600

OCR transcription for search; preserved printed pages are authoritative

# Chapter 600 Parts, Form and Content of Application

601

Petition

607.02

Returnability

601.01

Amendment of

608

Disclosure

601.02

Power of Attorney or Authorization of Agent

608.01

Specification

602

Original Oath

608.01

(a)

Parts

602.01

Cannot Be Amended

608.01 (b)

Preamble

602.02

New Oath or Substitute for Original

608.01 (c)

May Be Omitted.

602.03

Defective Oath Must Not Be Waived by the Examiner

608.01 (d)

General Statement of invention and Object

602.04

Foreign

608.01 (e)

Coextensive with Claims

602.04

(a) Ribboned to Other Application Papers

608.01

(f)

Brief Description of Drawings

602.05

Too Old at Time of Filing

608.01 (g)

Detailed Description of Invention

602.05

(a) In Division and Continuation Cases

608.01 (h)

Mode of Operation

603

Supplemental Oath

608.01 (1)

Claims

603.01

After Allowance

608.01 (j)

Numbering

604

Administration or Execution of Oaths

608.01

(k)

Statutory Requirement

604.01

Seal

608.01

(1)

Original

604.01

(a) When Not Required

608.01 (m)

Form

604.02

Venue

608.01 (n)

Dependent Claims

604.03

Notaries and Extent of Jurisdiction

608.01 (o)

Basis for Terminology in Description

604.03

(a) Notarial Powers of Some Military Officers

608.01 (p)

Completeness

604.04

Consul

608.01 (g)

Substitute or Rewritten

604.04

(a) Omission of Certificate

608.01 (r)

Derogatory Remarks About Prior Art

604.05

Consular Fee Stamp

608.01 (s)

Restoration of Canceled Matter

604.05

(a) Omission

608.01 (t)

Use in Subsequent Application

604.05

(b) Embassies and Legations-Fee Stamp Not Required

608.01 (u)

Of Formerly Filed Incomplete Applica- tion

604.06

By Attorney in Case, Invalid

608.01

(v)

Trade-Marks and Trade Names

605

Applicant

608.02

Drawing

605.01

Citizenship

608.02

(a)

When New Drawing Is Required

605.02

Residence

608.02

(b)

Informal

605.03

Post Office Address

608.02 (c)

Or Print Always Kept in Examining Di-

605.04

Signature and Name

vision

605.04

(a) Single Signature Form

608.02

(d)

Complete Illustration

605.04

(b) Full First Name Required

608.02 (e)

Examiner Determines

605.04

(c) Change of Name

608.02 (f)

Modification

605.04

(d) Unable To Write

608.02 (g)

Illustration of Prior Art

605.04

(e) Use of Title

608.02 (h)

Additional, Duplicate, or Substitute

605.04

(f) Joint

608.02 (1)

Transfer From Prior Application

605 04

(g) Correction of Name, Send File to Appli-

608.02 (j)

Canceled Sheets to Divisional

cation Branch

608.02

(k)

Patented, to Reissue

and Signed Dupli-

608.02

(1)

To Continuation

605.04

(h) Unsigned Specification

608.02

(m)

Prints

cate

608.02

(n)

Patentability Report Cases

605.04

On Drawings (1)

608.02

(0)

Data Entered on

605.05

Administrator or Executor

608.02

(p)

Dates Entered on

605.05

(a) Signature

608.02

(a)

Correction of

606

Title of Invention

608.02

(r)

Conditions Precedent to Amendment of

606.01

Examiner May Require Change in Title

Drawings

607

Filing Fee

608.02

(s)

Separate Letter to Draftsman

607.01

Fee Exempt

608.02

(t)

Estimating Cost of Correcting Drawings

607.01

(a) Inventor Leaves Service of United States

602.02 (u)

Cancelation of Figures

607.01

(b) Fee Exempt Changed to Fee Filed

608.02 (v)

Changing Name of Attorney on Drawing

607.01

(c) Fee Filed Changed to Fee Exempt

Forbidden

<!-- PageBreak -->

601

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

608.02 (w)
608.02 (x)

Changes Which May Require Sketches
Changes Which May be Made by Ex-
aminer's Amendment Without a
Sketch

608.02 (y)
Disposition of Orders for Amendments
of Drawing

608.02 (z)
Return of Drawing

608.03
Models, Exhibits, Specimens

608.03 (a)
Handling of

608.04
New Matter

608.04 (a)
Matter Not in Original Specification,
Claims or Drawings

608.04 (b)
By Preliminary Amendment

608.04 (c)
Review of Examiner's Holding

Rule 51 General requisites of an application. Ap-
plications for patents must be made to the Commis-
sioner of Patents. A complete application comprises :

(a) A petition or request for a patent, see rule 61.

(b) A specification, including a claim or claims, see
rules 71 to 77.

(c) An oath, see rule 65.

(d) Drawings, when necessary, see rules 81 to 88.

(e) The prescribed filing fee. (See rule 21 for filing
fees.)

[Old Rule 30]

The petition, specification, and oath must be
in the English language and must be legibly
written or printed in permanent ink. See Rule
52 and 608.01.

The parts of the application may be included
in a single document, if the approved single
signature form is used (Rule 58, 605.04 (a) ).

Determination of completeness of an appli-
cation is covered in 506.

The petition, specification and oath are se-
cured together in a file wrapper bearing appro-
priate identifying data including the serial
number and filing date (717).

NOTE

Reissue patents, 1401.
Design patents, Chapter 1500.

Plant patents, Chapter 1600.

A model, exhibit or specimen is not required
as part of the application as filed, although it
may be required in the prosecution of the appli-
cation (Rules 91-93, 608.03).

Rule 59 Papers of complete application not to be
returned. The papers in a complete application will
not be returned for any purpose whatever. If appli-
cants have not preserved copies of the papers, the
Office will furnish copies at the usual cost. See rule
87 for return of drawing.

[Old Rule 72, par. 1]

## 601 Petition

Rule 61 Petition. The petition must be addressed
to the Commissioner of Patents and must state the
name, residence, and post office address of the petitioner

and request the grant of a patent; designate by title
the invention sought to be patented: contain a refer-
ence 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 statements above
required for a separate petition do not all appear in
the petition paragraph and are differently arranged.
(See rule 58.)

[Old Rule 33]

Petitioner's or applicant's post office address
is discussed in 605.03.

The petition need not be dated.

## 601.01 Amendment of Petition

Those portions of the petition other than the post
office address (see 605.03) may be amended by the
attorney. (Extract from Order No. 1994.).

## 601.02 Power of Attorney or Author- ization of Agent

Usually a power of attorney or authorization
of agent is incorporated in either the petition or
single signature form. See 402 and 605.04 (a).

The attorney's or agent's full post office address
should be given in every power of attorney or author-
ity of agent. The prompt delivery of communica-
tions will thereby be facilitated. (Extract from
Notice of Oct. 8, 1946).

## 602 Original Oath

Rule 65 Oath of applicant. (a) The applicant, if
the inventor, must make oath or affirmation that he
does verily believe himself to be the original and first
inventor or discoverer of the art, machine, manufac-
ture, 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 there-
of, 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 original application the applicant must dis-
tinctly state under oath that to the best of his knowl-
edge 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

<!-- PageBreak -->

602.0

<!-- PageHeader="PARTS, FORM AND CONTENT OF APPLICATION" -->

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 mentioned, and if no applica-
tion for patent has been filed in any foreign country, he
shall so state. This oath must be subscribed to by the
affiant.

(b) 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 state 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 to.

(c) An additional oath may be required if the appli-
cation has not been filed in the Patent Office within a
reasonable time after the execution of the original oath.

(d) In the case of applications for patent for inven-
tions to which section 3 of 61 Stat. 794; Public Law
380, August 6, 1947 ; 35 U. S. C., Supp., 101 note, applies,
the oath should include a statement that the invention
was not made before January 1, 1946, or was not made
before January 1, 1946 in Germany or Japan or in the
territory of any other of the Axis Powers or in any
territory occupied by the Axis forces. If not included
in the oath, a separate affidavit will be required.

[Old Rule 46]

The single signature form mentioned in Rule
58 includes the oath.

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, and
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. See Rule 66, and 604 to
604.01 (a).

If a claim is presented for matter not orig-
inally claimed or embraced in the original state-
ment of invention in the specification a supple-
mental oath is required. Rule 67, 603.

## 602.01 Oath Cannot Be Amended

The wording of an oath cannot be amended.
If the wording is not correct or if all of the re-
quired affirmations have not been made or if it
has not been properly subscribed to, a new oath
must be required. However, in some cases a
deficiency in the oath can be corrected by a sup-
plemental paper and a new oath is not necessary.

For example, if the oath does not set forth
evidence that the notary was acting within his
jurisdiction at the time he administered the oath
a certificate of the notary that the oath was
taken within his jurisdiction will correct the
deficiency. See 604.02.

Likewise, a consular certificate (604.04 (a))
or a consular fee stamp (604.05) can be added to
correct a deficiency in the oath.

## 602.02 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 the fact that the application of
which it is to form a part must be properly iden-
tified 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 sub-
stitute oath is complete in itself, but the two
taken together give all the required data, no
further oath is needed.

### 602.03 Defective Oath Must Not Be Waived by the Examiner

The fact that the courts would probably not
invalidate a patent because of a defective oath
does not relieve the Examiner of the duty of
requiring the appropriate remedy for any such
defect.

#### 602.04 Foreign Oath

An oath executed in a foreign country must
be properly authenticated, 604, Rule 66.

#### 602.04 (a) Foreign Oath Is Ribboned to Other Application Papers

Extract from Rule 66. (b) 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 drawings, 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
papers, prepared in compliance with the foregoing sen-
tence, must be filed.

[Old Rule 47]

#### 602.05 Oath Too Old at Time of Filing

The time elapsed between the date of execu-
tion of oath and the filing date of the applica-
tion should be checked for compliance with Rule
65 (c). If an unreasonable time has elapsed, the
Examiner should call for a new oath. What
constitutes a reasonable time is a question of
judgment to be determined by all the circum-
stances in the particular case. (Five weeks plus
time of transmission in the mails was consid-

<!-- PageBreak -->

## 602.05 (a)

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

ered reasonable under the circumstances of ex
parte Heinze, 1919 C. D. 67; 265 O. G. 145).
Note 602.05 (a).

## 602.05 (a) Oath in Division and Con- tinuation 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 inter-
venes between the execution of the oath and the
filing of the application.

When a divisional application is identical
with the original application as filed, signing
and execution of the oath in the divisional case
may be omitted. (See Rule 147, 201.06).

## 603 Supplemental Oath

Rule 67 Supplemental oath for matter not originally
claimed. (a) When an applicant presents a claim for
matter originally shown or described but not substan-
tially embraced in the statement of invention or claim
originally presented, he shall file a supplemental oath to
the effect that the subject matter of the proposed
amendment was part of his invention; that he does
not know and does not believe that the same was ever
known or used before his invention or discovery thereof,
or patented or described in any printed publication 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 inven-
tion has not been patented in any foreign country on an
application filed by himself or his legal representatives
or assigns more than twelve months prior to his appli-
cation in the United States, and has not been abandoned.
Such supplemental oath should accompany and properly
identify the proposed amendment, otherwise the pro-
posed amendment may be refused consideration.

(b) In proper cases the oath here required may be
made on information and belief by an executor or ad-
ministrator of a deceased person or a guardian, con-
servator, or representative of an insane person.

[Old Rule 48]

Rule 67 requires in the supplemental oath sub-
stantially all the data called for in Rule 65 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 new matter into an application. It
applies only to matter originally shown or de-
scribed but not embraced in the statement of in-
vention or claims as originally presented.

## 603.01 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 re-
ceipt will not be acknowledged to the party filing
them. They should not be filed or considered as
amendments under Rule 312, since they make no
change in the wording of the papers on file. (Order
No. 2798.) See 714.16.

## 604 Administration or Execution of Oath

Extract From Rule 66 Officers authorized to ad-
minister oaths. (a) The oath or affirmation may be
made before any person within the United States
authorized by law to administer oaths, or, when the
applicant resides in a foreign country, before any
minister, chargé 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 official 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 being attested in all cases in
this and other countries, by the proper official seal of
the officer before whom the oath or affirmation is made,
except that no oath or affirmation may be administered
by any attorney or agent appearing in the case. 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 a competent evidence,
as by a certificate from a clerk of a court of record or
other proper officer having a seal.

[Old Rule 47]

NOTE :

Seals, 604.01.

When unnecessary, 604.01 (a).

In foreign case, 602.04 (a).

### 604.01 Seal

An oath under Rule 65 administered by a
civilian official must be attested to by a compe-
tent seal, as required by Rule 66.

The seal must be a physical impression such
as produced with a die upon the paper or upon
a substance adherent to the paper. See also
602.04 (a) on foreign executed oath and seal.

### 604.01 (a) Seal, When Not Required

When the person before whom the oath or
affirmation is made in this country is not pro-
vided with a seal, his official character shall be
established by competent evidence, as by a cer-
tificate from a clerk of a court of record or other
proper officer having a seal, except as noted in
604.03 (a), in which situations no seal is
necessary.

<!-- PageBreak -->

<!-- PageHeader="PARTS, FORM AND CONTENT OF APPLICATION" -->
<!-- PageHeader="604.04" -->

### 604.02 Venue

That portion of an oath or affidavit indicating
where the oath is taken is known as the venue.
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 oath, or from the list-
ing at 604.03. Venue and notary jurisdiction
must correspond or the oath is improper. The
oath should show on its face that it was taken
within the jurisdiction of the certifying officer
or notary. 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.

### 604.03 Notaries and Extent of Juris- diction

The extent of the jurisdiction of the notaries
in the various states is given below.

STATEWIDE

Alaska

Nevada

Arkansas

New Hampshire

Canal Zone

New Jersey

Colorado

New Mexico

Connecticut

New York (c)

Delaware

North Carolina

District of Columbia

North Dakota

Florida

Oklahoma

Georgia

Oregon

Idaho

Pennsylvania

Illinois

Puerto Rico

Indiana

Rhode Island

Louisiana

South Carolina

Maine

South Dakota

Maryland

Utah

Massachusetts

Vermont

Michigan

Washington

Minnesota

Wisconsin

Montana

Wyoming

COUNTY ONLY

Alabama

Mississippi

Arizona

Tennessee

California

Texas

Kansas
West Virginia

VARIABLE JURISDICTION

(See explanatory paragraphs (a-f) below.)

Hawaii

Nebraska (b)

Iowa (a)

Ohio (f)

Kentucky (a)

Virginia (d)

Missouri (a)

(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
counties also.

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

(c) In New York an attorney-at-law may be
commissioned to act as a notary public but shall
not employ the words "notary public" in con-
nection with his official acts or duties.

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

(e) In the Territory of Hawaii it is generally
limited to the judicial circuit.

(f) In Ohio the law, as amended in 1941,
gives notaries who are attorneys-at-law state-
wide jurisdiction and other notaries jurisdiction
in the county of appointment. The extent of
jurisdiction is stated on the seal or near the
notary's signature.

The notary does not have to state when his
commission expires but if he does so state, the
oath should be inspected to determine whether
or not the notary's commission had expired at
the date of execution of the oath.

### 604.03 (a) Notarial Powers of Some Military Officers

Certain Naval Officers serving beyond the
continental limits of the U. S. have notarial
jurisdiction but have no seal. (Act of April 25,
1935; 34 U. S. C. 217 a:)

\-
All Army officers on duty with the Judge
Advocate General's Department, and all adju-
tants, assistant adjutants or personnel adjutants
of any command, among other designated army
officers, have notarial powers to administer oaths
to be executed by persons subject to military law.
(Act of Dec. 14, 1942; 10 U. S. C. 1586.)

During existence of war or declared national
emergency and six months thereafter, any officer
of the Navy, Marine Corps or Coast Guard des-
ignated by the Secretary of the Navy (or by the
Secretary of the Treasury in the case of Coast
Guard if under the jurisdiction of the Secretary
of the Treasury) has notarial powers. No seal
is required. (Act of April 9, 1943; 34 U. S. C.
217a-1.) ...

### 604.04 Consul

The authority of any officer, not a United
States minister, chargé d'affairs, consul, or com-
mercial agent, administering an oath to an ap-
plicant residing abroad must be proved by cer-
tificate of United States diplomatic or consular
officer. Rule 66, 604.

<!-- PageBreak -->

# 604.04 (a)

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

# 604.04 (a) Consul-Omission of Certifi- cate

If the consular certificate is omitted, in cases
in which the oath is taken before a notary
abroad, the Examiner should require a consular
certificate for the original oath.

# 604.05 Consular Fee Stamp

Sec. 10, Act approved April 5, 1906; "when-
ever a consular officer is required or finds it nec-
essary to perform 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
thereto and duly cancel an adhesive stamp in
the denomination or denominations equivalent
to the fee prescribed for such consular or no-
tarial 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."

# 604.05 (a) Omission of Consular Fee Stamp

In all applications executed abroad before a con-
sular officer, from which the required consular fee
stamp has been omitted, the first action in the case
will include the requirement that the necessary
stamp be forwarded to the Patent Office to be affixed
to the affidavit and canceled by the Head of the
Application Branch. (Order No. 2032, Revised.)

# 604.05 (b) Embassies and Legations 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 them. (Extract from
Notice of Aug. 4, 1914.)

# 604.06 Oath by Attorney in Case, In- valid

The oath may not be executed before a notary
who has power of attorney in the case. If such
an oath is offered as one of the original papers,
the application is not accepted as "complete,"
since an oath so executed is invalid and without
legal effect. (Riegger v. Beierl, 1910 C. D. 12;
150 O. G. 826.) Rule 66, 604.

# 605 Applicant

Rule 41 Only inventor may apply for patent. Only
the actual inventor may apply for a patent and the
application papers must be signed and the necessary
oath executed by the inventor, unless the inventor
is dead or insane. See rule 147.

Extract from Rule 45. Joint inventors. (a) Joint
inventors must apply for a patent jointly and each
must sign the application papers and make the re-
quired oath; neither of them alone, nor less than the
entire number, can apply for a patent for an invention
invented by them jointly.

For convertibility from a joint to sole ap-
plication see 201.03.

Rule 46 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 appli-
cation must still be made by the inventor as indi-
cated in rules 41 and 45, or by one of the persons
mentioned in rules 42 and 43. However, the pat-
ent may be issued to the assignee or jointly to the
inventor and the asignee as provided in rule 334.

[Old Rule 26]

Rule 47 Applicant. Unless the contrary is indi-
cated, the word "applicant" when used in these rules
refers to the inventor (rule 41), joint inventors who
have applied for a patent (rule 45), or to the person
mentioned in rule 42 or 43 who has applied for a patent
in place of the inventor.

NOTE

Disposition of application by inventor, 301.
Inventor dead or insane, 409.

Nationals of Germany or Japan may not ap-
ply for or obtain patents for any invention
made, or upon which an application was filed
by any such national, before January 1, 1946,
in Germany or Japan or in the territory of any
other of the Axis Powers or in any territory oc-
cupied by the Axis forces. Public Law 380,
Sec. 3, 602 O. G. 675-6.

## 605.01 Applicant's Citizenship

The statute (Sec. 4892, R. S .; 35 U. S. C. 35)
requires an applicant to state his citizenship.
Where an applicant is not a citizen of any coun-
try, a statement to this effect is accepted as sat-
isfying the statutory requirement; but a state-
ment as to citizenship applied for or first papers
taken out looking to future citizenship in this
(or any other) country does not meet the re-
quirement.

## 605.02 Applicant's Residence

The rules of practice require that the appli-
cant 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. For change of residence see 717.02
(b).

605.03 Applicant's Post Office Address
Applicant's post office address means under Rule
61 that address at which he customarily receives his
mail.

<!-- PageBreak -->

<!-- PageHeader="605.04 (b)" -->
<!-- PageHeader="PARTS, FORM AND CONTENT OF APPLICATION" -->

The object of requiring applicant's post office
address is to enable the Office to communicate di-
rectly with the applicant if desired; hence, the ad-
dress of the attorney with instructions to send com-
munications to applicant in care of the attorney is
not sufficient. (Extract from Order No. 1994.)

If the post office address is entirely omitted
it must be supplied by a letter over the appli-
cant's own signature. Where, however, having
given complete data as to his residence, the ap-
plicant 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 re-
quires the signature of the applicant himself.

# 605.04 Applicant's Signature and Name

Rule 57 Signatures. The petition, the specification
and claim, 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.

Rule 76 Signature to the specification. The speci-
fication and claim must be signed by the applicant in
person. See rules 57 and 58.

[Old Rule 40]

If the oath, which is sworn to, 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 signing and execution by the applicant of
certain Divisional applications may be omitted.
Rule 147, Section 201.06.

## 605.04 (a) Single Signature Form

Rule 58 Single signature form. The petition, oath,
specification and claim, and power of attorney may be
included in a single document and may be executed by
a single signature of the applicant if an approved single
signature form supplied by the Office or approved by the
Office is used.

[Old Rule 30A]

The single signature form (Rule 58) should
be executed only when attached to a complete
application as the last page thereof.

NOTE: Signature to response 714.01 (a) to (e).

605.04 (b) Full First Name Required

Rule 57 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 amend-
ment is required.

All applications which disclose the full first and
last names with middle initial or name, if any, of the

applicant at any place in the application papers will
be received and considered as a sufficient compliance
with Rules 57 and 76 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 over applicant's signature
supplying the omission, and he will not pass the
application to issue until the omission has been sup-
plied unless a statement be filed over the applicant's
own signature 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 No. 3140 Revised.)

In an application where the name is type
written 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
the applicant's signature as to the correct form
of his name, together with any necessary amend-
ment.

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 direc-
tion to cancel the middle name or initial from
the preamble; though such amendment is not
material, since the preamble is no longer printed
in the patent. It is necessary 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 direc-
tion that the middle name or initial is to be used
in the name on the printed patent. As the
printer takes the name from the signature of the
application, the addition of the middle name or
initial must be indicated in red ink adjacent the
signature.

If applicant fails to answer the request and
the case is otherwise ready for issue, correct the
name on the drawing by Examiner's amend-
ment to correspond to the signatures, send copy
to attorney, and pass the case to issue. This
cannot be done if there are inconsistencies in the
signatures.

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

When the name is corrrected, the file should
be sent to the Application Branch for correction
of its records.

<!-- PageBreak -->

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->
<!-- PageHeader="604.04 (c)" -->

# 605.04 (c) Applicant Changes Name

In cases where an applicant's name has been
changed after his application has been filed and
the applicant desires that the patent when issued
carry an endorsement as to the change in his name,
it will be sufficient for the applicant to make a re-
quest in writing accompanied by an oath signed with
both names and setting forth the procedure whereby
the change of his name was effected. When such
papers are received the application will be forwarded
to the Assignment Branch and the oath pertain-
ing to the change of name will be recorded in the
assignment records. The Assignment Branch will
then forward the application to the Application
Branch for a change in their records. (Order No.
5106, Revised.)

The name is changed on the face of the file by
the Docket Clerk of the examining division who
also makes appropriate notation under the sig-
nature to the specification. The new name is
added to the drawing by the Drafting Branch.

The original name remains and this name
and the change of name are printed in the head-
ing of the patent, but only the original name
is printed at the end of the specification.

Where the change of name is merely by
amendment, such as the addition of a full first
name or a middle initial and no oath is required,
the file is sent to the Application Branch for a
change in their records and if the application
is assigned it will be forwarded by the Applica-
tion Branch to the Assignment Branch for a
change in assignment record.

# 605.04 (d) 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 to by a witness.
In the case of the oath, the notary's signature
to the jurat is sufficient to authenticate the mark.

# 605.04 (e) May Use Title With Signa- ture

It is permissible for an applicant to use a title
of nobility or other title, such as "Dr.", in con-
nection with his signature. The title will not
appear in the printed patent.

# 605.04 (f) Signature on Joint Appli- cations

In case of a joint application, the order of the
names on the file wrapper is that in which they
are signed to the specification or to the single
signature form. It is not essential that the
names appear in the same order in the signatures
to the petition, specification, oath, and drawing.

# 605.04 (g) 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. When
the name is changed, see 605.04 (c).

# 605.04 (h) Unsigned Original Speci- fication and Signed Dupli- cate

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. An unsigned specification is not returned to
the applicant, but the applicant may come in and
sign such specification in the Patent Office. Other-
wise, a properly signed permanent duplicate copy
of the specification as originally filed is required.
If the duplicate specification be filed with the first
amendment, said amendment should be entered in
the signed duplicate specification and the original
or unsigned specification canceled; but if the first
amendment be filed before the signed duplicate
specification is filed, the amendment should be en-
tered in the original specification, and the signed
specification marked "Duplicate of Original Speci-
fication" 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.
(Notice of Dec. 11, 1934, Revised.)

## 605.04 (i) Signature to Drawing

Rule 82 Signature to drawing. The drawing must
either be signed by the applicant in person or have the
name of the applicant placed thereon followed by the
signature of the attorney or agent as such.

[Old Rule 50]

The drawing is not signed by both applicant
and attorney. When the drawing is signed by
the inventor in person the name of the attorney
is not permitted to appear thereon.

The drawing may be signed by the applicant,
attorney, or agent in person after the drawing
has been filed. The signature need not be dated.

Prohibition against changing name of attor-
ney on drawing is discussed at 608.02 (v).

For return of drawing to applicant for signa-
ture see 608.02 (z).

# 605.05 Administrator or Executor

For prosecution by administrator or executor
see 409.01.

<!-- PageBreak -->

<!-- PageHeader="607. 1 a)" -->
<!-- PageHeader="PARTS, FORM AND CONTENT OF APPLICATION" -->

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

# 605.05 (a) Signature of Executor or Administrator

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.

(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 S. V. Lauderly, Atty.

If the specification bears the signature of the
administrator or executor but omits the matter,
"administrator of the Estate of John Jones,
deceased," the matter can be added by amend-
ment. The Examiner may make the amend-
ment if the case is otherwise ready for issue.

If the application is by the heirs of a deceased
inventor, see 409.01 and 409.01 (c).

## 606 Title of Invention

Rule 72 Title of the invention. The title of the in-
vention, which should be as short and specific as possi-
ble, should appear as a heading on the first page of the
specification.

As to the proper location for the title, Rule 72
merely states that it should appear as a heading
on the first page of the specification. If it does
not appear at this particular location the Exam-
iner should not require that it be placed there.

A title is a requisite part of an application.
(See Rule 61, section 601.)

## 606.01 Examiner May Require Change in Title

Where the title is not descriptive of the invention
claimed, the Examiner should require the substitu-
tion 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 Amendment on or after allowance.
(Extract of Notice of July 1, 1946.)

## 607 Filing Fee

While a filing fee, except as provided in the
Act of March 3, 1883, as amended April 30, 1928,
is a sine qua non part of the complete applica-
tion for a patent, it seldom, if ever, presents any
question requiring the attention of the Exam-
iner. The requisite fee must be paid before the
application is given a filing date, and hence
before it is sent to the examining division, Rule
22. Fees are listed in Rule 21.

No additional filing fee is receivable after the
filing date. If claims in excess of the number
corresponding to the filing fee are presented
before the first official action, see 714.10.

### 607.01 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:

35 U. S. C. 45. Patents ; issue to Government officers
for inventions used in public service. The Commissioner
of Patents is authorized to grant, subject to existing
law, to any officer, enlisted man, or employee of the
Government, except officers and employees of the Pat-
ent Office, a patent for any invention of the classes men-
tioned in section 31 of this title, without the payment
of any fee when the head of the department or inde-
pendent 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 manu-
factured and used by or for the Government for gov-
ernmental purposes without the payment to him of any
royalty thereon, which stipulation shall be included in
the patent. (Mar. 3, 1883, ch. 143, 22 Stat. 625; Feb. 14,
1903, ch. 552, sec. 12, 32 Stat. 830; Apr. 30, 1928, ch. 460,
45 Stat. 467).

### 607.01 (a) Inventor Leaves Service of United States

An opinion of the Attorney General, dated
January 14, 1936, rules that an application filed
under the Act of 1883, as amended, which meets
the requirements 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.

<!-- PageBreak -->

#### 607.01 (b)

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

#### 607.01 (b) Fee Exempt 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, con-
curred in by the Head of the Department con-
cerned, cancelling the offer of dedication, the
fee being entered on the file and the original
date of the application retained.

## 607.01 (c) 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 qualifies
under said Act, and files the required dedication by
amendment signed by the inventor and certified by
the Head of the Department. In such case the
docket clerk of the division will forward the appli-
cation to the Application Branch for appropriate
amendment of the file wrapper and of the record
in the Application Branch. (Notice of August 10,
1938, Revised.)

### 607.02 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 attorneys or applicants as to whether or not fees
are returnable in particular cases. (Notice of Oct.
11, 1937.)

### 608 Disclosure

In return for a patent, the inventor gives as
consideration a complete revelation or dis-
closure of the invention for which he seeks pro-
tection. All amendments or claims must find
basis in the original disclosure, or they involve
new matter. Applicant may rely for disclosure
upon the specification with original claims and
drawings, all as filed complete. See Rule 118,
608.04.

### 608.01 Specification

Rule 71 Detailed description and specification of the
invention. (a) The specification must include a writ-
ten 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 discovery appertains, or with which it is
most nearly connected, to make, construct, compound,
and use the same.

(b) The specification must set forth the precise in-
vention 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, and
must explain the mode of operation or principle when-
ever applicable. The best mode devised by the in-
ventor of carrying out his invention must be set forth.

(c) In the case of an improvement, the specification
must particularly point out the part or parts of the
process, machine, manufacture, or composition of mat-
ter to which the improvement relates, and the descrip-
tion should be confined to the specific improvement and
to such parts as necessarily cooperate with it or as may
be necessary to a complete understanding or descrip-
tion of it.

[Old Rules 34, 35, 36]

Certain cross notes to other related applica-
tions may be made when appropriate, and oth-
ers are required. Rule 78, 202.01.

Rule 52 Language, paper, writing, margins (a)
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.

(b) The specification and claims, and also papers
subsequently filed, must be plainly written on but one
side of the paper. 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 81% by 121/2 to 13 inches, typewritten and
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 required if the papers originally filed are
not correctly, legibly and clearly written,

(c) Any interlineation, erasure or cancellation or
other alteration made before the application was signed
and sworn to should be clearly referred to in a mar-
ginal note or footnote on the same sheet of paper, and
initialed or signed and dated by the applicant to
indicate such fact. (See Rule 56.)

[Old Rules 30, 45]

Typed, mimeographed, or multigraphed pa-
pers are acceptable. A good carbon copy is
acceptable.

As stated in Rule 52 the specification as well
as petition and oath must be in the English
language.

The specification is sometimes in such faulty
English that a new specification is necessary, but
new specifications encumber the record and re-
quire additional reading, and hence should not
be required or accepted except in extreme cases.
The specification does not require a date.

If a newly filed application obviously fails to
disclose an invention with the clarity required
by Sec. 488 R. S. 35 U. S. C. 33, revision of the

<!-- PageBreak -->

<!-- PageHeader="608.01 (g)" -->
<!-- PageHeader="PARTS, FORM AND CONTENT OF APPLICATION" -->

application should immediately be required.
See 702.01.

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

#### 608.01 (a) Parts of Specification

Rule 77 Arrangement of specification. The follow-
ing order of arrangement should be observed in fram-
ing the specification :

(a) Title of the invention ; or a preamble stating the
name, citizenship and residence of the applicant and
the title of the invention may be used.

(b) Brief summary of the invention.

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

(d) Detailed description.

(e) Claim or claims.

(f) Signature.

[Old Rule 39]

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

##### NOTE

Design patent specification, 1503.01.

Plant patent specification, 1602.

Reissue patent specification, 1401.06.

###### 608.01 (b) Preamble

The preamble of the specification is simply the
introductory portion stating applicant's name,
citizenship, residence, and the title of the inven-
tion.

###### 608.01 (c) Preamble May Be Omitted

Since the premable is not printed in the pat-
ent, its omission by applicant from the specifica-
tion is permissible. The oath or single signa-
ture form supplies the data as to name, citizen-
ship, etc., of which a specification preamble is
composed.

###### 608.01 (d) General Statement of In- vention

Rule 73 Summary of the invention. A brief summary
of the invention indicating its nature and substance,
which may include a statement of the object of the in-
vention, should precede the detailed description. Such
summary should, when set forth, be commensurate with
the invention as claimed and any object recited should
be that of the invention as claimed.

Rule 79 Reservation clauses not permitted. A res-
ervation for a future application of subject matter

disclosed but not claimed in a pending application will
not be permitted in the pending application.

[Old Rule 44]

# 608.01 (e) General Statement of In- vention-Coextensive With Claims

Since the purpose of the general statement of
invention is to apprise the public, and more
especially those interested in the particular art
to which the invention relates, of the nature of
the invention the statement should be directed
to the specific invention being claimed, in con-
tradistinction 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 paragraphs, according
to the extent and nature of the invention. Ster-
eotyped general statements that would fit one
case as well as another serve no useful purpose
and may well be required to be canceled as sur-
plusage, and, in the absence of any illuminating
statement, replaced by statements that are di-
rectly in point as applicable exclusively to the
case in hand.

The general statement of invention should be
coextensive with the claims. Note final review
of application and preparation for issue, 1302.

# 608.01 (f) Brief Description of Draw- ings

Rule 74 Reference to drawings. When there are
drawings, there shall be a brief description of the
several views of the drawings and the detailed descrip-
tion of the invention shall refer to the different views
by specifying the numbers of the figures, and to the
different parts by use of reference letters or numerals
(preferably the latter).

[Old Rule 38]

The Examiner should see to it that the figures
are correctly described in the brief description
of the drawing, that all section lines used are
referred to, and that all needed section lines are
used.

# 608.01 (g) Detailed Description of In- vention

A detailed description of the invention and
drawings follows the general statement of in-
vention and brief description of the drawings.
This detailed description, required by Rule 71,
608.01, must be in such particularity as to enable
any person skilled in the pertinent art or science
to construct, prepare and use the invention with-
out involving extensive experimentation. An
applicant is ordinarily permitted to use his own
terminology, as long as it can be understood.

<!-- PageBreak -->

608.01 (h)

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

Necessary grammatical corrections, however,
should be required by the Examiner, but it must
be remembered that an examination is not made
for the purpose of securing grammatical
perfection.

The reference characters must be 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," with a prime affixed may advan-
tageously be applied to the modification. Every
feature specified in the claims must be illus-
trated, but there should be no superfluous
illustrations.

The description is a dictionary for the claims
and should provide a basis for all terms used
in the claims. See Rule 75 in 608.01 (i) and
also 608.01 (o).

NOTE .- Completeness 608.01 (p).

# 608.01 (h) Mode of Operation of In- vention

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 at least one example
of the invention should be presented.

NOTE .- Completeness 608.01 (p).

## 608.01 (i) Claims

Rule .75 Claim. (a) The specification must con-
clude with a claim particularly pointing out and dis-
tinctly claiming the part, improvement, or combination
which the applicant regards as his invention or dis-
covery.

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

(c) When more than one claim is presented, they
may be placed in dependent form in which a claim may
refer back to and further restrict a single preceding
claim.

E

(d) The claim or claims must conform to the inven-
tion 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 by reference to the description.

See rules 141 to 147 as to claiming different inven-
tions in one application.

[Old Rule 37]

NOTE

Numbering of Claims, 608.01 (3).

Form of Claims, 608.01 (m).

Dependent claims, 608.01 (n).

Examination of claims, 706.

Claims in excess of fee, 714.10.

(

# 608.01 (j) Numbering of Claims

Rule 126 Numbering of claims. The original num-
bering 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 cancelled claims, they
must be numbered by the applicant consecutively be-
ginning 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.

[Old Rule 73, par. 2]

# 608.01 (k) Statutory Requirement of Claims

Sec. 488 R. S. 35 U. S. C. 33 requires that the
applicant shall particularly point out and dis-
tinctly claim the part, improvement, or combina-
tion which he regards as his invention or dis-
covery. 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.

# 608.01 (1) 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 draw-
ing or desribed 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 drawing and specifica-
tion. It is the drawing and specification that are
defective; not the claim.

It is of course to be understood that this dis-
closure in the claim must be sufficiently specific
and detailed to support the necessary amend-
ment of the drawing and specification.

<!-- PageBreak -->

<!-- PageHeader="608.01 (p)" -->
<!-- PageHeader="PARTS, FORM AND CONTENT OF APPLICATION" -->

# 608.01 (m) Form of Claims

While there is no set statutory form for
claims, the present Office practice is to insist
that each claim must be the object of a sentence
starting with "I (or we) claim" whether or not
the words "I (or we) 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.

See Rejections not based on Prior Art 706.03.

# 608.01 (n) Dependent Claims

A dependent claim is a claim which incor-
porates another claim by reference and further
restricts the language of the claim incorporated.
For example, claim 2, a dependent claim, could
read as follows:

2\. The product of claim 1 in which

Rule 75 (c), permitting dependent claims,
reads as follows :

When more than one claim is presented, they may
be placed in dependent form in which a claim may refer
back to and further restrict a single preceding claim,

A dependent claim cannot in terms refer back
to two or more preceding claims. This is pro-
hibited by the rule when it states that the claim
may refer back to and further restrict a single
preceding claim. For example, a dependent
claim reading as follows :

7\. A machine as specified in claims 5 or 6
(or, 5 and 6) in which . . .

is not permitted.

The reason for prohibiting a dependent claim
of this type is that, first, it disguises the true
number of claims since a claim of this sort is in
reality two or more claims, and second, claims
of this type are alternative and also usually
involve unnecessary duplication.

However, a dependent claim may refer to a
preceding claim, which in turn refers to another
preceding claim, thus a series of dependent
claims as follows :

2\. The machine of claim 1 in which

3\. The machine of claim 2 in which . . .
etc.

is permitted.

There may be several series of dependent
claims in a single application with the restric-
tion that all the claims in each series of depend-
ent claims appear in immediate consecutive
numerical order. For this purpose, the main
independent claim is not considered part of the
series.

The notice of December 9, 1946, states :

A dependent claim may depend from a preceding

dependent claim providing that the claims of any
series of dependent claims shall appear in the appli-
cation in immediate consecutive order, and no
dependent claim shall contain direct reference to
more than one preceding claim.

When renumbering of the claims is necessary,
in compliance with Rule 126, particular atten-
tion should be given to dependent claims to see
that each dependent claim correctly identifies
the claim upon which it is built.

# 608.01 (o) Basis for Claim, Terminol- ogy in Description

The meaning of every term used in any of the
claims should be apparent from the descriptive
portion of the specification with clear disclosure
as to its import, and in mechanical cases it
should be identified in the descriptive portion
of the specification by reference to the drawing,
designating the part or parts therein to which
the term applies. A term used in the claims
may be given a special meaning in the descrip-
tion .. No term may be given a meaning repug-
nant to the usual meaning of the term.

Usually the terminology of the original
claims follows the nomenclature of the specifi-
cation, but sometimes in amending the claims
or in adding new claims, new terms are intro-
duced that do not appear in the specification.
The use of a confusing variety of terms for the
same thing should not be permitted.

New claims and amendments to the claims
already in the case should be scrutinized not
only for new matter but also for new terminol-
ogy. While an applicant is not limited to the
nomenclature used in the application as filed, yet
whenever by amendment of his claims, he de-
parts 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 specification. Ex parte Kotler
1901 C. D. 62; 95 O. G. 2684. See Rule 75,
608.01 (i).

## 608.01 (p) Completeness

Newly filed applications obviously failing to
disclose an invention with the clarity required
are discussed in 702.01.

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, con-
struct, compound and use the invention.

While the prior art setting may be mentioned
in general terms, the essential novelty, the es-
sence of the invention, must be described in such

<!-- PageBreak -->

# 608.01 (q)

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

details, including proportions and techniques
where necessary, as to enable those persons
skilled in the art to make and utilize the inven-
tion.

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 with sup-
port in the disclosure of at least one specific ex-
ample for each member of the Markush group.
Where the constitution and formula of a chem-
ical 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 state-
ment of utility. This usually presents no prob-
lem in mechanical cases. In chemical cases,
varying degrees of specificity are required.

A disclosure involving a new chemical com-
pound or composition must teach persons skilled
in the art how to make the compound or com-
position. Incomplete teachings may not be
completed by reference to subsequently filed ap-
plications. If the starting material is old but
difficult to locate in the literature, the literature
citation should be incorporated into the specifi-
cation. This may be done by amendment. In
the application as filed, preparation of a new
chemical starting material may be described
generally along with reference to a concurrently
or previously filed application by the same in-
ventor wherein the detailed preparation is given.
If a concurrently or previously filed application
of the same inventor adequately discloses the
preparation of the starting material, amend-
ments to include reference to such application
by serial number and a general method of prep-
aration are proper.

Reliance upon a copending application by a
different inventor may not be made for the pur-
pose of completing the disclosure.

All essential features of an invention must be
fully disclosed in the application without de-
pending upon a reference to a copending appli-
cation for completing the disclosure.

Since a disclosure must be complete as of the
filing date, subsequent publications or subse-
quently filed applications cannot be relied upon
to establish a constructive reduction to practice.

NOTE .- Trade-marks and trade names 608.01 (v).

# 608.01 (q) Substitute or Rewritten Specification

Rule 125 Substitute specification. If the number or
nature of the amendments shall render it difficult
to consider the case, or to arrange the papers for
printing or copying, the examiner may require the

entire specification or claims, or any part thereof, to
be rewritten. A substitute specification will ordinarily
not be accepted unless it has been required by the
examiner.

[Old Rule 74]

The specification is sometimes in such faulty
English that a new specification is necessary, but
new specifications cumber the record and require
additional reading, and hence should not be re-
quired or accepted except in extreme cases.

A substitute specification that has not been
required, and is not needed, is not entered. See
714.20.

New matter in amendment, see 608.04.
Application prepared for issue, see 1302.02.

# 608.01 (r) Derogatory Remarks About Prior Art in Speci- fication

The 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 dis-
closure in a prior patent or in an application of
common ownership or that he makes no claim
to the disclosure in a certain application of
common ownership.

# 608.01 (s) Restoration of Canceled Matter

Canceled text in the specification or a canceled
claim can be restored only by filing a duplicate
thereof. See Rule 124, 714.24.

# 608.01 (t) Use of Disclosure in Subse- quent Application

A reservation for a future application of sub-
ject matter disclosed but not claimed in a pend-
ing application will not be permitted in the
pending application. Rule 79, 608.01 (d).

While a specification cannot be transferred to
another application, drawings may be trans-
ferred from a prior application to a latter case
by the same inventor, note 608.02 (i) to
608.02 (1).

# 608.01 (u) Use of Formerly Filed In- complete Application

Parts of an incomplete application may be
used as part of a complete application if the
missing parts are later supplied. See 506 and
506.01.

<!-- PageBreak -->

<!-- PageHeader="PARTS, FORM AND CONTENT OF APPLICATION" -->
<!-- PageHeader="608.02" -->

# 608.01 (v) Trade-Marks and Trade Names in Disclosure

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

Trade-mark; a proprietary word, letter, de-
vice or symbol, used in connection with mer-
chandise and pointing distinctly to the origin
or ownership of the article to which it is ap-
plied.

Trade name; a nonproprietary 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 pre-
cise 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 litera-
ture.

Condition (1) or (2) must be met at the time
of filing of the complete application.

The relationship between a trade-mark and the
product it identifies is sometimes indefinite, uncer-
tain 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 specifications, 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. Arbi-
trary trade-marks which are liable to mean differ-
ent 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 distin-
guished from common descriptive nouns, as by capi-
talization and/or quotation marks. 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
explanatory language is necessary.

Where the identification of a trade-mark is intro-
duced by amendment it must be restricted to the
characteristics of the product known at the time
the application was filed to avoid any question of
new matter. (Notice of November 18, 1947, Revised.)

If proper identification of a trade-mark or
trade name has been omitted from the specifica-
tion but is deemed necessary therein under the

principles above set forth, the Examiner should
object to the disclosure as insufficient, and reject,
as based on an insufficient disclosure, any claims
based on the disclosure of the product desig-
nated by the trade-mark or trade name. The
original disclosure sometimes may be suitably
amended to define the product to which the
trade-mark or trade name is applied. If the
product cannot be otherwise defined, an amend-
ment defining the process of its manufacture
may be permitted. Such amendments must be
supported by satisfactory showings establishing
that the specific nature or process of manufac-
ture of the product as set forth in the amend-
ment was known at the time of filing of the
application.

Although the use of trade-marks having defi-
nite meanings is permissible in patent applica-
tions, the proprietary nature of the marks should
be respected and every effort made to prevent
their use in any manner which might endanger
their validity as trade-marks. The Examiner
should not permit the use of language such as
"the product X (a descriptive name) commonly
known as T. M. (trade-mark)."

## 608.02 Drawing

Rule 81 Drawings required. The applicant for pat-
ent is required by statute to furnish a drawing of his
invention whenever the nature of the case admits of it ;
this drawing must be filed with the application. Illus-
strations facilitating an understanding of the invention
(for example, flow sheets in cases of processes, and
diagrammatic views) may also be furnished in the same
manner as drawings, and may be required by the Office
when considered necessary or desirable.

[Old Rule 49]

Rule 86 Draftsman to make drawings. Applicants
are advised to employ competent draftsmen to make
their drawings.

The Office may furnish the drawings at the applicant's
expense as promptly as its draftsmen can make them,
for applicants who can not otherwise conveniently pro-
cure them. (See rule 21.)

[Old Rule 55]

NOTE

Standards for drawings, Rule 84.

Design patent drawings, Rule 152, 1503.02.

Plant patent drawings, Rule 165.

Reissue application drawings, 608.02 (k).
Signature to drawing, 605.04 (i).

The back of each sheet of drawing must bear
the stamp of the draftsman before the applica-
tion is allowed.

The Patent Copy Sales Branch, Reproduction
Section has charge of the drawings in patented
cases. Canceled sheets, however, are not re-
tained with the patented drawings but are filed

844330-49 ---- 4

<!-- PageBreak -->

## 608.02 (a)

# MANUAL OF PATENT EXAMINING PROCEDURE

with the abandoned files and drawings in the
Abandoned Files Unit.

See: Correction of drawings, 608.02 (q).
Prints, preparation and distribution, 508, 608.02
(m). Prints, Return of drawing, 608.02 (z).

## 608.02 (a) New Drawing-When Re- quired

The Chief Draftsman is the judge of draw-
ings, as to the execution of the same, and the
arrangement of the views thereon, while the
Examiner is the judge as to the sufficiency of
the showing. The drawings, upon receipt of an
application, are sent from the Application
Branch to be inspected by the Chief Draftsman.
If satisfactory, he stamps on the back of each
sheet "Approved, Draftsman, U. S. Patent Of-
fice" together with the date.

If the drawings are informal, but may be
admitted for examination purposes the Drafts-
man writes in lead pencil in the margin of the
drawing "Inf. A. F. E." (admit for examina-
tion) together with his criticism and if the
drawings can be corrected he adds the words
"can be corrected." On all informal drawings
that cannot be freed from objection he notes the
words "New drawings required." The drawings
are then returned to the Application Branch.

If the drawing is endorsed "Inf. A. F. E." it is
accepted as satisfying the requirement of Rule
51.

The Examiners are directed to advise the appli-
cants in the first Office action of the conditions
which render the drawing informal, and when indi-
cated, that such drawings can be corrected so as
to be acceptable, but will not, in any case, require
new drawings because of their execution unless the
necessity therefor shall have been indicated by the
Chief of the Drafting Branch. (Extract from Order
No. 1764). See 707.07 (c).

The Examiner may require additional draw-
ings for the purpose of illustrating the disclo-
sure.

When a necessary additional illustration is small
and may be added to the drawings on file, an addi-
tional sheet of drawing should not be required, but
the Examiner will ask that the proposed illustration
be shown in a sketch, which showing will be trans-
ferred to one of the sheets of the drawings (Extract
from Order No. 1862).

For the handling of additional, duplicate, or
substitute drawings, see 608.02 (h).

### 608.02 (b) Informal Drawings

Rule 85 Informal drawings. The requirements of
Rule 84 relating to drawings will be strictly enforced.
A drawing 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 necessary corrections will be made
by the Office upon applicant's request and at his expense.
(See Rule 21.)

[Old Rule 54]

If the drawing is such that the prosecution
of the application can be properly carried on
without the corrections being made, the Exam-
iner should inform the applicant that the cor-
rections need not be made until patentable sub-
ject 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 on.

## 608.02 (c) Drawing or Print Always Kept in Examining Divi- sion

The photographic copies of the drawings must
always be kept on top of the papers on the right of
the file wrapper so as to be visible upon opening the
wrapper and easily detached.

Whenever the original drawing is taken from the
examining 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 drawing is returned to the exam-
ining division and placed in the cabinet, the photo-
graphic copy must be replaced in the file.

When sending for the original drawing upon pay-
ment of the final fee, the Issue and Gazette Branch,
after stamping the patent date upon the photo-
graphic copy, will send the latter to the Examining
Division, and such photographic copy must be placed
in the cabinet in lieu of the original drawing.

This procedure is to make certain that either the
original drawing or the protographic copy (print)
is always available for interference searches.

Each examining division will, each week, select
the photographie copies bearing the date of that
week's issue and return them to the Issue and
Gazette Branch by Wednesday 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 examining division.

No application should be sent to issue or to aban-
doned files unless the original drawing is checked up
and found in the division. (Order No. 3104, Revised.)

# 608.02 (d) Complete Illustration in Drawings

Rule 83 Content of drawing. The drawing must
show every feature of the invention specified in the
claims. When the invention consists of an improvement

3

1

1

<!-- PageBreak -->

<!-- PageHeader="608.02 (k)" -->
<!-- PageHeader="PARTS, FORM AND CONTENT OF APPLICATION" -->

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 as will
suffice to show the connection of the invention there-
with.

[Old Rule 50]

# 608.02 (e) Examiner Determines Completeness of Drawings

The Examiner should see to it that the figures
are correctly described in the brief description
of the specification and that the reference char-
acters are properly applied, no single reference
character being used for two different parts or
for a given part and a modification of such part.
Every feature covered by the claims must be
illustrated, but there should be no superfluous
illustrations.

## 608.02 (f) Modifications in Drawings

Modifications may not be shown in broken
lines on figures which show in solid lines an-
other form of the invention. (Ex parte Badger,
1901 C. D. 195; 97 O. G. 1596.) However,
when a small part of a figure may be taken out
and another complete figure may be bodily sub-
stituted therefor to produce a modification, the
small part of the figure may be enclosed by
broken lines to indicate that another figure may
be substituted therefor.

All modifications described must be illus-
trated, or the text canceled. (Ex parte Peck,
1901 C. D. 136; 96 O. G. 2409.) 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 requirement does not apply to a mere ref-
erence to well-known and conventional parts.

NOTE .- Correction of drawing, 608.02 (q).

## 608.02 (g) Illustration of Prior Art

Generally where an applicant shows prior art
in one or more figures of the drawings, such
figures and the description thereof should be
canceled. Ex parte Elliott 1904 C. D. 103, 109
O. G. 1337.

## 608.02 (h) Additional, Duplicate or Substitute Drawings

When an amendment, is filed stating that at the
same time substitute or additional sheets of draw-
ings are filed and such drawings have not been trans-
mitted to the examining division, the docket clerk in
the examining division should call the Application
Branch before entering the amendment to ascertain
if the drawing was not received. In the next com-
munication of the Examiner the applicant is noti-

filed if the drawings have not been received. (Notice
of March 24, 1919 Revised.)

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. If the Exam-
iner considers an additional or substitute sheet
of drawing necessary it must be submitted to
the Chief Draftsman before entering it in the
case.

If an additional sheet of drawing is consid-
ered unnecessary and the original drawing re-
quires alterations which are taken care of in the
proffered additional sheet, the latter may be
used in lieu of the usual sketch required in mak-
ing the correction of the original drawing.

For return of drawing, see 608.02 (z).

# 608.02 (i) Transfer of Drawings From Prior Applications

Rule 88 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 draw-
ings or any sheets thereof may be used if the prior
application is, or is about to be, abandoned, or if the
sheets to be used are cancelled in the prior applica-
tion. The new application must be accompanied by a
letter requesting the transfer of the drawings, which
should be completely identified.

Formal transfer of drawings from one appli-
cation to another is made only by the Applica-
tion Branch. The name of the attorney on the
drawing being transferred is not changed,
608.02 (v).

When an application becomes a patent, any
canceled sheet of drawing then in the case is
sent to the abandoned files. Such canceled sheet
is available for applicant's use in another ap-
plication directed to its subject matter.

# 608.02 (j) Transfer of Canceled Sheets of Drawings to Divi- sional 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.

# 608.02 (k) Transfer of Drawings to Reissue

Extract from Rule 174. 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 appli-

<!-- PageBreak -->

<!-- PageHeader="608.02 (1)" -->
<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

cation is filed, the applicant must submit a temporary
drawing which may consist 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 board of the size required for original draw-
ing, or an order for the same.

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 reissue applica-
tion 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 error, is made in the
drawing. If there is to be any change whatso-
ever 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 sheet will
preclude the use of the entire set of the original
drawings which must be kept intact and in the
condition existing at the time of issue of the
original patent. See 1401.05.

Transfer of the drawing is made by the Appli-
cation Branch, notation thereof being entered on
the file wrapper of the original application.

# 608.02 (1) Transfer of Drawings to Continuation or Substitute

Where a continuation is filed, prints are ac-
cepted in lieu of formal drawings to establish a
filing date, the original drawings being trans-
ferred after abandonment of the parent case
either by operation of law or by properly exe-
cuted letter of abandonment. When a substi-
tute application is filed, the drawing of the
abandoned application may be used as the
original drawing in the substitute application.

## PRINTS IN LIEU OF DRAWINGS TO BE TRANSFERRED

Prints submitted in lieu of drawings are dated
on the back by the Register, Correspondence
and Mail Branch of the Administrative Services
Division. These prints are mounted upon Bris-
tol board by the Application Branch and the
back of the board upon which the prints are
mounted bears a date stamped by the Applic-
ation Branch to correspond with the then cov-
ered date of the Mail Branch.

### 608.02 (m) Prints

Preparation and distribution of prints is dis-
cussed in 508.

Photographic prints are made of the draw-
ings of an acceptable application. Prints of
the drawings as filed are entered in the appli-
cation, given a paper number and kept on top of

the papers on the right side of the file wrapper,
see 717.01 (b).

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.

The print being thus an official paper in the
record should not be marked or in any way
altered. Where, as in an electrical wiring case,
it is desirable, to identify the various circuits
by different colors, or in any more or less com-
plex case, it is advantageous to apply legends,
arrows or other indicia, an additional print for
such use should be ordered by the Examiner and
placed unofficially in the file.

Prints remain in the file at all times except as
provided in 608.02 (e).

### 608.02 (n) Duplicate Prints in Patent- ability Report Cases

In Patentability Report cases having drawings,
the Examiner to whom the case is assigned will
obtain a duplicate set of prints of the drawing for
filing in the division to which the case is referred.

When a case that has had Patentability Report
prosecution is passed for issue or becomes aban-
doned, notification of this fact will at once be given
by the division having jurisdiction of the case to
each division that submitted a P. R. The Examiner
of each such reporting division will note the date
of allowance or abandonment on his duplicate set
of prints. At such time as these prints become of
no value to the reporting division, they may be
destroyed. (Extract of Notice of November 10,
1948.)

### 608.02 (o) Data on Prints

Tho photoprint 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 as
originally filed." or "This is an additional sheet
of drawing and must be submitted to the Chief
Draftsman before entering the case." (This
latter is stamped on the additional drawing and
reproduced therewith.)

Paper number, usually #2.

Marginal notation of informalities by the
Draftsman on the margin of the original draw-
ing, or

"O. K." if there are no Draftsman notations.
Class and subclass of the application.

On the back of the print:

Stamp of the Application Branch and date of
receipt of the print from the photoprinting
establishment. Sometimes a stamp of the
Examining Division receipt date.

(

\>

(

<!-- PageBreak -->

<!-- PageHeader="608.02 (t)" -->
<!-- PageHeader="PARTS, FORM AND CONTENT OF APPLICATION" -->

Additional prints prepared for the Examiner
or the Board of Appeals bear on the front such
information as is on the drawing as of the
copying date, namely :

Serial number of the application. Some-
times the reproduced stamping "This is an
additional sheet of drawing and must be sub-
mitted to the Chief Draftsman before entering
in the case."

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

On the back, additional prints bear a stamp
stating "Photographs for Examiner" and the
date the additional prints were made.

After the final fee has been paid the patent
date is stamped on the print, 608.02 (c).

#### 608.02 (p) Dates 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,
regardless 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 date is ap-
plied 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.

### 608.02 (q) Correction of Drawings

Rule 123 Amendments to the drawing. (a) No
change in the drawing may be made except by permis-
sion of the Office. Permissible changes in the con-
struction shown in any drawing may be made only by
the Office. A sketch in permanent ink showing pro-
posed changes, to become part of the record, must be
filed. The paper requesting amendments to the draw-
ing should be separate from other papers. The draw-
ing may not be withdrawn from the Office except for
signature.

(b) Substitute drawings will not ordinarily be ad-
mitted in any case unless required by the Office.

[Old Rule 72, par. 2]

NOTE .- Correction is deferrable, see 608.02 (b), cor-
rection at allowance and issue, see 608.02 (x) and
1802.05.

### 608.02 (r) 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.

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 indi-
cated 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 before the case is sent to the Chief
Draftsman. (Extract from Order No. 1958.)

NOTE .- Disposition of Orders for Amendment of
Drawing, 608.02 (y).

### 608.02 (s) Separate Letter to Drafts- man

Any request by the applicant for amendment of
the drawing to cure defects must be embodied in a
separate letter for the Chief Draftsman. Otherwise
the case, unless in other respects ready for issue,
will not be forwarded by the Examiner to the Draft-
ing Branch, and applicant will be so advised in the
next action by the Examiner. (Extract from Order
No. 4009.)

NOTE .- Changes which may require sketches, 608.02
(w). Changes made without charge, 608.02 (x). "

### 608.02 (t) Estimating Cost of Correct- ing Drawings

Files and drawings sent from the Examining Di-
vision to the Draftsman for estimating the cost of
correcting the drawing or of making new drawings
will be retained by the Draftsman only long enough
to estimate the cost of the work.

If the Examiner approves of a proposed correction
of a drawing for which an estimate is requested he
will note his approval on the order for the estimate,
attach the order to the outside of the file and have
the Docket Clerk of the Division forward the file and
drawing to the Draftsman. The Draftsman will
note the estimate on the order and also on the draw-
ing. If the application is not up for action the
Draftsman sends the estimate to the Applicant. If
the application is up for action the Draftsman does
not send an estimate, but the Examiner should in-
clude the estimate in the next action.

After stating the estimate the following paragraph
should be added in the Examiner's letter:

When corrections are made, prints of the cor-
rected sheets should be ordered, cost 20 cents each,
to ascertain whether the changes made are correct.
(Notice of July 13, 1906, Revised.)

Corrections made by the Office Draftsman
without change are listed in 608.02. (x).

When giving an estimate in a case where no al-
lowable subect matter has been found the Exam-
iner should inform the applicant that no correction
will be made until a claim is found to be allowable.
If specifically requested by the applicant, the draw-

<!-- PageBreak -->

608.02 (u)

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

ing will be corrected whether or not a claim is allow-
able. (Extract from Notice of February 1, 1932.)

If an application is ready for allowance ex-
cept for a correction required by the Official
Draftsman, such as in a case where the lines are
rough and blurred, the Examiner will obtain
an estimate of the cost of this work from the
Draftsman even though applicant has not re-
quested such an estimate. Including the esti-
mate in the final requirement for correction of
the drawing may avoid prolonging the prose-
cution.

### 608.02 (u) Cancelation of Figures

In the cancelation of figures on drawings which
is done by the Docket Clerk of the Division, the
figure or figures and their ordinals to be canceled will
be surrounded by a line in red ink and the word
"canceled" with proper date of the paper directing
concelation will be written in red ink within each
line. No portion of the figure itself, however, will
be crossed by the red lines. When the entire draw-
ing is to be canceled, a red line will be drawn entirely
around the same (but immediately within the
marginal line), the authority for cancelation and
the word "canceled" written with red ink with
proper date of cancelation placed within the said
surrounding red line. But no lines shall be drawn
in any case across the figures themselves. (Order
No. 55, Revised.)

When the cancelation of some of the figures from
one sheet of drawings has left the remaining figures
with an inartistic arrangement, the Chief Drafts-
man should be consulted as to whether the remain-
ing figures should be transferred to other sheets
already in the case or shown in additional drawings.
(Extract from Order No. 1862.)

### 608.02 (v) Changing Name of Attor- ney on Drawing Forbidden

Erasing the name of a first attorney or writing
upon the drawing the name of an attorney subse-
quently appointed so as to make it appear that the
latter name was present when the drawing was
originally filed is prohibited.

This prohibition applies also where a drawing is
transferred from one case to another having a
different attorney. (Order No. 480, Revised.)

### 608.02 (w) Drawing Changes Which May Require Sketches

When changes are to be made in the drawing
itself, other than mere changes in reference
characters, designations of figures, or inking
over lines pale and rough, a print or pen-and-ink
sketch showing such changes must be filed.
Ordinarily, broken lines may be changed to full
without a sketch.

Sketches filed by an applicant and used by the
draftsman for correction of the drawing will not
be returned. All such sketches must be in ink or
permanent prints. (Extract from Order No. 4009.)

If requested by the applicant, a pencil sketch
that is otherwise acceptable is inked in by the
Office Draftsman at the expense of the applicant.

Blueprints with the changes to be made
sketched thereon may be used. If a blueprint
is submitted with the changes made in pencil,
the Draftsman will ink in the changes and
charge the applicant for the work of inking the
pencil. Blueprints are not returned.

608.02 (x)
Drawing Changes Which
May Be Made by Examin-
er's Amendment Without
a Sketch

Where an application is ready for issue except for
a slight defect in the drawing not involving change
in structure, the Examiner will prepare an Examin-
er's Amendment indicating the change made and
note in pencil on the drawing the addition or altera-
tion to be made and send the drawing by the file
clerk to the Draftsman for the required correction.
In such cases no charge will be made.

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

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

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

3\. Removing superfluous matter, e. g., Figure and
ordinal where all but one figure have been canceled.
4\. Adding or reversing directional arrows.

5\. Changing Roman Numerals to Arabic Numer-
als 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.

9\. Correcting misspelled legends. (Extract from
Order No. 4009.)

### 608.02 (y) Disposition of Orders for Amendment of Drawing

Where the ordered correction of the drawing in a
case 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 the draftsman the
case with drawing and order for correction indi-
cating such corrections as are approved. The order
for correction is attached to the outside of the file
wrapper. Where the correction is not approved, or
where the case contains no allowable claims, the

<!-- PageBreak -->

<!-- PageHeader="608.03 (a)" -->
<!-- PageHeader="PARTS, FORM AND CONTENT OF APPLICATION" -->

case and request for correction of drawing, are not
sent to the draftsman, but are retained in the divi-
sion.

Where the correction of a drawing is ordered and
the correction when made will put the case in con-
dition for allowance, the Examiner writes "Ap-
proved", with the date of approval, and initials the
notation on the order for correction, attaches the
order for correction and a "Special this case is ready
for allowance" 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 Exam-
iner, or, in his absence by the assistant chief. These
cases must be so marked if the draftsman is expected
to make the correction "special." (Extract from
Notice of February 1, 1932.)

The correction of a drawing, except in the case
of applying a few reference characters or mak-
ing some other minor alteration, 608.02 (x), is
at the expense of the applicant.

### 608.02 (z) Return of Drawing

Rule 87 Return of drawings. The drawing of an
accepted application will not be returned to the appli-
cant except for signature.

A photographic print is made of the drawing of an
accepted application.

A drawing that is finally denied admission to the
case will be returned to the applicant at his request.
Such request must be filed within a reasonable
time; otherwise the drawing may be disposed of at
the discretion of the Commissioner.

When a drawing is to be returned, the Examiner
prepares a letter for the applicant stating that the
drawing is being returned under separate cover.
The file, letter and drawing are taken to the Draft-
ing Branch where the letter will be stamped and the
drawing returned. The letter stating that the draw-
ing is returned is mailed by the Examining Division.

Drawings will not be returned until prints have
been made and put in the application file. (Extracts
from Orders 1783 and 4009.)

### 608.03 Models, Exhibits, Specimens

Rule 91 Models not generally 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 ad-
mitted unless specifically called for.

[Old Rules 56, 57, 58]

Rule 92 Model or exhibit may be required. A model,
working model, or other physical exhibit, may be re-

quired if deemed necessary for any purpose on exam-
ination of the application.

[Old Rule 59]

With the exception of cases involving perpet-
ual motion, a model is not ordinarily required
by the Office to demonstrate the operativeness of
a device. If operativeness of a device is ques-
tioned, the applicant may establish it to the
satisfaction of the Examiner, but he may choose
his own way of so doing.

A physical exhibit, not to be part of the case,
is generally not refused except when bulky or
dangerous.

Rule 93 Specimens. When the invention is a com-
position of matter, the applicant may be required to
furnish specimens of the composition, and of its ingre-
dients or intermediates, sufficient in quantity for the
purpose of experiment.

[Old Rule 62]

### 608.03 (a) Handling of Models, Ex- hibits and Specimens

All models received in this Office, whether form-
ing part of an application, or filed upon request from
the Examiner, must be received from the Model
and Receiving 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 in-
ventors or attorneys. Models properly received and
entered upon the books of the Model Clerk will be
delivered by a representative of the Property Clerk's
Office (Notice of Nov. 26, 1921).

When a model has been received in compli-
ance with the official requirement, the date of its
filing shall be entered on the file wrapper of the
application.

Rule 94 Return of models, exhibits or specimens.
Models, exhibits, or specimens in applications which
have become abandoned, and also in other application
on conclusion of the prosecution, may be returned to
the applicant upon demand and at his expense, unless
it be deemed necessary that they be preserved 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 disposed
of at the discretion of the Commissioner.

[Old Rules 60, 61]

When a model is to be returned a letter should
be written to applicant by the Examining Divi-
sion stating that it is being returned under sep-
arate cover and the model room should be prop-
erly notified to return the model.

<!-- PageBreak -->

<!-- PageHeader="608.04" -->
<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

Note .- Disposition of exhibits which are part
of the record, 715.07 (d).

Models, exhibits and specimens may be pre-
sented to the Office for purposes of interview
and taken away by the attorney at the end of
the interview. See 713.08.

NOTE .- Plant specimens, 1608.02, Rule 166.

Rule 95 Copies of exhibits. Copies of models or other
physical exhibits will not ordinarily be furnished by the
Office, and any model or exhibit in an application or
patent shall not be taken from the Office except in the
custody of an employee of the Office specially authorized
by the Commissioner.

[Old Rule 60]

### 608.04 New Matter

Rule 118 Amendment of disclosure. In original ap-
plications, all amendments of the drawings or specifi-
cations, 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, involving
a departure from or an addition to the original discio-
sure, cannot be added to the application even though
supported by a supplemental oath, and can be shown or
claimed only in a separate application.

[Old Rule 70]

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. Note 608.01 (1).

While amendments to the specification and
claims involving new matter are ordinarily en-
tered, such matter is required to be canceled
from the descriptive portion of the specification,
and the claims affected are rejected.

A "new matter" amendment of the drawing is
not entered.

The Examiner's holding of new matter may
be petitionable or appealable, 608.04 (c).

NOTE .- New matter in reissue application, 1401.07.
New matter in substitute specification, 714.20.

# 608.04 (a) Matter Not in Original Specification Claims or Drawings

Matter not in the original specification, claims
or drawings is usually new matter. Character-
istics inherent in the disclosure such as chemi-
cal or physical properties, or mode of operation,
may be amplified if such inherency was initially
present in the case as filed. New uses or addi-
tional limitations not imposed by the initial dis-
closure constitute new matter. For rejection of
claim involving new matter see 706.03 (o).

NOTE .- Completeness of disclosure, 608.01 (p);
Trade marks and trade names, 7-8-1 (v), 608.01 (v).

## 608.04 (b) New Matter by Preliminary Amendment

As an applicant has the right to amend 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 application. Such amendment
does not enjoy the status as part of the original
disclosure. Its test as to involving new matter
is the same as though filed on a subsequent date.
Ex parte Leishman, 137 Ms. 366, Pat. No. 1,581,-
937, and Ex parte Adams, Pat. No. 1,789,921.

## 608.04 (c) Review of Examiner's Holding of New Matter

Where the new matter is confined to amend-
ments to the specification, review of the Exam-
iner's requirement for cancellation is by way of
petition. But where the alleged new matter is
introduced into or affects the claims, thus neces-
sitating their rejection on this ground, the ques-
tion becomes an appealable one, and should not
be considered on petition even though that new
matter has been introduced into the specifica-
tion also. Rules 181 and 191 afford the explan-
ation of this seemingly inconsistent practice as
affecting new matter in the specification.