1500

OCR transcription for search; preserved printed pages are authoritative

# Section 15. ALLOWANCE AND ISSUE

15-1.

15-2.

When case is Special

Final Review and Preparation for Issue

-1.

General Review of Disclosure

-2.

-3.

Requirement for a Rewritten Specification
Erasure of Notations

-4 .
Examiner's Amendments and Changes

-5.
Correction of Drawing

-6.
Prior Foreign Applications

-1.
Interference Search

-8.

Notations on File Wrapper

-9.

Notations on Drawing

-10.
Classification and Notations on Issue
Slips (Form No. 574)

-11.
Dual Prosecution Cases

-12.

Reference to Assignment, Division

Listing of References
Signing

Notice of Allowance

-2.

Amendment Received After Allowance
Undelivered

.3.
Not Withheld Due to Death of Inventor
Withholding From Issue of Secret Canes
15-4+

Amendmenta after D-10 Notice
Jurisdiction

1\.
15-5.
15-6.
Public Low 690 Camen

-13.
-14.
15-3.
-1.

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# Section 15 (Cont: nued)

## 15-7. Change in Classification of Cases Which Are in Issue

15-8.
Withdrawal From Issue

-1.
Rejection after Allowance

-2.
Form of Letter

-3.
For Interference Purposes

15-9.
Issue of Patent

-1.
Companion Case Queries

-2.

Printer Waiting Cases

-3.
Examiner's Notations

-4.
Protest against Issue

-5.
Patented Files

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### 15.

<!-- PageHeader="ALLOWANCE AND ISSUZ" -->

### 15-1. When Case is Special

When an application is in condition for allowance,
excent as to matters of form, 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
O.G. 213, and should conclude with the setting of a chor-
tened statutory period for response. (Order 5267)

15-2.
Final Review and Preparation For Issue

15-2-1.
General Review of Disclosure

When an application is apparently rendy for allow-
ance, it should be reviewed by the Examiner to make cer-
tain that the whole case meets all formal requirements and
particularly that the general statement of invention and
the descriptive matter are confined to the invention to
which the allowed claims are directed and that the language
of the claims finds full support and elucidation in the
specification. Neglect to give due attention to these
matters may lead to confusion as to scope of the patent.

Frequently the invention as originally described
and claimed was of much greater scope than that defined
in the claims as allowed. Some or much of the subject
matter disclosed may be entirely outside the bounds of
the claims accepted by the applicant. In such case the
examiner should require the applicant to modify his gener ..
al statement of invention and restrict his descriptive mat-
ter so as to be in harmony with the claims. However valua-
ble for reference purposes the examiner may consider the
matter which is extraneous to the claimed Invention.
patente should be confined in their disclosures to the re-
spectivo inventions patented. (Rules 10.1 and 11.2) of
onurse enough background should be included to make the
Invention clearly understandable.

Thie renerni statement of invention should be direc-
ted to the invention cinimed, in contro distinction to
mere generalities which would be equally applicable to
numerous preceding patents. Stereotyped general state-
menta that would fit one case as well as another should
be required to be canceled as surplusage or replaced by
statementa that are directly in point.

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There should be a verbal basis in the specification
for the terminology used in the claims. Usually the ori-
ginal claims follow the nomenclature of the specification;
but sometimes in amending the claims or in adding, now
claims, applicant employs terms that do not appear in the
specification. This may result in uncertainty as to the
interpretation to be given such terms. See Rule 10.4.

Where a copending application is referred to in the
specification, the examiner should ascertain whether it
has matured into a patent or become abandoned and that
fact inserted with appropriate data by examiner's amend-
ment. If the file wrapper has a retention label (form
PO-150) on it, the application specified on the label
should be inspected to see that the case at hand properly
complies with Rule 10.7.

The claims should be renumbered as required by
Rule 17.6, and particular attention should be given to
claims dependent on previous claims to see that the num-
bering is consistent.

The title should also be checked. It should be as
specific as possible. If a satisfactory title is not
supplied by the applicant, the examiner may change the
title by Examiner's Amendment on or after allowance.

# 15-2-2. Specification to be Rewritten if Confused by prasures and Amendments

The examiners are directed before passing applica-
tions to issue to carefully examine all papers and see
that they are in such shape and condition as to avoid all
possibility of error made by the printers. Whenever in-
terlineations or erasures have been made in the specifica-
tion or amendments which would lead to confusion and mis-
take, the examiners should require the entire specifica-
tion to be rewritten before passing the case to issue.
(Order 525)

15-2-3.
Erasure of Notations Required

All marginal notes must be erased when the case is
passed to issue. (Order 560)

15-2-4.
Examiner's Amendment and Changes

On reviewing the disclosure preparatory to allow-
ance, the Examiner may find that changes need to be made.
Minor changes in the specification may be made by pen and
Ink and initialed. More important changes in the specifi-
cation and claims, and changes in the drawing may be made

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by Examiner's Amendment. See section 10 - 10. Other
changes require an official action under the practice of
ex parte Quayle, 1935 C.D. 11, 453 0.6. 213, as set forth
in section 15 - 1.

15-2-5.
Correction of Drawing

Where a case otherwise ready for irsur requires
correction of the drawing, the examiner should attach to
the file a alip indicating that the case is randy for
allowance.

15-2-6.
Prior Foreign Applications

An applicant will not be required in any case to
file a statement setting forth the data of any foreign
patent granted him, or to others with his knowledge or
consent between the date of execution of his specification
and the date of the payment of the final fee. (Order 1239)

The examiners are directed on passing to issue any
application in which an earlier foreign application, or
applications, 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 name of such country; and in
the event that more than one foreign application has been
filed outside the twelve-months period, the filing date
and name of country of each such application will also be
thus entered. (Order 3233)

In the case of any foreign application filed more
than 12 months prior to the U. S. filing date, the
examiner should ascertain whether it has matured into a
patent by a search of the records in the Scientific
Library, noting on inside of left-hand flap of wrapper
the date of such search. If no evidence that such foreign
application has gone to patent is found, it is asnumeđ
that, no foreign patent has issued and the case is sent to
issue. Of course, no search is necessary in the case of
a foreign application which qualifies for the right of
priority under the provisions of Public Law 690. See
4-1-4.

15-2-7-
Interference Search

Assuming that the case in found rendy for issue
the examiner makes an "interference search." To do this.
he inspects ali the pending frawings (or all the digests
of onses if the invention is not susceptible of illustra-
tion) in the relevant subclasses of the class in which
the application is classified, and ali other pertinent.
classes, whether in his division or alnewhere, in order

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to ascertain whether any other a plicant is claiming sub-
stantially the same subject matter as is being allowed in
the case in hand. When any of the drawings or digests
shows such a condition to be likely, he examines the cor-
responding file. The procedure in case the examiner con-
cludes that an interference in fact exists is set forth in
Section 13.

In connection with the subject of interference
search, it is to be noted that, where the examiner at any
time finds that two or more applications are claiming the
same invention and he does not deem it, expediont to insti-
tute interference proceedings at that time, ho should make
an appropriate record of the possible interference. No
notationa, however, should be made on the application file
or drawing which give any hint to applicant of the date or
identity of supposedly interfering applications.

If the search does not disclose any interfering
application, the examiner should prepare the case for
issue.

15-2-8.
Notations on File Wrapper

The Examiner fills out in ink the form at the bot-
tom of the face of the file wrapper.

Examiners will ordinarily designate but one claim
on each invention to be published in the Official Gazette
in connection with each original or reissued patent. The
BROADEST claim should be selected, When a plurality of
devisible inventions are claimed in an application, addi-
tional claims to a maximum of five may be designated for
publication.

The file wrapper bears on the left hand margin the
legend: "Division of Application No. ---- , Filed ------
19 --. " This is to be filled in with the serial number and
date of any prior application of which the one in question
is a division, a continuation or a substitute, the word
"Division" being replaced by Continuation, and the words
"Division of" replaced by Substitute as may be required.
If the prior application has issued as a patent, the
patent number and date should also be supplied.

If the application under consideration contains any
substantial matter in addition to that contained in the
prior application no notation on the margin of the file
wrapper is made; but in the case of a continuation-in-part
the letters C=P are stamped on the face of the wrapper at
the bottom thereof.

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Pee-exempt applications ire to be endorsed on the
file jacket: (Granted under the act of March 7, 1883 AR
amended April 30. 1928).

Section 4 explains the to pes of applications hare
mentioned.

15-2-9.
Notations on Drawings

On the upper left hand margin of the sheet of draw-
ing the examiner completes in ink the following data:
"(O.C. Fig .---- >," indicating the figure which he selects
for illustration in the Official Gazette and "(class --
subclass -- )" indicating the final official classification
of the case. On the lower margin the examiner writes the
allowance mark (=).

15-2-10.
Classification and Notations

on Issue Slips (form No. 574)

In preparing a case for issue the examiner fills out
a blue lasue slip (Form 574), with the exception, of course,
of the patent number, and pins it to the upper left hand
corner of the drawing, being careful to insert the pin out-
side of the margin line. Where the case has no drawing,
the blue allp is pinned inside the left-hand flap of the
file wrapper.

In aMition to noting on the blue : lip the proper
classification of the prospective patent, the examiner
should make certain that all necessary cross-references
are indicated. To Insure that the field for cross-refer-
encing has been fully covered, the examiner, where doubt
exists, should consult other examiners having related art
to determine the need of a cross-reference therein or in-
clude such doubtful cross-references, Leaving it to the
Classification Examiner to cancel them if deemed unneces-
sary.

Where a prospective patent is to be classified in
a class In a division other than the one which is sending
the application to fsane, the examiner after filling in on
the blue issue slip, the class and subclass mumber in
which the patent is to appear will designate in red ink on
the blue alip the division to which the patent in to be
sent. For example, the blue ingue slip in such cases will
real

Class 18 subclass 51 (D)v. 15)

The division pressing the case to issue will insert its own
number as manal in the space provided in the lower left-
hand corner. When the patent. issues, the Classification

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Division will, as a matter of routine, send the necessary
notices to the divisions involved.

A case will not be sent to issue and assigned to a
class in another division except where both examiners con-
cur in the proposed classification or where there has been
a ruling by the Classification Examiner. When the
examiners concur, the examiner in charge of the class to
which the patent will be sent will write below the third
line of the blue slip "approved" together with his initials
and Division number. Any ruling of the Classification
Examiner should be attached to the inside of the file.

Principal examiners are directed to personally re-
vise the classification made by the assistant of every
application passed for issue. (Order 2357) .

15-2-11.
Dual Prosecution Cases

Where all the claims remaining in a Dual Prosecution
case are allowable and classified in the division not
having general jurisdiction, the case should be transferred.

See sections 10 - 4 - 10 and 10 - 4 - 15.

## 15-2-12. Reference to Assignment Division

Applications filed by an executor or an administra-
tor or the guardian of an insane person, or in which an
executor or administrator or guardian has intervened, or
in which the death of the inventor has been suggested, and
also all divisional, continuation, continuation-in-part,
substitute and reissue applications must be referred to
the Assignment Division before passing them to issue. (See
Order 1838, Order 3411, and Section 5)

15-2-13.
Listing of References

A list of references is made and appears in the
issued patent. Foreign patents are listed by the actual
name of the country, as for example, "France" rather than
"French".

In order to avoid possible errors in the listing of
references, the following procedure should always be fol-
lowed:

Whenever a reference has been incorrectly cited in
any official paper forming part of an application file,
and such citation has been correctly given in an ensuing
Office action, the Examiner is directed to correct the
error, in ink, in the paper in which the error appears,
and place his initials on the margin of such paper, to-

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gether with a notation of the paper number of the action
in which the citation has been correctly given.

In any case, otherwise ready for Ssaus. in which
the erroneous citation has not been formally corrected in
an official paper, the Examiner is directed to correct the
citation by way of an Examiner's Amendment. .

Where an applicant in an amendatory mper refers to
a reference which is subsequently relied on by the Examiner,
such reference shall be cited by the Examiner in the usual
manner. See section 10.9.

15-2-14.
Signing

After revision by the clerk and correction of any
discovered informalities, the application file is signed
by the Primary Examiner.

15-3.
Notice of Allowance

After the application file has been signed by the
Primary Examiner the typist fills out the appropriate form
of notice of allowance as described in the Clerk's Manual.

15-3-1.
Amendment Received After Allowance

For discussion of amendments filed under Rule 34.2.
see 10-16-17.

If the amendment contains claims copied from a
patent, see 10-16-21.

Where an amendment, even though prepared by appli-
cant prior to allowance, does not reach the Office until
after the notice of allowance has been mailed, such amend-
ment has the status of one filed under Rule 31.2. Ita
entry is a matter of grace.

If, however, the amendment is filed in the Office
but is not received by the examiner prior to the mailing
out of the notice of allowance, it has the same standing
in the case as though the notice had not been mailed.
Where the case has not been closed to further prosecution
as by final rejection of one or more claims, or by an ac-
tion allowing all of the claims (ex parte Quayle, 1935 CD
11; 453 O.G. 213), applicant is entitled to have such
amendment entered even though it may be necessary to with-
draw the application from issue. Such withdrawal, however,
is unnecessary if the amendatory matter is auch as the
examiner would recommend for entry under Rule 34.2.

As above implied, the case will not be withdrawn

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from issue for the entry of an amendment that would reopen
the prosecution if the Office action next preceding the
notice of allowance closed the case to further amendment,
1.e., by indicating the patentability of all of the claims,
or by allowing some and finally rejecting the remainder.
15-3-2.
Undelivered

In onse a notice of allowance is returned, a new
notice is sent, the file being obtained from the Issue
and Gazette Branch, and the date of sending the notice
changed to agree with the date of such remailing.

### 15-3-3. Not Withheld Due to Death of Inventor

The notice of allowance will not be withheld due to
death of the inventor even though the executor or adminis-
trator has not Intervened. See 6-3-3.

### 15-4. Withholding From Insue of Secret Cases

W
"Secret" cases are not sent to issue even when all
of the claims have been allowed. They are prepared for
issue in the same way as other cases but instead of mailing
an ordinary notice of allowance a D-10 notice is sent.

In a "special handling" case and a Government-owned
three-year case, the notice of allowance is sent out as in
an ordinary case. If delay of the issue of the patent is
desired in the interest of security or for other reasons,
the agency may take appropriate action, such as recommending
that the case be placed under secrecy order, or that Rule
14.3 be invoked. See section 2-1.

If the secrecy order in a case is withdrawn after
the D-10 notice is mailed, the case should then be treated
like an ordinary application in condition for allowance.

15-4-1.
Amendment After D-10 Notice

The issuance of a D-10 Notice closes the prosecu-
tion. Any amendments received thereafter are treated like
amendments filed after final rejection in an ordinary caso.
The applicant should be advised of their entry or non-
entry, and in the latter case the reasons therefor.

15-5.
Jurisdiction

After the notice of allowance is mailed, the cane
is sent to the Issue and Gazette Branch. It is then tech-
nically no longer under the Jurisdiction of the primary
examiner. However, the Examiner can make Examiner's amend-
ments correcting obvious errors, as, when brought to the

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attention of the examiner by the printer, and also to od
mit amendments under Rule 34.2 which are confined to met
tors of form in specification or claims. or to the car-
cellation of a clara or claims. The firstnegin valid a
other amendments under kule 54.2 consists of a recomanda-
tion to the Commissioner.

To regain jurisdiction over the case, the examiner
must write a letter to the Commissioner requesting :t. See
15-8.

Once the patent has been granted, the office has to
control over It except for the issuance of a carhifiente
of correction as provided in Rule 35.2. The applicant may,
however, take steps to have the Office change the patent.
grant in several ways, See Section 16.

15-6.
Public Law 690 Cases

In cases rendy for issue or with all claims allowed
and containing purers filed under Public Law 690 the exami-
ner should ascertain whether a ruling on the right of pri.
ority has been mad :. If auch a ruling has not been made,
the examiner should write a letter to appliennt stating
whether or not the case is entitled to the priority date,
using the forms of anstion 4-1-6. The letter should be
submitted to the Supervisory Examiners for review. It may
be mailed with the notice of allowance.

An application in condition for allowance, which
has been previously given the benefit of the priority date
and in which oll cloims still relate to the "anme inven .
tion", may be passed to issue by the examiner without again
referring It to the Supervisory Examiners.

If an application is in issue when papers filed an-
der Public Law UM are received, the examiner should if
the final for has not been paid, borrow the flic From the
Issue and Gorette Bronch and treat it in the name mamier
as a pending come. writing a letter and referring it to
the Supervisory Ranminers for approval. If the final for
has been paid the examiner should, if there is tine, examine
the papers prompter att write a letter in the same manner.
Deferment of the theme of the potent may be requested If It
is still possible. If the papers are received too late to
take any of the nhown actions, they should be referred to
the Supervisory Examiners,

15-7.
Change in Classification of Cases
Mitch are in Issue

Tto of all application the &
boon med & which would be changed ; and .

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made in the official clas. ification by order of the
Commissioner, should be corrected by the examiner having
custody of such applications as soon as possible after
promulgation of the order.

To effect the correction of the classification of
applications that have been passed for issue but are
awaiting payment of final fee, the examiner should cor-
rect the class and subclass numbers on the Issue slip
and file wrapper.

15-8.
Withdrawal From Issue

Rule 34.3 Withdrawal from issue. After
the notice of allowance of an application is
sent, the case will not be withdrawn from
issue except by approval of the Commissioner,
and if withdrawn for further action on the
part of the Office, a new notice of allowance
will be sent if the application is again
allowed. When the final fee has been paid,
and the patent to be issued has received its
date and number, the application will not be
withdrawn from issue on account of any mis-
take or change of purpose of the applicant,
his attorney or his agent, nor for the pur-
pose of enabling the inventor to procure a
foreign patent, nor for any other reasons
except mistake cpi the part of the Office, or
because of fraud or illegality in the appli-
cation, or for interference. Express aban-
donment of the application (Rule 19.4) may
not be recognized by the Office unless it is
actually received by appropriate officials
in time to act thereon before the date of
issue.

If the applicant wishes to have the case withdrawn
from issue he must petition the Commissioner. Withdrawal
is permitted only for the reasons stated in the rule.

15-8-1.
Rejection after Allowance

A claim noted as allowable shall thereafter be ra-
Jected only with the approval of the primary examiner.
Great care should be exercised in authorizing such rejec-
tion. (Order 3157).

If a reference is found for an allowed claim in an
application that is in issue, the Primary Examiner in a
letter addressed to the Commissioner requests that the
application be withdrawn from issue for the purpose of
applying the new reference. This letter should cite the

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reference, and, if need be, briefly state its application,
Upon approval of this request by the Commissioner, the
letter is taken to the Issue and Gazette Branch and the
application is stamped "Withdrawn" over the allowance :tp.
nature of the Primary Examiner. It is then returned to the
Division from which it came; the clerk enters the withdrawal
from issue on her register, and the application is thus re ...
stored to its former status as a pending application awaitlux
action by the examiner. The examiner at once writes a let-
ter in the case stating that the application has been with-
drawn from issue, citing the new reference, and to jecting
the claims met thereby .

If the examiner's proposed action in not approved
the letter requesting jurisdiction should not be placed in
the file.

15-8-2.
Form of Letter

Where It becomes necessary to withdraw a case from
issue for the purpose of rejecting claims, the following
letter will serve as a form:

Application of

:

(Date )

John Doe

....

Ser. No. 85,963

..

Washing Machine

Withdrawal

from

Innse

Filed Feb. 14, 1935

........

*

Allowed Mar. 6, 1935

$

llon. Commissioner of Patents,
Fir:

It is requested that the above-entitled ap-
plication be withdrawn from issue for the purpose
of rejecting claims in view of the newly disen.
vered reference, the patent No .------------.
(Explain, if necessary )

Respectfully,
Examiner.
15-8-1.
For Interference Purposes

It may be necessary to withdraw a case from Hade
for the purpose of interference. See section 13.

15-9.
Tame of Patent.

Mesure of some cases (not patented "det) are

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kept in the Issue and Gazette Branch, arranged in the order
of dates of allowance. When the final fee is paid within
the time allowed by law, the drawing is obtained by the Is-
sue and Gazette Branch and the file is given a patent num-
ber and date. The file then goes to the Assignment Branch
for examination as to assignments after which it is sent to
the Government Printing Office for printing of the 'specifi-
cation. A Bond paper copy of the drawing and specification
is ribboned and sealed in the Issue and Gazette Branch and
finally signed by the Commissioner or Law Examiner.

15-0-1.
Companion Case Queries

In those allowed cases in which another application
is referred to and no statement has been made as to whether
the other application is patented or abandoned, the Issue
and Gazette Branch will send the case to the examining di-
vision with a Companion Case query slip (form PO-]A") and
a retention label (form PO-150).

Upon receiving such a case the Examiner will prompt-
ly check the current status of the application referred to
and report the same on the query slip in accordance with
the instructions thereon. If the application referred to
is patented or abandoned, he will indicate this fact in the
specification of the allowed onse by appropriate Examiner's
amendment. The retention label will be used in the manner
indiented on the query slip.

If the pending application is referred to in more
than one allowed application, it is not necessary to use
more than one retention label. Instead the Examiner will
merely add the necessary data to the label already on the
pending application.

Query slips are used at the time the application is
being prepared for printing so that the data in the speci-
fication of the patent will be as complete as possible.

15-0-2.
"Printer "aiting" Cases

After printing of the specification the proof is
read by employees of the Government Printing Office. "here
apparent error is found, the file with the proof is trans-
mitted to the "xaminer, attention being called on an at-
tached "printer waiting" slip to the supposed errors.

All printer waiting cases must receive immediate
attention and be returned to the Issue and Gazette Branch
as soon as possible (preferably within three hours). If
the Examiner concurs in the criticisms, the errors should,
if possible, be corrected in ink and initialed, or be cor-
rected by Examiner's amendment.

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1" .- 0-4.
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15-1-1.
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٠٢٠ ٠ ٠ ٠٠ ٥٥ ١-٢٠ ٢٠ the ٠٠; ٠ ٠٩ ٥٨٠١٨٠٠٫٠٠ ١٩ ٢٠٠١١٥٣

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When an interference is declared between a patent
and an application and the interference is forwarded to the
"xaminer of Interferences, the clerk in charge of the 'e-
cord Room should be informed in order that the charge may
be changed and the location of the file known at all times.

Patent Copy Sales Bronch has charge of the drawings
in patented casen. Canceled sheets, however, are not ro-
tnined . fth the patented drawings but nre filed with the
"Abandoned Files and Drawings."

Inquirion na to the status of applications in the
examining divisions should in every case be answered prompt .-
ly. If the inquiry is directed to an application nunitine
nction on the part of the Office a prediction should be
mode of the probable date n case may be renched for action.
This prediction of a date in not to be considered en bind-
Ing upon the Examiner In making his next action.

The privilege of an answer to a status letter is ac-
corded to applicants and attorneys who wish to inquire
about individual onges. Any instances of wholesale status
inquiries by attorneys should be reported to the Supervisory
Examiners.

The "xaminer's answer may be typewritten on the let .-
ter of Inquiry and will be signed by the Primary Examiner.
The original inquiry should be returned to the correspondent
with the reply.

Specimen Reply

Patent Office, July 1, 1948

The above application is awaiting action on the part.
of your attorney in response to Office letter of June 1,
1948. Unless proper action is taken on or before December
1, 1 48, the application will become abandoned.

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