regards as most
pertinent. The Primry Examiner may indicate the action
to be taken, whether division or election of species is

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to be required, or whether the clains are to be consid-
ered on their merits. If action on the merits is to be
riven, he will indicate how the references are to be ap-
plied, in cases where the claim is to be rejected, or
authorize allowance if it is not mot in tho references
and no further field of search is known.

Until a new assistant becomes familiar with Intent
office phrascology, his letters will generally bo die-
tnted to him by the Primary Examiner. Later, the wording
of the Office notion is usually left to the assistant,
the character of the action boing, supervised by the Fri-
mary.

10-9 (c)

Sample of Conventional

"First Action"

Letter

A conventional "First Action" letter is herewith
Proconted :

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21405 .-. 9

ADONLAS De V
C++ COMMM MOHLA ØP PATENTS
wasNoton it. n. c.

DEPARTMENT OF COMMERCE
UNITED STATES PATENT OFFICE
WASHINGTON

PAPER NO.

All communications respecting
this applications should give the
serial number, date of filtres.
and name of the applicant.

SSC : th
lease find below a communication from the EXAMINER
in charge of this application.
Lavenue & Kingsland

Commissioner of l'utente. ... . )

---
\## 22816 7

Division:

Applicant:

Ser. No.

File

For

BNAGYON

il .

Coop

1

1:0- 101
180-151

::

1

1

71-507

the Palite
:

1

: -

:

.

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10-0-1.

AtAV MAC

is in response to amendment {id:0
٢٨/١٨٠
knowles my cine y per testament ont
filed water . Man Forte total
sententIt ANDTHE PAGE
action At han VAR, ANANAS PREMIER
Picity pretende CONSOLE .
in tetiens ender De frementid" De givision
other then the on have thetetlent thereplica-
tion she old bond the letter to follows'

This is an actiom ge Bri) ir. socd' ion' by
Div ..... on la ... mert jurisdiction of the

This is an Acti HONDERD" by

of this liAMARIE A DIVENTARE
for fo low Fre et OPTIMISATION
HOLA!
Tre Bin At ANY TIME FRATERNITY
time in the prosecution of the end ofthe.

And dated, the next . [ they tend
If freezer tante telefonu
!

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patent be involved, the particular pages
and sheets containing the parts relied
upon must be identified. if printod pub-
lications be cited, the author (if my),
title, date, pages or plates, and place
of pub ication, or place where a copy can
be found, shall be given. when a ro-
jection is based on facts within tho por-
sonai knowledge of an employee of the Of-
fice, the data shall be a specific ag
possible, and the reference must be sup-
ported, when called for by the applicant,
by tho affidavit of such employee, and
such affidavit shall be subject to con-
tradiction or explanation by the affi-
davits of the applicant and other porsons.
10-0-3.
Grouped at Beginning of Lotter

in citing references for the first time, the
Identifying: date of the citation should be placed inmed-
lately following the initial introductory sentence
(10-0-1), or acknowledgment of preliminary amend ment
(if any) .

10-0-4.
deforencos apniiod

The references selectod as needed for treating.
the cinins should be preceded by a heading; such as:
" (cferences applied".

10-0-5.
References lertinent

Any references selected to cover subject mattor
disclosed ht not claimed should be separately Jisted
under a hending such as "References further showing; the
state of the art", or some similar expression.

##### 10-9-5.1 References Cited in Subsequent Actions

When references are cited in a subsequent action
the heading: should be "Additional references mode of ro-
cord", or "Additional references relied upon".

When an applicant in an amendatory paper refers
to n reference which is subsequently relied upon by the
Examiner, auch reference should be cited by the Examiner
in the Lottor in which he relies upon the reference for
the first time. The citation should bo in the usual man-
ner (15-2-15).

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Whenever a reference has been Incorrectly cited in
any official paper forming part of an application file,
and auch citation has been correctly given in an ensuing
office action, the Examiner should correct the error, in
Ink, in the paper in which the error appears, and place
his initinis on the margin of such paper, together with
a notation of the paper number of the action in which
the citation has been correctly given.

in any case, otherwise rendy for issue, in which
the erroneous citation has not been formerly corrected
in an official paper, the skaminor should correct the
citation by way of an Examiner s Amendment,

10-9-6. (a)

### Data

The data in citing references should bo fully
given, na set forth in Rule 14.7. Care must be taken to
cite a reissue or design patent as such, since each has
its own Separate series of numbers.

Official cross-references should be cited thus,
Class-
(x.r.)

and unofficial cross references thus,
Vla88-
-(1.x.I.)

Intents prior to July 4, 1236. have no official
number. Some are numbered with ain "&" following the num-
ber, but. this number sher id get be riteg. The rest of
the required data must servat. Hontify all patents prior
to du!« 4, 1836.

jome patents of \fol have two numbers thereon. The
Inter number is the one is be cited.

From 1838 to 1861. Frciusive. patents covering an
inventer's: improvements on his ama cevico boro serial
numbers independent of. the current numbering of patents
and were labeled A.I. (Additionn Improvement). buch
setenta should be cited is a. I., otherwise the citation
in : together misleading

For the correct identificibien of British latents
Marine exponential number:, #60 11- 1 -5

The citation of all foreign pitonta should include
notation of the number of pages of specification and the
number of sheets of drawing, and designation of the sheet
or shoots which constitute the raferonce.

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If the drawing of such foreigh patent as issued
comprises a single sheet, this words one sheet should be
added to the identify ne data.

10-9-6 (b)
effective Dates of
Declassified trinted matter

A large amount of printed matter prepared for uso
during the war and classified as secret, confidential,
or restricted, has been declassified and is now availa-
ble to the public at large. In using this material as
references there are usually two pertinent dates to be
considered, namely, the printing date and the publica-
tion date. The printing date in some instances will
appear on the material and may be considered as that
date when the material was prepared for limited dis-
tribution. The publication date is the date of release
when the material was made available to the pub: 10. if
the date of release does not appear on the material,
this date may be determined by reference to the Office
of Technical Services, Commerce Department.

in the use of any of the above noted material
as an anticipatory publication, the date or release fol-
lowing declassification is the effective date of pub-
lication within the meaning of the statutos.

For the purpose of anticipation predicated upon
prior knowledge under Section 4886 K. b. the above notea
declassified material may be taken as prima facie evi-
dence of such prior knowled je as of its printing date
even though such material was classified at that time.
When so used the material does not constitute a statu-
tory bar and its printing; date may be antedated by an
affidavit under Rule 75.

Whenever in citing references in applications
and in Form 480 the titles oi Periodicals are abbrevi-
ated, the abbreviations of titles used in Chemical ab-
st acts and printeo in the List of reriodicals abstracted
by chemical Abstracts shonid be adopted with the follow-
ing, exceptions: (1) the abbreviation for une 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. Chou. Ind. (London)

# 10-9-7. Citation of Decisions, Orders and Notices

In citing: published decisions the tribunal render.
ing the decision should be identified and wherevor possi-
ble the C.D. citation should be given. Attention is also

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called to Commissioner'a Order 3357 relating to date cita-
tion of court decisions ini appealed cases. This require-
ment may well be complied with in all Office actions and
complete citation given whenever the decision is first
referred to. (Order 1370) .

It is directed that hereafter when Examiners cite
manuscript decisions they shall quote the salient por-
tions of such decisions or give the substance of them.

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 sane may be found should also be given.

10-9-8.
Completeness and Clarity

Rule 14.5. Completeness of Examinor's
action. The Examiner's action will ordin-
arily be complete as to all mattors, but
matters of form need not be raised until
a claim is found allowable In appropri-
ate circumstances, such as misjoinder of
invention, undue multiplicity of claims,
fundamental defects in the application,
and the like, tho action of the Examiner
may be limited to such matters before fur-
ther action is made.

10-9-8 (a)
Deferment of Action on Formal Matters

When, upon examination, the specification and
claims are such that the invention ay be readily under-
stood, Examiners ordinarily should make no requirements
on matters of form in the specification until some claim
is found to be allowable. In every such case the first
lettor should say in substance:

"On allowance of any claim revision as to form
may bo required. (Rule 14.5)"

In every instance requirements to correct infor-
untities noted on Form 281 (pink slip) by the Chief of
the Application Division and Draftatom's criticisms of
the drawings should be made in the first, lettor.

Every action on the merits should be complete and
thorough as to merito and, whonever any claim is allowed,
also complete as to form.

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When an application is in condition for allowance
except as to matters of form, the car will be consid-
ered special and prompt action taken to require correc-
tion of formal matters. Such action should include a
statement that prosecution on the merits is closed in
accordance with the decision in ex parte amyle, 1935
C.D. 11; 453 0.G. 213, and should concludo with the
setting of a shortened statutory period for response .
10-9-8 (b)
Requiring New Oath

In requiring a new oath the Examiner should al-
ways give the reason for the requirement and call atten-
tion to the fact that the application of which it is
to form a part must be properly identified in the body
of the new oath, preferably by giving the serial number
and the date of the filing.

10-9-8 (c)
Draftsman's Requirement

The Examiner should embody the Draftman's state-
ment with regard to the drawing in his first letter to
the applicant, and in so doing he should be careful to
state distinctly that a new drawing will not be admit-
ted or that a new drawing will be required, if the case
is found to contain patentable matter, in accordance
with the Draftsman's directions.

When the condition of the case is such that the
correction of the drawing is required, the Examiner
should secure the estimate for the correction from the
Draftsman and inform the applicant of the charge.

10-9-8 (a) Language to be Used in Rejecting Claims

Where a claim is refused for any reason relating
to the merits thereof it should be "rejected", and the
ground of rejection fully and clearly stated, and the
word "reject" must be used. If the claim is rejected
as too broad, the reason for so holdim; should be given;
if rejected as Indefinite the Examiner should point out
wherein the indefiniteness resides; or if rejected as
incomplete, the clement or elements lacking should be
specified, or the applicant be otherwise advised as to
what the claim requires to render it complete.

In general the most usual ground of rejection
is based on a prior patent or patents and tho rejection
should generally be set forth as follows:

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(1) If the claim roads element. for element on the
references, the claim should be rejected as

(a)
obviously fully met, or

(b)
clearly readable, or

c) fully anticipated, (or other equivalent
expression )

on the reference.

While ordinarily additional comment is unnecessary
where any of these phrasings is applicable, it may in some
cases be helpful to point out one or more elements of the
reference where their identity is not clear from a brief
inspection of said reference.

In no instance should any of the above phrasings
be used unless the claim reads as well on the patent as
it does on the application.

(2) If the claim is met in substance in the rof-
erence, but has immaterial variations thereover or in-
volves mechanical equivalents, the claim should be re-
jected as

(a)
substantially met by, or

(b)
lacking invention over, or
(c)
unpatentable over, cr
(a)
finding its full equivalent in, (or
other equivalent expression)

the reference. Such rejection cho Id always be accom-
panied by a brief statement taking note of that feature
or those features of the clain which are not fully met
in the reference and point in ;: cut why said feature or
features do not render the claim. patro table.

(3) If the claim as rejected on A in view of B,
such rejection should always be accompanied by a state-
ment that
\#

(a) there is m. invantien in substituting:
for the element K of A the element X
as shown (or tmnght, or disclosed) in
B; or

(b) it would require only mechanical skill
to substitute in A for his element X
the equivalent clement X' as shown in B.

It is not sufficient in a rejection based on A in
view of B merely to state that, B toachos (or shows) the
clement defined in the claim. This is not conclusivo that

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the claim should be rejected; for even if B does dis-
close the element an claimed, it might romuire invoni.
to incorporate this cionont in the A organisation. ja
Some codes, in addition to the above general statomen
#s set forth in (a) or ib), it may be advisable to pr
out specifically how the substitution can be modo. The
portinency of each reference should be fully set forth.

Everything of a personal nature must be avoided.
Whatever may be the Braminer's view as to the utter lack
of patentable merit In the disclosure of the application
examined, he should not cast a shadow on the patent, it
granted, by expressing in the record the opinion that
the application is, or appears to be, devoid of patent-
able subject matter . Nor should he uxpross doubts as to
the allowability of allowed claims or state that every
doubt has been resolved in favor of the applicant in
printing him the claims allowed.

A constructive anggestion by cho Examiner as to
how some specific rejection or objection may be avoided
often saves considerable time and is generally welcomed
by the attorney or applicant. The Examiner should re-
ject each claim on all valid grounds rather than on that,
ground which he considers best at the moment.

An omnibus rejection of the claims "on the refer-
ences and for the reasons of record" is stereotyped and
usually not informative and should therefore be avoided.
This is especially truc where certain cinima have bech
rejected on one ground and other claims on another ground .

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

10-9-9.
Formal Requirements

When a claim is found-allowable, or for other
reasons it is deemed best to take up matters of form,
the Examiner show id noto all of his : bjections, and
clearly point them out | In all cases, whether or not a
claim is indicated as illowable, informalitios as to
tho drawing, oath, or signatures shto id be noted, Joe
above Section na to criticism of oath and drawing.

10-9-10
Hoto All Outstanding Requirements

In taking up an amended case for action the Exam.
iner should note in every letter all the requirements
outstanding against the case. Every point in the prior
action of an Examiner not answered by the applicant munt.
be repeated er withdrawn to prevent the implied waiver
of the objection.

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10-9-11.

Answer All Material Traver sed

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

Where the applicant traversog any rojection, the
Examiner should, if he repeats the rejection, take note
of the applicant's argument and answer overy material
point therein.

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

10-9-12.
Piecemeal Prosocution

in general, piecemeal actions should be avoided
when a technical" rejection is ande, by treating the
claim also, whenever possible . on the basis of prior
art.

10-9-13.
Notify of Inaccuracies in Amondment

Where the directions for the entry of an amend-
mont are defective, as, inaccuracy in the line desig-
nated, or lack of precision where the word to which the
amendment is directed occurs more than onco in the spec-
ified line, and it is clear from the context what is the
correct place of entry, the amandatory paper will be
properly amended in the exordinging division, and nota-
tion thereof initialed by the Examiner will be made on
the margin of the amendatory paper. In the next Office
action the applicant should be duty informed of this
alteration in his amendotor . paper and tho entry of
the amendment as thus amended; as he will also be in-
formed of the non-entry of an attenduent where defective
directions and context leave doubt as to the intent of
applicant.

10-0-14.
Each Claim to be Mentioned
in Each Letter

In every letter each claim should be mentioned
by number, and its treatment of alatus given. Bince a
claim retains its original numeral throughout the pros-
ecution of the case, its history through successive
actions is thus easily traconble.

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Also where claims for non-elected divisible
subject matter are retained under Rules 11.2 and 11.7.
their presence in the case should be noted in each
succedding Office letter, sach action should conclude
with a summary of rejected, allowed and canceled claims
and claims retained under Rule 11.2.

10-0-15.
State When Claimas aro allowable
Except as to Form

When the Examiner finds thit a claim is allow-
ablo except as to form, this fact should be stated.
10-9-15.1
Specific Actions

Specific actions such as requirement of divi-
sion, election of specios, D. P. prosocution, Examiner's
Statement, etc. , are treated separately under the cor-
responding topic. As to requirement of division and
election of species see section 9; D. P. prosecution
10-4, and Examiner's Statement 14-1-1%.

10-9-15.1 (a) It should be noted however that in an
Office action in which election of species is re-
quired the following: coneluding paragraph is recom-
mended :

FORM

Since there is no allowable generic
claim present, election of one species is
required. Applicant is advised that his
response to be complete must include an
election of species or a statement that
in his opinion nl: cinims are in fact
readable on a designated specion which
must be identified, Buch statonent, will
be construed of an election.

10-9-15.1 (b) The following statement should be added
at the end of all regular office actions when it ap-
pears that the next netion taken by the Bearsiner may
be final :

FORM

This application should be prepared
for final action. no further amendments
that do not place the case in condition
fer allowance or better forma for appeal
will be entered after final action unless
accompanied by a proper showing of good
and sufficient reasons why they were not
earlier presented. Rule 16.2.

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N

10-9-15.1 (c) Attention is particularly called to the
requirement (Rule 15.3) that in the letter making a re-
jection final "the Examiner shall repeat or state all
grounds of rejection then considered applicablo to the
claing in the case, clearly stating the reasons there-
for". The letter should conclude with the following
statement :

No further amendments that do not
place this application in condition for
allowance or better form for apnoal will
be entered unless accompanied by a proper
Showing of rood and sufficient reasons
why they were not earlier presented.
Kule 16.2.

To insure against applicant's failure to noto
that the rejection as stated in the body of the letter
was made final, it is advisable for the Examiner to
conclude such letter with the paragraph, "The above
rejection is made FINAL," or "This action is gliAL."

It is also suggested that at the top of such
letter, or as the last line of such letter the words
FINAL REJECTION be placed in capital letters.

In D.P. prosecution, when che Examiner to whom
a case has been forwarded takes an action which he con-
siders is in condition to be made final, ho should in-
dicate this fact by stating. "An issue has boon reached
as to claims 2, 3, 4, etc. " but he shall not use the
word "final" in a rejection. The Examiner completing
the action when the case is in condition for a final
rejection shall enumerate all the claims in the case,
specifying those allowed and those rejected and shall
state "This action is FINAL."

10-9-16.
Numbering Poragraphs

Paragraphs may be successively numbered on each
page of the letter to facilitate identification in tho
future prosecution of the case.

10-9-17.
Office Letters to have One Inch Margin,
Left Side of Page

All communications sent from this Office will
provide for ample margin (at least one inch), on the
left side of the page. Rule 10.9 requires from appli-
cants that "a wide margin must aiways be reserved upon
the left hand side of the page." The reason for this
rule is also applicable to communications originating
in the Office.

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10-9-18.
Tyring of Letter

The typist copies the Examiner's lettor on Form
FOL 90 inserting in the proper place the address of ap-
plicant, or of his attorney, and the necessary idonti-
fication data of the application.

10-9-19.
Reviow by Assistant Examiner

A carbon copy of the letter is also mado. Both
copies, together with the rough draft, if there be one,
and the file are chen put on the Assistant Examiner's
desk, who will compare the copy with the rough draft,
paying particular attention to the data of the refer-
ences. If any corrections are to be made, he will note
them in lead pencil and return the papers to the typist
for correction. When the corrections have been prop-
erly made, or when there are no corrections required,
the Assistant Examiner will initial the original copy
and place the file with the several copies of the let-
ter on the desk of the Primry Examiner for his in-
spection and siem ture to the original copy. Carbon
copies should not be signed by the Assistant or Prim-
ary .

In each Examiner 's letter, the word "Examiner",
without the nunter of the division should appear at
the end on both the original and carbon copy, the
original only, as heretofore, being signed. The words
"Acting Examine: " should be used whenever that official
signs the letter .

10-9-20.

# Entry

After the original copy has been signed by the
Primary Examines, the typist places it in the file
wrapper on the right hand side, and enters in black
on the outside of the wrapper, under "Contents, " the
character of the action. If any claim has been re-
jected, the word "Rejection" is entered on the file,
or if the rojection has taken the form of a require-
ment for division. the entry will so indicate; other-
wise, the word "Letter" is used. Errors will be
avoided if the assistant Examiner enters the char-
acter of the action of the file in lead pencil boforo
giving; the file to the typist.

The papers are numbered consecutively, the ap-
plication being No. 1, the print of the drawing, if
there is one, being No. 2, and the next paper, us-
nally the first Office letter, being; No 3, etc.

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The file is next given to the clerk, who entors
the character of the action, and the date thereof, in
the "Register of Pending Applications," after which the
file is returned to the file cuse along with other ap-
plications awaiting action by the applicants. Such ap-
plications are arranged in the file case in the numor -
ical order of their serial numbers, so that they may be
rondily available.

10-9-21.

# Date

Since the six months statutory period begins to
run from the date of mailing of the Examiner's action,
the date should not be typed when the letter is written,
but should be stamped on both copies of the letter after
it has been signed by the Exantiner and the carbon copy
in about to be mailed.

10-9-22.

# Mailing

The typist mails the carbon copy to the proper
address. As to details of the actual mailing atten-
tion is called to 7-4.

10-9-23
Number of Copies Mailed

Ordinarily one copy (carbon) of the letter is
mailed to the applicant. However, two carbon copies
ro mailed to the Alien Property Custodian and, this
is Also the practice followed with applications handled
by the U.S. Army and Navy.

10-0-24.
Returned Office Action

For treatment of returned letters, see 7-4-3.
10-10.
Examiner's Amendment

10-10 (a)
Amendments that May be linde by Examiner

Except by formal amendment duly signed or as here-
Inafter provided, no corrections, erasures, or inter-
linontions bo made in the body of written portions of
the apocification or any other paper filed in the ap-
plication for patent.

Correction of the following obvious orrors only
inny he made with pen by the Examiner of the case who
will then initial the sheet marin and assume full re-
";" haibility for the change :

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1\. Misspelled words.

2\. Diaree ent of a noun with its verb.
3\. Inec nalatent "case" of a pronoun.
4
Disagreement between a reference character
ns used in the description and on the drawing. the
character may be corrected in the description but.
only when the examiner is certain .t she propriety
of the chance.

other obvious informalities in the application
may be corrected by the Examiner, but auch corrections
must be in the form of an amendment , approved and
signed by the Principal Examiner, placed in the file,
and made a part : f' the record. A copy of the amend-
ment is sent to the u ;dicant, The changes specifiod
in the amendent are ontored by the clerk in the reg-
ular way (Ordor 40091.

where an application is ready for isame ex-
cept for a slight defeet in the drawing not involving
chance in structure, thu Examiner will note in pencil
on the drawing the addition or alteration to be made.
He will also prop re at axaminer's Amendment indicating
the changes made and send the drawing to tho Draftsman
for the required correction.

The following corrections are illustrative of
those that may be Be made:

1\. Adding two or three reference characters
or expoients ..

2\.
Chan ;in ;; one or two numerais or figure
CARNE.
: nesten . enportions matter, e.g., figure
and ordinal shore all het ons fr ure have
beon cancel !.

4\. Adding or reversing: directional arrows.

5\. Chair: Roman Numerals to Arabic numerals
to agree with specification.
Ad Hun Mention lines, or brackets, where
osily Recatod.
7\. making sinota dian os ja taventor 's name
(ach Alam bre ).
8\. changemy New lines.
1\. arrestin : maspelled legenda.

it is directas that no other changes be mado
by any person in any record of this office without
the written approval of the Commissioner of latents.

is carding il : aplication over all errors
should be carefully noted. It is not a matter of
Importance winther the ba pago is the best that
could be cher son , 16 is however, garantia! that it

6

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be clear in meaning, and free from errors in syntax.

In the printing of the specification and claims
of applications, the punctuation as made by the appli-
cant must be strictly followed and not departed from.

However, in revising the application, and in pub-
soquent revision and proof reading; in the Issuo and Gaz-
etto Division and in the Printing office, minor informal-
ities and obvious orrers are sometimes found which require
correction. Such correction is made by Examiner's Amend-
mont, and a copy is sent to the applicant. Where the cor-
rection is made in an application already in the printer's
hands, a copy may be sent to the applicant, if the changes
made are of sufficient importance.

10-10 (b)
Title of Invention

Where the title of the invention is not specific
to the invention as claimed, the Examiner may change the
title by Examiner's Amendment on or after allowance. See
Sec. 15-2-1.

10-10 (c)
Cancelation of Non-Statutory Claim

when a case is otherwise in condition for allow-
ance the Examiner may cancel an obviously non-statutory
claim. Applicant should be notified of the cancelation
of the claim by an Examiner 's Amendment.

10-10 (d)
Data ef Coper.ding Application
Referred to Should be Brought
Up To Date

Where a copending application is referred to in
the specification the Examiner should ascertain whether
said copending application has matured into a patent or
has become abandoned and if so, insert by Examiner's
Amendment the number and date of the patent or the fact
that, the case has become abandonod.

This procedure is also followed when an appli-
cation is referred to the Examinor by the Issue and
Unzotte Branch in which application there appears a
reference to another application by serial number with-
out any statement as to whether the application referred
to ls patentod or abandoned. If it is determined by tho
Examiner that auch case is patented or abandoned he will
indicate this fact in the specification by appropriate
Rxaminor's: Amendriont.

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10-10 (e)
Humbering of Claims used
In Examiner 's Amendment

In entering an Examiner's Amendment in a oletta,
the origina! mariber as well as the nouber of the claim
in the metent, shonte su referred to.
10-11.
Lesot J'oe ies nouste

See Also 14-16 12-3, 14-4-1.1 and 14-4-2.1.

ititu tory
10-11-1.

Rule 19.1. Mandonment for failure to
Respond in Time Limit. If an apolleant no-
gleets to prosecute his application for six
months or queh shorter tine as may be fixed
(Thule 19.2) after : ho date when the Inst of-
ficial notice of any action by the office was
mailed to hin, the application will become
abandonod.

The portion of Rale 19.1 quoted above sets forth
the provisions of Bec. 4894 Rev. St. with roference to
the prosecution of an application by an applicant. the
normal statutory por los for response to an Office action
is six months.

for Computed
10-11-2.

The period is compiled from the day of the mail-
ing of the Office action to the date of rocel pt by the
Office of applicant's response. No cognizance is taken
of fractions of a day and applicant's action is due on
the corresponding day six months after the Office action.

Response to an (rice action dited on August 30
is due on the following February 28 (or 29 if it is a
leap year) and, likewise a response to an africe action
dated on february 22 is due on august 28 and not on the
Just day of An nat.

10-11-3.
shortened Statutory method
and Time Limit Actions

Time hevg Than Six Months

Rule 19.2 twee 4894 Rov. St.) provides that ap-
plicant need not necessarily always have six months
within which to respond to an office action. He may
be required to respond is a shorter period, not less

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than 30 days, whenever it is dealed "necessary of ex-
pedient." Some conditions doomed "necessary or expedi -
ent" are listed in Section 10-11-5.

In setting a shortened statutory time for re-
sponse to an Office action, the date on which tho shortened
period ends must be specified that:

FORM

A SHORTENED STATUTORY PERIOD POR RE-
SPONSE TO THIS ACTION IS SET TO EXPIRE
(DATE) .

( This should be in co .tal letters)

In addition to the statutory provisions of short-
ened periods for response the Examiner may also, in some
cases, require the applicant to tak , responso within a
specified limited time. These are known as timo limit
actions.

Where an Office action is such as to require the
setting of a time limit for responss thereto, tho Exam-
iner should note at the end of the letter the date when
the time limit period ends. The :. me limit requirement
should also be typed in capital letters.

Furthermore, the legend "SHORTENED TIME FOR REPLY"
is placed on the first page of evely action in which a
shortened time for reply has been set, and is applied on
the first pare of the action in one or more places, and
preferably across the date stamp just under the date,
so prominently that a person Looking merely for the mail-
ing date of the action and sot reading the action as a
whole cannot reasonably avoid seeing the legend .

10-11-4.
Approval of Than Bet

Before being mailed, a lottet setting; a shortened
statutory period for response what' be approved by the
Commissioner, but this approval is of caibed from the Super-
visory Examiner, to whom the Cores sioner has delegated
this authority.

10-11-5.

Situations in Which Used:

10-11-6.

Shortened Statutory Feriod

From time to time the Commissioner through the
Supervisory Examiners adds to or removes from the list
of types of actions calling for a shortened statutory
poriod. In general where the prosecution has obviously

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been dilatory, or where the circumstances are such that
the public interest requires the prosecution to be
promptly closed, a shortened statutory period may be
set .

Some specific cases are :

a) When an application is in condition for
allowance, except as to matters of form, anch as
correction of drawings or specification, a new oath,
etc., the case will be considered special and prompt
action taken to require correction of formal matters.
Such action should include a statement that prosecution
on the merits is closed in accordance with the decision
In ex parte quayle, 1935 C.D. 11; 453 0.0. 213, and
should conclude with the setting of a shortened statu-
tory period for response.

b) When a prompt issue as a patent is desired
to avoid futile interference proceedings, au where the
Junior party fails to overcome the senior party's fil-
ing date under Rule 232.

c) Where, after the termination of an inter-
ference proceeding, the application of the winning
party containo an unanswered office action, final re-
jection or any other action, the Primry Examiner noti-
fios the applicant of this fact. In this case response
to the Office action is required within a shortened
statutory period (40 duys) running from the date of
such notico. See Ex porte Peterson, 525 0.0. 3, 1941
C.D. 8.

d) When a case has been pending for five years,
in order to expedite termination of the prosecution.
This also applies to any case which by relation to a
prior application has an effective filim; date of more
than five years.

Whonever the Primary Examiner fiada that a newly
filed application obviously fails to disclose an inven-
tion with the clarity required by Sec. 4888 R.S., or
whenever his attention is directed to such an applica-
tion, he should call attention to Rule 14.5 (second
contence) and require in the first Office action, which
should be taken immediately, that the application be
revised to conform with the practice prevailing; before
this Office. A shortened statutory period may bo sot
for compliance with this requirement, the duration of
such shortened period, if set, boing determined by the
Primary Examiner in accordance with the complexity of

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the caso, the revision of the specification necessary,
and the timo necessary for commune tion with the appli-
cant. These actions, regardless withor a shortened
statutory period be set or net . sherid be submitted to
the Strawvisory fra tror for approval.

10-11-7.
Shortened Non-Statutory Time Limit

Under certain conditicas it is deemed more do-
sirable to set non-statutory shortened time-limits for
response, such as:

al file 23.3 provides thet in suggesting claims
Por intor feronco:

The parties to whom the claims are suggested
will be required to make the se cinimo (i.e., present
the sugrested claims in their applications by amendmont)
within a specified time, not less than 20 days.

b) Rule 23.6 provilos

Where claims are cories from . patent and the
Examiner is of the opinion that nete of the claims can
he made, he should stato in his action why the appli-
cant can not make the clains and set a time limit, not
less than twenty days, for reply, and similarly if,
after response by the applicant. the mejection is made
final, a similar tine 13 it micato bo set for appoal.

c) When applicant a nelion is not fully re-
sponsi ve to the Office actien, the examiner may pivo
applicant a limited time, garelig 20 days to con; late
his rospenso. See last par tranh of tulo 19.] which
roads as follows :

When action by the aplicaat is : boni fide
attempt te advance the case t Chal action, and ja
substantially a completa response to the Examiner's
antior, but. consideration crises matter or compli-
P.co :'Mi :. ne w rircant h hion ingavertent ly
caitted, opportunity to explain ad supply the omission
my to given before the dessert rendement is con-
sidered.

## 10-11-8. Difference Between Shortened statutory and Time-Limit Feri uds

The distinction between a limited time for roply
m'a shortened statutory gerard under Rule 19.2 should
not bo tost sight of. The f: at ir get by the primary
Examiner, while the redend ros itas the meroval of
the Commissioner. The penalty att ching to failure to

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reply within the time limit is loss of the subject
matter involved on the doctrine of disclaimer, and is,
therefore appealable matter; while failure to respond
within the set statutory period is not appoalable but
petitionable only and may result in abandonment of
the entire application. further, where applicant re-
sponds n doy or two after the time linit, this may be
excused by the Examiner if satisfactor ily explained;
but a roumonan one day late carrying; a shortened ata-
tutory period under the Rule 19.2, no matter what the
excuse ronuita in abandonment; however, if asked for
in advance extension of the period may be granted by
the Exminor, provided, the extension does not go
beyond the six months' period of the office action.
10-11-0.
extension of fine

Hale 19.2.
The time for
reply, when a time less than six months
hus boon set, will be extended only for
rood and sufficient cause, and for a
reasonable time specified. Any request
for such extension must be filed on or be-
fore the day on which action by the ap-
alicant is due, but in no case will the
more filing of the request effect any
extension In case involving a short-
cned statutory period for response only
one extension may be granted by the
Primary Examiner in his discretion; any
further oxtension must be approved by
the Commissioner. in no case can any
extension be ;ranted which will carry
the date on which response to an action
In due boyond six months from the date
of the action.

It should be very carefully noted that neither
the Primairy Examiner nor the Commissioner has author-
ity to extend the shortened statutory period unloss
request for the extension is filed on or before tho
day on which applicant's action is due. while the
shortened period may be extended within the limits
of the statutory six months reried, no extension
can operate to extend the time beyond the timo. Ex
parte Herzog ot al 1905 C.D. 216; 116 0.0. 2009.

In this relation attention is called to Rule
1.4.3.

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EN

Rule 14.3. Jusmyslem of Action.
Suspension of action by the office will be
granted at the request of the applicant for
good and sufficient cause and for a reason-
able time specifiod. Only one suspension
may be granted by the Primary Examiner;
any further suspension must be approved by
the Commissioner.

if action on an application is ansponded
when not requested by the applicant, the
applicant shal! ba notified of the reasons
therefor.

It is to be noted that suspensiona todos this Rule
are granted with respect to impending Office etions, --
not actions by applicants. That is, if the case is await-
Ing action by applicant he has the statutory or set short-
ened period within which to respond. While as explained
before, the shortened period my be extended within the
limits of the statutory period, no suspension can operate
to extend the statutory portod ..

### 10-11-10. Three Year Period. Government Owned Cases

### Three Year Statutory serind

A government-owned enge It under Dec . 4894, R.B.,
entitled to a three your poring for ronponse to an Office
action, provided there hat beon illed in the application
request to thot effect by the head of the department
concerned. Such rement bords for only one three your
period in such case, but it holds for that entire period
irrespective of the number of actions that may be taken
either by the office os by the applicant during the per-
ind. However, the status of the mortiertion as coming
within the three year provision of the statuto may be
continued for another three great wayled by a request
from the department head for reapplication of the sta-
Inte, & letter from the head of the department request-
ing auch reggeltcation of the table must be reasonably
Cited.

there an application it -freed under the three
vor statutory provision, it is required that the office
notify the head of the department within 90 days and not
less than 30 days before the expiration of the three your
porind of the approaching end of said period.

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10-11-11.
Iwo Periods Running

There sometimes arises a situation whore two
different periods for respraso are running aginst an
application, the one jisited by the regular statutory
period, the other by the limited poried set in a sub-
se muent office action. The running of the first per-
ind is not suspended hor affected by an ex parte lim-
ited time action or even by an appeal therefrom.
10-11-12.
Copying latent Claim

where in an application in which there is an
unanswered rejection of record, claims are copied
from a rubont and all these claims are rejected (Rule
23.6; bac. 10-11-7), there results a situation where
two different periods for response are running against
the application. one reried, the first, is the rog-
ular statutory period of the unanswered rejection of
record, the other period is the limited period set for
response to the rejection (either first or final) es-
tablished under Rules 23.3 and 23.6. The anto of the
last unanswered . ffice action on the claims other than
the copied patent claims is the controlling date of
the statutory period (Ex parte milton, 164 ms ],
63 USPQ 132 and Ex parte Nelson, 164 M3 361, 26 J.1.
U.S. 564).

10-11-13.

Factors Affecting or

Determining Dates

10-11-14.

Date of Receipt of

Applicant's Action

When a paper reaches the office it is stamped
as of that day and this stamp date is the controlling
date, rot the stamped date applied in the examining
division.

10 11-15.
keriod Ending on sunday or howlong

Rule 1.8. Times for Taking action
Expiring on Sunday or Holiday. When the
day, or the Last day, fixed by statuto or
by or under these rules for taking any
action or paying any fee falls on sunday,
or on a holiday within the District of
Columbia, the action may be taken, or the
fee paid, on the next succeeding day which
is not a Bugday of a holiday .

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Note: The holidays in the District
of Columbia are: New Year's Day, January
1; Washington's Birthday, Pobruary 22;
Momorial Day, My 30; Independence Day,
July 4; Labor Day (first Monday in Sep-
tember); Armistice Day, November il,
Thanksgiving Day (fourth Thursday in No-
vember); Christmas Day. Dove:bor 25; In-
auguration Day (January 20, every four
years) .

An amendment received on such succedding socu-
Lar or business day which was due on the Sunday or holi-
day is endorsed with both dates. The period allowed by
statute is six calendar montha.

## 10-11-16. Miscellaneous factors Determining Date

When applicant writes the Office pointing out an
incorrect citation of a reformato, she forlod of six
months running against the application begins anew on
the date of the Office responda giving the correct cita-
tion.

### Remailing

Where for any reason it vecaen necessary to re-
mail any action, (7-4-3) the action should be correspond-
ingly rodated, as it is the re-veiling, date that estab-
lishes the bor; Inning of the six months' poriod. (Ex
parto Courtoff, 1924 C.D. 151. 329 0.0. 536)

### Supplemental Action

A supplementary action after a rejection explain-
ing the references more explicitly or giving the reasons
more fully, even though no further feferonces are cited,
establishes & now date from wirch the statutory period
runs.

### Defectivo Office Action

If for any other ronson an Office action is de-
fectivo in some matter necessary for a proper rosponso
applicant's time to respond begins with the date of cor-
rection of ouch defect.

10-11-17.
Actions on Appeals

Appeal to the Board must be made within 6 months
from the final Office action,

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10-11-18.
Board's Decisions

The six months' time allowed for amendment
after decision on appeal where the Board has givon
new reasons for rejection dates from the date of
the Board's decision. (Bee ex parte King, 1928 C. D.
1; 366 0.G. 3.)

A decision by the Board of Appeals which is
in any way adverse to the appelant is an "action"
in the case marking the beginning a new statutory
period.

A complete reversal of the Examiner's re-
jection brings the case up for action by the Exam-
iner; whereas, if the Examiner was sustained cithor
in whole or in part, the next action must be taken
by the applicant, either by way of further appeal or
suit in oquity or by cancelation of the rejected
claims if there be an allowed claim in the case.

Where the Board of Appeals rejects claims on
new grounds applicant has six months from the date
of the Board's decision to respond to the rejection
in that decision.

10-11-19.
Dismissal

Where the appeal is withdrawn or dismissed,
see 14-3.

10-11-20.
Citing New Reference in
Examiner's Statement, "Mevey"

If the Examiner in his statement or in a sup-
plemental statement cites a new reference as a basis
of rejection, thus bringing the case within the doc-
trine of Ex parte Mevey, 1891 C.D. 115, 56 O.G. 805,
a new date for the statutory period running against
the application is thereby established. Now Rule
32.4 sets forth this practice.

10-11-21.

## Court Decisions

See 14-4-1.1 and 14-4-2.1.
10-11-22.
Actions in Interferences
10-11-23.
Preliminary

a) Correspondence under Rule 23 is not an
action on the case and, hence, cannot serve to extend
the statutory period if the case is awaiting action

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by the applicant.

b) Claims suggested under Rule 23.3 must be made
before the date set or the delay must be satisfactorily
explained.

c) Response to the rejection of all claims copied
from a patent must be made within limited time (either
as a request for reconsideration or an appeal from the
rejection) .

## 10-11-24. Decision by Board of Interference Examiners

The date when the decision of the Board of Inter-
ference Examiners becomes final does not mark the begin-
ning of the statutory period for response to any. unanswered
action by the office.

10-11-28.
Termination of Interference

Upon termination of interference, appropriate
action in each case should be promptly taken by the Ex-
aminer. For details see Sec. 13-7.

If the losing party's case was under final re-
jection or ready for issue when the interference was
formed, his right to reopen the prosecution is restricted
as explained in Sec. 13.

For shortened statutory periods in actions fol-
lowing termination of interference, see 10-11-6 (c) .

10-11-26 .
Petitions

A petition filed near the end of the statutory
period, even if not reached for decision during that
period, does not operate to extend the period. How-
ever, if the petition is granted, the case is not aban-
doned, provided otherwise full response to the last of-
fice action had been made within the statutory six months.
For example, if the petition is to vacate a final re-
jection as premature, and within the statutory period
there is filed an amendment traversing the rejection,
or amending the finally rejected claims, supported by
argument, but yet not rendering the claims patentable
in the opinion of the Examiner, then the granting of
the petition even at a date outside the six months!
period saves the case from a holding of abandonment;
while if the petition is denied, the case is abandoned,
since under the decision applicant had not made a proper
response to the final rejection within the statutory
period.

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## Abandonment, Forfeiture

### Time for Response by Applicant, Abandonment of Application

Rule 19.1. Abandonment for Failure
to Respond in Time Limit. If an applicant
neglects to prosecute his application for
six months or such shorter time as may bo
fixed (Rule 19.2) after the date when the
last official notice of any action by tho
office was mailed to him, the application
will become abandoned.

Prosecution of an application to save
it from abandonment must include such com-
plete and proper action as the condition of
the case may require. The admission of an
amendment not responsive to the last offi-
cini action, or refusal to admit the same,
and any proceedings relative thereto, shall
not operate to save the application from
abandonment ..

When action by the applicant is a bona
fide attempt tr 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 requirement has been inadvertently omit-
ted, opportunity to explain and supply the
omission may be given before the question
of abandonment is considered.

Rule 19.4 Express Abandonment. An ap-
plication may be expressly abandoned by fil-
ing: in the latent Office a written declara-
tion of abandonment, signed by the appli-
cant himself and the assignee of record, if
any and identifying the application.

Abandonment mny by either of the invention or of
an application. An invention is abandoned whon the in-
ventor dodiestes it to the public. Dedication muy tako
different forms.

This discussion lo primarily concerned with aban-
donment of the application for potent. Jce 4-2-4.

An abandoned application is one which is removed
from the Office docket of pending cases through
1\. fornal abandonment by the applicant
tacanieacad in by the radighee if Chore
ho chết

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or through

2\. failure of applicant to take appro-
priate action within a specified time at
some stare in the prosecution of the case.

Applications expressly abandoned (Rule 19.4) pre-
sent no particular problem. It should be borne in mind,
however, that formal abandonment must have the signature
of the assignee, if any, as well as of the inventor. For
this reason, an amendment signed by the attorney in which
all the claims are cancelled and none substituted is not
entered since such action would amount to an abandonment
of the application.

Rule 34.6. Forfeited Application.
A forfeited application is one upon which a
patent has been withheld for failure to pay
the final fee within the prescribed time.
(See rule 34.4)

A forfeited application is not consid -
ered as pending, and, if the final fee is not
subsequently paid and accepted as provided in
rule 34.7, the application is abandoned, as
of the date it became forfeited.

It is seen that a forfeited application is one which
had the status of an allowed case for six months and on
which the final fee was not paid. (Rale 34.6) Its legal
status during the year dating from its forfeiture makes
possible its being issued os a patent on petition to the
Commissioner, the petition being supported by a verified
statement and accompanied by the final fee and the peti-
tion fee ($10). (Rule 34.7) ,

When the six months' porjod within which the final
fee might have been paid has expired. the file is returned
by the Issue and Gazette Division to the examining divi-
sion. The clerk of the examining division takes out the
drawing, stamps it "Forfeited," stamps the file likewise,
makes the proper entry in the remaster, and forwards the
file and drawing to the proper section of the Record and
Attorneys' Room which is under the supervision of the Li-
brarian. The application is recorded as forfeited and
filed away in the abandoned files section. If not pat-
ented within eighteen monthu after the date of ullowance,
the forfeited case becomes abandoned; and such abandoned
application cannot be revived. In this respect on aban-
doned application that has passed through the twelve months
period of forfeiture differs in status from an applica-
tion that has become abandoned under the provisions of

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Rules 19.1 and 19.2 and can be revived under the pro-
visions of Rule 19.3. See also Rule 14.8.

10-12 (3)
abandoned und Porfoited Applications
Not Cited.

abandoned and forfeited applications will not
be cited as references.

10-12-1.
Abandonment by Non-Statutory Disclaimer
(For Statutory Disclaimer, Jeo 16-3)

Abandonment of invention may be brought about
by what is often referred to as a disclaimer. This
results when an applicant by an act of his loses his
right to patent protection. Some examples among others
nre:

a) failure of applicant to mako claims sug-
Cested by tho Putont. Offico under Rule 23.3;

If claims are suggested in an application near
the end of the statutory period running against the
case, and the time limit for making the claims ex-
tends beyond the end of the period, such claims will
be admitted if filed within the time limit even though
outside the six months' period and even though no
amendment was made responsive to the Office action
outstanding; ampinet the case at the time of surrest-
ing the claims. However, if the suggested claims are
not thus made within the specified time, the case be-
comes abandoned in the absence of a responsive amend-
ment filed within the six months' period. (Ex parte
Kohn, 1932 C.D. 9; 421 0.0. 853.)

b) Disclaimer filed under Rule 22.2.

ch A statement of record in the file that a
givon part of the disclosure is old in the art.

it should be noted here that when a sole aj; li-
cntion is substituted for a joint application, or the
Joint apriteation amended to a sole application, a
proper disclaimer by the surrendering joint applicant
and oath by solo Inventor should bo filod. in ro
Roberto, 1920 C.D. 158; 273 0.0. 410.

10-12-2.
Failure to Take Required Action
During: Time Period

Rute 19.1 specifies that an application becomes
abandoned if applicant "neglects te prosecute" his ap-
plication within the Fixed statutory period. This
neglect may rosuit of thor from

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1\. entire failure to respond, or
2\. insufficiency of response, i.e., failure
to take "complete and proper action as
the condition of the case may require."
(Mule 19.1)

Abandonment by entire failure to respond presents
no probloms.

Nor is there any particular difficulty when an
amendment reaches the Office (not the division) after
the expiration of the statutory period. The case is
abandoned and the remedy is to revive it,

#### 10-12-2 (a) Disposal of Amendment Filed After Case is Abandonod

When an application is net prosecuted within six
months from the date of the last Office action thorein
and thereafter an amendment is filed, such amendment
shall be ondersed on the filo wrapper of the applica-
tion, but not formally entered and the Examiner shall
immediately notify the applicant that the amendront was
not filed within the statutory period and therefore can-
not be entered.

10-12-2 (b) Special Cases Involving Abandonment

Difficulty may arise when there is disagreement
as to the date from which the statutory period begins
to run. Some examples are:

a) Copying claims from a patent when not sug-
gested by the Patent Office does not constitute a re-
sponse to the last Office action and will not save the
case from abandonment, unless the last Office action re-
lied solely on the patent for the rejection of all the
claims rejected in that action.

b) A case may become abandoned through with-
drawal of appeal to the Board of Appeals, no properly
responsive amendment having boon seasonably filed (Ex
parte Coverstone, 1929 C.D. 16; 381 0.0, 483).

c) Likewise it may become abandoned through dis-
missal of appeal to C. C. I. A. or suit in equity, where
there was not filed prior to such dismissal or within
six months from the Board's decision an amendment put-
ting the case in condition for issue or fully respon-
sive to the Board's decision.

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d) Also, abandonment may result from failure
to issue within the twelve months' period of for-
feiture.

e) Where applicant withdraws his appeal and
subsequent Ly files an amendment more than six months
from the finil rejection; or if it be an ex parte
Mevey (1891 C.D. 115; 56 0.C. 805) situation and the
amendment is submitted more than six months after the
Examiner's Statement (Ex parte Coverstone 1929 C.D.
16; 381 0.0. 483, the case is abandoned, and this ir-
respective of the nature of the proffered amendiant .

To pass on questions of abandonment of the
above charactor , it is essential that the Examiner
know the dates that determine the beginning of the
statutory period under varying situations. The ex
parte prosecution before the Examiner presents few
departures fron the ordinary type in which the appli-
cant's response must reach the Office within six
months from the mailing; date of the Office letter ,
or not later than the date set as ending the shortened
period for reply. The date determination is treated
above in Joc. 10-11-13.

### Insufficiency of Response

A frequent case of abandonment is where a re-
sponge is made by the applicant within the statutory
time but, in the opinion of the Examiner, is not
fully responsive to the Office action.

10-12-3.
Reconsideration of Holding of: Revival

When advised of the abandonment of his apeli-
cation applicant may wither ask for reconsideration
of such holding if he disagreos with it; or petition
for rovival . of ho acquiesces with the holding ;.
10-12-4. Holding; Based on Insufficiency of Res: case
Applicant may deny that his response was incom-
plete.

While the Examiner has no authority to act
upon on apr lic :tion in which no action was turen dur-
ing the statutory or shortened period, he may reverse
his judgment as to whether or not an amendment received
during: Buch period was responsive and act on a case of
such character which he has previously held abandoned.
This is cot a revival of an abandoned applicatica but
merely a hol lins that the case was never abandoned.

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Where the bona fide response to the Examiner's
action is filed before the expiration of the six months
allowed by law (or set shortened period), but through
an apparent oversight or inadvortence some point nec-
easary to a complete response has beon omitted, -- such
as an amendment or argument as to one or two of several
claims involved or signature to the amendment, -- the
Examiner, so soon as he notog the omission, should re-
mire the applicant to com lote his response within a
specified time limit (as 20 days), it the poriod has
alroady expired or not sufficient time is loft to take
action before the expiration of the period. If this
ho done the application should not t hold abandoned
even if the six months for bot shortened porjod) has
thun expired. See Rule 19 .!.

If there is sufficient tian left for completion
of the response, applicant is notified in what respect
, his response is insufficient and the time within which
it must be made fully responsive .. .

10-12-5.
Holding Based on andlare to
Respond within Period

When an amendment roaches the latent Office
(nos the division) after the expiration of the statu-
tory period and there is no disparity as to the dates
involved, no question of reconsideration is prosented.

However, the Examiner and the applicant may
disagree as to the date from which the statutory per-
iod commenced to run. In this siteition, no in the sit-
uation involving sufficiency of response, the applicant
inny take issue with the Examiner und point out to him
that his holding was erroneous.

In some instances drawing roompaying; now ap-
plications are of such quality that they may not be
admitted for examination because of affective oxecu-
tion or other reason but nevertheless are acceptable
for purposes of securingo filia dito The Chief
Draftoman in such cases mirka the drawings "ad. for
filing date only," when drawings a wicked a to re-
ceived by the Primary Examiner he will immediately
write a letter in the case notifying urileant thit
the drawings have been admitted for the purpose of
giving the application a filin date bet that within
ninety dayo ho must file format drawhigs meeting; the
requirements of Rule 12.4 and eraforming; with the
drawings on file. The letter should additionally stato
thet, failure to furnish such drawires within the timo

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stated will be taken as sufficient basis for holding
the application abandoned. This letter of the Primary
Examiner will not be counted as an action and the file
should be appropriately marked as a new case and placed
with the now cques wwaiting action. If formal draw-
ings are not filed within the ninety-day period, an
action should be taken holding the case abandoned. The
ninety-day period may be extended by the Primary Exan-
iner upon request.

10-12-6.
Paultions Relating to abandonment

Rule 19.3. Novival of abandoned
application an application abandoned
for faiture co prosecute may be revived
aa a pending; application if it is shown
to the satisfaction of the Commissioner
that the dolay was unavoidable. A poti-
tion to revive an abandoned application
muss be accompanied by a verified showing
of the causes of the delay, by the pro-
posed response unless the same has been
proviously filed, and by the petition
fee.

Rule 31.1 (Reproduced and discussed in 12 and
the Sections therounder), is of general nature and
provides remedy fren the action of the Examiner in
holding a ende abandoned for insufficient response
or as boin . too late and with which holding; the ap-
plicant disagrees.

Determination of these petitions may be del-
erated by the Commissioner to the Supervisory Exam-
iners or to the Solicitor or Law Examiners, but any
such action may be reviewed by the Commissioner.

A petition to revive an abandoned application
should not be confused with a petition fron an Exam-
iner's holding of abandonment. As stated above aban-
donment may resgit not only from insufficiency of ro-
sponse but also fron entire failure to respond, within
the statutory period following an Office action.

Where the holding; of abandonmont is predicated
on the insufficiency of the response, or disagreement
na to controlling dates the potition from such holding
comes undor Bule 31.1 and does not require a foo.

The mere filing of a petition will not stay
the period for replying to an Examiner's action which
may be running arinst the application nor act as a
stay of offer proceedings. A petition filed noar the

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end of the statutory perind, even if not reached for
decision during that period. does not operate to extend
the period. However, if the petition is granted, the
onse ir not abandoned, provided otherwise full response
to the last Office action had been made within the sta-
Lutory six months. For example, if the petition is to
vaente a final rejection as promature, and within the
statutory period there is filed an amendment traversing
the rejection, or amending the finally rejected claims,
supported by argument, but yet not rendering; the claims
patentoble in the opinion of the examiner, thon the
granting of the petition oven ut a dato outside tho six
months' period saves the case from a holding or abandon-
mont; while if the petition is denied, the case is aban-
doned, since under the decision applicant had not made
a proper response to the finni rejection within the sta-
tutory period.

Where the applicant nequiesces in the holding or
abandonment, or where the petition from such holding is
denied, applicant's only recourse so far as concerns
the particular case involved, is hy petition to revive.
Such petition must ho accompanied by a fee of $10.00,
s proposed amendment to the preceding; Office action,
if no such amendment had boen previously filed, and a
vorified satisfactory showing that the delay in pros-
ecution was unavoidable, Role 19.3

10-12-7.
Examiner's Statement on Petition

## Un letition to set aside Broninor's Holding

Rule 31.1 states that the sxaminer "may be di-
rected by the Commissioner to furnish a written state-
ment within a specified time set: in ;; forth the reasons
for his decision upon the matrers nverred in the peti-
tion, supplying a cory thereof t. the petitioner".
often, however, the Supervisory Examiner passes upon
the question without request ny such statement from
the Examiners, if the loante raised is clear from the
record.

## On Fatition to Revive

In answering a petition on revive an abandoned
r. lication tho Examiner should state the dato when the
application became abandoned, whether the amendment, if
aby, is responsive and if not, in what respect it is
rinfective, and whether it puts the milic tion in con-
lition for allowance. If no a.r batsab is filed or if
she petition is not verified the answer should so stato.

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Attention should be directed to the history of the case,
so far as pertinent to the question of revival, but no
recommendation should be made. A copy of the answer
should be sent, the petitioner.

10-12-8.
Disposal of Abandoned Files

Rule 3.4.
Abandoned applications may be destroyed
after twenty years from their filing date,
except those to which particular attention
has been called and which have beon marked
for preservation. Abandoned applications
will not be returned.

10-12-9.
Pulling, Counting, Listing

At the expiration of each quarter an examina-
tion is made of the files in each division to list which
applications have become abandoned during, such quarter .

Similarly at the end of each quartor when the
forfeited cases are returned to the division by the
Issue Division for entering the notation "Forfeited"
on the register opposite the entry of cach case, a list
should be prepared of these cases, arranged according
to serial numbers and forwarded to the Application
Division for entry on the records there. This list
should give the name of the inventor opposite the ser-
ial number. Seo Clerk's Manual for details.

10-12 -10.
Destruction of Abandoned Files

See 10-12-S.

10-12-11.
Ordering Abandoned Filos

Abandoned files may be obtained from the Aban-
doned Files Section by filling; out form 602 with the
necessary data and leaving these forms with the clerk
in charge. The name of the Examiner ordering the file
should appear on the form. . The file should be promptly
returned when the Examiner has finished with it.

10-12-12.
Where Office Action is Returned
as Undeliverable.

Snc Sec. 7-4-3.

An application in which an Office letter was
returned by the Post Office and in which the Office was

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unsuccessful in remailing such letter, is filed away
(together with the returned envelopes) and eventually
sent to the Abandoned Files storage room. See 7-4-3.

### 10-12-12 (a) Letter of Abandonment Received After Application is Allowed

A letter of abandonment received after an appli-
cation is allowed is answered by the Issue and Gazette
Branch, the letter being signed by the Executive Officer.

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### 10-13.

#### Swearing Back of Reference cavit under Bule 13.1

Rule 18.1 Affidavit of major invention
to overcome cited mtent or publication. When
an application is rejected on reference to a
domentie mitont which substantially stors or
describes bur does not claim the reflected in-
vention, or on reference to > foralan patont
or to a printed publication, and the appli-
cant shall make oath to facta showing a com-
pletton of the invention in this country be-
fore the filing date of the application on
which the domestic mtent issued, or before
the late of the foreign patent, or before
the inte or the printed publication, and
shell also make onth thet he has never aban-
doned the invention, then the patent, or pub-
liestim cited shall not bor the prant of n
matant to the applicant, unless the date of
such patent or printed publication be more
than one for prior to the date on which the
applestion wos filed in this country.
The st owing of facts shall be auch, in
character and weight, as to establish re-
duction to practice prior to the effective
date of the reference, or conception prior
to the effective date of the reference
coupled with due diligence to a subsequent
reduction to practice or to the filing of
the application. Original exhibite of draw-
ings or records, or photographic or photo-
static copies thereof, must accompnay and
form part of the affidavit or their absence
antisfactorily explained, and rroof may be
renni cod.

Any printed publication dated prior to an appli-
cant's effective filing date, or any patent of prior
filing date, that is in its disclosure pertinent to the
claimed Invention, is available for use by the examiner
ne a reference. either basic or auxiliary, in the re-
jection of the claims of the application.

Such a reference may be overcome, in certain instances
noted below, by applicant's filing of an affidavit under
Rule 18.1 known as "owearing back" of the reference.

Affidavits under Rule 18.1 apply:

(A) Where reference date is less than one year prior
to applicant's filing dato.

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(B)
Where reference shows but does not claim the in-
vention.

(C)
Where patent is to another inventor, despite
common assignment of patent and application re-
jected. In re Beck, 1946 C.D. 398; 590 0.4. 357.

(D)
In connection with the use of "copending patents"
as references, it is to be noted that it is
proper to use auch a patent either as n basic or
an auxiliary reference, or both the basio and
auxiliary references may be "copending patents".
Minn. Mining & Mfg. Co. v. Coe, 1938 C.D. 100;
497 0.0. 766.

(E)
After appeal to the Board of Appeals, but is
not admissible unless necompanied by an accept-
able affidavit under Rule 16.2 explaining the
delay in filing the Rule 18.1 affidavit. Ex
parte Bowyer 1939 C.D. 5, 505 O.G. 759. See
also 14-1-11.

Affidavit under Rule 18.1 not proper :

A. Where reference date is more than one year back
of applicant's filing date. "Statutory Bar", Sec. 4886,
R.3.

B. Where the reference patent claims the invention,
Rule 23.1 Interference.

C. Where reference is a foreign patent to applicant
or his legal representatives issued on an application filed
more than twelve months prior to the filing date of the
domestic application.

D. Where the effective filing date of applicant's
parent application or an International Convention proved fil-
ing date is prior to the effective date of the reference.

E. Where the reference is a prior U.S. Patent to the
same party, claiming the same invention, the question in-
volved is one of "double patenting"

10-13a.
Reference Patent Entitlod
To Foreign Filing Date

In overcoming, under Rule 18.1, n domestic patent
where the patentee has an earlier foreign filing date to
which he would be entitled in establishing priority to the
invention claimed in the patent, it is NOT necessary for
the applicant to carry his date back of the patentee'a
FOREIGN filing date. (Commissioner's decision in Inter-

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ference Ko. 68,016, involving Viviani plication, now pot -
ent 2,022,260, 161 Ma. 173.)

Should It be established that the portion of the
patent disclosure relied on as the reference was intro-
duced Into the patent application by amendment and na
such was new matter, the date to be overcome by the affi-
davit is the date of the amendment. In ra William et al,
1035 C.D. 229: 454 0.0. 535.

10-13b.
General Rule (Genus and Species)

In mechanical cases, where a mtant containg generic
claims and discloses but does not claim a species, an
applicant, by affidavit under Rule 18.1 may antedate pat-
ent by showing the reduction to practice of a single ape-
cies prior to the effective date of the intent.

10-13c.
Exceptions and Practice
Relative to Chemical Cages

& patent showing a species was used against an appli-
cntion having ronerie claims. The affidavit showed a re-
duction to practice of a different species. It was held
that this affidavit did not overcome the reference. A
second affidavit showed a reduction to practice, of the
same spectes na the patent, prior to the effective date
of the natent and said second affidavit was held to over-
come the reference. Ex parte Fryling, 1042 C.D. 5;
604 0.4. 5.

"The principle is well established in chemical conses,
and in cases involving compositions of metter, that the
disclosure of a onecles in a cited reference is sufficient
to prevent a later applicant from ohtining generic claims ,
although the disclosure in an application of n species may
not be sufficient basis for a generic cinim." In re
Steenbock, 1936 C.D. 594; 473 0.G. 405.

A further case along this line is In re Kyrides,
1047 C.D. 254; 600 0.0. 501, wherein Fyrtdos had previously
been in interference with Anderson. Anderson was the
senior mrtv ant both partien had rongric disclosures.
Fyridea was awarded priority by the court as to the
generle "laing on the basis that he had an earlier co-
pending applle tion which disclosed a single speciod.
The interference heving terminated and ex parte broseen-
tion renumey the examiner rejected the generic claims in
Fyridea' application on the Anderson application on the
ground that while the court had awirded Kyrides priority
in the generic Invention it did not necessarily follow
that Feridas was entitled to the allowance of claims for
auch wegeris invention. The court upheld the examiner,

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stating:

"We have heretofore stated that the awarding of
priority to an applicant in an interference pro-
ceeding does not insure or even suggest, that he
is necessarily entitled to his claim in a patent."

Kyrides by affidavit under former Rule 75 attempted
to overcome the Anderson application by Kyrides earlier
application. The affidavit was held to establish no more
than that one species had been reduced to practice as of
that date. A showing of one species alone by either a
Hale 18.1 affidavit or an earlier application looking a
generic disclosure does not overcome an intervening ref-
erence whose effective date is prior to the filing date of
the application in which the generic claim is asserted.

The quantum of showing in an affidavit under Rule 18.1
necessary to overcome a rejection of generic chemical
claims on disclosed but unclaimed species varies with the
circumstances.

In accordance with the trond of present practice, it
cannot now be stated that any arbitrary number of species
will be regarded as sufficient in all cases, but the show-
ing in the particular case should be representative at
least of the class covered by the rejected generic claim.

"Markush" Type Genus Claim:

Where a claim reciting a Markush group is rejected on
a reference disclosing but not clomming a specific member
of the group, the reference cannot be avoided by an affi-
davit under Rule 18.1 showing n different member of the
group.

The affidavit must actually show the species of the
reference or at least a species which would be clearly
suggestive thereof. In re Fasse et al., 1944 C.D. 271;
563 0.0. 582 did not involve an affidavit under Rule 18.1
but appears to support this doctrine.

10-13-1.
\-
Who May Make Affidavit

A.
The Inventor (applicant) .

B. One of two joint inventors is accepted where
suitable excuse is riven for failure of the
other applicant to sign. Carlson et al., 1936
C.D. 05; 462 0.6. 479.

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C. The Assignae or other party in interest when it
is not possible to produce the affidavit of
the Inventor. Ex parte Foster, 1003 C.D. 213;
105 0.0. 261.

10-13-2.
Patent Claiming Same Invention

When the reference in question is a patent whose
issue date Is less than one year prior to the filing
date of the application being examined, applicant'
remedy, if any, must be by way of Rule 25.1 instead of
Rule 18.1. The Examiner should therefore take note
whether the status of the patent as a reference is
that of a PATENT or a PUBLICATION. If the patent is
claiming the same invention ns the application, this
fact should be noted in the Office letter together with
citation of one or more of the patent claims in support
of this holding. The reference patent can then be overcome
only by way of interference.

10-13-2a.
Affidavit Under Rule 23.1 Mal.
Be Removed Before Interference

Where an application in which an affidavit under
Rule 18.1 has been filed is to be involved In an inter-
ference, the affidavit must be senled in an envelope
properly labeled before forvarding the application to
the interforonce division.

The same practice obtains with respect to a Rule
18.1 affidavit in the file of an application made the
subject of a motion under Rule 25.4 or 25.5.

Under the practice established in Ferris v.
Tuttle, JMO C.D. 5. 521 O.G. 523, the Rule 18.1 affi-
davit is thrown open to the opposing party or parties
to the Interference at the time the preliminary state-
ments are opened.

10-13-3.
Facts And Documentary Evidence

The essential thing to be shown under Rule 18.1
is priority of invention and this may be done by any
satisfactory evidence of the fact.

Where the applicant acknowledges in his oath a
FIRST filed forelpo application less than twelve
montha princ to his U.S. filing date, and antedating

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the reference, such foreign application will void the
reference if a certifiel copy of the foreign application
is filed, together with a sworn translation, if the cony
be not in English. Ex parte Mattlet, 1926 C.D. 62; 347
O.G. 1047.

FACTS, not conclusions:

(A)
As shown in attached aketches.

(B)
As shown in attached blueprints.

(C)
As indicated by necompanying model.

( D)
As shown in attached photographs.

(E)
If verbel disclosures were made inatend of
the above, supporting statements by the
witness will be acceptable.

(F)
If the dates of the exhibits have been
removed or blocked off, the matter of dates
can be taken ence of in the body of the onth.

The dates in the bath may be the actual
dates or, if the anni' copt does not deaire to
disclose his actual Jotes, he may morely
allege that the ats reret al to occurred
prior to the effective date of the reference.

A general allegation that the invention vas com-
plated prior to applicant a bling date is not suffi-
cient. Ex parte Saundora, 1883 0.0. 25; 23 0.4. 1224. It
must include:

"If the applicant made aketthea he should so state,
and produce and describe thom; if the sketchna vero made
and lost, and their contents remembered, they should be
reproduced and furnished in place of the originals. The
same course should be mirmed If the disclosure ens by
means of models. If neither skerches nor models are re-
lied 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 Deteven. 1800 C.D. 100;
52 0.0. 300.

The affidavit most state BUTi and produce noch docu-
mentary evidence and exhibits in support thereof ad aro
avijfable to show conception and comrietion of invention
IN THIS COUNTRY, the conception at least heing at a date
prior to the filing date of the patent. Where there has
not been reduction to practice in this country prior to
the date of the reference. the applicant musst show dili-
rence In the completion of his invention from time junt.
prior to that Ante continuously up to the date of filing,

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which constitutes a constructive reduction to practice.
In this connection, note the following'

Is echtoption of an invention, evidenced
br Atarlegure, drawings, and even e model, in
not : complete invention under the patent.
laws. hal confers no rights on st Inventor
and has no effect on a subsequently granted
patent to another, UNLESS HE FOLLOWS PP WITH
REASONABLE DILIGENCE BY SOME OTIES ACT, auch
As ar antual reduction to practice or filing
an application for a patent." lagomtic
Weighing Khion. Co. v. Pneumatic Soale Corp.,
Limited. 1000 C.D. 498; 139 0.0. 091.
Where concep cion occurs prior to the date of the
reference, but reduction to practice is afterward it is
not enough merely to alloge that applicant had been
dillment. Ex parte Hunter, 188º C.D. 218: 49 O.G. 733.

The facts to be established under Rule 18.1 are
similar to tiose to be proved in interference. Under
Rule 18.] napijoant. may show conception in this country
prior to the date of the reference, coupled with diligence
up to the time of reduction to practice, which may be ac-
tual or constructive.

Conception :s the mental mrt of the inventive act,
but it must be capable of proof, as by drawings, complete
disclosure to another person, etc. In Mergenthaler v.
Scudder, 1897 C.D. 724 81 0.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 inter-
action mint be comprehended also.

10-13- 38.
Diligence

What is meant by diligence is brought out in Christie
v. Seybold, 1395 C.D. 515 64 O.G. 1650. In patent low,
an inventor is either diligent 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 motent law when
he is doing nothing, if his lack of activity is excused.

10-13-D.
Reduction to Practice

Reduction to practice is defined en Corona v. Dovan,
1928 C.D. '52, 370 0.G. 1011 wherein the making of a
brief examination of test slabs of rubber constituted a
valid reduction to practice of an invention even though a
commercial form of the invention had not been made not
tested. A test is unnecessary if the device be so simple
that making it ra ffices to show that it would work.

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Mason v. Hepburn, 1808 C.D. 510; 84 0.0. 147. If various
related chemicals are tried out in sequence, their chemical
behavior may be so predictable that compounding a substance
may be a valid reduction to practice without a test, but
if auch prediction is not obvious, the date of testing is
the dete of actual reduction to practice.

10-13-3c .

Interference

Statements and

Testimony

Sometimes Used

A preliminary statement in interference may be ac-
cepted in some cases as equivalent to an affidavit.

In place of an affidavit the testimony of the appli-
cant in an interference may be used to antedate a reference.

The part of the testimony to form the basis of priori-
ty over the reference should be pointed out. Ex mirte
Rowver, 1930 C.D. 5: 505 0.4. 759.

10-13-d .
Acts Relied Upon Must Have
Been Carried Out In This Country

The affidavit must contain an allegation that the
ucts relied upon to establish the date prior to the refer-
ence were carried out in this country. See Public Law
500, Section 9.

10-13-4. Exhibits May Be Submitted In The Form Of: .

A.
Sketches
B.
Blueprints

C. Model g

D. Photographs

E. Statements of witness

Toto:
Dates on the exhibits may be blocked out if
taken care of in the body of the onth.

Exhibits filed as part of an affidavit under Rule 18.1
that are too bulky to be placed in the application file
are retained in the Examining. Division until the caso is
finally dlanosed of. When the ense goes to issue (or aban-
lonment ) the exhibits are sent to the Model Room, notation
to this effect being made on the margin of the affidavit.

10-13-5
Engned Loon Ry Prima ry Examiner
The question of anfficiency of affidavita under Rule

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16.1 should be reviewed and decided by the Examiner In
charge of the division. (Order sme)

10-14. Affidavits Traversing of Supporting References
Role MM.2
Note (10 - 8 - 11:
T'es Rute 38.2 fois vits traversa grounds of
rejection.

han an onelies tion is polected on ref-
erence to - donnetie mitent kid substantially
wwwa or deneribes but does not claim the in-
vention, ar on reference to . fon:ien mtent,
or to a printed nablication, os to Pacta
thin the my rsonal knowledge of an employee
of the cortee, or slon rejected upon n mode
os capability of operation attributed to a
reference, or hecanne L'a allered invention
is held so ko inoperative or Jacking in
utility, or frivolous or infurious to public
Health or morals, Affidavita te vergine these
ref rences or objections may be received.

Applicants sometimes during the prosecution of their
application file affidavits attempting to overcome re-
fections. Euch affidavits should be directed to an issue
raised in the care, ex arte Robinson, Jong C.D. 127; 115
O.C. 1584, And shold recite Preta instead of conclusions
and opinions, ex porto Korunder, 1010 C.D. 121; 157 0.2.
202.

Affidavits swearing bnc' of a reference have been
treated under 10-13.

Rule 19.2 enumerates verton grounds of rejection
where affidavits seeking to remove these respective grounds
may he received.

of a bient attacke!, i. Principle I followed:

And one !!! after its oppKroner. 1 1.
ex mit. asmart dereronderant burden of proof. Per
this reason, and also since the Office has no Jabor tory
means of checking the tests ande le arfient, and aince
the patentee ling no opportunity to defend the operativenest
of his claimed invention, the affidavit should not be
given the amal status of an affidavit in its bindine
effect as to factual statements therela mode, but should
be accepted memly the status of an expression of culuion
of ma astept in the art. "with its at bus then construed,

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the affidavit will be admitted and considered by the Examiner.

Affidavits relating to the following subject matter
have sometimes been given weight.

The statements and conclusions set forth in affidavits,
however, have no binding effect upon the consideration of
an application by the Examiner.

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10-15
Interviews
10-15-1.
General Policy, now Connected

The personal appearance of on replicant or Lla
avent before the strainer, presenting matter, for his
consideration is considered an interview, in its more
limited sense , however, an interview gongrally relates to
a consideration by the examiner and the attorney or
applicant of an ismo existing in a pending application .

The coraltions under which Interviews with the
Examiner (1 .. uno Primary examiner or, in his absence,
the Assistant truiry Examiner, may be hau Is governed by
Rule 16, 5 the first paragraph of whier sinten:

"Interviews with Examiners concerning
applications and other matters pending
truture che office must be and in the
Examiners rooms at such C. mes, within
office wants, as the respective Exam-
inors muy designate. Interviews will
not be permitted at any other time or
ploce vitbott the authority of the
Commissioner . Interviews for the dis-
cussion of the patentability of pend-
ing applications will not be had prior
to the first official action theroon.
Interviews should be arranged for in
advance "

The Primary Examiner ordinarily conducts the
interview, with the Examiner in charge of the application
usually present. However, the Primary examiner may, in
his discretion, authorize the Examiner in charge of the
application to 40 20 Applicants and attorneys should
not interview offer Examiners except by express per-
mission of the Primary Examiner.

An intery or should normally be arranged for in
advance, as by lutter, telegram or phone eatt, in order
to insure that the Primary Examiner and/or the Examiner
in charge of the application will be prodent in the
Office. The expected appearance of an attorney or
applicant requesting an interview without any previews
notice to the Examiner may well justify Fis refusal of
the Interview at :hat, time, this particularly in an
involved case The right to an interview Lies wholly
within the discretion of the Primary Examiner

An interview should be had only when the nature
of the application admits of such and solely to develop
ani clarify specific issues and to reach a mutual

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understanding between the Examiner and the applicant, and,
if the application is not under final rejection, to close
the prosecution thereof. Thus the attorney when presenting
himself for an Interview should be fully prepared to
Jiscuas the Issues raised in the Office action. When it is
obvious that the attorney is not so prepared or does not
understand the Issues involved an interview should not be
permitted.

The Examiner should not hesitate to state, if such
be the case, that claims presented for consideration at
the Interview require further search and study and that
the status of the application does not warrant an interview
at this time. Nor should the Examiner hesitate to conclude
an interview when it appears that no common ground has
been reached, it being apparent Erat the application requires
further amendment or an additional action by the Examiner.

In no case should an interview be allowed to become
protracted with the expenditure of an unreasonable amount
of the Examiner's time. It is the auty of the Primary
Examiner to see that an interview is not extended beyond a
reasonable period even when ne does not personally parti-
cipate in the interview. Matters irrelevent to the subject
matter should not be discussed.

Where there is an attorney of record in the appli-
cation, an interview with the applicant alone, with or
without previous notice, should normally De refused where
it is a, parent that the applicant is not familiar with
patent practice and where his presence indicates only a
desire to explain his invention or its commercial possi-
bilities, or to argue that the rejection is not proper,
or references are not pertinent. In this respect attention
is directed to the proviso in Rule 1.6 that the "Office
cannot act as expounder of the patent lav, nor as counsellor
for Individuals."

During an interview in which the applicant is
prosecuting nis own case and is not . familiar with Office
procedure the Examiner may make suggestions that will
advance the prosecution of the case; this lies wholly
vithin his discretion. Too much time, however, should
not be allowed for such interviews.

##### 10-15-18. No Interview Permitted Prior to First Official Action

No interview is permitted on an application prior
to the first official action thereon. And it obviously
follows Chat no interview can be reld in advance of the
Filing of an application. In this regard it is the
practice of many attorneys, searchers and inventors to
consult the Examiner as to the field of search or whether

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he knows of any art . homescic or foreign, not covered by e
search already made Ordinary courtesy to those doing
business with the office ras countenanced this practice.
However, the Examiner van confronted by such a request
may in his discretion comply with such request, but in no
case should he permit a detailed explanation of the
Invention with attendons discussion thereof as to the

field of Search sasailing che expenditure of an unreason-
able amount of tim ; Here again attention i: directed to
the above mentioned proviso of dule t.o that the "office
cannot act as an exfounder of the parent lav, nor as
counsellor For Individu ,ts." Nor should Cho Examiner
permit searching in the ilvision without the consent of
the Primary Examiner.
&
10-15-1b.
Interview for "Sounding Out"
Examinar Not Permitted
Interviewsthat are solely for the purpose of
"sounting out" the Examiner as by a loenl attorney acting
for an out of town attorney should not be permitted when
it is apparent that any agreement chas would be reached
is conditional on being satisfactory so che principal
attorney . Juch practice nullifies the real purpose of
interviews and is o waste of the Examiner's time in the
event the agreement is not satisfactory ..

10-15-1c.
Substance of Interview
Must be Made of Record

The substance of an interview must always be made
of record in the application, particularly where agreement
between attorney and the examiner is made. Rule 18.3
specifically requires that.

"In every instance where reconsideration
18 requested in view of an interview with
an Exemicer. a complete written statement.
of the reasons presented at the interview
as warranting favorable action must be
111 ... . "

An interview does not remove the necessity for
renponen to office actions.

After an interview the case May be considered
"Special" at the discretion of the primary Examiner.
10-15.1d. No luterview with Disbarred attorney

Patent office employees are forbidden to hold sitter
oral or written communication with a disbarred Attorney

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regarding an application unless it be oan in which soid
attorney is the applicant. Pover to irtect given a dis-
barred attorney will not be accepted by the Examiner.

###### 10-15-1e. No Inter varte questions Discussed Lx Parte

After an interference is declared the Examiner
mny not discuss inter parte questions ex parte with any
of the interested parties. Soe 11-0-1.
10-15-2
Exposure of other cases

Prior to an interview tre Examiner should arrange
his desk such that files, drawings and other papers are
placed out of view except those necessary in the interview.
See 2-1.

10-15-3
Demonstration, Exhibits, Models

The invention in question may be exhibited or demon-
strated during the interview ov a indel thereof which may
be sent to the Office prior to the interview where it is
received in the model room ana forwarded to the division.
A model is not to be received by the Examiner directly from
the applicant or nis attorney.

All models received in this virice, whether forming
part of an application, or filed upon request from the
Examiner, must be received from the model moom and not from
the applicant or his agent. It is necessary that all models
should be taken to the Model Room for proper recording in
order that they may be located under subsequent inquiry and
for final disposition. The Examiners should, therefore,
refuse to accept models from inventors or attorneys. Models
properly received and entered upon the books of the Model
Clerk will be delivered by a representative of the Property
Clerk's Office.

Oftentimes a model or exhibit is not given into the
custody of the office but is brought directly into the
division by the attorney solely for inspection or demon-
stration during the course of the interview. This is
permissable. 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 Primary Examiner. It is presumed that the
witnessing or a demonstration or the viewing of an exhibit
is actually essential in tre developing and clarifying of
the issues involved in the application ..

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LO-15 -4
Fammiby Selected App: Ima. dog

If the contents unter final rejection, the Examiner
may give me firethe moon though no proposed amendment
nes Den Ii: Derece extended wa applicant after
final proteccize att! be determined in part by the length
of POPIn THE final rejection, and the possible
patentable out: - matter in the case Interviews on
finally rejected cases can be Justified only on the ground
that the applicant was not fully unterstood the position
of the dannhier the the deiner the not fully appre-

elated de Have Not in the clair over the prior art,
or that the waiter may be able to offer neme constructive
ald In neemtin: manily rijocted claims or In formulating
a new claim that youto distinguish over the prior art where
tre cage conthing ghtontable subject mucher not fully
protectan by any atlowes claims .

###### 10-15-5. Interview preceding Filing Amendment Fala 34.2

After a :mais vene to Issue, it is technically
no longer una: eur. attction of the Primary Examiner.
Rule 542 An hacerview with an Examiner that would
involve a drog:lui consideration of alaima sought to be
entered ah Darnog absiting n discussion of the prior art
for determining yrathey are not the claim are allowable
should not be given seriously an applicant is not entitled
to a greater da tree of consideration in an amendment pre-
sented informally tran is given an applicant in the con-
siderntion of the himnament when formatly presented, parti-
cularly since consideration of an amendment filed under
Rule $4.2 caunor mo demanded as a matter of right. However,
it is entirely proper should the Examiner be confronted
with a request to stato frether a claim of a proposed
amendment under fallet 2 is allowable to peruse the same
and inform strany either, (1) that the claim is
patentable or : " that it is not obvion; that the proposed
claim to pararein) .A suggestion by the Examiner of An
amenoment init vohis render the eleim allowable is always
In order

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10-16-1.
Must be Fully Result .NA

References to re miremenos so sivile are traitord
in Sec 9.

Rule 15.1. hejly by go . leant. Aftor
the Office act pp. if adverso in say respect,
the applicant, i ho forsiata in nis applica-
tion for n patent, must reply a proto and may
request re-croci ction or roc : alparation, with
or without ame ch.

int oper :entitled to re-or cination
or reconsidere ... .. the applic u .. ... 1. make
request therefor Meriting, and a ount dis-
tinatly and specifically point out the supposed
errora in the exauthor's notion; the applicant
must respond to every ground of objection and
rejection of the prior office action (except
that request my be made that objections or
requirements as to form not necessary to fur-
ther consideration of the calima be held in
nbeyonce until a claim is allowed), and the
applicant'a actton must appear throughout to
bo a bona fide attempt to nivaanco the case
to firal action, The mere allocation that
the examiner has errod will not bo received
nn a proper reason for such re-oramination or
reconsideration.

In amending: on application in response
to a rejection. the applicant muut clearly
point out all the patentable novelty which
he thinks the claims present in view of the
state of the art disclosed by the references
cited or the objections mado. Ho maat, also
show how the amendments avoid sech refor onces
or objections.

response in regard to the extraction of formal
matters may be deferred by applicant until a claim la
indicated to bo allowable or appont is uken.

Formal matters gongrally indiole drawing cor -
roctions, correction of the specification nad the pre-
sontation of a new onth. However, the line between for.
mal mattora id substaher is not alone, and the dotermi-
nation of the merits of a case may cometines require that
drawing corrections, cor ections of the specifications and
the presentation of a mew oath he insisted on.

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Rule 16.5 . . . " In presenting new or
amended claims, the applicant must point out
how they avoid any reference or ground of
rejection of record which may be pertinent.
and in adding claims which increase the
total number in the case the applicant
should and may be required to show how they
substantially differ from each other and
from the other claims."

The prompt development of a clear i: mic for final
rejection or definite reasons for allowanco of the claims
requires that the responses of the applicant, bo intelli-
gent and meet the objections and rejections of the ex-
aminer.

###### Amendmen is Not Fully Responsive Action to Be Taken

If there is sufficient time remaining in the six
months Statutory period or set shortened period when ap-
plicant'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 abandon-
ment. Dee 10-12-2.

Where a bona fide response to an examiner's action
is filed before the expiration of the permissible period,
but through an apparent oversight or inadvertance 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 applicant to complete his response within a
specified time limit (usually 20 days). If this is done
the application should not be held abandoned even though
the prescribed period has expired.

Rule 15.1 requires that the applicant's action
"must appear through ut to be a bona fide attempt to ad-
vance the case to final action." Thus, in deciding, the
question whether a slightly defective amendment is such
as saves the case from abandonment, the good faith of
the applicant in making the responso must be considered.
The examiner tests out this good faith by setting a time
limit for supplying the inadvertently omitted matter.
Whether the applicant does or does not supply such miss-
ing matter within the ti e limit will enable the examiner

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the better to judge the moi faith of the applicant
as to his Intent to have made a fully responsive action.

The examiner mast exercise discretion in apply-
ing; this practice to asforuurd againat abuses thereof.

The practice attinel above does not apply where
there has been a dolivorale omission of some necessary
part of a complete resp. nao. 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 ita face ia hot a "bona fide attempt
to advance the case i fiori action" (Role 15.1), and
the examiner in without gatherity to postpone decision
as to abandonment (10- 12).

If there be ampla Limo for applicant'a reply to
be filed within the time period, no reference in made
to the time limit other than to noto in the letter that
the response must bo completed within the statutory
period dating from ih: last Offica action.

10-16-2. Claims Presented in Amendment with No
attempt to Point Out Patentable Novelty

In the consideration of etaima in an amended case
where no attempt is ride if print out the prison tablo
novelty, the claimt she f mt bonitosod.

Doe ex parte Poter p 103º C.D )1, 376 0.0. 3,
sustaining the ho! Das of abandonment for a nonrespon-
sive amendment, wherein it was Feld that. Order 2801 was
intended merely to emphasize the necessity of enforce-
ment of old Rule 68 as to the presentation of proper
arguments, reasons of showing na te jokestability.

10-16-3 to 8. Examiner Should immediately hispect

Actions by applica. especially the filed near
the end of the statutory great, Would be repeated
immediately upon filosstedet taire whether they aro
completely response. Her preceding Ofthe action so
na to prevent abandonas of the application, If found
inadequate, and sufficient time remains, applicant
should be notified of thed fletencies and warned to
complete the rodpense within the staintry period.
( Order No. 2215)),

All amended cases when out of the examiner's desk
should be Inspected by hcm at once to dotormine!

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If the amendment is properly signed
If the amendment has been filed within the statu-
tory period, set shortened pericd or time limit.
If the amendment is fully responsive
If the changes made by the amendment warrant trans-
fer.

If the case is special

If claims are copied for interferone and to aster-
tain the probability of an interference with any pondi :...
application.

10-16-3.
Immediate Inspection of Agendaen !.
for Shem turo

The amendment must be inspected to determine if it
is signed by the inventor or someone who has power to sign
for the 1:von tor. Soe 10-2 Signatures to Actions and Re-
aponses.

10-16-4.
Immediate Inspection of Amendment to
Determine if Within Time Period for
Response
Tho amendment must be inspected, as to its date of
filing in the Office and as to the previous Office action
to see if a shortened period had been set, an extension
granted, or the six months statutory period applies, to
determine if the amendment has been filed within the per-
iod for response. See 10-12-2.

###### 10-16-5. Immediate Inspection of Amendment to Determine if Fully Responsive

The amendment together with the last Office action
should be inspected immediately to determine if the amend-
mont is completely responsive.
:
:
10-16-6.
Immediate Inspection of Amendment to
Determine if Changes Made Warrant Transfer

Applications should be inspected to cotermine if
tho cancellation of claims in the case or amendments made
in the claims change the classification of the case to
another division. Cases in which division is required or
which are under Dral Prosecution should be especially noted
as the classification of such cases is frequently changed
by an amondeent and the transfer of the case should not be
dolayed.

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###### 10-16-7. Immediate Inspection of Amendment to Determine if It is Speciad

Amendments and the Uffico actions should be inspect-
ed to determine if the case should be acted on out of its
regular turn. See 10. 6 for Definition and List of Special
Cases.

10-16-8.
Immediate Inspection of Amendment to
Determine if Cistas Are Copied for
Interference

Amondrosits should bo inspected to doboratno if
claims are presented that aro copied from a patent for
interference. An amendment merely presenting unsugrostod
claims from a patent asking for an interference deos not
stay the running of the statutory poriod dating from an
unanswered Office action. Joe Doc. 13.

10-16-9.
Amendments Sent to Wrong Division
Seo 7-1-14.

10-16-10.
Amendments Not in Permanent Ink

If an amendment in other than permanent ink is
filed, it is entered, but a permanent copy is required
to be filed. A good carbon copy is accoptablo.

10-16-11.
Telegraphie Amendment

Whon a telegram amendment is received it is
placed in the file, but not ontered. If ratification
of this amendment does not follow in due time, the appli-
cant is notified that proper ratification is required;
otherwise, the telegram will not be accepted as a response
to the former Uffico action. If he does ratify promptly,
the amendment is entered. (Ses 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 we to ono sent
by mail.

10-16-12.
Anondmonto Before Flest Office
Action

See 8-8-52.

As an applicant has the right to spend before ac-
tion on his ense provided the number of claims is kopt
within the limit imposed by his filing foo. on amondmont

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ty grutimes filed along with the Filing of cho applica
tion. Such amendment does not enjoy the status as part
of the original disclosure. It is entered in the case
pit reted on in the first office action. It regard to
the introduction of now master by such an mendans son
$.9-52.

10-16-13. Claims added in Excess of Einigen

In casop in which claims in excess of The mmmmbor
entresponding to the filing fow ard grund hope 100
First official notion of the case. the salutper will piaca
the amendment in the file and water it on the file wrapper
mit. will dofer setion on the claima presented in the amond
mont. In his first action the osominer should act on the
claims originally presented and for which the appropriate
ree was paid. In this first notion the maniner also
Should inform the applicant that If the hutinves that any
of the alning presented by the mondmont, mo patentable,
he can have them entered and considered in the hoxt action
but only by specifically pointing out wherein the claims
presented in the amendment are patentable over the rofor.
oncey cisod by the exammir .f.

###### 10-16-14. Amendments After Final Rejection or Allowance

istle 16,2 Amendments Altar Lunar ...
flot. After final rejection of fetten (Bilo
15.31 amendments may be made cancellide clus
or complying with any ro jusromont of form
which has been ande, and anendants presenting
rejected claims in better form for considera-
tion on appeal may be admitted ; but the admis.
Siem of any such amendment or LESS refusal and
any ; roceedings relative Nevet that not
sperate to relieve the application from its
condition as subject to append of ie dave 1
from abandonment under Rule 12. 1.

If amendments touching The reefils of
the application be presentod after final ro
Jection, or after append has been taken, or
when auch mondent might get off PWitt bo
proper. they say be admitted gren o aboatby
of food and sufficient ressent why Why are
ABILITY ET WON TONHOTEL
No suendment can be made ha fattor of
ritt in appealed cases between the Ftling
of the winners of tomat of THE
of his decision !Hope 2)

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of the appellate tribunal except as provided
by Rule 32.4. After decision on appeal,
amendments can only be made as provided in
Rule 52.9, or to carry into effect a recom-
mendation under Rul3 32.7.

Once a final rejection that is not premature has
boen entered in a case it should not be withdrawn except
on the showing required by Rule 16.2 and the approval of
the Supervisory Examiner. This does not mem that no fur-
ther amendment or argument will be considered. Any umund-
ment that will placo the onso either in condition for
allowance or in cottor form for a; poul will be enterod.

In every oase where an amendment is filed after
final rejection, suoh amondmont will be considered by the
examiner at least to the extent of determining whether the
ro-argued or amended claims could be allowed without fur-
ther search. An amendment with appeal which presents uddi-
tional claimo without cancelling corresponding finally ro-
jocted cinims would not ordinarily be considered as placing
tho application in better condition for appon], Ex parte
Wirt, 1905 C.D. 247, 117 O.G. 599.

###### Amendments After Fical Rejection or Allowance Action Tuken

If pouuible or expedient applicant should be noti-
fiod within the statutory six months period following; final
rejection of the disposition of any amendment. filod after
final rojoction.

Where the amendment places the case in condition
for allowance the notice of allowince of course is suffi-
cient.

Where an amendment filed after final rojoction,
within the statutory period, not accompanied by the filing
of an appeal, does not place the que in condition for
allowance, applicant la informed that the amendmont hos
not been ontered us it ta not considered to be a proper
response to the final rejection. When such an amendment
is also presented for purposes of appeal and iu considered
by the examiner to place the caso in better condition for
appool, applicant also id Informed that the amondmont will
be entered for appeal on the filing of the appoul.

Failure of applio int to properly respond to a final
rejection within the atntutory period rosulla in a holding
of abandonment of the case. For an exception see 10-16-32
(3).

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0-Jo-15.
Amendment Mailed Lettre. hu
Received in Examining Divina.
After Allownico

Where an mondment, even though pretty
et prior to allow ance, does not reach The office until
after the notice of allowance has been mr iler auch mond .
ment has the status of one filed under Hela At ... Its
entry is a matter of grace. For discussion magenta
filed under Rula 34.2, 800 10-16- 17.

If, however, the amendment is filed in the Criice.
Ent is not received by the oxemisor after to the mailin ;
out of the notice of allowance, it has the same standing
in cho cado is though the notice h: d not boon mailed.
Whato tho case has not been closed to further prosecution,
na by Pinal rejection of one or more claims, or by an uc-
Lion allowing ill of the elias applic uit is entitled to
have Buch tiendaont ontered even though it may be neces ..
Bary to withdraw the application from issue. Such with -
Grawal, however, is unnecessary if the amendatory matter
is such as the examiner would recommend for entry under
Rulo 34.2.

As above impliod, the case will not be withdrawn
from issue for the entry of an amendment that would ro-
open the prosecution if the Office action next ;receding;
the notice of allowance closed the case to further amond-
ment, i.e., by indicating the patentability of all of the
claims, or by allowing somo and finally rojoeting the ro-
mainder.

After an applicant has been notified that the
ola ins are all allowable, further prosecution of the
merito of the case is a matter of grace and not of right
(ex parte Quayle, 1935 C.D. 11; 453 0.G. 213). To this
oztont the metico affecting the status of in amendment
received in the Office on the date of nailin ;; the notice
of allowance, as set forth in ox parto Milier. 1922 C.D.
56, 305 0.0. 419, is modified.

10-16-16. Practice Where Copied Patent Claims Are
Filed in a Case in Issue

The procedure below is to be followed when an
pendant is received after notice of allowance, which
includes one or more claims copied of substantially
copied from a patent.

Whora the examiner, after consider tion of the
proposed amendment, finda one of fate of the copied
tin patentable to the applicant had al interference

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whov idable, be al frapara a lostor requesting tt tho
Microich be withdraw from isone for the purpose of in-
:. This , which should designato the claim
tva, wtedy, tomter with the file
**** *** , to se Commissioner.
1, WHEN rotuning
:****** TE 10-16-24.1 attIng briefly

Wir THO WAS ADDED CREDITO

... twodette, there is not immediately
athies well within the world datowaneo. Othor-
unleas ed intil the toys o heis bonn @rantod.
1 -16-17.

An MULL After
elleve Water Rulo Sek

KLAR MAN MONDONEMOC AOMUNDO.
wwwmenta Prep for annice of lomuice of

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roson ondetien as to its adais ion on this score is ante
by the Exciter. New issue may not be raised for deter-
nin tion enge i caso his son allowed. Rute Mit was
Intended to Hvide de the continental 1
if h applic shlomo otor it has been proven for is te.
For the north just stated, en Heyecan
MAMMA MIA EXTERNOPERSONANON GRATA
under Hele 542 denkt not be wanymi det
in tement of rooms in set of such persondati.
in ottone that it is not obvious Out
Phoned ela . io patenteblo is usually adepto. Of course
www it en basede, a creatinot an ardent the
wald, in the endation of th Examiner, reader the el.
all athle is always in pder.

The regulagente of duty 15.1 (sen 1. 16-1. ) with
prs eet to so'nin ont the tout bio noveltyy o' any 2 In
B. t. to be added , ely tutto e se of m andoch' saber
itidlo 34.2, æ in ordinary contents,
Rule 34.2 does not want en lato the almasion of m
.woudant for the a soffi cion has been printed ,
Dotting : su nossas ] cath is fidel itor :16
lic tion hat gone to is att Buch oath je hot troatod
Em menthal. under Rule ja, but is merely placed in
sho Pile by top. Issue and Javetto Branch , Ho acknowisir-
went of its receipt is made. urter 2798, Jimmary 9,1 22.
(8-2-10 )

10-16-20.

###### Amondnost Under Rule 34.2 Cancelling Claims

Amendments submitted after the notion of allowance
of an mic tion which cabody merely the correction s?
tomat matters in the specification, or font changes in
molim with oh oh mein . to god e Thercor, or ho cassella-
tion of el dias from the w the bien, alatt we rated tron by
Cop : prov ... .

(Similar amebice da was in the matter of artskent.
of the drawing )
wy amendement affecting the disclosure of the a vai.
Ti tion, or mein dl that, de being the end of
: in, what boiled, : merebolaget Contener
(oper :

Page Nr. 10% of internet for mesmo at.
nuder Kul 4 2 with PRAin Order WORLD

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10-16-21.
Amendments Under Rule 34.2
Copied latent Claims

If the mmendmont which the applicant seeks to havo
ontered under Rule 34.2 repeats copied atent el ins, and
the Earlnor is of the opinion that one or more of thom
.ro stontable to the plie at, notion by the Ez etiner
should be tion under the provisions of Relo 34.3, not
undor Rule 34.2; that is, the Examinor should request
withdrawal of the cabe from is. uc.

Where the Exaaisur fada basis for refusing tho
interference on my ;road, action is totun undor Rulo
34.2 as pointed out in 10-10 -16.

10-16-22.

Unter Buje 34.2
Excosa Number of Claims

When an amendment under Rule 34.2 adds claims
which increase the total number in the case chovo twenty,
tho Examinor's clerk in ,re - ring the corn will seo that
the notice board tho atotomont "The final fee in this case
will now be w
" filled in according to the number
of claims that stand flower in the caso after tho on'ry
of the amendment .

Rulo 34.7 is sometimes tal en advantage of where,
after payment of 'he final foo at the end of the six
months period, it is sought to ad : el tims under Role 34.2
which would increase the number of claims in the case boyond
that covered by the final fee, Acceptance of such additional
final foo is of course contingent on the a 'den''s making
a satisfactory showing; as to why the ad es ajains were not
earlier pres ated, whether rinting has now at the ab ro-
vil of the Commissioner.

10-16-24.
Amendment: Undor Rule 34 2 Handling
Order No. 2690 october 12.1921

Rulo 34.2 Procedure. Fotitions to amond
under Rule 34.2 will be sent by tho i .: il Room
to the Issue ind Cazotte Branch.

The Issue mot ansotto Br mich will send
the petition with the filo to the division
which allowod she caso.

Tho Examiner's clerk will and it the
caso to the Examiner for his rocent cadution.
which must be romptly nado. whon the rocom-
mondation is r vor ible (to be indicate: by
applying on the amendment the stamp roadi ...;

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"Entry recomiended under Rule 78" ( :1.2,, the
Ex: minor's clerk will enter the we bent and
reparo a letter, in Villento, (For No,
to the Next, afin
ti: wennmont has been catered. T. : ib PT
sould be placed in thefile, ontop ... on
tho filo we por pho f: the Examine' : register.
The file, together with the menniler saliento,
Ad herent Dans the Issue . Se
Brent with will read it to the container.
If the Examinar's vodom tendathe in adverso
No tax entry of the content, der form
Tu ! ) should be ard du 2.11, to
!: plionot so ivien . 50, 40 mincing
SL: Kanrumme's ro but This letter .could be
: Femte Elle a offered on Wie
Speed and in the Box woer's register The
wn . tiled di lieba. i gother with !: file,
HE he Turned LE Contenporad
BBW ..

After the Soulwieder Las note ! on
who etition, the rite :il be fem. ried
the Last but the brandt, Men
6 .. ... 13 The con un NIE prepretty
the Bantaor, Boc JC 1. 45. and Run. 4.2.
The abygical entry of the mondmont . the clerk in
the use of frans 201 a ad Av ath does not seemtry that the
wwe.det ha been adritt. d; :: r, though ebertly ontered,
it is now constructively adrafted unless of atil approved
by the warsawsioper.

It-10-25.
Mendment Inox Rule 34
Handling Bury in Fart
MEIN WIR HABEN entered
in At WITHIN MAINTENANCE WHAT.
under Hele 44.2, an mendet is groot: china
\* \* el Ana, and then BORG
| + NEGENTIENHAHAHAHA
ma: If megmeans Meg ale nie fr restrimon teros conduct
:iveta with she elaing prog in the code.
PER mint Con La Mit ander
** * * panettone der option
HOW TO MAKE PEOPLE
fatto with. Tip sene es D'or. 2 : 2 060d
could be inden he mora lis mo ..

In Time For. 90 Rx Examiner att P Via Le
Port Ne A MINHAMARCH200
AMIT EINER THAT THEREARE ,

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"The entry of the amendneat proposed undor Rulo 34.2
Las been made in firt. A copy of the Examiner's report ap-
pears bolow."

D: - 16-27.
amendment Filod After the
Buried for Res onse his Ex ired.

Whon an application is not prosecuted within six
sontho from the date of the best office hetjon therein,
within a sot shortened statutory period or a set time ll. it
ind thoreafter an ( cadnon is filed, much . oudsont shall
he endorsed a & Mle mayor of the lich, but not
Pomaly entered de tarExaminer shall immediately notify
the applicant that the windment was not Lled .Athin to
Glue period and thestore cannot be entered . (valor 105)
Joo 10-2. and Ic-11.

10-16-30.
Entry of amendments

when the amendments reach the application Branch
they are assorted according to the Divisiong to which they
bolong, man cae' Mornis these amendments, thather with such
not ap lications an have been received, re cell clod and
sent to the renagetive divisions. There tho amonggenta are
gut in the Mit a to which they portuin, me Js 'iles with
the unentered acond ann's placed on the primary'a desk for
in inspection and such sencilod comments is he wy wish to
note on the margin of the amendatory pa er.

The files and mondaents are thon to ut over to the
clerk, whene duty it is to enter the menonents. The clerk
otomips the amendoont with the date of its receipt in the
division. It is import nt to obsorve the distinction which
n :1843 between thestamp which shows the . ito of r cost of
" nondaont in the division, and the sta: be. rin th . d.to
of receipt of the amendment by the Office. The Latter dite,
sliced in the left-hand corner, should always no referred to
in writing to the a plient with road to Me Rendrent.

The amendment of letter is Placed in the File, iven
ito number as a paper in the is lication, and its chersetes
ondorsod on the file ir. boor in rod ink.

Whon several amondsonta are made in a : Jieation
on the anno day no particular order is to the her of the
racelit or tho .rilin of tho moadmonts can be assumed,
but consideration of the case . uab be civon as far ... . 08-
ølblo as though all the p pors filed wore a composite
sin lo pper.

When the name or rouidence of up licant or titlo
of invention ja changed by amendment, it smut be chungod
in the face of the File in red 1 .. by the clerk of the
division.

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When the name is corrected by amendment, the file
should be sent to the Application Branch for aerroction of
the name in its record.

after entry of the amendment the ap tuition is
"up for action, " and it is very important was it should
be kept sep rito from those a lications witich .wilt iction
by the applic mit. It is glioed on the Exant rle doal , and
he is responsible for its proper disposal. Fr. Examiner
should immediately inspect the windment north in
20-10-3 to 3. After ins sett at the a die !in : | cod
in the amended case files to mit ro-exag when in real-
Jir order.

sundments of other . pers filed in sem botoro
the Law Ext thor should be promptly forwarded so Win.
10-19-2.
Anondeag: Antr: Douind

Claim after Time Limit Is not Encored
Without Cortis inhar's Approval

Where the gautiaus Ges suits that on a tig mit copy
( clair or ol ins from the hunt for the pur wo of esti-
blishing in incorforaneo, i the limit shou) : be sot with-
in which an mendmont con chain: the clain or ottimo should
be presented, and upon failure of he ap 1.si to present
such amendment within the tito limit, or by personable
extension theroot which the Examiner has granel, the arend-
ment will not be entered wis but the approval of the
Commissi mor.

#### List of amendments, Entry Don't

(1) an amendment presenting an unpas able clain,
or a clais: requiring: . now se roh or olbarwise
raising a new issue ia a ese . hoan mention
before the Primary Exams mor 'as boss sosed, as
whore
( 1) All olding have been allows
(b) all el det ve been find rejected,
rojocted. Sec 10-16-14.
(2) Substituto a seifraktion that W ... .. been ro-
quired and is not neede. 300 10-16 ?
(3) . .. but de anwbed by the Reader and
not precated within the time limit of , redon-
able extension thereof, unless ente Luthorized
by the Con issioner. See Section 1
(4) while copied sabent el des really snittod
even thott h the e so is nodor final . mation or on
would get there. sin Cicio, the light his no

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basis in his disclosure for the copied catont claim
or its essence, or where the patent clai : is for
another, even though not divicible different, invon-
tion than that claimed by the application (Intent Cito
No. 1, 27,000,, the clai may be refused admission if
tho ap iti ation falls in class (a), (3), or (c) of
cato: ry, (1) su, i. sosacially if :ho ap liation
is an uld ono. (Sco gation 13) .

(5) An uadi nod monamont or one not properly si med
by a gers a having: authority to presecuto tho caso.
This ap, lios where the amendment is simol by one
only of two inventors. Jog 6-1-11; 10-2; 10-16-11.

(6) An amentoent Mlel in the Latent Office actor
the ne riation of the at itutory period or ant time
limit.

(7) Ant amondment ao worded that it cannot be entered
with cortain neeurney. Soo 10-16-30.

(8) an mondmont cancollias all of Me el 1 8 und
preponting no substitute clal: or clains. 3en 10-12.
(9) an mmendmont in a chide no lonpor within tho
Exxoninorto jurisdiction with cortain oxra tions in
ipolio itions In is uo (Chlor 3311) 1 -16-20, oreopt
on approvit of the Vomdastager.

(20) An amendment filed bifore the first action
incrousing the number of claims in excess of tho til-
ing foo. Joo 10-10-13.

( 11) spondhouts to the de yine held by the Exaninor
to contain now ritter aro nas entered until the
question of new sitter io s tilal. This practice of
non-ontry because of .Ilrod new mitter, souever, doos
not ap ly In the city of a ondacats to the pageific :-
tion :md $1:500.
(12) an amend atory mayor containing objectionable
remarks that , in the opinion of the Examiner, bring
it within the contornition of Rule 1.3, will bo
submitted to the Cost lasioner with a view to its
being; rethengl to ye Jicant.

while amendments falling; within my of the foresoins
catororios should not be entered b the Exantaor at the 6: o
or filing, a subsequent showing by ap licant nay load to
ontry of the amomniont. Joe 10-16-33.

10-16-32.
List of apendente Encorod in Part

To avoid confusion of the record tho conoral rulo
prevails that an amond. weat alenit hot bo encorod in port .
As in the case of most other rulos, the strict obsorvanco
of its letter ar sometimes work nore harm than would re-
sult from its in'r ction, especially if the amendment In
mention in cecived at or near the end of the statutory
oriod. Thus,
(1) An amendment prosentla : an uncalled-for ani

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*** **** subordinate specification with aber

t thus mondod in ote y ont whon re ted in its
turn, the applicant was advised What time anbattuto
specification huset men replica is not necessary

(2) WE WERE twee Rule 54.2, which import is
AAl . ext. 300 1 16-25.
and others

vero, in the Experts di ion, table, they too
would be entered. Then licht in articled that the

Well LOHE Id: HOW MANY MORE MANCh
Meddig the ExEiner.

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(4) In an amendment accompanying a motion granted
only in part, only so much of the amendment as is cover d
in tho grant is entered.

##### 10-16-33. ancadaeats inadvertently Entered No Local Effect

If the et rk inadverton' ly ontera a onondmont when
it, should not h ve boon entered, auch entry is of no lo ral
effect, and the same action is taken as it the changes had
not been actually mado, in samich is they have not boon
legally mado. Unless such wortuthorized ontry ja doloted,
suitable notation should beerdo on the n rein of the mend -
atory paper, a, "Not officially Entored".

an amendatory ppor, ovon though not enterod, should
be given a papor mibes, nad appro ristely ondarsed on the
file jacket, as by "Hot Entered",

10-16-35,
Entry of amendments,
Directions For Note 1 -16-37 ;

as the specification is never returned to p Jieant
under any circumstance, he should retain A line for- lino
copy thereof. In chionding, the attorney or the applicant is
required by Rule 17.1 to specify the exact word or words to
be stricken out or inserted is the application and to indi-
cate the preciso point as by pc and line there the dole-
tion or insertion is to bo made.

##### 10-16-36. Entry of Amendments, Directions for Defective

Where the directions for the entry of an amendment
aro defective, as, inaccuracy in the line desicaater,or
lack of precision where the word to which She amendaont is
directed occurs more than once in the specified ling, and
it is clear from the cont it what is the correct place of
entry, the mendatory par will be pro orly mmended in tle
om atinine division, ani n is ition thereof, ini i le by tho
Ez miner, will be tele on the marin of the mend borger.
The applicant will be duly informed of this alteration in
his mandatory paper and the entry of the dead sent : this
mended; as he will lao bo jatermed of the non-entry of an
mendment there defestive directions and context leave doubt.
: to the incat of : ligent.

10-16-36a.
Amendment of amendments

Kule 17.4 When a. mandatory c] miso is
to be Handed, it should be wholly repritten
ind the ori inal insertion cuicollod, so that
no interlineations or deletions shall a woar
in the clauses finally presented. Matter

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NO CANCER DAY OF WARCRAFT

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kant of # bb may be duca platin
Fila, to determine cheshire woche ce. 00 : 31 4 miomild bo
AIRLINEANNONCES E CASINO
DP ThA EXIATT

LN 17 1.
10-17
File Wennder
10-17-1.
Patera in Pite wrapper

Every paper entered on the "Contents" of o filo
mcould be entered in ink and not in peneit . H the paper
is not to be allowed entry in the case, tak for my be
noted in ink at the time the entre as the "Contents" is
ande. It subsequently the paper i allaved entry in the
case a line may be drawn through the "not entered" hoto.
To paper entered on tro "Contents" of the file proutd over
on withdrawn or returned to the applicant without special
mthority of the commissioner. vurder 2709 )

It is directed that entries a til not be made of
tro pack of a file wrapper, containing the application
popra for a patent, of manera or serions which do not
Become a permanent part of the contents of bon file
(order 767)

10:17-2
Number ing of Anera
In File Wrapper

On the back of the file granger te spinted the
"Contenta" columna, numbered 1 to 50

The priporo when placed in 't Fib: are numbered
and noted in the contents coluna, the application patern
being No I. the print of the drevet, If there is one.
bein: No a art the next paper, monally the First Office
Better Mejl Northgate

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The papers are noted in the contents column
according to their character. If it is an Office action
rejecting any claim, the word "Rejection" is entered on
the file, or if the rejection has taken the form of e
requirement for division , the entry will so indicate,
otherwise the word "Letter" is used . Papers from the
applicant amending the case are designated "Amendmont.",
"Letter to Craftsman" "Sub Attorney", etc

Correspondence from the applicant is entored in the
contents column in red ink and Office correspondence 1a
entered in black ink

After the notation of the character of the papers,
the mailing date lo oncered in regard to Office corres-
pondence and the filing date in regard to correspond ence
from the' applicant. Soo Clerk's Manual Part I, Soc. 4.

10-17-3. Arrangement of Papers in File Wrapper

All papers in aopit. itions hast be arranged and
marked uniformly In the following manner.

The specification ans ail amendments that are to
be printed must be kept serargte from office letters,
appeals and miscellanequa correspondence. The speci ..
Fication and amendments must be fastened to the second
or middle page of the jacket with the original speci-
Fication and claima on the bottom and the Last amendment
on the top. The print of the drawing the office letters
and other papers not needed by che printer must be fastened
to the third page of the jarset the print of the drawing
being alwayo kept uppermost A communication containing
amendments and explanations should ordinarily not be
divided. If the amendmento and explanatory matter be
presented in the som pa er, it Should be treated as an
Amendment and placed on the amon iment side or second page
of the Jacket, care being taken as to mark and enclose the
parts to be printed by rod ink that the printer con readily
distinguish the amendment from fat explanatory antter.
All the papers in the date vitt be marked serially an
neretofore.

Amendments will be intteres beriatly in tre order
of their receipt, all the amendments of the same dato
Dearing the same serial latter if the amendment la short
it should be transcribed an ret ink at the proper place,
and the notation per "A" par "B", etc. should be written
In red ink on the margin Amondments that are transcribed
should never be marked A' AR BA BE . Amendments that are
too long to be transcribes sonvid bo marked AL A2 Al
Be, etc. on the margin the first amendment of 1219 character
In amendment sheet "A" . win. At the second Ad etc. at the

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margin point at which the amendment is to be Inserted
should be written "Insert AL", "A" etc. as the case may
be, and the same letters placed in the angle of a caret
at the proper point or insertion, so that when several
insertions are placed in the same line those different
insertions may be readily distinguished

All insertions and substitutions should be marked
on the original application, if practicable For instance,
if Amendment A provides that claims 1 to 5 should be
canceled and new claims substituted, a red Line should be
drawn transversely across claims 1 to 5 and in the margin
should be written "Sub. A -. " If at a later date the claims
contained in Amendment A- are canceled and a series of claims
contained in Amendment BL are submitted, tho claims in
Amendment Al should be canceled and the proper notation
made in the margin, and in addition the notation "Sub Alm
on the original paper should be canceled and in its place
should be written "Sub Bl", The last requirement is very
important, as the work of the printer is needlessly delayed
and complicated if he is compelled to search from paper to
paper for the proper insertion .

Where amendments are submitted in duplicate. the
carbon copy is destroyed except where the duplicato i .:
received within the time period for response and the original
is late. In this latter situation both copies are placed
in the file ..

If the attorney wishes a receipt for any paper filed
this may be had by enclosing with the paper a self-addressed
postal card identifying the paper. The mail-room receiving-
stamp will be placed on the card, and the card dropped in
the outgoing mail. (Order 1733)

10- 17-4.
Prints

The Principal Examiners are directed to instruct
their clerks to hereafter enter as Paper No. 2 the prints
of the drawings fastened inside the rile vrapher by the
Application Branch. Such entry, of course, requires
endorsement on the file wrapper and on each print of the
appropriate date of receipt and paper number

This does not countermand the order requiring these
prints to be always kept on top of the papers on the right
of the rile wrapper

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All prints and inked sketches subsequently filed to
be part of the record : blueprints do not become part of
the record, see 8-9-46) should be endorsed with the date
of their receipt in the office and given their appropriate
paper number. (Order 3240)

10-17-5-
Data Enter ! on File wrapper

(See also 10 0-10 and 15-2-5)
10-17-58.
Statutory Period ends
on Sunday or Holiday

The following dott in typed or written on the face
of the wrapper : --

1\. The serial number given the application in the
Application Branch 3oe 7-1 -4

2\. The number of the nxomining Division to which
the case is assigned by the application Branch.

3\. The name of the applicant. See 0-6

4\. The residence of the applicant.

5\. The title of the invention.

b. The date of receipt of the various parts of
the application. See 7 -1-0

7\. The date when it Is considered a complete
application. if the parta of the application have been
received at different dates,the date of receipt of the
last part is the date of the complete application, or
filing date. See 7 -1 :4

8\. Tho name ant address of the attorney or repres
tentative. ce b

9\. The name and address of the assignee if there
be one. (This entry is made by the Assignment Branch. )
See 5-2

10\. The filing date and name of country of earliest
foreign application if any and also of each additional
forelen application filed outside the 12 months period.
if any

If any error is made In entering the above data on
the file wrapper and in subsequently discovered In the
examining division the correction of such error must be
made by the Application French except for 9, which the
Assignment Branch correct ::

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Also where a case for which the filing fee was poid
is brought under the Act of 1803 entry on the file wrapper
is made by the Application Braach Assignments are entered
by the assignment Branch

All of the above entries are either typed or made
in black ink. Such changes by amendment as change of
address or of attorney are entered in rod ink by the
Examiner's clerk, the original entry beigs canceled but
not erased.

Where an amendment is filed or a foo paid a day or
two Later than the expiration of the period fixed by statute
care anould be taken to ascertain whether the last day of
Chat period was Sunday or a holiday in the District of
Columbia, and if so whether the amendment was filed or the
ree paid on the next succeeding day

When an amendment is filed on the first socular day
succeeding Sunday or n holiday , which was the last dav of
the period for filing amendments, the clerk should endorse
on the rile wrapper, following; the date on which the amend ..
ment was filed that the last day was Sunday, or holiday. Thus.
where the time porion for response expired on June 5. 1927
and an amendment was filed on June och the endorsement
should be, "Amendment- - June 6 1927 ( June 5th Sunday ) ."
Papers received at the Post Office before 5 P.M. on week
days, excepting holidays and papers filed with the
watchman should be stamped as at present provided in
Rule 1 .7. (Order 3017)

10-17.5b.

Name or Residence of Inventor
or Title Changed

.
When the name or residence of applicont or title of
invention is changed by amendment it must be changed on
the face of the file in red ink by the clerk of the
division

10 - 17 - 15
Classification during Examination

When a new case is received in a division the Primary
Examiner notes in pencil in the upper left hand corner of
the face of the file wrapper the classicjeation of the case
and indicates the assistant Examiner who vill examine it

In the upper right hand corner of the face of the
tile wrapper is noted ( EXk 'S BOOK) whoro the case in
recorded in the Examiner 's Register. (See Clerk 's Manual )

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The file of an application which is subject to dual
prosecution will be so alscingished by noting in red ink
in the upper left hand corner of the file directly below
"Div ---- " the following DI Div
10-17-1b.
intex 61 .49IN

Constant reference is made to the "Index of Claims"
found in the Inside of the File wrapper of all applications.
It should be kept up to date by the Examiner so as to be a
reliable index of all : Ending in a Case, and of the
amendment in which the tedwith to be found

A Line in ink minuta be grava below the Last number
of the group of originil :jaime Thoraafter a Line in ink
should be drawn peloy too fast number of ench successive
group of claims added by atriment , and on the Left side
of the firat claim of cart stoptrent should be placed the
letter designating the conement

As any claim is Pratc.ed a line should be drawn
through its number, divi retained under Rule 11.2 but
not canceled should be es luted by a ring in pencil with
the notation "R11.2". Trin is an aid in mentioning all of
the claims by number in each aution since claims retained
under Rule 11.2 are rejected as not readable on the elected
species.

10-17-17.
Field Mi jearch

Hereafter in each action by an Examiner upon an
application he shall make ba (thisjaled) indorsement ( in
ink) on the left-hand page of the open file wrapper, stating
the classes and sub-classes of domestic and foreign patents,
and the publications in which search for references was
made and also the date of cho search

In the above order "westmind Endorsement" means the
Examiner's initials snouts be noted Also, the date of
search in the scientific Library for foreign patents issued
to the applicant when wearing an application to taste
which was not filed wasn't wants of the earliest foreign
application (order allt month noted in the file
wrapper. (See 10-17- 16 )

10- 17 - 18.
Foropen 24lig Dates

Tho examiners are it tested on passing to issue any
application in which an earther foreign application, or
appllentions, for the same invention has been filed. to
enter (if entry has not been made) at the bottom of the
face of the file wrapper the earliest date of filing in any
foreign country and the nature of such somatry and in the

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event that more than one foreign application has been filed
outside the twelve-months period ( six month for designs) ,
the filing date and name of country of each such application
will also be thus entered. (Order 3233)

The applicant is required by Bule 9.i to state the
foreign countries in which he has filed prior to his appli-
cation in the United States in his oath. Therefore, the
Examiner should Inspect the oath in following out the require-
ments of the above order.

10-17-19.
Related application .

The file wrapper should identify earltor filed related
applications. See 4-2-2

Where there is filed a division, a continuation, or
n substitute of a prior applient lon which has been assigned,
the assignment of the parent case applies to the latter filed
case. Where the later case is a continuation - in-part, the
assignment does not carry over from the earifer case.

10-17-20.
Alloved Case Data
( Note 10-17 18, 10-17-19; 1.1-13)

Particular care should be exercised by the Examiners
in indicating upon the file wrapper and drar ing the correct
classification of any case sent to issue. No classification
data should remnin or appear upon either pater that is
inconsistent with the designation finally to reved.
(order 2291)

When an application is passed to issue the Examiner
fills out the form at the bottom of the face of the file
wrapper. See 15-2-8.

The Primary Examiner sions and date . the face of
the file wrapper after the case is revised by the clerk.

When the notice of allowance is mail .! its date
is also endorsed on the thee of the file whipper.

In the case of a reissue application it in per-
missible to use the drawing of the patented application
if no alteration is to be made and the entire drawing is
to be used Otherwise, a new drawing is required. When
the patented drawing is nget it is not transferred until
the case is ready for large Such transfer is made by
the Application Branch, notation thereof being entered
on the file trapper of the original application See
8-9-39

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10-17-21.
Patented File

Rule 22.0 Notice of reissue application.
When an application tor a reissue is filed
there will be placed in the file of the ori ;innl
patent a notice stating that an application
for reissue nas been filed, giving its serial
number and filing date. When the reissue is
granted or the roissue application in other-
wiso terstaatel, cho that will be added to
the notice in the silver the orielost patent.

A notice of top giltn . cdo relsono Application vill
be published in the Official susette. Bolasuo applications
are not preserved in secrecy in the same manner as original
applications, and access mov bo printed on requont in
writing and for sufficient reasons.

The notice referret Le in Bule 22.9 which la roontred
to be placed in the tile of an criminal patent for which an
application for relosue nas ceen filed, will be on Form
No. 22-76, which is Inserted ". the application Branch

All such notices will be entered on the file wrappers
and In the Examiner's rosterA

If an application becomes a patent, the patont number
and Issue date are recorded on tro face of the. Pilo wrapper