1100

OCR transcription for search; preserved printed pages are authoritative

# Section 11. PRIOR ART, CLASSIFICATION, SEARCH

11-1.

## Prior Art

-la.

Canceled Matter In U.S. Patent File
U. S. Patents

-1-1.

-1-3.

Foreign Patents

-1-5.

Countries Alphabetically Arranged

-1-6.

Countries Not Sending Complete
Copies

-1-7.

Duplicates
Obtaining Copies

-1-8.

-1-9.

Translation

-1-10.

Non-Patent Publications
Scientific Library

-1-11.

-1-14.

Requests For Obtaining

-1-17.

Arrangement of Art In Examining Divisions
Borrowing References

-1-18.

-1-19.

Missing Copies · Replacement
*
Official Publications and Indicies of U. S.
Patents

-2.

-2-1.
Manual of Classification

Brief Statement on How to Use

Classes arranged
By Related Subjects
By Examining Divisions
Alphabetically
Numerically
Subclass Schedules

Alphabetical Index

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11-2-2.

Definitions

Search Notes Search Carde

-2-3.

U. S. Patent Indicies Numerical Blue Slip Subclass Lists Count

-2-4.

Classification Orders and Bulletins

.3.

Classification

=3-1.

Act of June 10, 1898: 30 Stat. L. 440

-3-2.

Basis and Principles of Classification

-3-3.

Types of Subject Matter

.3-4.

Plant Patents

-3-5.

Design Patents

-3-6.

Utility Patents

-3-7.

Of Foreign Patents

.3-8.

Transfers of U. S. Patents

-3-9.

Ordering Officiel Cross-References

-3-10.

Classifying, and Cross-Referencing at Time of I ** us

-3-12.

Issuing in Another Division Without Transfer

-3-13.

Cross Reference *: Sytematic Note On

=3-14.

Number of Parent Copies Printed

-4.

Applications: Assignment For Examination; Transfer

-4-7,

Transfer Procedura

-4-9.

General Rules Governing the Assignment of Applications for Examination

.4-10.

Classification Examiners Decision

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11-4-11.
Transfer to Another Division

-5€

How To Search

-5-1.

Analysis of Claims

-5-2.

Varient Embodiments Within Scope
of Claim

-5-3.

Sketch Claim to Determine

-5-4.

Equivalents

-5-50

Analogous Arts

Outling Field of Search

-5-6.
-5-70
-5-8.
-6 .
=6-1.
-6-4.
-6-6.

-6-76

Noting Search in Fact Made
Selecting Pertinent References

Miscellaneous

Orders For Photostats

Return of Soft Copies to Division F
Return of Patented and Abandoned Files
Marking Examiners' copies

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# 11. PRIOR ART, CLASSIFICATION, SEARCH

## 11-1. Prior Art

For a statement on the following topics pertaining
to this subject, see:

Topic

Section

Double Patenting

9 ..

Unpatentable Subject

Matter

10-8-2

Public Use

10-8

Estoppel

10-8~25

Rejection on Assigned Case, Same Inventor

10-8-23

11-la.
Canceled Matter In U.S. Patent File

Canceled matter in a U. S. patent application is not
available as a reference after the application has become
a patent. See Fessenden v. Wilson et al. 1931 C.D. 419;
410 O.G. 815.

11-1-1.
U. S. Patents

The following different series of U. S. patents aro
being, or in the past have been issued, The date of patent-
ing given on the face of each copy is the date that it is
effective as a reference.

X - Series. These are the approximately 10,000
patents issued between 1790 and July 4, 1836. They were
not originally numbered, but were arbitrarily assigned
numbers in the sequence in which they were issued at the
time of initial printing, about 1868. When copies are
ordered, in addition to the x number the patentee's name
and date of issue must be given, since copies in stock are
filed alphabetically.

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

A. I. Serios. From 1838 to 1861, patents covering an
Inventor's improvement on his own patented device were given
a separate series of numbers, preceded by A. I, to indicate
additional improvement. In citing, the letters must be
given, e.g. A., I. 313 ..

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Plant Patent Series. When the statutes were amended
to provide Tor patenting certain types of plants (see R.S.
4886) these patents were given a separate series of numbers.
In citing, the letters P.P. must be given, e.g. P. P. 13.

Design Patents. Patents for designs are issued
under a separate series of numbers. In citing, the letters
Des. must be given. e.g. De4. 140,000.

Poreign Parents
11-1-3.

For a comprehensive list of the patent publications
officially issued by foreign governments and detailed in-
structions for their use we "Manual of Foreign Patents"
by Belknap Severance, 161 pages, published 1935 by the .
Patent Office Society.

A pamphlet entitled "Guide to the Search Department
of the (British) Patent Office Library, " is published by
the British Patent Office. A copy of this pamphlet is in
the Scientific Library. Appendix i of this pamphlet con-
sists of a concordance of British, United States and German
classes. The Information therele is truvaluable and should
be used in the search for English, and German references.
The Examiner should have a typowritten copy of such parts
thereof as relate to the chase be Examines.

Austria, Dermark, Netherlands. Norway, and Sweden
follow the German Classification.

11-1-56
Countries Alphabetically Arranged

Complete copies of patents issued by the following
countries have been received in the past, and except for
Russia, are now being received.

Australia. Patents were formerly published by
Queensland (1860-88), Victoria (1877-1902), New Zealand
(1861-78), New South Wales.

In Australie, the publication of the previously ..
printed specification is completed by a notice published
within two or three weeks from the date of acceptance of
the complete specification, which date is printed on the
face of the patent. It does not become effective as a
patent until sealed. The time Interval between publica ...
tion and sealing date varles according to opposition,
extension, etc. The date of acceptance of the complete
specification should be ettod.

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

Canada, The issue date should be cited.

The Canadian Patent Office issues illustratod briefs
in its Official Journal. These Briefs are sent to the
appropriate divisions for such use as can be mado of them.
Those that it is desired to file for future reference pur-
poses are labeled with their classification number and sent
to the paste-room to be mounted, those not noodod being
discarded.

Czecho-Slovakia. The publication date which should
be cited Is Indicated by "Vydano."

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

France: The date of publication is indicated by
"Publie" and the patent date by "Délivre."

Ordinarily the publication date is the date cited;
but in, the case of French patents, it is preferable to use
the "Delivre" date, since on that date the patent is ac-
cessible to the public in the Patent Office at Paris.

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

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

Germany, The Ausgegeben date is the one used in the
Patent OfTIco as the patent date.

A pamphlet entitled "Alphabetical Index to the
Classification of Gorman patents," and a set of Gorman
patents bound in classes, are kept in the Scientific Li-
brary. The German "Auszüge" are in wookly installments.
Mr. Lovett's translation of the Manual of Classification
of the German Patent Office ( Edition of 1910) is also in
tho Selontific Library

fra gran British patents covor Bartu id.
Scotland. Sale hs Thur Troland, and tho lale of Man

In deent ritain the publication of the previously-
printod specification is completed by a notice published

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within two or three weeks from the date of acceptance of
the complete specification, which date is printed on the
face of the patent. It does not become effective as a
patent until sealed. The time interval between publica-
tion and sealing date varies according to opposition, ex-
tension, etc.

British specifications have printed in large heavy
type at the head of the first page a number and year, as
1451 A.D. 1912. This, together with the name, as required
by the rules, is always the proper citation of the patent.
The year given at the head of the apocification is always
the year of filing or the year of acceptance, but It is the
official designation of the patent.

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

1.910 ... NO. 499*
40011

1912-No. 1942:
13

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

British parents appitai for subsequent to January 1,
1916 are numbered in a continous series, Hence for these
patents the year is not necasaary for identification and the
date of acceptance may be used az giving a much closer
approximation ic the date of sealingo

The British Patent Office publishes "Specification
Abridgements" of the patents issued by that office. These
Abridgements are arranged in classes, with all of the patents
of a class for a given year bound in a single volume. The
bound volumes of these abridgemants ars to be found in the
Scientific Library.

In the case of applications filed in Great Britain
under the International Convention, claiming the benefit
of an earlier filed forsign uplication. no provisional
specification is permitted and under the Patents Act of
1907, the complete specifications are open to inspection
18 months after the Convention dato claimed.

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

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

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## 11-1-6. Countries Not Sending Complete Copies

The following countries publish patents by abstracts,
or abridgements only: Argentina, Belgium, Brazil (only 1908-
09 and 1924-26 in Library), Canada (Avr., issue date appears) ,
Finland, Jugoslavia (Kingdom of Serbs, Croatians and
Sloven), Portugal, Spain, Chile.

Of these the patent publications of Portugal and Spain
are not received in the Scientific Library. The data pub-
lished by Mexico and Cuba are merely the number and date of
the patent, the title of the invention and name of inventor.

Briefs of patents are received from Belgium.
There are some Sardinian patents.

11-1-7.
Duplicates

An Examiner should be on the alert to note foreign
patents which are exact duplicates of domestic patents, or
duplicates of other foreign patents. Except in the case of
the foreign duplicate having the earliest filing date, such
duplicates should not be placed in the shoe cases, as they
needlessly increase the number of patents to be inspected
in making a search.

The data of the foreign patents discarded may be
written on the one retained or on the U. S. patent of which
they are duplicates.

11-1-8.
Obtaining Copies

Prints of foreign patents classified in arts in
other divisions can be had by an Examiner if he thinks the
patents would be of frequent use in his own class. Other-
wise, he can borrow from the other division the patent
needed for a particular caso.

11-1-9.
Translation

A translator in the Scientific Library is available
to assist the Examiner with the specifications in any
language with which he is not familiar. Typed transla-
tions can be had if necessary, of any material to be used &
11-1-10.
Non-Patent Publications

All publications may be used as references, the
date to be cited being the publication date.

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Italy. The patent date, indicated by "Rilasciato"
should be cited.

The Italian Patent Office sent full copies of speci-
fications and plates until the end of 1892. For the next
two years briefs of the specifications were sent. Since
the beginning of 1895, the Iatlian Bulletin has been received
here. This gives the titles of inventions and names of
inventors. The Italian Patent Office later sent complete
copies, having resumed publication thereof October 1, 1925.
Only those patents after No. 248,000 are published in serial
order.

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

The Japanese method of assembling a number of patents
in booklet form, above referred to, makes it impracticable
to distribute Japaneso patents among the examing divisions.

Netherlands. The publication date, which should be
cited, Is indicated by "Uitgegeven, " the patent date being
indicated by "Dagteekening."

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

Poland. The date of publication of the Polish patent
to be cited appears in the upper right hand corner of the
face of the patent following the word "Warsaw. " The word
"Udzielono" indicated patent date.

Russia. The publication date to be cited is indi-
cated by "Opublikowano."

The date of the Russian patent, as also that of the
publication, appears in the caption immediately preceding
the beginning of the specification.

Sweden. The publication date to be cited is indi-
cated by "Publicerat," while "Beviljat" indicates patent
date.

Switzoriand. Patents are published in three languages,
the publication date to be cited being indicated:
In
By
Veröffentlicht
Publie
Pubblicato
German
French
Italian

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There are some publications kept in every divisision
and each assistant Examiner should ascertain what they are
in his division and whether or not any of them is likely
to bear on the class assigned to him.

11-1-11.
Scientifle Library

The Scientific Library of the Patent Office has,
in numerical and classified order, a largo collection of
volumes, including scientific and technical books and
periodicals and bound volumes of U. S. and foreign patents.
These books and periodicals are for the most part in the
field of applied science and technology, and especially
chemistry, physics and engineering. The books and pori -
odicals are used in the search of the prior art, and for
that reason usually the best of them are to be found in
the examing divisions concerned.

The Examiner should acquaint himself with this
library sufficiently to know when it is likelty to afford
him assistance in his examination of an application.

11-1-14.
Requests for Obtaining

Whenever it is deemed necessary to obtain catalogues,
bulletins, or other literature, the request clears through
the Scientific Library. A letter for this purpose is ad-
dressed to the Librarian, requesting that he order or obtain
the needed material. Upon receipt of the same the Librarian
distributes the literature to the division requiring it.

## 11-1-17. Arrangement of Art in Examining Divisions

.
In the examing divisions the U. S. patents are
arranged in shoes bearing appropriate labels, each show.
ing the class, sub-class, and usually the lowest and
highest numbered patents put in the respective shoe .. Tho
patents should be arranged in numerical order and be al-
ways thus kept when in the shoe. Patents taken out of
the shoes in the course of the examination of an applica-
tion should be returned thereto as soon as the examination
of the application is finished. The putting away of the
reference patents is the work of the file clerk,

Some U. S. copies are marked "Cross Reference."
These are patents which are classified in other classos
but which have disclosure pertinent to the class in which
they are placed as cross-references. If numerous, the
cross-reforencos may be kept in shoes used for cross -
references only, and ao labeled.

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Copies of foreign patents are usually kept in shoes
separate from the U. S. and are usually arranged by country,
the shoes being labeled with the proper class and subclass
number and being adjacent to the shoes holding U. S. patents
for the samo subclass.

Non-patent publications containing disclosures for
particular subclasses are similarly arranged.

11-1-18.

Borrowing References

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

1\. The following is established as the uniform
Office practice in borrowing references (domestic and
foreign patents and publications) :

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

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

c. In the case of domestic patents, when it
appears that they will be needed for more
than two days, particularly where future
use is indicated, soft copies should be
ordered, but the references may be bor-
rowed for immediate use, if this will facil-
itate an action. The Patent Copy Sales
Branch gives reasonably prompt service on
Examiners' orders for soft copies.

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When the original copy of a reference is missing
from the Examiner's files, a soft copy should be at once
substituted and marked- "Keep until original is found, "
When it definitely appears that the original is lost, the
Classification Division should be notified and roquested
to supply a mounted copy. When received this is substi-
tuted for the soft copy.

11-2.
Publications and Indices

The Manual of Classification is published in loose
leaf form, and supplementary sheets for all major changes
are issued from time to time to replace the original sheets.

All changes are published currently in classification
orders printed in the Official Gazette. As these changes
are published, each oxaminer should enter them in his manual,
so that his manual will at all times be complete and up-to-
date. As supplementary sheets are issued, the old sheets
should be removed, and the new sheets substituted therefor.

There are at present 502 classes of utitily inventions.
The classes each bear a class number ranging from 1 through
346 ( there being 44 blank numbers), Rach class has a title,
and each class is subdivided into a number of subclasses
which each have a number. A complete identification of a
subclass requires both the class and subclass number, the
class number appearing first and the subclass number second,
e.g. 13-13 identifies Class 13 Subclass 13.

The Manual of Classification has the following
parts:

A Brief Statement on the Use of the Manual. Immed-
ately following the Flyleaf is a brief statement on how to
use the manual.

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

Classes Arranged by Examining Division. Noxt Is a
tablo of classes arranged In proups by The oxamining divi-
sion to which they are assigned, the oxamining divisions
being numerically arranged, with the design division last.

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Where a single class is divided between two or more
examining divisions, the particular subclass as assigned to
a division are listed.

Classes Listed Alphabetically. Next the classes are
listed alphabetically In accordance with class title, this
list giving on the left the class number and on the right
the examining division to which assigned. Those classes
that are divided among two or more divisions, have the sub-
classes listed by groups and the examining division to which
each group is assigned indicated.

Classes Listed Numerically. Next the classes are
listed In numerical sequence by class number, this list also
giving the class title, and the examining division to which
assigned, and in the case of divided classes the division
to which each subclass group is assigned.

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

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

The preface to the index should be read.

11-2-2.
Definitions

All of the utility classes (i.e. classes devoted to
technology) except l& have definitions. None of the design
classes have definitions.

Such definitions state much moro explicitly than it
is possible to state in short class and subclass titles,
the subject matter that is found in each defined class and
subclass.

Each examining division has a set of definitions.
There are several sets in the Public Search Room.

## Search Notes

The definitions have search notes as a part thereof,
namely notes giving information as to where subject matter

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related to the class will be found ( such notes appearing
after the class definition), and also notes as to where
subject matter pertinent to the subclass will be found
( appearing after the subclass definition) . These notos
are intended to indicate both the relationship and the
difference between the separately classified subjects ..

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

## Search Cards

In each defined subclass in both the examing divisions
and the Public Search Room are "Soarch Cards" having the
definitions of the subclass and the search notes if any.

11-2-3.
U. S. Patent Indices

The following indices of U. S. Patents are avail-
able:

Numerical. A numerical index of the original classi .-
fication of domestic patents is on file in the Public Search
Room and the Service Branch of the Classification Group.

A numerically arranged punch card index of both
original and officially cross-referenced domestic patents
is on file in the Machine Tabulating Branch of the Adminis-
trative Services Division.

Blue Slips. The "blue slips", starting with patent
number 1987,000, Re. 19,228 and Des. 126,796, and for all
subsequently issued patents, and containing the original
classification and cross references ordered at time of issue
are in file in the Service Branch, Classification Group.

In each of the above, there is a separate index for
each series, x, 1836, Al, Re. P.P., and Des.

For the original or cross -reference classification
of a domestic patont such Indices may bo consulted.

Subclass Lists. The classification of all U. S.
patents, Tisted by class and cabclass are available in
punch card form in the Machino Tabulating Branch of the
Administrativo Services Division.

Tabulatod lists for each subclass can be obtained,
one list for originals and one list for cross-references

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

11-2-4.
Classification Orders and Bulletins

Classification Orders are issued from time to time
giving all changes in the classification that have official-
ly beenmade, including every change to be made In the Manual
of Classification or in the definition books.

Photolighographed copies are distributed to all ox-
amining divisions for immediate use.

Each order is subsequently printed in the Official
Cazette.

These orders are from time to time collected and
issued as a Classification Bulletin. As Class schedules
and definitions are extensively amended to take care of
developments subsequent to original classification, they
are republished in amended form in Classification Bulletins.

11-3.

## Classification

## New and Revised Classes

The establishment of new classes or bus-classes and
the revision of old classes are done under the supervision
of an Examiner of Classification.

When an old class is to be revised, or a new class
formed, any assistant examiner who has been examining
applications in the art involved is usually transferred
from the examining division to a Classification Division
for the reclassifying work. After the lines marking the
confines of the new or revised class and its sub-classes
have been determined, and appropriate definitions drawn,
all subject to the supervision and approval of an Examiner
of Classification and to the final approval by the Com-
missioner, the Examiner's and the draftsman's copies of
the patents included In the new class are collected, ar-
ranged and stamped comfortably to the new classification.
Official cross-references are also prepared and appro-
priately stamped ..

The patents comprised in the new class are entered
upon the numerical and sub class Indicios.

Notification of the new class or sub-class is pub-
lished in the Official Gazette, and Supplementary shoots

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necessary to correct the loose leaf Manual of Classifica-
tion are published.

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

These classification bulletins, serially numbered,
are published as required.

11-3-1.
Act of June 10, 1898; 30 Stat. L. 440

The statutory authority for establishing, and main-
talning a classification Is given In the above Identified
statute, which antes:

"For the purpose of determining with more readiness
and accuracy tho novelty of inventions for which applica-
tions for letters patent aro or may be filed in the United
States Patent Office, and to prevent the issuance of lottors
patent of the United States for inventions which are not new,
the Commissioner of Patents is hereby authorized and direct-
ed to revise and perfect the Classification, by subjects
matter, of all letters patent and printed publications in
the United States Patent Office which constituto the field
of search in the examination as to the novelty of invention
for which applications for patents are or may be filed."

## 11-3-2. Basis and Principles of Classification

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

Classification of Patonts, 2nd revision
History of Classification.

These are available to every Examiner on roquest.
addressed to the Classification Group. Since the classi-
fication is the basic tool of overy Examiner, these pam-
phlets and the classification as it at prosent exists should
be studied carefully.

11-3-3.
Types of Subject Matter

R. S. 4886 and 4929 divido potentable subject matter
into the following groups:

APC
Machine
Manufacture
Composition of Matter
Improvement thereof
Plant ( of restricted typos)
Dosign

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## 11-3-4. Plant Patents

Classification is on the basis of variety, see class
47 Plant Husbandry. sub-class 59 through 62.

11-3-5.

## Designs Patents

The classification of design patents evolved along
different lines from that of utility patents duo to the
different characteristics of the design law which present
a different search problem. Under design law patents aro
granted to the Inventor of "any new, original and orna-
mental design for an article of manufacture", R. S. 4929.
The subject matter of the patent deals with the non-
utilitarian features of the article of manufacture that
improve its appearance and render It more attractive to
the purchases for that reason, as by imparting a more
attractive configuration, or by feature of ornamentation.

Thus the primary basis of classification is the type
of manufacture, with the secondary basis dealing with con-
figuration and ornamentation.

11-3-6.
Utility Patents

As applied to technological inventions, the subject
matter of R. S. 4886 may be classified into the following
groups :

(1) Manufacture ( product produced by a process)

(2) Art (prosess) by which made

(3) Apparatus : machine) for practicing the process

(4) Starting material (composition, compound, in-
termediate, blank) used or operated upon to
make the manufacture.

(5)
Non manufacturing art ( process)

(6) Non manufacturing apparatus ( machine) for its
practice.

Relative to manufacturing, what constitutes (1) and
what constitutes ( 4) ist be determined by the disclosure
of the particular caso. since it is clear that (4) in turn
has its manufacturing process and apparatus.

Further, relative . each character of subject
matter, there may bo

A. Combination . the total of all process,
steps. apparatus features. etc.

B. Suhcombination . the various parts of the
total combinationo

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Combined Features in Addition to Basic for Some Added
Purpose. Features may be added to the basic subject matter
for some additional purpose or function, as distinguished
from perfecting the basic subject matter for its intended
purpose, e.g. combined with a stone crusher may be a classi-
fier which receives the crushed stone and classifies it in
accordance to size groups.

Similarly combinations of one type of basje subject
mattor with features for some additional purpose may be a
reference for a second type of basic subject matter with
combined features for the same purpose, ns a stone crusher-
classifier combination may be a reference for a vegetable
comminutor-classifier combinatione All places in the
classification must be found that contain combinations of
the same genreal character.

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

Determine if there are any characters of subject
matter that are sufficiently analogous to be useful as
references, e.g. the balls of ball mills 241-184 and the
tumbling shapes for tumbling abradorg 51-164.5 ore fre-
quently references for each other.

Of General Utility. Each type of basic subject matter
may have subcombinations of utility with other and different
types of subject matter, e.g. the machine slemonts of a stone
crusher.

Determine in each instance where they are classified.

11-3-7.
Classification of Foreign Patents

It would be advisable for the classification ex-
aminers to classify foreign patents, but there has never
beon a corps large enough to do it. The prosent procedure
is that the Scientific Library distributes the foreign
patent copies to the Examining divisions, and the patent
Examminors classify the same,

Time spent in classifying foreign patents is allowed
In computing an Examiner's output subject, however, to the
condition that the total time allowed for bach division for
any six months period ( October through March and April
through September) shall not exceed a number of days equal
to one -half the member of Examiners in the division .. . . .
The method used in classifying foralan patents and the
assignment of such work among the Examiners of the division

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Each of the above types of subject matter can be
further analyzed as follows:

Basic Subject Mattor. Tho features nocossary and
essestial to the Fundamental character of the subject
matter treated, e.g. a stone crusher requires a minimum
number of features as essential before it can function as
such.

All classifications should be studied by the patont
examiner to detormine cortain factors na applied to the
subject matter under his jurisdiction.

What types are classified in the class under his
jurisdiction? what other types are there, where are they
classified, and are they sufficiently related to require
search? For example motors are in many classes in ac-
cordance with broad types, e.g. electric, turbine, fluid
current, internal combustion, etc., and further are sub-
divided in each class by other type characteristics, e.g.
class 121 motor: , expansible chamber type, moving cylinder,
rotary piston, etc.

What classes have typos of subject matter that may
be analogous (as to the invention granted) to the class
under consideration? For example pumps aro frequently
analogous to the corresponding type of motor and thus must
be cross searched, e.g. classes 103 pumps, 230 Gas Pumps
and Fans, 121 motors Expansible Chamber typo.

Combined Features to Perfect tho Basic Subject
Matter. Features may be added to the basic subject matter
which do not change the character thereof, but do perfect
it for its intended purpose, e.g. an overload release means
tends to perfect a stone crusher by providing means to
stop it on overload and thus prevent ruining the machine.
However, this perfecting combined feature adds to the basic
character of the machine.

Combinations of basic subject matter with features
to perfect it for its intended purpose are usually classi-
fled in the same class with the type of basic subject
matter to which applied. But the classification must be
studied to determine where are othor types of basic sub
ject matter having similar perfecting features, since
anticipating combinations may be found in other classes,
e.g. overload release means used with one type of basic
subject mattor may be useful as reference for overload
releaso means for a quite different type of subject
matter.

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are left to the Primary Examiner of the division. The time
spent by each Examiner on this work will be reported in
days on the monthly work report in the column under "Remarks."

11-3-8.
Transfer of U. S. Patents

The transfer of official copies of U. S. patents
either original or cross-reference, from one class or sub-
class to another requires the approval of an Examiner of
Classification.

Unauthorized transfers render the subclass In tho
attorney's room no longer duplicates of those in the
Examiner's rooms, and also render incorrect the official
numerical index and subclass lists.

Examiner's should submit to the Classification Group
all questions of transfer of patents.

All transfers of patents are recorded in the numerical
and subclass indicies.

When an Examiner desires to transfer domestic patents
from one class or sub-class to another, he should have the
patents listed on triplicate transfer blanks (566), as ex-
plained in section 51 of the Clerical Operations Manual
stating thereon what class and sub-class the respective
patents are in, and the class and sub-class to which they
are to be transferred. Transfers of original patents and
of cross references should be on separate blanks. All
patents listed on a blank must involve transfer from a
single class to a single class. This blank is forwarded
with the Examiner's copies of the patents to the Classifica-
tion Division. If the transfer is approved, the class and
sub-class designations on the patents are changed, and the
classification indicies are changed to agree with the new
classification.

When it becomes necessary in the course of a transfer
to remove copies from the files in the attorney's rooms, a
red dummy a little longer than a patent copy is substituted
therefor, and the identification data of the patonts with-
drawn are written thereon. This dummy is amended as the
patents are returned, and when all are returned tho dummy
is removed.

## 11-3.9. Practice to be Followed in Ordering Official Cross References

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

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In many instances, U. S. patents are found which con-
tain disclosure that the searcher believes should be cross
referenced. Such patents should be brought to the attention
of the Classification Group for consideration in any of the
following ways:

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

bo
Send to the Classification Group a list of
patents and relative to each patont, indicate
the class and subclass in which It is thought
each should be cross referenced.

Co
The preferred mode of ordering a cross
reference where the Examiner has a soft
copy with the pertinent portion marked,
is to indicate on the marked soft copy
the class and subclass in which it is
thought it should be cross referenced.
Such soft copy should be forwarded to
the Classification Group where it will be
promptly inspected, the necessary action
taken and the soft copy returned within
two days of its receipt.

## Information as to Classification of Cross References

Relative to Patent No. 1,987,000, Reissuo No. 19, 228
and Design No. 126, 796 and all patents bearing higher num-
bers, the classification of the cross references ordered at
the time of issuance, may be obtained by calling extension
4087.

In addition to the cocsa references officially de-
signated, valuable references are often to be found by an
inspection by the Examiner of the Official Gazette each
week. Such patents may be placed as soft copies in the
Exominer's digest. However, if they contair disclosure
properly classifiable in an official subclass they should,
with the approval of the Classification Examiner, be given
the status of official cross-references, copies of the patents
being mounted and placed In the appropriate sub class, in
accordance with the practicea enumerated above.

11-3-10.
Classifying and Cross-
Referencing at Time of Issve

Careful attention should be given by Examiners to
the classification of all applications pending in their

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respective divisions. It is the duty of each Primary
Examiner to personally revise the classification and cross .
referencing made by the assistant of every application
passed for issue.

The classification of pending applications and the
drawings thereof will have been indicated in pencil by the
Primary Examiner.

An application, properly classified at the start of
examination, may be improperly classified when it Is roady
for issue. The claims as allowed should be reviewed, In
order to determine the subject matter covered thereby. It
is the disclosed subject matter covered by the allowed
claims that determines the original classification of U. S.
patents.

Note the correct official classification on the file
and drawing of each application when passed for issue. Un-
official subclasses (not established by classification
order) should not be indicated on the file wrapper or draw ..
ing.

The Examiner fills out a blue slip ( form No. 574)
to indicate the class and subclass in which the patent
should be classified and also the classes in which it
should be placed as a cross reference. The blue slip is
attached to the left hand corner of the drawing, being care --
ful to insert the pin or staple outside of the margin line,
(of if no drawing to the outside of the file wrapper) to
be forwarded to the Issue Division.

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

To effect the correction for the classification of
applications that have been passed for issue but are await-
ing payment of final fee,the Examiner (1) correets tho
class and subclass numbers; (2) writes a letter to the Chief
of the Issue and cozotte Division listing; tho applications,
the classification of which hos boon changed. by name of
applicant and serial number, with the class and subclass to
which each has been reassigned.

### 11-3-12. Issuing in Another Division Without Transfer

Where a prospective patent is to be classified in
a division other than the one which is sonding the appli ...
cation to issue, the Examiner after indicating on the

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blue issue slip the class and subclass number in which the
patent is to appear designates in red ink on the blue slip
the division to which the patent is to be sent. For ex-
ample, the third line of the blue issue slip, in such cases
will read:

Class 18 subclass 51 (div. 15)

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

The indiscriminate sending of cases to issue from one
division and assigning them to classes in another division
without formal transfer is not encouraged; it is to be re-
stricted to those situations where both Examiners concur in
the proposed classification of the patent which must be
shown by the concurring Examiner initialing the slip, or
where there has been a ruling by the Classification Ex-
aminer who must initial the slip.

The drawing should be retained in the division that
sent the case to issue.

11-3-13.
Cross References: Systematic Notes On

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

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

When the application becomes a patent, the original
drawing and the form 574, referred to, together with the
copies for the Examiner and the Search Room, are forwarded
by the Issue and Gazsite Branch to the Classification Group
to be stamped and for revlow and recording.

After they are so stamped and recorded, the photo-
lithographie copies are retained in the respective classes
in the divisions and no changed in the classification or in
the arrangement of the copies will be permitted except with
the approval of the Classification Division.

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11-3-14.

Number of Patent Copies Printed

The number of copies printed of anch patent 18 ; .

One on bond paper, accompanying; the patent grant for
the inventor.

Three on heavy paper, one for the Examiner, And
one for the Attorneys: Room, and one for reproduction.

One hundred soft copies ( In very active classes. two
hundred) distributed as follows -- about. twenty seven copies
for foreign oxahange, fifteen copies for sale to libraries
subscribing to the same, one copy for the patented file,
one copy for the bound volumes of patents; one copy tom -
porary volumes kept until permanent volumes are bound; and
the balance delivered to the Patent Copy -Sales Branch for
sale and official use.

### 11-4. Applications: Assignment and Transfer

Applications are assigned originally by the Applica-
tion Division, accepted by the examining divisions, or
transferred to other divisions, if acceptable, as explained
in 7-2-2. If not acceptable, the applications of question-
able assignment are submitted to the classification groups
for assignment.

11-4-7.
Transfer Procedure

Submission of Applications for Classification.

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

1\. Where Examiners in different divisions are in
aggrement that an application is properly assignable to
one of the divisions but are in disagreement as to which
one should receive it. the Examiners involved present their
positions orally to the appropriate Classification Examiner
for verbal decision. This is generally termed informal
submission.

2\. In all other instances, including those in
stances where the Classification Examiner feels that addi
tional evidenco is necessary, applications are submitted
for classification as follows: The Examiner having juris -
diction thereof submits a memorandum listing the division
or divisions and the classes therein in which he believes
the case may be classifiable and makes a search both In his
own class and the class to which he thinks the case should
be transferred and citos the most pertinent. art relative to

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are left to the Primary Examiner of the division. The time
spent by each Examiner on this work will be reported in
days on the monthly work report in the column under "Remarks."
11-3-0.
Transfer of U. S. Patents

The transfor of official coplos of U. S. patents
either original or cross-reference, from one class or aub.
class to another requires the approval of an Examiner of
Classification.

Unauthorized transfers rendor the subclass In the
attorney's room ho longer duplicates of those in the
Examiner's rooms, and also render Incorrect the official
numerical index and subclass lists.

Examiner's should submit to the Classification Group
all questions of transfer of patents.

All transfers of patents are recorded in the mimerien!
and subclass Indicies.

When an Examiner desires to transfer domestic patonts
from one class or sub-class to another, he should have the
patents listed on triplicate transfer blanks (566), ns ex-
plained in section 51 of the Clerical Operations Manual
stating thereon what class and sub-class the respective
patents are In, and the class and sub-class to which they
are to be transferred. Transfers of original patents and
of cross referencos should be on separate blanks. All
patents listed on a blank must involve transfer from u
single class to a single class. This blank is forwardod
with the Examiner's copies of the patents to the Classifica-
tion Division. If the transfer is approved, the class and
sub-class designations on the patents are changed, and the
classification indicies are changed to agree with the new
classification.

When It becomes necessary in the course of a transfer
to remove copies from the files in the attorney's rooms, a
red dummy a little longer than a patent copy is substituted
therefor, and the Identification data of the patonta with-
drawn are written thereon. This dummy is amended as the
patents are returned, and when all are returned the dummy
Is romovod.

11-3-9.
Practice to bo Followod In
Ordering OfTICIal Cross RoTorencos

The following throe alternatives are available for
obtaining: official cross reference coplos of United States
patenta.

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In many instances, 3. 3. parents are found which con-
tain disclosure that the sunicher believes should be cross
referenced. Such patents should be brought to the attention
of the Classification Group for consideration in any of the
follow lin' waya:

a. Call extension 40up, Identify the patent and
give the ciams and subclass to which it is
trongnt it should be cross referenced.

D. Sem to the Classification Group a list of
betonte and relative to auch patent. Indicate
the class and auslass in which it is thought
** * should be crema referenced,

6\. The preferred mode of optoplay a croma
reference where the Examinar has a woft
copy with the pertinent port fan marked,
Is to Indicate on the marked soft copy
the class and anbelags In which It is
though It su w CHAR clarenced.
Such afft voy savel be forwarded to
the classification Group whope it will be
promptly inspected the necessary action
taken and the soft copy returned within
two days of its receipt.

☒

Tofema lag 08 12
ClassifiedETon Grass Doce conana

Relative te Patent No. 1 099 :00 Unloup No. 10,228
and Doslen No. 126. 705 mt all potenta meertop higher num-
berg, the classification of the cross references ordered at
the time of latence, may to attained by calling extension
4087.

☒

** ** | ***** *** * fully do.
signoted, valunt : rata, butwe often the ted by an
Inspection by the Examiner of the official garotte noch
week. Auch patent may ba pin al an auft :opis in the
Examiner's digest, wie: If they om dig out
properly clanatfiable are afffeel my bet tany should,
with the approval of the Chest Clinton Rather, be given
the status of official areprepared, seplan of the patente
boing mounted Atd wissel in Appropri. .
recordation with the practice Aromaled av.

11-3-R.
Classifying and Cream.
Referencing at Time of Tacos

Careful affeafter could be given by Kantara to
the classification . ( AflatFalls pretty in their

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respective divisions. It is the duty of each Primary
Examiner to personally revise the classification and cross .
referencing made by the assistant of every application
passad for 13500.

The classification of pondit applications and the
drawings thereof will have been indicated in ponci] by the
Primary Examinor.

An application, properly classified at the start of
examination, may be Improperly classified when it is ready
for issue. The cinins as allowel should bo reviewed In
order to determine the subject matter covered thereby. It
Is the disclosed subject matter covered by tho allowed
claims that determines the original classification of !, S.
patents.

Note the correct official classification on the file
and drawing of each appliention when passed for issue. In-
official subclasses (not. established by classification
order) should not be indicated on the filo wrapper or draw.
ing.

The Examiner fills out a blue slip ( form No. 574)
to indicate the class and subclass in which the patent
should be classified and also the classes in which it
should be placed as a cross reference. The blue alip is
attached to the left hand corner of the drawing being caro-
ful to Insert the pin or staple outside of tho margin lino,
(of if no drawing to the outside of the file wrapper) to
be forwarded to the Issno Division.

The classification of all applications which have
been passed to issue, which would be changed by any changes
mado In the offleinl plassiftention by classification order,
are correctet ay the Meseiner buchar cataly of much appli
cations as soon as possible after esett ation of the order.

I'm affect the carpelan for formalfication of
applications that have been mango ! ta lange but are nwait ..
Ing payment of Fiant Co- Le Examine (D) correcta to
claas ant quốc tat Đồng ( gobier to the Chief
of the Inan mot ett Pertinentes the implications,
the classification of a ies hep from engnd, by nuno of
applicant and sorti number, with the class and aubelnes to
which each has been reassignod.

### 11-3-12. Ijaning In Another DivisIon Without Transfor

There a prospective patent. is to be classified in
a division other than the one which Is sending the appli.
collin to fame the Examluor after Indicating on the

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blue issue slip the class and subclass number in which the
patent is to appear designates in red ink on the blue slip
the division to which the patent Is to be sent. For ex-
ample, the third line of the blue issue slip, in such cases
will read:

Clasa 18 subclass 51 (div. 15)

The division passing the case to issue will Insert its own
number as usual in the space provided in the lower left hand
corner. (When the patent issues, the Classification Divi-
sion will, as a matter of routine, send the necesanry notices
to the divisions Involend).

The Indiscriminado sending of cases to issue from one
division and assigning them to classes in another division
without formal transfer is not encouraged; it is to be re-
stricted to those situations where both Examiners concur in
the proposed classification of the patent which must be
shown by the concurring Examiner Initialing the slip, or
where there has been a ruling by the Classification Ex-
aminer who must initial the slip.

The drawing should be retained in the division that
sent the case to 18800.

11-3-13. Cross References: Systematic Notes On

Throughout the examination of the case, systematic
notes should be kept as co cross-references needed either
due to claimed or unclaimed disclosure. The several Ex-
aminers handling related mobject matter should be consulted
during prosecution, [whother they handle larger unclaimed
combinations or claimed or unclaimed, but disclosed sub-
combinations and asked if cross-references are needed. If
needed, systematically nota the proper class and subclass.

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

When the application becomes a patent, the original
drawing and the form 574. referred to, together with the
copies for the Examiner and the Search Room, are forwarded
by the Issue and gazette Branch to the Classification Group
to be stamped and for revlow and recording.

After they are so srampod and recorded, the photo-
lithographie copies are retainod in the respectivo classes
In the divisions and no changed in the classification or in
the arrangement of the copies will be permitted except with
the approval of the Classification Division.

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11-3-14.
Number of Patent Copies Printed

The number of copies printed of each patent is ; . .

One on bond paper, accompanying the patent grant for
the inventor.

Three on heavy paper, one for the Examiner, and
one for the Attorneys' Room, and one for reproduction.

One hundred soft copies ( in very active classes. two
hundred) distributed as follows -- about twenty -seven copies
for foreign ninhange, fifteen coplas for sale to libraries
subscribing to the same, one copy for the patented file,
one copy for the bound volumes of patanta, one copy Lom -
porary volumes kopt until permanent volumes are bound; and
the balance delivered to the Patent Copy -Salos Branch for
sale and official use.

## 11-4. Applications: Assignment and Transfer

Applications are assigned originally by the Applica-
tion Division, accepted by the examining divisions,or
transferred to othor divisions, If Accoptablo, ao mapleined
In 7-2-2. If not accoptabl", the applications of Queation-
able assignment aro submitted to the classification proups
for assignment.

11-4-7.
Transfer Procedur

Submission of Applications for Classification.

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

1\. Whore Examinora in different Hvislong are in
aggrement that an application is properly amalignable to
one of the divisions bot are in Hongronment na to which
one should receive it, the Examiners involved present their
positions orally to the appropriate Cinasification Examinor
for verbal destation. This is generally Legend informal
submisalrf.

2\. In All ther Thatonces. Trading these in
stances whoro tho Ulmanification Examiner feels that odd;
Cional evidence In necessary, applications are submitted
for classification aa follows: The Kanminor hoving; Jurla .
diction thereef submita a memorandum Itating the division
or divislons ant tho classes therein in which he bellevon
the case mey bo classifinbia and mokes n search both In hla
own clans and the cinas Le which he thinks the caso should
be transferred art sites The most pertinent art relative to

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the question of classification, le should not take time to
write either an analysis of the art or an argument. He for-
wards the file, together with his memorandum, to the Examiner
of another division tuvetvad. Ha sign fills ont blank Form
573 and has it receipted by such Examiner and rotains tho
receipted from as a charge. Each other Examiner involved
similarly makes a search and citas nit without taking the
time to write either an Art unelysis or an argument. The
time involved in making auch searches is not lost, since the
cited art may be el value to the Examiner to whom the case
Is assigned. Each Examiner in tarn makes a prompt report
and the last forwarda che file and all papers"to The Class !-
fication Group. This practice eliminates the time consumed
In evaluating the art and expounding reasons for proposød
assignments; 1! la all that is required by the general rules
governing the assignment of moplications for examination.
Seo particularly Autos 4 and lo.

This is generally termed frenl pubmiaston.

11-4-9.
General Rules Hotelbite the Assign.
ment of Applications for ExocinAtion

The fact should be barne in mind that the follow-
ing rules are only general gultas. and exceptiona frequent-
ly arise because of some unitssal condition. The fact should
also be kept in view ther the Classification Examinora as
well as the Patent Exothers are mirgtet with an already
existing classification, made up of ately rolland classes.
those revised years Ago and wiet base armswhat outgrown
their definitions end limity and ot:il athors ands a gen-
oration ago and novot han .-. All. the games are
based on different theories and plous, some of art. some on
structure, some on functiona fome on the material worked
upon, and some apparently n no sargy of plan at all.
The Classification Exantere sommer hange this existing
condition os ench application ufer Analement but
must sook to doveteis the cause into the patchwork and try
to get the applications where they will sa best handled.
To do this often vietate, the Stateer sich Examiner's
vlows os to what ******** Dry pper CHATICE-
tton.

1\. The sign of MY & trwa. as far As
possible, the miles of paldies entering the classifica-
tion of patenta. (Son the bulletina: "pion of Classifica-
tim" 1000, "The Classification of Patenta " End Revision,
1946 and "History of Cimasification of l'atenta. ";

2\. The ment comprobante Imin that is the claim
to the most extensive combination exame, and this is
true whether there Is only ;he ach cinta and a large num-
ber of other claims, op whether the sets of claims are more

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evenly divided. It is regarded as just as vital that one
complex claim bo searched and adjudicated by an Examiner
skilled in the art as that a group of such claims bo so
searched and adjudicated.

3\. The claims and atntomont of invention aro gonoral-
ly taken as they rond, sinco any attempt of Classification
Examiner to go behind the record and decide the case upon
what is doomed the "real Invention" would, it is bollevod,
Introduce more errors than auch action would cure. The
Classification Examiners cannot possess the specific knowl-
adge of all the clansos that tho Patent Examiners collec-
tively possess. Further, auch questions aro mattors of
merit for the Examinora to determine and are often open to
argumont and aru aubjset for appoal.

4\. The location of the patento constituting the prior
mrt la generally controlling over all elso. (Noto; Where
timo pormita, obvious miapincemonta of the patents con-
stituting the prior ort aro competed, but to straighten all
lines na the cases como up for nanignment would require tho
time of several mon and would often involve a reclassifica-
tion of an entlig clasa. )

5\. Ordinarily an application cannot be Bantened to
a cinas which Includes one olomont or part only, of several
claimed In combination. The claim is troated in Its on-
tirety. The question of approgation is not reviewed by
the Classification Examinero.

6\. Tho Examiners of Classification are authorized
in all cases where they evaluate the facts na warranting it
to nanign applications for examination to the division bost
able to examine the anme. Sinco naaienmont for oxamination
on this bnals will at timos bo contrary to classification
of patents containing the anmo character of cinima, tho
Examiners of Classification will indiento proper classifi-
cation of the patent if auch claima are allowed.

1 %. When as application has been taken up by an
Examinor for action amla division Is found necessary, a
port of the cinima being directed to mutter classifiable
In the division where the case fa being examined, an action
requiring division should be made without seeking a transfor
of the chan to nurthing division. The action of the applicant
In response to the requirement of division may result in
making a transfer of the application unnecessary.

'\A. Ordinarily whave a claim la for an article made
of a specific composition of an ally and there exlata a
clann of such articles the application will be assigned
to auch ciasa unleas a queation na to the novelty of the
composition or alloy broadly In relaod In which caso the

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application should go to the division having the class of
composition of matter or of alloys to determine the question
of novelty of material.

9\. A class of cases exists in which elther no art
or n divided art is found and in which no rule or principle
is Involved. Such cases are placed where, in the judgment
of the Classification Examinar they will be best searchod
and adjudicated. It is often impossible to so explain @
decision in this class of cados un to antlafy or in any way
aid the Examiners Interested. Indeed tho roasons for or
against sending such cases one place or another ars so
evenly balanced that no reason of any value can be given,

10\. "An Examiner booking the transfer of a casa
should make a search, both of his own class and the class
to which he thinks the case should be transferred, and the
Examiner in charge of che division exhibit the result of
such search to the Classification Group. This is the only
way to utilize the export knowledge of the Examiners In-
volvod.

11-4-10.
Classification Boominmy De : Isich

. The Examiner of the Classification Group decides the
question of the proper classification of the application,
and returns the application to the division which submitted
it enclosing a statement of the groumin of his decision.

11-4-11.
Memnier 10
Another Examine; Divieto

If the appiliation jo bo remain in the Division
which submitted if for classification. no further pro-
cedure la necessary. If assigned to mnothor Division,
the clerk processes the onge no described in section 7-1.1
of the Clorical Operationy Mantat.

11-5.
How to Search

Having obtained a thorough understanding of the sub-
Joct matter dlacloand ant claimed in the appilation, the
Examiner then sonrohos the prior art as dinelogod in pat-
ents and other printed documenta. Any such document used
in the rejection of a claim Is called a Protorence."

11-5-1.
Analysis of Cialma

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

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## 11-5-2. Varient Embodiments WITHIn Scopa or Claim

Substantially Avery claim includes within its
breadth or scope of definition une or mare varient embodi-
ments not disclosed by applicant which would anticipate
the terms of the tw: anttiun. The claim must be so analyzed
and understood that any such varient encountered during the
search will be recognized and selectad.

11-5-3.
Sketch Claim to Determine

In each type af subject matter capable of such
treatment. ( *. p. a machine or other apparatus) the subject
matter as defined by the claim should be sketched In order
to clearly desinenze the limitations of the claim. Two
or more sketches ench of which Is as divergent from the
particular disclosure as is permittedby laim recitation.
will asalat the Examiner in determining the claim a actual
breadth of scope.

11-5-4.
Equivalen'm

Also s !. get morrer there is the patontable
equivalent of the subject matter as tofind in the claim.
even though specificnily different from the claims defini-
tions, must be considered.

11-5-5.
Antigona Art

Not only must the art with which the invention
claimed lø cinaaifiable be searched but also all anal
ogous erto regardless of where classified.

The determination of when arts are analogous is at
times difficult. It Depends upon the necessary essential
function or utility if the subject matter covered by the
claima, and not what It is called,

Por exempin 4 54% mixer and a concrete mixer are
for the arm - my the mixing art this bolig the neces
sary functimo wych. Similarly A brick cutting machine
and a bisquit antfing my:hing have the anmo necessary
function.

11-5.6.
OntiIning Field of Search

In outlining & fleid of search the Examiner should
note every clase and subclean that may have material por
tinent to the subject matter he claimed or that may in
the future property he claimed in that case. Listed should
be avary tut lat: cap tent to 40the type of Invention . Lala
od, from the Dagar matin through the various

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subcombinations to the most elementary part needed to
anticipate any disclosure properly claimable in that case.
It should be kept in mind that a combination reference is
necessary to anticipate a claim drawn to an old or ex-
hausted combination. that a combination reference is valuable
as a baste reference for elements, of which may be substi-
tuted elements of a secondary reference, that a convincing
ald to a rejection of the grounds of vid combination is the
citation of referen ..; showing the nuocombinations to have
been alrendy recognised as fontures of practient and more
general utility. Chat combination alting con often be
antleipated by combining sapmrately classified aubcombina-
tional elements, and that in the rejection of a claim on
the grounds of aggregation the citation of references show-
ing the individual utility of the elements may batter prove
that the aggregative structure is no more than the sum of
the features shown by the several semontal patents.

11-5-7.
Noting Search in Fact Mado

In each action sy du Examiner mop an Application
he makes an inibleled Andersement in født en the loft hand
page of che open file wrapper. stating the cinsses and sub-
classes of domestic and foreign patonts, and the publica-
tions in which arash for reforangea was nado and also the
date of the sear.h.

In subsequent que of further search 19 made.
notation of the widow mal Gland shorter ma ximo endorsed
on the file wrappers
11-5-8.
Selecting Pertinent References

It is a prerequisite to expandy a just determina-
tion of the leques thesived in the examination of an appil-
cation that a careful and exhaustive search bo made In tho
first action. it is not onough that the cinima alono be
searched, especially if they be broad in their scopo; but
the search should. in so far as peauthing over the entire
clalmable subject matter in sno caso.

It thus reanita that the Faaminor findi references
that, while not nodded for textat the times before him,
would be useful in fernstalling the poasthis presentation
of claims to other Ambos modo de Thefly applicant
but shown to be old by thesa conferences. To That and IT
is not unusual for an Examiner to cite at the beginning.
of his letter two groups of references, one undor the head-
ing, "References applied " and the other under the heading,
"References further showing the state of the art."

In selecting the references to be cited Cho Examinor
should carefully compare the references with one another

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and with the applicant a disclosure to avoid the citation
of an unnecessary number. The Examiner is not called on is
cite all the referentes that may be available, but only
the "best." (Rule 14.4). Multiplying references, any one
of which is ms pond as but no better than the others adds
to the burden and cos' of prosecution and should therefore
be avoided. However ir doubt exista as to the inclusion
of a reference, it i, hattar to Apto ffing too much art
rather than too little.

While the best reference around always be the one
used, yet if this tost a date less than one your prior
to the filing date of the application a second reference
though Inferior but pet chus open to bring overcome under
Rule 18.1. If much referme is to be found should be
cited and the ciaima adulti mally reacted thereon.

In all references including non .patent, foreign
patents and someall patents the Examiner should rafer
to the description " : every Centre in the drawing he
does not theruraly amersten !.

11-6.
M: 1.0020

11-6-1.
Orders for Photostats to
be Signed by Primary Examiner
*** * ele for photomatare: postoppinta sont
to the Manu:die and Sengraphs Prema from the Examin-
Ing Divisione munt on signed By the Primary Examiner op
In his absence by the Assistant Chief.

11-6-4.
Returning Soft Copies

All wft aftes which are In perfect condition and
unmarked ant which are nat deemed useful for cross reference
or other purpose, should be returned to the Patent Copy -
Sales Branch from time to time who stit replace them on
the shelves ..

11-6-6+
*** ** NEEDED taken From the Patented Files Unit
must be charged . the party oftalade them and are not to
be kept intiger them pri daya without renewing the chargo.
Where the file ty ard for the port of gelaane of
Interference Fre information sheet be given to Mr. Stoner
In the Head Burn abtaleIn the Cle and As soon AS
the Interference is decided or the relance granted, the file
should be returned By the Patented Prins Unit.

Www Liked between a patent
And * ***** *** *** ** MEDIO I forwarded La

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the Examiner of Interferences, the clerk in charge of the
Patented Piles Unit should be informed in order that the
charge may be changed and the location of the file known
at all times.

11-6-7.
Marking Examiners Copies of Patents

When the Examiner's copies of patents are sent to
their respective divisions to be filed, the assistant
Examiners who examined the application should mark on
the face of the drawings, or the specifications, where
there are no drawings, auch features as may bo deemed
advantageous in alding understanding of the patents In
future searches.