800

OCR transcription for search; preserved printed pages are authoritative

Section 8. PARTS, FORM AND CONTENT OF APPLICATION

# 8-1. Petition

-1-1.

Amendment of

-1-2.

Power of Attorney

-2.

Original Cath

-2-1.
Cannot be Amended

-2-20

Lack of

-2-4.

Foreign

-2-5.

Ribboned to Other Application
Papers

-2-6.
-2-70

-2-8.
-2-9.
-2-100
-2-11.

... 2~12.

-2-13.
-2-14.
-2-15%
-2-16.

-2-17.
-2-180
-2-190
.. 2-20%
-2-21.

Too Old at Time of Filing
In Division and Continuation Cases
New or Substitute for Original
Supplemental Oath
After Allowance

Administration or Execution of
Notaries and Extent of Jurisdiction
Variable Jurisdiction

Consul

Omission of Certificate

Consular Fee Stamp

Omission of
Embassies and Legations

Seal

When not required

Venue

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# Section 8% (Continued)

8-2-22.

## By attorney in case, invalid

-3.

Applicants

-3-1.

Citizenship

Residence

.40
~50
Post Office Address
Supplying Omission

Amendment of

-60
Signature and Name

Single Signature Form

Full First Name Required

-6-1.

Change of Name

Mark Used, Witness Required

Use of Title of Nobility
Joint

File Sent to Application Branch

Unsigned Specification

Signed duplicate

On Drawings

Administrator or Executor

Signature

Heirs

Title of Invention

Change by Examiner's Amendment

Filing Fee

Fee Exempt

Inventor leaves service of United States

-6-2.
-6.30
-6-40
·· 6-50
-6-60
.6-70
-6-80
-6-90
.. 6-10%
-6-11.
... 76
-7-10
-80
-8-10
-8-20

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## Section 8. (Continued)

8-8-3.

Fee exempt changed to Fee filed

-8-4.

Fee filed changed to Fee exempt

-8-5.

Returnability

-9%

Disclosure

-9-1.

Specification

-9-20

Parts

-9-3.

Preamble

-9-4.

May be omitted

-9-5.

General Statement of Invention and Objects

-9-6.

Coextensive with Claims

-9-70

Brief Description of Drawings

-9-8.

Detailed Description of Invention

-9-90

Mode of Operation

-9-10

Claims

-9-110

Numbering of

-9-12.

Index of

-9 -13.

Statutory Requirement

-9-14.

Original

-9-15.

Form

-9 -16 0

Dependent Claims

-9-17.

Basis for Terminology in Description

-9-18.

Claims Added by Amendment

.-. 9 .- 19 %

Completeness

·- 9 .-- 20 m

Substitute or Rewritten

<!-- PageBreak -->

Section 8. (Continued)

8-9-21.

Formulae

-9-22.

Foreign Language

-9-23.

Derogatory Remarks about Prior Art

-. 9 .. 24.

Restoration of Canceled Matter

... 9-25.

Use in Subsequent Application

-9-26 6

Of Formerly Filed Incomplete Application

-9-27.

Trade marks and Trade Names

-. 9-28%

Interlineations or erasures made prior to filing

-9-290

Drawing

-. 9~30%

When required

.9.31.

Informal

-932.

Draftsman determines

-9 ... 33 %

Always in Division

.9-340

Complete Illustration

.. 9 .- 350

Examiner Determines

-9-36.

Modification

-- 9.37.

New Matter

~9-380

Additional, duplicate, or substitute

... 9 .39%

Transfer from Prior Application

.. 9 .... 400

Canceled Sheets to Divisional

-9.416

Patented, to Reissue

-. 9.42.

To Continuation or Substitute

.9 ... 43.

Blueprints

<!-- PageBreak -->

8-9-44.

-9-45.
-9-46.

-9-47.
-9-48.

Date Entered on

Correction of

Models, Exhibits and Specimens
Model Room

New Matter

-9-53.
-9-54.
-9-55.

-9-56%

In Amendment

-9-57.

# Section 8. (Continued)

Prints

Kept in Examining Division

Dual Prosecution

Data Entered on

-9-49.
-9-50%
-9-51.

-9-52.

Matter Not in Original Specification,
Claims or Drawings

By Preliminary Amendment

In Substitute Specification

Review of Examiner's Holding

<!-- PageBreak -->

## 8. PARTS, FORM AND CONTENT OF APPLICATION

Rule 8.1 General Requisites of an

Application. Applications for patents must
be made to the Commissioner of Patents. A
complete application comprises:

(*) A petition or request for a patent,
see rule 8.9.

(b) A specification and claim, see
rule 10.

(c) An oath, see rule 9.1.

(d) Drawings, when necessary, see
rule 12.

(e) A filing fee of $30, and $1 for
each claim in excess of 20.
The petition, specification, and oath must
be in the English language. All papers
which are to become a part of the permanent
records of the Patent Office must be legibly
written or printed in permanent ink.

Typed, mimeographed, or multigraphed papers are
acceptable. Carbon copies must be replaced by acceptably
prepared papers before allowance.

The petition and oath may be included in a single
document, the approved single signature form.

Determination of completeness of an application is
covered at 7-1-9.

The petition, specification and oath are secured
together in a file wrapper bearing appropriate identifying
data including the Serial Number and filing date (10-17) .

Note:
reissue patents Sec. 16-1.
design patents Sec. 17.
plant patents Sec. 18.

A model, exhibit or specimen is not required as
part of the application as filed, although it may be ro-
quired in the prosecution of the application Rules 15.1 -
13.3, (8-9-48).

Rule 8.8 Papers of Completo Application
Not to be Returned. The papers in a complete
application will not be returned for any
purpose whatever. If applicants have not
preserved copies of the papers, the office

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will furnish copies at the usual cost. See
Rule 12.7 for return of drawing.

8.1.
Petition

Rule 8.9 Petition. The petition must
be addressed to the Commissioner of Patents
and must state the name, residence, and post
office address of the petitioner requesting
the grant of a patent; designate by title
the invention sought to be patented; contain
a reference to the specification for a full
disclosure of such invention; and must be
signed by the applicant in person.

The power of attorney or authorization
of agent may be incorporated in the petition.

In the single signature form, the state-
ments above required for a separate petition
do not all appear in the petition paragraph
and are differently arranged.

See forms o o o o o · · for separate
petition.

See Rule 8.7 and forms . . . . . . for
statements of the petition as embodied in
single signature formo

The petition need not be datedo

8-1-1.

### Amendment of Petition

Those portions of the petition, other than the post
office address, may be amended by the attorney.

Any amendment of the post office address requires
the signature of the applicant himself.

If the post office address is entirely omitted, it
must be supplied by a letter over the applicant's own
signature.

Applicant's post office address means that address
(other than in cars of the attorney in the case) at which
he customarily receives his mail. 8.5.

8-1-2.

# Power of Attorney

Usually a power of attorney or authorization of
agent is incorporated in ofthor the petition or single
signature form. Note 6-1, 6-2, and 8-6 for details.

The attorneyis full post office address should be
given in every power of attorney. The prompt delivery of
communications will thereby be facilitated.

<!-- PageBreak -->

## 8-2. Original Oath

Rule 9.1 Oath of Applicant. The appli .-
cant, if the inventor, must make oath or
affirmation that he does verily believe him-
self to be the original and first inventor or
discover of the art, machine, manufacture,
composition, or improvement, or of the
variety of plant, for which he solicits a
patent; that he does not know and does not
believe that the same was ever known or used
before his invention or discovery thereof,
and shall state of what country he is a
citizen and where he resides, and whether he
is a sole or joint inventor of the invention
claimed in his application. In every orig-
inal application, the applicant must distinct-
ly state under oath that to the best of his
knowledge and belief the invention has not
been in public use or on sale in the United
States for more than one year prior to his
application, or patented or described in any
printed publication in any country before his
invention or more than one year prior to his
application, or patented in any foreign
country on an application filed by himself or
his legal representatives or assigns more than
twelve months prior to his application in
this country. If any application for patent
has been filed in any foreign country by the
applicant in this country, or by his legal
representatives or assigns, prior to his
application in this country, he shall state
the country or countries in which such
application has been filed, giving the date
of such application, and shall also state
that no application has been filed in any
other country or countries than those men-
tioned, and if no application for patent has
been filed in any foreign country,. he shall
so state. This oath must be subscribed to by
the affiant.

If the application be made by an executor
or administrator of a deceased person or the
guardian, conservator, or representative of
an insane person, the oath shall allege the
relationship of the affiant to the inventor
and upon information and belief, the facts
which the inventor is required by this rule
to make oath too

An additional oath may be required in
the cases where the applications have not
been filed in the Patent Office within a

<!-- PageBreak -->

reasonable time after the execution of the original
oath.

The single signature form, rule 8.7 includes the
oatho

An oath which refers to applicant as "the petitioner"
need not contain applicant's name in the body thereof.

In the oath, the jurat must be filled out, the word
"sole" or "only" must appear if there is but one inventor,
and "joint" if two or more inventors.

The oath usually bears an impressed seal of the
administering official but such seal may not always be
required. Rule 9.2, See 8-2-11, 8-2-18, 8-2-19.

If a claim is presented for matter not originally
claimed or embraced in the statement of invention in the
specification a supplemental oath is required. Rule 9.3,
See 8-2-9.

8-2-1.
Oath Cannot be Amended

The oath cannot be amended. If it is deficient for
any reason a new oath must be required.

The oath must furnish evidence that the notary was
acting within his jurisdiction at the time he administered
the oath. This may be given as the caption of the oath or
in the body of the jurat. Otherwise, a new oath, or a
certificate of the notary that the oath was taken within
his jurisdiction, must be required. Ex parte Delavoye,
1906 C.D. 320; 124 O.G. 626, ex parte Irwin 1928 C.D. 13;
367 O.G. 701.

If the consular certificate is omitted, in cases in
which the oath is taken before a notary abroad, the examiner
should require an acceptable new oath, or a consular cer-
tificate for the original oath.

8-2-2.
Lack of Oath

The fact that the courts would probably not invali ...
date a patent because of a defective oath does not relieve
the examiner from requiring appropriate remedy for any such
defecto

Note lack of supplemental oath 8-2-9.

<!-- PageBreak -->

## 8-2-4. Foreign Oath

An oath executed in a foreign country must be
properly authorized, 8-2-11, Rule 9.2.

### 8-2-5. Foreign Oath is Ribboned to Other Application Papers

Rule 9.2. When the oath is taken before
an officer In a country foreign to the United
States, all the application papers, except the
drawings, must be attached together and a
ribbon passed one or more times through all
the sheets of the application, except the
drawing, and the ends of said ribbon brought
together under the seal before the latter is
affixed and impressed, or each sheet must be
impressed with the official seal of the
officer before whom the oath is taken. If
the papers as filed are not properly ribboned
or each sheet impressed with the seal, the
case will be accepted for examination, but
before it is allowed, duplicate papersy pre-
pared in compliance with the foregoing sen-
tence, must be filed.

A rubber stamped imprint upon an adhesive wafer
under which the ribbons were brought together has been
accepted as a proper seal in a foreign application.

8-2.6.
To Old at Time of Filing

Note time between date of oath and filing of appli ...
cation. Five weeks plus time required for transmission in
the mails is allowed (ex parte Heinze 1919 C.D. 67; 265
O.G. 145.

Note: residence 8.4
namo
8-6

# 8-2-70 Oath in Division and Continuation Cases

Where the date of filing the application is not the
date that determines the statutory twelve months' period,
as in divisional and continuation cases, it is immaterial,
so far as concerns the acceptability of the oath, how long
a time intervenes between the execution of the oath and
the filing of the application.

8-2-8.
New Oath or Substitute for Original

In requiring a new oath, the examiner should always
give the reason for the requirement and call attention to

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the fact that the application of which it is to form a part
must be properly identified in the body of the new oath,
preferably by giving the serial number and the date of
filing.

Where neither the original oath, nor the substitute
oath is complete in itself, but the two taken together give
all the required data, no further oath is needed.

8-2-9.
Supplemental Oath

Rule 9.3. Supplemental Oath for Matter
not Originally Claimed. When an applicant
presents a claim for matter originally shown
or described but not substantially embraced
in the statement of invention or claim origi-
nally presented, he shall file a supplemental
oath to the effect that the subject matter of
the proposed amendment was part of his inven-
tion; that he does not know and does not be-
lieve that the same was ever known or used
before his invention or discovery thereof, or
patented or described in any printed publi-
cation in any country before his invention
or discovery thereof, or more than one year
before his application, or in public use or
on sale in the United States for more than
one year before the date of his application,
that said invention has not been patented in
any foreign country on an application filed
by lumself or his legal representatives or
assigns more than twelve months prior to his
application In the United States, and has not
been abandoned. Such supplemental oath
should be attached to and properly identify
the proposed amendment, otherwise the pro ...
posed amendment may be refused consideration.

In proper cases the oath here required
may be made on information and belief by an
executor or administrator of a deceased per-
son or a guardian, conservator, or repro ..
sentative of an insane person.

Rule 9.3 requires in the supplemental oath substan ...
tially all the data called for in Rule 9.1 for the original
oath. As to the purpose to be served by the supplemental
oath, the examiner should bear in mind that it cannot be
availed of to introduce now matter into an application. It
applies only to matter originally shown or described but not
embraced in the statement of invention or claims as origi-
nally presented,

The occasions for the use of a supplemental oath are

<!-- PageBreak -->

rare, as the general statement of invention usually con-
tains some all-inclusive statement embracing the entire
disclosure as comprehended within the applicant's inven-
tion. Further, where a claim asserted after the case has
been examined is for a different and divisible invention
from that originally claimed, it would be subject to rejec-
tion on the ground of prior election; and the question of
its coming within the general statement of invention would
be a moot one at best.

It has been held that the failure to file a supple ...
mental oath, even where under the terms of the Rule such
oath is required, in no way affects the validity of the
patent. Heller Bros. Co. V. Crucible Steel Co. of America,
1925 C.D. 322;330 O.G. 3.

# 8-2-10. Supplemental Oath Filed After Allowance

Since the decision in Cutter Co. V. Metropolitan
Electric Mfg. Co., 275 Fed. 158, many supplemental oaths
covering the claims in the case have been filed after the
case is allowed. Such oaths may be filed as a matter of
right and when received they will be placed in the file by
the Issue Branch, but their receipt will not be acknowledged
to the party filing them. They should not be filed or con-
sidered as amendments under Rule 34.2, since they make no
change in the wording of the papers on file.

8-2-11.
Administration or Execution of Oath

Rule 9.2. Officers Authorized to

Administer baths. The oath or affirmation
may be made before any person within the
United States authorized by law to adminis ...
ter oaths, or, when the applicant resides in
a foreign country, before any minister,
charge d'affaires, consul, or commercial
agent holding commission under the Government
of the United States, or before any notary
public, judge, or magistrate having an offi-
cial seal and authorized to administer oaths
in the foreign country in which the applicant
may be, whose authority shall be proved by a
certificate of a diplomatic or consular
officer of the United States, the oath be ...
ing attested in all cases in this and other
countries, by the proper official seal of
the officer before whom the oath or affirm-
ation is made except that no oath or af-
firmation may be administered by any attorney
or agent appearing in the case. When the
person before whom the oath or affirmation is

<!-- PageBreak -->

made in this country is not provided with seal, his
official character shall be established by competent
evidence, as by a certificate from a clerk of a
court of record or other proper officer having a seal.

Note:

Seals

8-2-19

when unnecessary

8-2-20

in foreign case

8-2-5

## 8-2-12. Notaries and Extent of Jurisdiction

The extent of the jurisdiction of the notaries in
the various states is given below. The listing of states
is based on John's "American Notaries," 5th edition, 1942
( copy in Law Library) .

Statewide

Arkansas

New Mexico

Connecticut

New York (d) (e)

Florida

North Carolina

Idaho

North Dakota

Illinois

Oklahoma

Indiana

Oregon

Maine

Pennsylvania

Massachusetts

Rhode Island

Michigan

South Carolina

Minnesota

South Dakota

Montana

Vermont

Nevada

Wisconsin

New Hampshire

Wyoming

New Jersey

County Only

Alabama

Maryland

Arizona

Mississippi

California

Tennessee

Colorado

Texas

Delaware

Utah

Goorgia

Washington

Kansas

West Virginia

Louisiana (Parish)

8-2-13.
Variable Jurisdiction

(See Explanatory paragraphs (a-h) below. )

Iowa (a)

Ohio (h)

Kentucky (a)

Virginia (f)

Missouri (a)

Puerto Rico. (g)

Nebraska (č)

Alaska (g)

New Jersay (d)

Hawaiian Is. (g)

<!-- PageBreak -->

(a) In Iowa, Kentucky and Missouri a notary by
filing a proper certificate in counties adjoining that for
which he is appointed may have authority to administer
oaths in such other counties also.

(c) In Nebraska a notary with a county commission
can act only in that county; but he may have a general
commission and may then act in any county on filing proper
papers.

(d) In New Jersey and New York any attorney-at-law
may administer oaths.

(e) In New York the jurisdiction of the notary is,
by law effective Sept. 1, 1946, "co-extensive with the
boundaries of the state, irrespective of (his) place of
residence within the state."

(f) In Virginia, a notary may be appointed for one
or more counties and cities, or for the commonwealth at
large .

(g) The jurisdiction of the notary public in Puerto
Rico is unlimited. In Alaska and the Hawaiian Islands it
appears to be limited to the judicial district ..

(h) In Ohio the law, as amended in 1941, gives
notaries who are attorney-at law statewide jurisdiction,
and certain other notaries jurisdiction in more than one
county. The extent of jurisdiction is stated on the seal
or near the notary's signature.

Any naval officer serving beyond the continental
limits of the U.S. has notarial jurisdiction but has no
seal. (Act of April 25, 1935.)

All army officers on duty with the Judge Advocate
General's Department, and all adjutants, assistant
adjutants or personnel adjutants of any command, among,
other designated army officers, have notarial powers (Act
of Doc. 14. 1242.)

During existence of war or declarod national omor ...
goncy and six months thereafter, any officor of the Navy,
Marine Corps or Coast Guard dosignatod by tho Socrotary of
tho Navy (or by the Secretary of the Treasury in tho caso
of Coast Guard if under the jurisdiction of the Secrotary
of the Treasury) has notarial powors. No sonl is roquirod
(Act of April 9, 1043) .

(

(

(

€

(

<!-- PageBreak -->

8-2-14.

# Consul

(
The authority of any officer, not a U. S. minister,
charge d'affairs, consul, or commercial agent, administering
an oath to an applicant residing abroad must be proved by
certificate of a U. S. diplomatic consular officer.
Rule 9.2.

8-2-15.
Consul-Ommission of Certificate

If the consular certificate is omitted, in cases in
which the oath is taken before a notary abroad, the examiner
should require an acceptable new oath, or a consular cer-
tificate for the original oath.

# ( 8-2-16. Consular Fee Stamp

(

Sec. 10, Act approved April 5, 1906; "Whenever a
consular officer is required or finds it necessary to per-
form any consular or notarial act he shall prepare and
deliver to the party or parties at whose instance such act
is performed a suitable and appropriate document as pre-
scribed in the consular regulations and affix therto and
duly cancel an adhesive stamp in the denomination or de-
nominations equivalent to the fee prescribed for such
consular or notarial act, and no such act shall be legally
valid within the jurisdiction of the Government of the
United States unless such stamp or stamps is or are affixed
and cancelled."

8-2-17.
Omission of Consular Fee Stamp

(

In all applications executed abroad before a consular
officer, from which the required consular fee stamp has been
omitted, the first action in the case will include the re-
quirement that the necessary stamp be forwarded to the
Patent Office to be affixed to the affidavit and cancelod
by the Head of the Application Branch.

(
This applies only to affidavits taken before consular
officers.

## 8-2-18. Embassies and Logations Stamp not Required

Embassies and legations are not supplied with fee
stamps, and are not required to attach any such stamps to
papers executed by theme

8-2-19.

Seal

(
An oath under Rule 9.1 administored by a civilian
official must be attosted by a competent seal, as required

<!-- PageBreak -->

by Rule 9.2.

The seal must be a physical impression such as pro-
duced with a die upon the paper or a substance adherent to
the paper. See also 8-2-5.

8-2-20.
Seal, When Not Required

When the person before whom the oath or affirmation
is made in this country is not provided with a seal, his
official character shall be established by competent evi-
dence, as by a certificate from a clerk of a court of
record or other proper officer having a seal, except as
noted in 8-2-13 following paragraph (h) .

8-2-21.
Venue

Venue and Seal should'agree.

That portion of the caption or heading of an oath
or affidavit indicating where the oath is taken is known as
the venue. The venue is generally regarded as a material
fact in oaths and affidavits. Where the county and state
in the venue agree with the county and state in the seal,
no problem arises. If the venue and seal do not correspond
in county and state, the jurisdiction of the notary must
be determined, from statements by the notary appearing on
the oath, or from the listing at 8-2-12. Venue and notary
jurisdiction must correspond or the oath is invalid. The
oath should show on its face that it was taken within the
jurisdiction of the certifying officer or notary.

8-2-22.
Oath by Attorney in Case, Invalid

The oath may not be executed by a notary who has
power of attorney in the case. If such an oath is offered
as one of the original paper, the application is not ac-
cepted as "complete," since an oath so executed is invalid
and without legal effect. (Riegger v. Beiorl, 1910 C. D.
12; 150 O.G. 826) Rule 9.2.

8-3%

### Applicants

Rule 7.1 Only Inventor may Apply for
Patent. Only the actual inventor may apply
Tor a patent and the application papers must
be signed and the necessary oath executed by
the inventor, unless the inventor is dead or
insano.

Rule 7.5 Joint Inventors. Joint inven-
tors must apply for a patent jointly and each
must sign the application papers and make the

<!-- PageBreak -->

required oath; neither of them alone, nor
less than the entire number, can apply for a
patent for an invention invented by them
jointly.

Independent inventors of distinct
and independent improvements in the same ma-
chine can not obtain a joint patent. The
fact that one person furnishes the capital
and another makes the invention does not en-
title them to make an application as joint
inventors; but the patent may be issued to
them as joint owners under the conditions
prescribed in Rule 36.4.

If an application for patent has been
made inadvertently or by mistake and without
fraudulent intention by two or more persons
as joint inventors when they were not in fact
joint inventors, the application may be
amended to remove the name of those not in-
ventors upon filing a statement of the facts
verified by all of the original applicants,
and an oath required by Rule 9.1 by the
applicant who is the actual inventor, pro-
vided the amendment is diligently made. An
application can not be amended to add the
name of a joint inventor who was omited, but
a new application must be filed.

Rule 7.6 Assigned Inventions and Patents.
In case the whole or a part interest in the
invention or in the patent to be issued is
assigned, the application must still be made
by the inventor as indicated in Rules 7.1
and 7.5 or by one of the persons mentioned
in Rules 7.2 and 7.3. However, the patent may
be issued to the assignee or jointly to the
inventor and the assignee as provided in Rule
36.4¢

Rule 7.7 Applicant. Unless the contrary
is indicated, the word "applicant" when used
in these rules refers to the inventor (Rule
7.1) , joint inventors who have applied for a
patent (Rule 7.5), or to the person mentioned
in Rule 7.2 or 7.3 who has applied for a
patent in place of the inventor.

Note: Disposition of application by inventor 5-1.
Inventor dead or insane; 8-6-9, Rules 7.2, 7.40

<!-- PageBreak -->

#### 8-3-1.

# Citizenship

The statute (Sec. 4892, R.S. ) requires an applicant
to state his citizenship, the reason for this being found
in Sec. 4887, R.S. Where an applicant is not a citizen of
any country, a statement to this effect is accepted as
satisfying the statutory requirement; but a statement as to
citizenship applied for or first papers taken out looking
to future citizenship in this (or any other) country does
not meet the requirement.

8-40

# Residence

The rules of practice require that the applicant
state his place of residence. In the case of an applicant
who is in the U. S. Army or U. S. Navy, a statement to that
effect is sufficient as to residence.

8-50
Applicant's Post Office Address

Applicant's post office address means under Rule
8.9 that address at which he customarily receives his mail.

The object of requiring applicant's post office
address is to enable the Office to communicate directly
with the applicant if desired; hence, the address of the
attorney with instructions to send communications to appli-
cant in care of the attorney is not sufficient.

If the post office address is entirely omitted it
must be supplied by a letter over the applicant's own sig-
nature. Where, however, having given complete data as to
his residence . the applicant identifies his post office
address only by street and number, it is assumed and so
accepted, that, the city and state of his residence are the
city and state of his post office address.

Any amendment of the post office address requires
the signature of the applicant himself.

8 .- 6 0

Signature and Name

Rule 8.6 Signatures. The petition, the
specification and claims, and the oath, must
be signed by the applicant in person. Full
names must be given, including the full first
name without abbreviation, and the middle
initial or name if any. Names must be legibly
written.

Rule 10.5 Signature to the Specification.
The specITIcation and claim must be signed by
the applicant in persono See rule 8.60

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Rule 8.7 Single Signature Form. The
petition, oath, specification and claims,
and power of attorney may be included in a
single document and may be executed by a
single signature of the applicatnt if an
approved single signature form supplied by
the Office or approved by the Office is used.

If the oath and one of the other component parts of
the application are properly signed by the applicant, his
failure to sign the other parts will not of itself defeat
acceptance as a complete application.

The single signature form (Rule 8.7) should be ex-
ecuted only when attached to a complete application as the
last page thereof.

## Full First Name Required

It is hereby directed that all applications which
disclose the full name of the applicant (at any place in
the application papers) will be received and considered as
a sufficient compliance with Rules 8.6 and 10.5 of the Rules
of Practice.

When the full first name of the applicant does not
appear either in the signature or (elsewhere in the papers)
the examiner will, in the first official action, require an
amendment supplying the omission, and he will not pass the
application to issue until the omission has been supplied
unless a statement be filed over the applicant's own signa-
ture setting forth that his full first name is as signed
or what is in fact his full first name.

No affidavit should be required.

The requirement should be made only when for the
first name in the signature a mere initial appears or what
can be only an abbreviation of a name. (Order 3140)

Rule 8.6 requires "full names." The full first
name must appear somewhere in the papers as filed, and
there must be consistency in the names and signatures.
Otherwise, appropriate amendment is required.

In an application where the name is typewritten
with a middle name or initial, but the signature is without
such middle name or initial, action should be taken as
follows:

In the first Office letter, call attention to the
lack of uniformity and request information over applicant's

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signature as to the correct form of his name, together with
any necessary amendment.

If applicant, in reply, gives the name without the
middle name or initial unaccompanied by any instructions
to amend the typewritten name, the reply may be interpreted
as a direction to cancel the name or initial from the pre-
amble; though such amendment is not material, since the
preamble is no longer printed in the patent. It is neces-
sary however, that such surplus portion of the name, if it
appears printed on the drawing, should be removed therefrom.
This can be done by the Office draftsman.

If applicant gives the name with the middle name or
initial, interpret the reply as a direction to indicate, in
red ink, the middle name or initial in the signature so that
the latter will be properly printed in the patent.

If applicant fails to answer the request and the
case is otherwise ready for issue, correct the drawing by
Examiner's amendment, sending copy to applicant and pass
the case to issue.

There should be uniformity notwithstanding that
lack of it is not sufficient to affect the validity of the
patent.

8-6-1.
Applicant Changes Name

Sometimes the name of an applicant is changed in the
period between filing of the applicant and the issue of the
patent, as by court order or by marriage. This fact can,
if desired by applicant, be indicated by appropriate nota-
tion under the signature to the specification and drawing
(or printed name on the drawing where signed by the attor-
ney) . However, proof of the change of name, as by certif.
icate of court order, must first be recorded in the
Assignment Branch.

8-6-2.
Applicant Unable to Write

If the applicant is unable to write, his mark as
affixed to the petition, the specification and the drawing
must be attested by a witness. In the case of the oath,
the notary's signature to the jurat is sufficient to au-
thenticate the mark.

8-6-3.
May Use Title With Signature

It is permissible for an applicant to use a Title
of Nobility in connection with his signature. The Title
will not be in the printed patent.

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### 8-6-4. On Joint Applications

In case of a joint application, the order of the
names on the file wrapper is that in which they appear in
the preamble. It is not essential that the names appear in
the same order in the signatures to the petition, specifica-
tion, oath, and drawing.

#### 8-6-5% When Name is Corrected Send to Application Branch

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

8-6-6%
Unsigned Specification

An unsigned specification is not returned to the
applicant, but the applicant may come in and sign such
specification in the Patent Office. Otherwise, a properly
signed permanent copy of the specification as originally
filed is required.

##### 8-6-7% Unsigned Original Specification and Signed Duplicate

Whenever an application is filed in which the original
specification is not signed by the applicant, a requirement
should be made in the first action that the specification be
signed by the applicant or that a properly signed duplicate
specification be filed. If the duplicate specification be
filed with the first amendment, said amendment should be
entered in the signed duplicate specification and the orig.
inal or unsigned specification canceled; but if the first
amendment be filed before the signed duplicate specification
is filed, the amendment should be entered in the original
specification, and the signed specification marked "Duplicate
of Original Specification" and placed in the file, in which
case a marginal notation should be made at the end of the
unsigned specification to print the signature as found at
the end of the duplicate specification.

8-6-8.
Signature to Drawing

Rule 12.2 Signature to Drawing. The
drawing must either be signed by the appli-
cant in person or have the name of the appli-
cant placed thereon followed by the signa-
ture of the attorney or agent as such.

Erasing the names of attorneys or writing upon the
drawings the names of attorneys subsequently appointed, so
as to make it appear that their names were present when the

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drawings were originally filed, is prohibited.

This prohibition applies also where a drawing is
transferred from one case to another having a different
attorney. (Order 480)

8-6-9.
Administrator or Executor

Rule 7.2 When the Inventor is Dead.
In caso of the death of the Inventor, the
executor or administrator of the deceased
inventor may sign the application papers and
make the necessary oath, and apply for and
obtain the patent. Where the inventor dies
during the time intervening between the filing
of his application and the granting of a pat-
ent thereon, the letters patent will issue
to the executor or administrator upon proper
intervention by him.

Rule 7.3 When the Inventor is Insane.
In case an inventor becomes insane, the legal-
ly appointed guardian, conservator, or repre-
sentative of the insane inventor may sign the
application papers and make the necessary oath,
and apply for and obtain the patento

Rule 7.4 Proof of Authority. In the
cases mentioned in Rules 7.2 and 7.3, proof
of the power or authority of the executor
or administrator, or of the guardian, conserv-
ator, or representative, must be recorded in
the Patent Office.

When an inventor dies after filing an application
the executor or administrator should intervene, but the
allowance of the application, will not be withheld nor the
application withdrawn from the issue if the executor or
administrator does not intervene. (Order 2076)

In an application filed by an administrator or
executor, the specification should not be written in the
first person. Instead of the usual "I have found," the
wording should be "it was found."

8-6-10. Signature of Executor or Administrat:r

The signature to the petition, specification, and
oath may be in either of the two following forms:
(a) Hanna Edlund,
Administratrix of Estate of
Claus A. Edlund, deceased.

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(b) Claus A. Edlund, deceased,
by Hanna Edlund,
Administratrix.

The signature to the drawing, however, must follow
the (b) form, the name of the inventor appearing first.
If the drawing is signed by the attorney, the following
form should be observed:
Claus A. Edlund, deceased,
by Hanna Edlund, administratrix,
by S. V. Lauderly, Atty.

If the specification bears the signature of the
administrator (or executor) but omits the matter, "adminis-
trator of the Estate of John Jones, deceased, " the matter
can be added by amendment. The Examiner may make the
amendment if the case is otherwise ready for issue.
8-6-11.
Heirs As Such Cannot Sign Application

If the application is by the heirs of a deceased
inventor, see 6-2-3.

8-7.

## Title of Invention

The title of the invention in each application should
be as specific as possible. General titles do not serve to
throw any helpful light on the nature of the invention.

8-7-1.
Change By Examiner's Amendment

Where the title is not specific to the invention
claimed, the examiner should require the substitution of
a new title that is clearly indicative of the invention to
which the claims are directed. This may result in slightly
longer titles, but the loss in brevity of title will be
more than offset by the gain in its informative value in
indexing, classifying, searching, etc. If a satisfactory
title is not supplied by the applicant, the examiner may
change the title by Examiner's Amendmento

8-8.

### Filing Foe

While a filing feo, except as provided in the Act of
March 3, 1883, as amended April 30, 1928, is a sine qua non
part of the complete application for a patent, TE seldom,
if ever, presents any question requiring tho attention of
the examiner. The requisite fee must be paid before the
application is given a filing date, and, hence before it is
sent to the oxaming division. Where the number of the
claims exceeds twenty, and only the minimum fee of $30 is
paid, a filing, date for the complete application is

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withheld pending receipt of the required balance of one
dollar for each claim in excess of twenty or a cancella-
tion of each such claim. See 8-9-10 and Rules 4.1 and 4.2.

Sometimes before a case is examined, an amendment
is filed increasing the claims to a number in excess of
twenty. As no additional fee is receivable after the filing
date, the amendment is not entered.

8-8-1.

# Fee Exempt

The Act of April 30, 1928, amending the Act of 1883,
states the law governing the granting of patents without
payment of fees, and is as follows:

The Commissioner of Patents is authorized
to grant, subject to existing law, to any officer,
enlisted man, or employee of the Government, ex-
cept officers and employees of the Patent Office,
a patent for any invention of the classes mentioned
in section 4886 of the Revised Statutes, without
the payment of any fee when the head of the depart-
ment or independent bureau certifies such invention
is used or liable to be used in the public interest:
Provided, that the applicant in his application
shall state that the invention described therein,
if patented, may be manufactured and used by or
for the Government for governmental purposes with-
out the payment to him of any royalty thereon,
which stipulation shall be included in the patent.

8-8-2.
Inventor Leaves Service of United States

In view of the ruling in the opinion of the Attorney
General, dated January 14, 1936, that an application filed
under the Act of 1883, as amended, which meets the re.
quiremerts of this statute as to the status of the inventor
at the time of filing, is sufficient warrant for the
issuance of a patent to the inventor if the invention
claimed therein is found patentable, whether or not he is
in the service of the United States at the time the patent
issues, a letter asking for the status of the inventor will
no longer be required.

8-8-3.
Changed to Fee Filed

Where an application is filed under the Act of March
3, 1883, as amended April 30, 1928, the regular filing fee
can be subsequently paid and proper amendment made by the
inventor and concurred in by the Head of the Department
concerned cancelling the offer of dedication, the fee being
entered on the file and the original date of the appli-
cation retained.

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## 8-8-4. Fee Filed Changed to Fee Exempt

An application for which a filing fee has been paid
may issue under the Act of March 3, 1883, as amended April
. 30, 1928, if the applicant or applicants qualify under said
Act, and file the required petition. In such case the docket
clerk of the division will forward the application to the
Application Branch for appropriate amendment of the file
wrapper and of the record in the Application Branch.

# Note: 4-1-13 to 4-1-17 on fee and fee-exempt appli- cations.

8-8-5.
Returnability of Fees

All questions pertaining to the return of fees will
be referred to the Financial Division. Examiners and
Chiefs of other divisions will express no opinion to attor-
neys or applicants as to whether or not fees are roturnable
in particular cases.

8-90

## Disclosure

In return for a patent, the inventor gives as con-
sideration a complete revelation or disclosure of the in-
vention for which he seeks protection. All amendments or
claims must find basis in the disclosure, or they involve
new matter. Applicant may rely for disclosure upon the
specification with original claims and drawings, all as
filed complete.

8-9-1.
Specification

Rule 10.1 Detailed Description and
Specification of the invention. The specifi-
cation must include a written description of
the invention or discovery and of the manner
and process of making, constructing, com-
pounding, and using the same, and is required
to be in such full, clear, concise, and exact
terms as to enable any person skilled in the
art or science to which the invention or dis-
covery apportains, or with which it is most
nearly connected, to make, construct, compound,
and use the same.

The specification must set forth the pre-
cise invention for which a patent is solicited
in such manner as to distinguish it from other
inventions and from what is old. It must
describe completely a specific embodiment of
the process, machine, manufacture, composition
of matter or improvement invented, followed

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by an explanation of the mode of operation
or principle whenever applicable. The best
mode devised by the inventor of carrying
out his invention must be set forth.

In the case of an improvement, the spoci-
fication must particularly point out the
part or parts of the process, machine, manu-
facture, or composition of matter to which
the improvement relates . and must be explicit
language distinguish between what is new and
what is old; and the description should be
confined to the specific improvement and to
such parts as necessarily cooperate with it
or as may be necessary to a complete under-
standing or description of it.

Cross references to other related applications may
be made when appropriate, Rule 10.7 and 4-3.

Rule 10.9 Paper, Margin, Legible
Writing. The specification and claims must
be plainly written on but one side of the
paper. . (See Rule 8.1). A wide margin must
be reserved on the left-hand side and on the
top of each page and the lines must not be
crowded too closely together. Legal paper,
8 to 8} by 12} to 13 inches, typewritten
double spaced with margins of one and one-half
inches on the left-hand side and top is deemed
preferable. Typewritten or printed papers
suitable for use by the Office may be re-
quired if the papers originally filled are
not correctly, legibly and clearly written.
Any interlineation, erasure or cancella-
tion or other alteration must be clearly re-
ferred to in a marginal or footnote on the
same sheet of paper, initialed or signed by
the applicant to indicate that it was made
before the application was signed and sworn
to. (See Rule 8.5)

As stated in Rule 8.1 the specification must be in
the English language.

The specification is sometimes in so faulty English
that a new specification is necessary, but now specifica-
tions encumber the record and require additional reading,
and hence should not be required or accepted except in
extreme cases.

The specification does not require a date.

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If a newly filed application obviously fails to dis-
close an invention with the clarity required by Sec. 4888
R. S., revision of the application should immediately be
required (10-3.).

As the specification is never returned to applicant
under any circumstance, he should retain a line for line
copy thereof. In amending, the attorney or the applicant
requests insertions, erasures, or alterations, giving the
page and the line.

8-9-2.
Parts of Specification

### Rule 10.6 Arrangement of Specification.

The following order of arrangement should be
observed in framing the specification:

(a) Title of the invention; or a pre-
amble stating the name, citizen-
ship and residence of the appli-
cant and the title of the invention
may be used.

(b)
Brief summary and statement of the
nature of the invention.

(0)
Brief description of the several
views of the drawing, if there are
drawings.

(d)
Detailed description.

(0)
Claim or claims.

(f)
Signature.

The term specification as used here includes the
descriptive portion of the application and the claims.
"Specification" is sometimes more loosely used to denote
the descriptive portion without the claims.

Note: Design patent specification.
Plant patent specification. .
Reissue patent specification.

8-9-3.
Preamble

The preamble of the specification is simply the in-
troductory portion stating applicant's name, citizenship,
residence, and the title of the invention.

8-9-4.
Preamble Not Printed in Patent

Since the preamble is not printed in the patent, its
omission by applicant from the specification is permissible.
The oath or single signature form supplies the data as to
name, citizenship, etc., of which a specification preamble
is composed.

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#### 8-9-5. General Statement of Invention

Rule 10.2 Summary of the Invention. A
brief summary and statement of the nature of
the invention, which may include a statement
of the object of the invention, should pre-
cede the detailed description. Such summary
and statement should, when set forth, be com-
mensurate with the invention as claimed and
any object recited should be that of the in-
vention as claimed.

Rule 10.8 Reservation Clauses not
Permitted. A reservation of subject matter
disclosed but not claimed in a pending
application will not be permitted in the
pending application.

Note: Filing of application claiming matter dis.,
closed but not claimed in patent, 8-9-23.

Since the purpose of the general statement of in-
vention is to apprise the public, and more especially
those interested in the particular art to which the in-
vention relates, of the nature of the invention the state-
ment should be directed to the specific invention claimed,
in contradistinction to mere generalities which would be
equally applicable to numerous preceding patents. That
is, the subject matter of the claims taken as a unit should
be paraphrased in a few clear, concise sentences or para --
graphs, according to the extent and nature of the invention.
Stereotyped general statements that would fit one case as
well as another serve no useful purpose and may well be
required to be canceled as surplusare, and, In the absence
of any illuminating statement, replaced by statements that
are directly in point as applicable exclusively to the
case in hand.

#### 8-9-6. General Statement of Invention-Coextensive with Claims

The general statement of invention should be co.
extensive with the claims. Note final review of appli ..
cation 15-1-1.

Some latitude is permitted chemical cases.

8-9-7.
Brief Description of Drawings

Rule 10.3 Reference to Drawings. When
there are drawings, there shall be a brief
description of the several views of the

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drawings and the detailed description of the
invention shall refer to the different views
by figures and to the different parts by
letters or numerals (preferably the latter).
Reference characters should be so selected
that the first occurrence in the specifica-
tion will be in sequence.

The Examiner should see to it that the figures are
correctly described in the brief description of the speci-
fication and the reference characters properly applied, no
single reference character being used for two different
parts or for a given part and a modification of such part.
In the latter case, the reference character applied to the
"given part" may (with a prime affixed) advantageously be
applied to the modification. Every feature covered by the
claims must be illustrated, but there should be no super-
fluous illustrations.

8-9-8.
Detailed Description of Invention

A detailed description of the invention and drawings
follows the general statement of invention and brief de-
scription of the drawings. This detailed description, re-
quired by Rule 10.1, must be in such particularity as to
enable any person skilled in the pertinent art or science
to construct, prepare and use the invention without involving
extensive experimentation.

The description is a dictionary for the claims and
should provide a basis for all terms used in the claims.

Note: Completeness 8-9-18.

8-9-9.
Mode of Operation

The best mode devised by the inventor of carrying out
his invention must be set forth in the description. Current
practice is to accept an operative example as sufficient to
meet this requirement.

In chemical cases, complete data necessary for the
preparation and use of the invention should be presented.

Note: Completeness 8-9-19.

8-9-10%
Claims

Rule 10.4 Claim. The specification must
conclude with a specific and distinct claim
of the part, improvement, or combination which
the applicant regards as his invention.

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More than one claim may be presented when
necessary, provided they differ substantially
from each other and are not unduly multiplied.
When more than one claim is presented,
they may be placed in dependent form (see
form . . . . . .

The claim or claims must conform to the
invention as set forth in the remainder of
the specification and the terms and phrases
used in the claims must find clear support
or antecedent basis in the description so
that the meaning of the terms in the claims
may be ascertainable with certainty by refer-
ence to the description.

In cases in which claims in excess of the number
corresponding to the filing fee are presented before the
first official action on the case, the clerk places the
amendment in the fileand enters it on the file wrapper but
action is deferred on the claims presented in the amendment.
In his first action the Examiner acts on the claims origi-
nally presented and for which the appropriate fee was paid.
If, after the official action is made, the applicant be-
lieves that any of the claims. presented by the amendment
are patentable, he can have them entered and considered in
the next action only if he specifically points out wherein
the claims presented in the amendment are patentable over
the references cited by the Examiner.

Note examination of claims, 10-8; numbering of
claims 8-9-11, 8-9-15.

8-9-11.
Numbering of Claims

Rule 17.6 Numbering of Claims. The
original numbering of the claims must be
preserved throughout the prosecution. When
claims are cancelled, the remaining claims
must not be renumbered. When claims are
added by amendment or substituted for can-
colled claims, they must be numbered by the
applicant consecutively beginning with the
number next following the highest numbered
claim previously presented (whether entered
or not) . When the application is ready for
allowance, the Examiner, if necessary, will
renumber the claims consecutively in the
order in which they appear or in such order
as may have been requested by applicant.

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# Index of Claims

Constant reference is made to the "Index of Claims"
found in the inside of the file wrapper of all recent ap-
plications. It should be kept up to date by the clerk so
as to be a reliable index of all claims standing in a caso,
and of the amendment in which the claims are to be found.
The practice should be uniforme

A line in ink should be drawn below the last number
of the group of original claims. Thereafter a line in ink
should be drawn below the last number of each successive
group of claims added by amendment, and on the left side of
the first claim of each amendment should be placed the letter
designating the amendment.

As any claim is canceled a line should be drawn through
its number. Claims retained under Rule 11.2 but not canceled
should be enclosed by a ring in pencil with the notation
"R 11.2". This is an aid in mentioning all of the claims by
number in each action in whichreference to claims retained but
not acted on should be made, preferably at the end of the letter.

The Office action must include a summary of rejected and
allowed claims and claims retained under Rule 11.2.

8-9-13.
Statutory Requirement of Claims

Sec. 4888 R. S. requires that the appli-
cant shall particularly point out and distinct-
ly claim the part, improvement, or combination
which he regards as his invention or discovery.
The portion of the application in which he
does this forms the claim or claims. This is
the most important part of the application,
as it is the definition of that for which
protection is granted.

8-9-14.
Original Claims

In establishing a disclosure, applicant may rely not
only on the specification and drawing as filed but also on
the original claims if their content justifies it.

Where subject matter not shown in the drawing or
described in the specification is claimed in the case as
filed, and such original claim itself constitutes a clear
. disclosure of this subject matter, then the claim should
be treated on its merits, and requirement made to amend
the drawing and specification to show this subject matter.
The claim should not be attacked either by objection or
rejection because this subject matter is lacking in the

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drawing and specification. It is the drawing and specifi-
cation that are defective; not the claim.

It is of course to be understood that this disclosure
in the claim must be so complete as to support the necessary
amendment of the drawing and specification.

Where the descriptive portion of the specification
indicates that certain conditions are necessary to obtain
an improvement or advantage over the prior art, original
claims omitting some of the conditions cannot be relied
upon as an explicit disclosure that all of the conditions
are not essential. Ex parte Brown and Davis, 65 U. S. P. Q.
8-9-15.
Form of Claims

While there is no sot statutory form for claims, the
present Office practice is to insist that each claim must
be the object of a sentence starting with "I claim" whether
or not the words "I claim" are stated. The claim begins
with a capital letter and ends with a period. Periods may
not be used elsewhere in the claim except for abbreviations.

In every particular in which the claim fails to de-
fine correctly applicant's invention, it should be chal-
longed and the fault definitely pointed out.

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

Restricted to chemical cases, under special con-
ditions, a Markush type of claim may be presented, Ex
parto Markush 1925 C. D. 126, 340 O. G. 839; Ex parte
Spafford 66 U.S. P.Q. 361; In're Thompson et al 1946 C. D.
280; 588 0. G. 353. A Markush type claim is generally not
proper in the same case with a true genus claim. Markush
groups of diminishing scope are improper no matter how few
the number of claims. Formula type"claims, as used in
chemical cases must meet the same requirements as Markush
claims.

8-9-16.
Dependent Claims

A dependent claim which depends from and covers the
combination of only a single other independent claim may
be presented without regard to the numerical order of pre-
sentation.

Claims are independent or dependent. An independent
claim is complete in itself without reference to another
claim. A dependent claim refers to and modifies another

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claim, for example, claim 4 a dependent claim could read as
follows :

4\. The product of claim 3 wherein

If claim 3 is an independent claim there is no ob-
jection. If claim 3 is in turn a dependent claim referring
to claim 2 or 1, the following direction applies:

A dependent claim may depend from a pre-
coding dependent claim providing that the claims
of any series of dependent claims shall appear
in the application in immediate consecutive order,
and no dependent claim shall contain direct re-
ference to more than one preceding claim.

A series of dependent claims consists of dependent
claims, at least two in number. A series cannot consist
of a single claim. The parent, basic or independent claim
is not considered to be one of the "series of dependent
claims" because it is not a dependent claim. There may be
several series of dependent claims in a single application,
provided that the claims in each series of dependent claims
are in immediate consecutive order.

Examples of accepted and prohibited series of de-
pendent claims are illustrated in the following table:

Accepted

Independent claim l
Independent claim
$
E
Independent claim
I
2
Independent claim
3
4
5

5
3

Independent claim 4

Independent claim 5%
ES

Prohibited

Indepondent claim 13

2

Independent claim 3
3)
4

5

Independent claim
E

Independent claim l

3
4

2
3
4

5,4,5 aro a series
of dependent claims
and not in immediato
consecutive order.

2,4 are a series.
3 is not in that
serios. Series 2,4
are not in immediate
consecutive ordoro

2,3 are a sories.
2,4 aro a series
not in immodiate
consecutive order.

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When renumbering of the claims is necessary, in
compliance with Rule 17.6, particular attention should be
given to dependent claims to see that each dependent claim
correctly identifies the claim upon which it is built.

8-9-17.
Basis for Claim
Terminology In Description

Every term used in any of the claims should find
antecedent basis in the descriptive portion of the spe-
cification with clear disclosure as to its import, and in
mechanical cases it should be identified by reference to the
drawing, designating the part or parts therein to which the
term applies. Terms used in the claims may be given a
special meaning in the description providing it is not
repugnant to the usual meaning of the terms.

Usually the terminology of the original claims
follows the nomenclature of the specification, but sometimes
in amending the claims or in adding new claims, new terms
are introduced that do not appear in the specification.

8-9-18.
Claims Added by Amendment

Now claims and amendments to the claims already in
the case should be scrutinized not only for new matter but
also for new terminology. While an applicant is not limited
to the nomenclature used in the application as filed, yet
whenever by amendment of his claims, he departs therefrom,
he should make appropriate amendment of his specification
so as to have therein verbal basis for the new terms appear-
ing in the claims. This is necessary in order to insure
certainty in construing the claims in the light of the spec ..
ification. Ex parte Kotler, 1901 C.D. 62; 95 0. G. 2684.
8-9-19.
Completeness

A disclosure in an application, to be complete,
must contain such description and details as to enable any
person skilled in the art or science to which the invention
pertains to make, construct, compound and use the invention.

While the prior art setting may be mentioned in
general terms, the essential novelty, the essence of the
invention, must be described in such details,, including
proportions and techniques where necessary to enable those
persons skilled in the art to make and utilize the invention.

Specific operative embodiments or examples of the
invention must be set forth. Examples and description
should be of sufficient scope as to justify the scope of
the claims. Markush claims must ordinarily be provided

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with support in the disclosure of at least one specific
example for each member of the Markush group. Where the
constitution and formula of a chemical compound is stated
only as a probability or speculation, the disclosure is not
sufficient to support claims identifying the compound by
such composition or formula.

A complete disclosure should include a statement of
utility. This usually presents no problem in mechanical
cases. In chemical cases, varying degrees of specificity
are required. General statements of utility are not ac-
ceptable where closely related materials are not known to
have specific use within the general statement. Broad
indication of use as an insecticide, therapeutic, resin,
or preservative, without greater specificity, such as ex-
amples and mode of application, is insufficient or of dubious
value.

A disclosure involving a new chemical compound or
composition must teach persons skilled in the art how to
make the compound or composition. Obviously, the starting
materials and methods of making the starting materials must
also be available to the expert, as of the filing date of
the application, incomplete teachings may not be completed
by reference to subsequently filed application. If the
starting material is old but obscure in the literature, the
literature citation should be incorporated into the speci-
fication. This may be done by amendment. In the applica-
tion as filed, preparation of a new chemical starting
material mav be described generally along with reference
to a co-filed or previously filed application by the same
applicant wherein the detailed preparation is given. If
a co-filed or previously filed application of the same
applicant adequately disclosos the preparation of the start-
ing material amendments to include reference to such appli-
cation by serial number and a general method of preparation
have been accepted.

Since a disclosure must be complete as of the filing
date, subsequent publications or subsequently filed applica-
tions cannot be relied upon to establish a constructive
reduction to practice, nunc pro tunc.

Note: trade marks and trade names 8-9-27
period for response, 10-11 failure to
tako rogafrod action during time
period. 10 12-2.

8-0-20,
Subst Itute or Rewritten Specification

Rule 17.5 Substitute Specification.
If the number of nature of the amendments

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shall render it difficult to consider the
case, or to arrange the papers for printing
or copying, the Examiner may require the en-
tire specification or claims, or any part
thereof, to be rewritten. A substitute
specification will not ordinarily be accepted
unless it has been required by the Examiner.

The specification is sometimes in so faulty English
that a new specification is necessary, but new specifica-
tions cumber the record and require additional reading, and
hence should not be required or accepted except in extreme
cases.

A substitute specification that has not been re-
quired and is not needed is not entered.

An amendment presenting an uncalled-for and un-
necessary substitute specification along with other
amendatory matter, as, amendments to claims or new claims,
should be entered in part, rather than refused entry in
toto. The substitute specification should be denied entry
and so marked, while the rest of the amendatory .paper
should be entered.

It may be noted in this connection, however, that
the fact that a substitute specification, in the opinion
of the Examiner, contains new matter is not a proper reason
for refusing entry thereof.

Before passing applications to issue, all papers
should be inspected to see that they are in such shape and
condition as to avoid all possibility of error by the
printers. Whenever interlineations or orasures have been
made in the specification or amendments which would lead
to confusion and mistake, the Examiners should require the
entire specification to be rewritten before passing the
case to issue. (Order 525)

8-9-21 .
Formulae in Specification

Printer's proofs of applications about to issue as
patent specifications containing chemical or other formulae
are sent with the application file to the Examiner who
promptly indicates on the proof any corrections he may find
necessary in the formulae and immediately returns the file
and proof to the Issue and Gazette Branch.

8-9-22.
Foreign Language

As stated in the Rules, the specification must be in
the English language.

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8-9-23.
Derogatory Remarks About Prior Art

Applicant may refer to the general state of the art
and the advance thereover made by his invention, but he is
not permitted to make derogatory remarks concerning the
inventions of others, or to designate them by name unless
to state that he desires to improve on the disclosure in a
prior patent or application of common ownership or that he
makes no claim to the disclosure in a certain application,
also of the same ownership.

8-9-24.
Restoration of Canceled Matter

Canceled text in the specification or canceled claim
can be restored only by filing a duplicate thereof.
Note: Applicant's directions for entry of
amendment, 10-16-36.

8-9-25.

# Use of Disclosure in Subsequent Application

When after obtaining a patent, the patentee files
an application claiming subject matter disclosed but not
claimed in his patent,he is required to place a notice in
the file of the patent, as soon as the application has ro-
ceived a Serial Number, to the effect that such an appli-
cation has been filed and to identify the application in
the notice by its Serial Number and filing date. He is
also required to identify in his application the patent
in which the subject matter now claimed is disclosed.
( Order 5200)

Reservation of subject matter disclosed but not claim-
ed in a pending application is not permitted. Rule 10.8.

While, a specification cannot be transferred to
another application, drawings may be transferred from a
prior application to a later case by the same inventor,
note 8-9.39.

## 8-9-26 . Use of Formerly Filed Incomplete Application

Parts of an incomplete application may be used as
part of a complete application if the missing parts are
later supplied. See 7. 1.0 and 7.1-12.

8-9-276

## Trade Marks and Prade Names In DISclosure

The expressions "trade mark" and "trade-name" as
used below have the following; meanings;

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explanatory language is necessary.

Where the identification of a trade-mark is intro-
duced by amendment it must be restricted to the character-
istics of the product at the time the application was filed
to avoid any question of new matter. Such characteristics
must have been known at the time of the filing date.

If the trade-mark or trade@name which is not well
known or satisfactorily defined in the literature at the
time of filing of the application appears in the speci-
fication as originally filed and is not accompanied by a
proper definition, the claims are rejected as based upon
an insufficient disclosure if the material referred to by
the trade mark or trade name is necessary to practice the
invention.

The original disclosure may sometimes be suitably
amended to define the product to which the trade-mark or
trade name is applied; or if the product referred to by the
trade-mark or trade name cannot be otherwise satisfactorily
defined, by an amendment defining the process of its manu-
facture. Such an amendment must be supported by a satis-
factory showing establishing; if a trade-mark, the specific
nature or process of manufacture as known to those skilled
in the art at the time of filing of the application; or, if
& trade name, that such definition of the meaning thereof or
its method of making were known to those skilled in the
art at the time of filing of the application.

# 8.9-286 Interlineations or Erasures Made Prior to Filing

Rule 10.9 . . . . . . . Any inter.
lineatIon, erasure or cancellation or other
alteration must be clearly referred to in a
marginal or footnote on the same sheet of
paper, initialed or signed by the applicant
to indicate that it was made before the appli-
cation was signed and sworn to. (See Rule
8.5).

8-9-29.
Drawing

Rule 12.1 Drawings Required. The
applicant for patent Is required by statute
to furnish a drawing of his invention when ..
ever the nature of the case admits of it;
this drawing must be filed with the appli.
cation, Illustrations facilitating an undor.
standing of the invention (for example, flow
sheeta in cases of processes, and diagrammatic

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Trade-mark; a proprietary word, letter, device
or symbol, used in connection with merchandise and
pointing distinctly to the origin or ownership of
the article to which it is applied.

Trade name; a non-proprietary name by which an
article Is called among traders or workers in the
art, and which is not indicative of the origin or
ownership of the article to which it is applied.

The use of trade names in patent applications is
permissible if:

(1)
Their meanings are established by an ac ...
companying definition which is sufficiently
precise and definite to be made a part of a
claim, or

2\) In this country, their meanings are well
known and satisfactorily defined in the
literature.

Condition (1) or (2) must be met as of the filing
date of the complete application.

The relationship between a trade-mark and the pro-
duct it identifies is sometimes indefinite, uncertain and
arbitrary. The formula or characteristics of the product
may change from time to time and yet it may continue to
be sold under the same trade-mark. In patent specifica-
tions, every element or ingredient of the product should
be set forth in positive, exact, intelligible language,
so that there will be no uncertainty as to what is meant.
Arbitrary trade marks which are liable to mean different
things at the pleasure of manufacturers do not constitute
such language.

However, if the product to which the trade-mark
refers is otherwise set forth in such language that its
identity is clear the Examiners are authorized to permit
the use of the trade-mark if it is distinguished from common
descriptive nouns, as by capitalization and/or quotation
marks. Trade-marks, suitably defined, may be used in the
descriptive portion of the specification and, when necessary,
in drawings such as flow sheets.

# Trade-Marks are Never Permitted in Claims

If the trade-mark has a fixed and definite meaning
It constitutes sufficient identification unless some
physical or chemical characteristic of the article or
material is involved in the invention. In that event as
also in those cases where the trade-mark has no fixed and
definite meaning, Identification by scientific or other

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this fact. On the return of the drawing to tho Offico, the
file should be Inspectod to ascertain the status of tho caso.
It may be ready for is no.

Soo correction of drawings 8-0.4 ..

The name of the inventor may be placed on The draw-
Ing by the attorney, Part when the drawing Is algoed by the
inventor In person t' nene of the allermeg is not, per.
mitted to appoar thercon.

Hola: correctly themin
The Back of de: hodow must be the
Plan of the draftamas barbro the appjie tion is allowet.
Afinance of "Issue Case" Pravima to Mariaman

When the drawings are to be referred to the drafts-
man in the final revision of allowable applications ( under
Order 2438) fasten thereto the draftsman's slip Form 249,
inscribed "Issue Case." Place those drawings In the
draftsman's box, the iraftsmen's mossongor will transport
thom to and from the Drafting Branch.

Tho Patont Copy Sales Branch, Roproduction Section
has charge of the drawings in patented cases. Canceled
shoots, however, are not rotainod with the patentod draw-
ings but are filed with the aband med files and drawings
in the Abandoned Piles Unit.

8-9-30%
Drawing . When Roquired

The Chief of the Drafting; Branch when viseing draw ...
ings filed in pending applications, is hereby directed to
mark as informal all such drawings as do not conform to the
established standards, and to noto the words "can be correct-
ed" upon such informal drawings as it is possible to free
from objection. On such informal drawings as cannot be
freed from objection he will note the words "New drawings
required. "

The Examiners are directed to advise the applicants
of the conditions which ronder Cho drawingg informal, and
whon indicated, that auch drawings can be corrected so as
to be acceptable, but will not, in any case, require new
drawings unless the necessity thorefor shall have boon in-
dicated by the Chief of tho Drafting Branch. (Ordor 1764)

Note: Additional, duplicato, or substitute drawings
8 .... 9 .. 38.

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\*

views) may also be furnished in the same
manner as drawings, and may be required by the
Office when considered necessary or desirable.

Rule 12.6 Draftsman to Make Drawings.
Applicants are advised to employ competent
draftsmen to make their drawings.

The Office may furnish the drawings at
cost ( with a minimum charge) as promptly as
Its draftsmen can make them, for applicants
who can not otherwise conveniently procure
thema

Rule 12.2 Signature to Drawing. The
drawing must either be signed by the appli-
cant in person or have the name of the
applicant placed thereon followed by the
signature of the attorney or agent as sucho

Rule 12.7 Return of Drawings. The
drawing of an accepted application will not
be returned to the applicant except for
signature.

Note: Standards for drawings, Rule 12.40
Design patent drawings, Rule 20,20
Plant patent drawings , Rule 20.5.
Reissue application drawings, 8-9-4.1.

Government Depertment applicationg may have their
drawing: correctel by Government attorneyso

A phoryo ophie print is made of the drawing of an
accepted appis.tien.

The print is given a pagar number and corresponding
entry on the file jacket is minde.

The print being thus an official paper in the record,
it should not be marked or in any way altered. Where, as
in an electrical wiring rose, it is desirable, to identify
the various fireults by different colors. or In any more or
less complex case.it is advantageous en apply legends,
arrows or other indicia, an additional print for such use
should be orderedby the examiner and shared unofficially
in the file ..

The drawing any be signed by the applicant in person,
after the showing has hem frisi, Monate is at present
required.

When a Growing is betby onturmes for the appli-
cant's signature the Bassiner writea letter stating

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Humanas should not require substitute drawings in
any case unless the Chief Draftsman has first indicated
that the original drawings cannot be name serviceable.
Where the cancellation of some of the figures from one
sheet of the drawings has left the remaining figures with
an inartistic arrangement. the Chief Draftsman should bo
consulted as to whether the said remaining figures should
be transferred to other sheets already in the drawings;
and conversely, when the necessary additional illustration
is but fragmentary and may be added to the drawinga on
file, an additional sheet of drawing should not be re-
quired, but the Examiner will ask that the proposed illus-
tration be shown in a sketch, which showing will be trans-
ferred to one of the sheets of the drawings.

8-9-31.
Informal Drawings

Rule 12.4 gives extensive and detailed standards
for drawingso

Rule 12.5 Informal Drawings. The re-
quirements of the foregoing rule relating to
drawings will be strictly enforced. A draw-
ing not executed in conformity thereto may
be admitted for purpose of examination, but
in such case the drawing must be corrected or
a new one furnished, as required. The neces-
sary corrections will be made by the Office
upon applicant's request and at his expense.

If the drawing is such that the prosecution of the
application can be properly carried on without the correc-
tions being rads, the Examiner shenid Inform the applicant
that the corrections need not be made until patentable
subject matter is found in the application. Even where
appeal is taken, if no claim has been allowed, correction
of the drawing will not be insisted Que

In some instances drawings accompanying new appli-
cations are of such quality that they may not be admitted
for examination because of defective execution or other
reason but nevertheless are acceptable for purposes of
securing & Piling date. The Chief Drifteman in such cases
marks the drawings "Ade for filing date only." When draw ...
ings so marked are reveived by the Primary Examiner he will
Immediately write a letter in the case notifying applicant
that the drawing have been admitted for the purpose of
giving the application a filling dele but that within ninety
days he moet flie formel drawings mewsing the requirements
of Rute 18.4 and conforming with the drawings on file.
The letter draud Additionally state that failure to
furnish with drawings within the time stated will be taken

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as sufficient basis for holding the application abandoned.
This letter of the Primary Examiner will not be counted as
an action and the file should be appropriately marked as a
new case and placed with the new cases awaiting action. If
formal drawings are not filed within the ninety- day period,
an action may be taken holding the case abandoned.

8-9-32.
Draftsman Determines
Informality of Drawings

The Chief Draftsman is the judge of drawings, as to
the execution of the samo, and the arrangement of the views
thereon; while the Examinor is the judge as to the sufficiency
of the showing. The drawings upon receipt of an application
are sent from the Application Branch to the Drafting Branch
to be inspected by the Chief Draftsman. If satisfactory,
he stamps "Draftsman, Patent Office" and the date on the
back of each sheet.

If the drawings are informal, but may be admitted
for examination purposes the Draftsman writes in load
poncil on the face of the drawing "Inf. A. F. E. " (admit
for examination) . The drawings are then returned to the
Application Branche

If the drawing la endorsed "Inf. A. F.E." it is accept-
ed ns satisfying the requirements of Rule 8.] In the matter
of a drawing as a necessary part of a complete application;
and in the receipt which the Application Branch mails tho
applicant, there is osbodied the Draftaman's criticism of
the drawing with notation as to whether the drawing is
susceptible of correction or a new one required ..

The Examiner .hanrd cabody the draftaman's statomont
with regard to the drawing in his first letter to the appli-
cant, and In so doing he should be careful to state distinct-
ly that a new drawing will not be admitted or that a new
drawing, if the case is found to contain patentable matter,
will be required, In accordance with the draftsman's diroc-
tions.

8-9-33,
Drawings Kept In Examing Division
This procedure is to make certain that olther tho
original drawing or the photographic copy is always avall-
able for interference searches.

The photographie copies of the drawings munt niways
be kept on top of the papers on the right of the file
wrapper so as to be visible upon opening the wrapsor and
easily detached.

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Whenever the original drawing is taken from the ox-
amining division, the photographic copy must be taken from
the application file and placed in the cabinet of drawings
in lieu of the original drawing. When the original draw-
ing is returned to the examing division and placed in the
cabinet, the photographic copy must be replaced in the file.

When sending for the original drawing upon payment
of the final feo, the Issue and Gazette Branch, after stamp-
ing the patent date upon the photographic copy, will send
the latter to the Examing division, and such photographic
copy must be placed in the cabinet in lieu of the original
drawing.

Each examing division will, each week, select the
photographic copies bearing the date of that week's issue
and return them to the Issue and Gazette Branch by Wed ..
nesday morning of that week in order that the latter may
replace them in the proper application (now patent) files.

If there is no copy of the drawing in the file, a
dummy must be placed in the cabinet of drawings in lieu of
the original drawing whenever the latter is removed from
the examing division. (Order 3104)

No application should be sent to issue or to aban ...
doned files unless the original drawing is chocked up and
found in the division.

8-9-34.
Complete Illustration in Drawings

Rule 12.3 Content of Drawing. The draw ...
ing mus't show every feature of the invention
covered by the claims, and the figures should
be consecutively numbered if possible. When
the invention consists of an improvement on
an old machine the drawing must when possible
exhibit, in one or more views, the improved
portion itself, disconnected from the old
structure, and also in another view, so much
only of the old structure os will suffice to
show the connection of the Invention there ..
with.

## 8-9 ... 35. Examiner Determines Completoness of Drawings

The Examiner should see to it that the figures are
correctly described in the brief description of the speci-
fication and the reference characters properly applied, no
single roferenco character being used for two different
parts or for a given part, and a modification of such part.

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Every feature covered by the claims must be illustrated, but
there should be no superfluous illustrations.

# Modifications in Drawings 8-9-36.

Modifications may not be shown in broken lines on
figures which show in solid lines another form of the inven-
tiono

All modifications described must be illustrated, or
ine text canceled. (Ex parte Peck, 1901 C.D. 136; 96 0. G.
2400.) Likewise, any structural detail that is of sufficient
Importance to be described should be shown in the drawing
(ex parte Good, 1911 C. D. 43; 164 O. G. 739.) This require-
ment does not apply to a mere reference to well-known and
conventional parts.

Note: correction of drawing 8-9-49.

8-9-37.

# New Matter in Drawings

An amendment of the drawing which would introduce
"now matter" is not entered. See 8-9-2.

8-9-38.

Additional,
Duplicate or Substitute Drawings

When an amendment is filed stating that at the same
time substitute or additional sheets of drawings are filed
such drawings have not beon transmitted to the examining
division, inquiry should be made of the Application Branch
before the applicant is notified that the drawings have
not been received.

To avoid accumulation of canceled sheets of drawings,
the Examiners will not admit an additional or substitute
drawing, unless the necessities of the case so require.
Such proffered drawing will be returned to applicant, a
print thereof being first made, "unless it be a duplicate",
and placed in the record. If the original drawing requires
alterations, and those are taken care of in the proffered
substitute drawing, the latter will be used in lieu of the
nonal sketch in making the correction of the original
drawing.

Examinera should not require substitute drawings in
any case unless the Chiof Draftsman has first indicated
thot tho original drawings cannot be made serviceable. See
8.0-30 and 8-9.49%

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8-9-39.

# Transfer of Drawings From Prior Applications

Rule 12.8 Use of Old Drawings. If the
drawings of a new application are to be
identical with the drawings of a previous
application of the applicant on file in the
Office, or with part of such drawings, the
old drawings or any sheets thereof may be
used if the prior application is, or is about
to be, abandoned. The new application must
be accompanied by a letter requesting the
transfer of the drawings, which should be
completely identified.

When an application is patented, any cancelled sheet
of drawing then in the case is sent to the abandoned files.
Such cancelled sheet is available for applicant's use in
another application directed to its subject matter.

Formal transfer of drawings from one application to
another is made only by the Application Branch. See also
8-9-49 (e).

# 8-9-40. Transfer of Cancelled Sheets of Drawings to Divisional Application

In the case of a divisional application, if the
drawing and descriptive matter pertaining thereto have
been canceled from the parent case, the canceled sheet or
sheets of drawing may be withdrawn and used as the original
drawing of the divisional case.

When an application is patentod, any canceled sheet
of drawing then in the case is sent to the abandoned files.
Such canceled sheet is available for applicantis use in
another application directed to its subject mattere

8-9-41.

# Transfer of Drawings Patent to"Reissue

Rule 12.9 Drawings in Reissue Applica-
tions. The drawings upon which the original
patent was issued may be used in reissue
applications if no changes whatsoever are to
be made in the drawings. In such cases, when
the reissue application is filed, the appli ..
cant must submit a temporary drawing con-
sisting of a copy of the printed drawings of
the patent (or a photoprint of the original
drawings) securely mounted by pasting on
sheets of drawing, or an order for the same.

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In a reissue application, the prints of the original
or patented drawing may be used for examination purposes,
and the formal transfer of the original drawing to the re-
issue application made when the reissue application is ready
for issue, provided no change whatever, even so much as the
priming of a reference character, or correction of an obvious
orror, is made in the drawing. If there is to be any change
whatsoever in the drawing, a new drawing for the reissue
must be filed.

If there is more than one sheet of original drawing,
a required change on any shoot will preclude the use of the
entire set of the original drawings intact and in the con-
dition existing at the time of issue of the original patent.

As in 8-3-3a, transfer of the drawing is made by the
Application Branch, notation thereof being entered on the
file wrapper of the original application.

## 8-9-42. Transfer of Drawings to Continuation or Substitute

Where a continuation is filed, prints are accepted
in lieu of formal drawings to establish a filing date, the
original drawings being transferred after abandonment of the
parent case either by operation of law or by properly ex-
ecuted letter of abandonment.

Prints submitted in lieu of drawings are given a
date on the back by the Register, Correspondence and Mail
Branch of the Administrative Services Division. These
prints are mounted upon Bristol board by the Application
Branch and the back of the board upon which the prints are
mounted bears a date stamped by the Application Branch to
correspond with the now covered date of the Mail Brancho
8-9-43.

## Blueprints

Blueprints which are submitted for the purpose of
guiding the draftsman In adding reference letters or indi-
cating the line of secti m will not bo placod in the file
but will bo returned after the corrections have been mado
Note: Blueprints used In correction of drawing, Order 1958,
8-9-40.

8-0-44.

### Prints

The Application Franch has permanent prints made of
the trawings of all complete applications and secures the
print. in the filo wrappers, The drawings and filos aro
then assomblod and forse.l;I Lo tho propor oxoming divislons.

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In the exceptional case where an application without
a drawing is given a filing date and the Examiner sub-
sequently requires a drawing, or where for any other reason
a new sheet of drawing is added by amendment, a print of
such drawing is made and forwarded to the division to be
placed in the file as an official paper.

Prints may be accepted in lieu of drawings 8-9-42.

Prints of the drawings as filed are entered in the
application, given a paper number and kept on top of the
papers on the right side of the file wrapper.

All prints and inked sketches subsequently filed to
be part of the record are endorsed with the date of their
receipt in the office and given their appropriate paper
number.

Prints remain in the file at all times except as
provided in 8-9-33.

Note: Prints in file wrapper 10-17-4.
8-9-45.
Prints Kept
in Examining Division

The print or original drawing must always be kept
in the Examining Division until the application is patented
or abandoned. See Order 3104, at 8-9-33.

Note: Prints in dual prosecution (D.P. ) cases

8-9-46.

8-9-46.
Prints in Dual Prosecution

In dual prosecution (D. Po) cases having drawings the
Examiner to whom the case is assigned will obtain a dupli ...
cate set of prints of the drawing for filing in the division
to which the case is referred.

## Final Disposal of Prints

When a D. P. application is passed to issue, noti-
fication of this fact will at once be given by the division
having general jurisdiction of the case to the other
division or divisions that participated in the prosecution.
The Examiner of each such "other" division will make nota ...
tion of date of allowance on the print of his file of
drawings.

The division having general jurisdiction will also
notify the other division of the subsequent disposition

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made of the case, as, withdrawal from issue, patented,
forfeited, etc. If the other division receives no such
notification within six months from the date of allowance,
the Examiner will check with the division of general juris-
diction with a view to ridding his files of the print if
no longer of any prospective use.

8-9-47.
Data on Prints

The photoprints in an application contains, besides
a print of the drawing the following information:

On the front of the print-

Serial number of the application Stamp by the
Application Branch "Print of drawing ns original-
ly filed."

OP

"This is an additional sheet of drawing and must
be submitted to the Chief Draftsman before enter."
(This latter is stampod on the additional drawing
and reproduced therewith)

Paper number, usually #2.

Marginal notation of informalitios.

by the Draftsman on the margin of the original
drawing.

"O. K." if there are no brettswan petitiona.

Class and subclass of the application on the back of
the print-

Stamp of the Application Branch and date of re-
coipt of the print from the photoprinting ostab-
lishment. Sometimes a stamp of the Examining
Division receipt dato.

Additional prints prepared for the Exominer or the
Board of Appeals bear on the front such Information
as is on the drawing as of the copying date:

Serial number of the application
Sometimes the roproducod stomping.
"This is an additional sheet of drawing and must
be submitted to the Chief Draftman before enter. "

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Marginal stamp of "O. G. figure, Class and Sub-Class"
reproduced from the stamp on the drawing.

On the back, additional prints bear a stamp stating
"Photographs for Examiner" and the dato the addi-
tional prints were made. See also 8-9-33.

8-9-48.
Date Entered on Drawing

Dates are entered by the Office upon the back of each
sheet of drawing.

The earliest date is that of the Mail Branch, re-
gardless of whether or not the drawing was submitted by
mail.

If and when the drawing is approved by the Draftsman,
and before the case is passed to issue, each uncancelled
sheet of drawing must bear a date of the Draftsman.

The Examining Division receipt dato is applied by
the clerk of the Examining Division.

Dates when photoprints are made for the Examiner
are stamped as "Photographs for Examiner."

Dates of correction of the drawing are stamped and
noted by the Draftsman upon the back of each corrected
sheet.

Note: informal drawings and "Application filed com ...
plete" date 8-9-31.

8-9-49.

Correction of Drawings

Rule 17.3 Amendments to the Drawing.
No change in the drawing may be made except
by permission of the Office. Permissible
changes in the construction shown in any
drawing may be made only by the Office. A
sketch in permanent ink showing proposed
changes, to become part of the record, must
be filed. The papor requesting amendments
to the drawing should bo separate from other
papors. The drawing; may not be withdrawn
from the Office except for signature.

Substitute drawings will not ordinarily
be admitted in any case unless required by
the office.

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8-9.49(a) .
Conditions Precedent to
Amendment of Drawing

Correction and alterations in the disclosure of the
drawings of a pending application may be made only under the
supervision of, or by the chief Draftsman, and no such cor-
rections or alterations will be permitted in any case until
after approved photographic copies of the drawings have been
filed. A black line photographic or lithographie print is
an approved copy .

Blue prints will not be accepted as complying with
the requirements of the Office and will not be entered in
the application files. Blueprints submitted for the pur-
pose of guiding the draftsman in adding reference letters
or indicating the line of section will not be placed in
the file but will be returned after the corrections have
been made .

No alterations as above indicated will be permitted
unless required by an Examiner's letter in each case, or
proposed in writing by applicant or his attorney. In
either case the alterations or corrections as indicated in
the sketches filed after the requirement by the Examiner,
or with the request of the applicant or his attorney will
receive the written approval of the Examiner bofore the
case is sent to the Chief Draftsman. (Order 1958)

Note: Prints in file wrapper 10-17.4.

8-9-49(b).
Slight Corrections to Drawing

The Examiner will in his first action on every case
carefully scrutinize the drawing ( and of course also the.
specification), and make appropriate requirements looking
to the corrections of noted defects.

Any request by the applicant for amendment of the
drawing to cure these or other defects must be embodied
in a separate letter for the Chief Draftsman. Otherwise
the case, unless in other respects roady for issue, will
not be forwarded by the Examiner to the drafting division,
and applicant will be so advised in the next action by
the Examiner.

In the event that the alteration requested in the
separate letter is so slight as, in the opinion of the
draftsman, not to necessitate a charge, the letter, after
the correction of the drawing, will be stamped, No Charge,
and placed in the file.

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8-9-49(c) .
Estimating Cost
of Correcting Drawings

Filos and drawin, o token from Examining Divisions
by the Draftsman for correcting or moking, now drawings, will
be retained by the multe rumly lom enough to ostimato
the cost of tho work

An order for the work will be attached to tho drawing
in each case, and the file and drawing returned to the
Examiner. The order slip will be detachod only by the drafts-
man upon completion of tho work.

8-9 ... 49(d) .
Cancellation of Drawings

In the cancellation of figures to be canceled will
bo surrounded by a line in red ink and the word "canceled"
with proper date of cancellation will be written in rod
ink within each line. No portion of the figure itself,
however, will be crossed by the red lines. When the on-
tire drawing is to be canceled a red line will be drawn
entirely around the samo [but immediatoly within the margi-
nal line), date of cancellation within the said surrounding
red line. But no lines sl. 12 be drawn in any case across
the fipuros themselves ( Ordo f)

### 8-3-49(0). Chauging Name of Attorney on Drawing Forbidden

Where a drawing is transferred from one caso to
anothor having a different attorney, erasing the name of
the first attorney or writing; upon the drawing the name of
the attorney subsequently appointod so as to make it appear
that the latter nome was prosent when the drawing was
originally filed is prohibited.

This prohibition aprice wise wie a drawing is
transferred from one case to another having a different
attorney. See 8.0-30.

8-9-49(f).
When changes are to be made in the drawing
Itself, other than more champ. in reference characters,
dosignations of figuros or inking over lines pale and rough,
a print or pon-and- ink skotch showing auch changes must be
filed. Broken lines may to changed to fall without a
skotch,

Only those sketches which are made in ink will be
accepted by the Office Ohne them of a drawing. Such
sketches become a part of the Fate record and therefore
will not be returned The appartient may obtain from the
Office a print of a tebuty aring and paying for the
3 000 .

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Where an application is ready for issue barring a
slight defect in the drawing not involving change in struc ..
ture, the Examiner will note in pencil on the drawing the
addition or alteration to be made and send the drawing to
the draftsman for the required correction. In such cases
no charge will be male.

As a guide to the Examiner the following corrections
are illustrative of those that may be free of charge by the
Office Draftsman:

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

2\.
Changing one of two numerals or figure ordinals
(Quality of paper being a factor) .

3\.
Removing superfluous matter, e.g., figure and
ordinal where all but one figure have been
canceled.

10
Adding or reversing directional arrows.

50
changing Roman Numerals to Arabic Numerals to agree
with specification.

6\.
Adding section lines, or brackets, where easily
executed.

7%
Making simple changes in Inventor's name (not his
signature) .

8\.
Changing lead lines.

. Correcting misspelled legends.

If it is necessary to return a drawing for applicant's
signature charge will be made for packaging and registering
in the mail.

Sketches filed by an applicant and used by the drafts.
man for correction of structural features of the drawing
will not be returned. All such sketches must be in ink or
permanent prints.

Sketches in pencil will be inked in by the Office
draftsman at the expense of applicant.

Where a drawing is filed that is finally denied ad-
mission to the case it will bo returned to applicant on his
request but at his expense. Such roquest must be filed
within a reasonable time; otherwise tho drawing may be dis-
posed of at the discretion of the Commissioner. (Order
4009)

Noto:
Additional duplicate or substitute drawings
8-0.38.

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Where requested a pencil sketch that is otherwise
acceptable is inked in by the draftsman at the expense of
the applicant.

To avoid accumulation of canceled sheets of drawings,
the Examiners will not admit an additional or substitute
drawing, unless the necessities of the case so require.
Such proffered drawing will bo returned to applicanty a
print thereof being first mado, "unless it bo a duplicate, "
and placed in the record. If the original drawing requires
alterations and these are taken care of in the proffered
substitute drawing, the latter will be used in lieu of the
usual sketch in making the correction of the original
drawing.

When the drawing is defective in a case found to
contain allowable subject matter, the Examiner should state
fully the correction that is needed and require the appli ..
cant to furnish a sketch in permanent ink of such correction,
along with an authorization for the Office draftsman to make
the required amendment. If applicant complies with this
requirement, the sketch is submitted to the Examiner for
his written approval, and if given the correction is made
by the draftsman, the file and drawings being forwarded to
himo

#### 8-9- 49 (g) . Disposition of Orders for Amendment of Drawing

Where the correction of a drawing is ordered and
the correction when made will put the case In condition for
allowance, the Examiner writes "Approved" and initials the
notation on the order for correction, attaches the order
for correction and a "Special this case is ready for ol -
lowance" tag to the outside of the file wrapper and sends
the file, drawing, letter for correction of drawing, and
special tag to the draftsman by the file clerk, The tag
is signed by the Primary Examiner, or, in his absence by
the assistant chief. These cases must be so markod if the
draftsman is expected to make the corroction "special."

Where the ordered correction of the drawing in a
caso up for action by the Examiner will NOT put the case
in condition for issue, if the correction is approved and
when the case contains an allowable claim, the Examiner
forwards to tho draftsman the case with drawing and order
for correction indicating such corrections as are approved.
The order for correction is attached to the outside of the
filo wrappor, Where the correction is not approved (or
where the caso contains no allowable claim) the case and
request for correction of drawing, are not sont to tho
draftsman, but are retainod in tho division,

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When an estimate for correction is requested (in a
case where no allowable subject matter has been found), the
Examiner at his next action will secure the estimate from
the draftsman and inform the applicant of the charge and
also that no correction will be made until a claim is found
to be allowable.

The correction of a drawing, except in the case of
applying a few reference characters or making some other
minor alteration, is at the expense of the applicant.

8-9 .- 49 (h) .
Return of Drawing

When a drawing is to be returned for correction the
Examiner will transmit the same to the Chief of the Draft-
ing Branch, who will promptly prepare such drawings for
shipment.

Drawings will not be returned except for the correc-
tion or addition of the signature thereto and no drawing will
be returned unless a photographic copy of the same has been
filed and accepted as part of the application.

Permissible changes in the construction in any draw-
ing may be made only within this Office, and not until after
an approved photographic copy has been filed and the proposed
changes authorized by the Examiner. But signatures to the
drawing may be within this Office and Office and reference
characters may be changed by this Office, without filing a
photographic copy, if the requirement for such correction
and changes appears in the Examiner's letter. (Order 1783)

8-9-50%
Models, Exhibits, Specimens

Rule 13.1 Models Not Required as Part
of Application or Patent. Models were once,
required In all cases admitting a model, as
a part of the application, and these models
became a part of the record of the patent.
Such models are no longer generally required
( the description of the invention in the
specification, and the drawings, must be
sufficiently full and complete, and capable
of being understood, to disclose the inven-
tion without the aid of a model), and will
not be admitted unless specifically called
for.

Rule 13,2 Model or Exhibit May be Re-
quired. A model, working model, or other
physical exhibit, may be required if deemed
necessary for any purpose on examination of
the application.

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Rule 13.3 Specimens. When the inven-
tion is a composition of matter, the appli ...
cant may be required to furnish specimens of
the composition, and of its ingredients or
intermediates, sufficient in quantity for
the purpose of experiment.

Rule 13.4 Return of Models, Exhibits
or Specimens. Models, exhibitsy or spocimens
in applications which have become abandoned,,
and also in other applications on conclusion
of the prosecution, may be returned to the
applicant upon demand and at his expense, un-
less it be deemed necessary that they be pre ...
served in the Office. Such physical exhibits
in contested cases may be returned to the
parties at their expense. If not claimed
within a reasonable time, they may be dis-
posed of at the discretion of the Com .
missioner.

Rule 13.5 Copies of Exhibits. Copies
of models or other physical exhibits will not
ordinarily be furnished by the Offico, and
any model or exhibit in an application or
patent shall not be taken from the Office ex.
cept in the custody of an employee of the
Office specially authorized by the Commis ...
sioner.

With the exception of cases Involving perpetual
motion, a model is not ordinarily required by the Office
to demonstrate the operativeness of a device. If oper ...
ativeness of a device. If operativeness is questioned,,
the applicant is required to establish it to the satis-
faction of the Examiner, but he may choose his own way
of so doing.

Models are generally not refused except when bulky
or dangerous.

Models, exhibits and specimens may be presented to
the Office for purposes of interview and taken away by tho
attornoy at the ond of the interview. Soo 10-15

A model is not to be received by the Examiner direct ...
ly from the applicant or his agent.

8.9.516

### Model Room

All models received in this Offico, whether forming,
part of an application, or filed upon request from the
Examiner, must be received from the Model and Receiving;

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Room and not from the applicant or his agent. It is
necessary that all models should be taken to the Model
Room for proper recording in order that they may be located
under subsequent inquiry and for final disposition. The
Examiners should, therefore, refuse to accept models from
inventors or attorneys. Models properly received and entered
upon the books of the Model Clerk will be delivered by a
representative of the Property Clein's Office.

# Note: Plant specimens Sec. 18-5, Rule 21.6. 8-9-52. Now Matter

Rule 16.4 Amendment of Disclosure. In
original applications, All amendments of the
drawings or specifications, and all additions
thereto, must conform to at least one of them
as it was at the time of the filing of the
application. Matter not found in either, in-
volving a departure from or an addition to
the original disclosure, cannot be added to
the application even though supported by a
supplemental oath, and can be shown or claim ..
ed only in a separate application.

In establishing a disclosure applicant may rely not
only on the specification and drawing as filed but also on
the original claims if their content justifies it.

While amendments to the specification and claims in-
volving new matter are entered, such matter is required to
be canceled from the descriptive portion of tho specifica-
tion, and the claims affected are rojected. A "now matter"
amendment of the drawing 1. not entered.

Now claims and amendments to the claima already in
the case should be scrutinized not only for new mattor but
also for new terminology. While an applicant is not limited
to the nomenclature used in the application as filed, yet
whenever by amendment of his claims, he doparts therefrom,
he should make appropriate amendment of his specification
so as to have therein verbal basis for the now terms appear-
ing in the claims. This is necessary in order to insure
certainty in construing the claims in the light of the
specificationo

# 8.9.53. Mattor Not In Original Specification CIalis or Drawings

Matter not in the original specification, claims or
drawings is usually new mattor. Characteristics inherent
In the disclosure auch as chemical or physical properties,
or modo of operation, may be waplified if such inherency

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was initially present in the case as filed. New uses or
additional limitations not Imposed by the initial dis-
closure constitute new matter.

Note: Completoness of disclosure 8-9-19.
Trade-marks and trade names 8-9-27.
8-9-54.
Now Matter by Preliminary Amendment

As an applicant has the right to amond before
action on his case provided the number of claims is kept
within the limit imposed by his filing fee, an amendment
is sometimes filed along with the filing of the applica ...
tion. Such amendment does not enjoy the status as "t
of the original disclosure. Its test as to invol-
matter is the same as though filed on a subsequent . . te.

new

Note: New matter in subsequent amendments 8-9-56.

## 8-9-55. New Matter in Substitute Specification

The fact that a substitute specification, in the
opinion of the Examiner, contains new matter is not a proper
reason for refusing entry thereof. So far as the subject
matter itself is concerned, an applicant has the right to
a hearing on any amendment he may see fit to present.
Whether that amendment be presented in the form of a sub-
stitute specification or a series of alterations of the
original specification is an administrative matter for the
Office to determine.

8 ... 9 .. 56 %
New Matter in Amendment

In the re examination of an application following
amendment thereof, the Examiner must be on the alert to
detect. new matter. An applicant is not allowed to Introduce
into the application any matter by amendment not disclosed
in the application as originally filed, and if this is
attempted by amendment, he must be required to cancel such
matter. The Examiner should note that this applies like ...
wise to what are called preliminary amendmonts; that is,
amendments filed prior to an Office action on the case,
even if such amendment be filed on the same day the appli ...
cation is filed. See 8.9.54.

8.9.57,

## Review of Examiner's Holding of New Matter

Where the now matter is confined to amendments to
the specification, review, if any, of the Examiner's ro-
quiromont for cancellation is had by way of petition. But
where the alleged new matter is introduced into the claims,
thus necessitating their rejection on this ground, the

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question becomes an appealable one, and should not be con-
sidered on petition even though that new matter has been
introduced into the specification also. Rules 31.1 and
32.1 afford the explanation of this seemingly inconsistent
practice as affecting new matter in the specification.

Note:

Petition

Sec. 12

Appeal

sec. 14