700

OCR transcription for search; preserved printed pages are authoritative

# Chapter 700 Examination of Applications

701

Statutory Authority for Examination

707.01

Primary Examiner Indicates Action for New

702

Requisites of the Application

Assistant

702.01

Obviously Informal Cases

707.02

Actions which Require the Personal Attention

703

"General Information Concerning Patents" Sent

of the Primary Examiner

Instead of "Rules of Practice"

707.02

(a)

Cases Up for Third Action and Five-Year

704

Search

Cases

705

Patentability Reports

707.03

Sample of Conventional "First Action" Letter

705.01

Instructions re Patentability Reports.

707.04

Initial Sentence

705.01

(a)

Nature of P. R., Its Use and Disposal

707.05

Citation of References

705.01

(b)

Sequence of Examination

707.05

(a)

Grouped at Beginning of Letter

705.01

(c)

Counting and Recording P. R.'s

707.05

(b)

"References Applied"

705.01

(d)

Duplicate Prints of Drawings

707.05

(c)

References Pertinent

705.01

(e)

Limitation as to Use

707.05

(d)

References Cited in Subsequent Actions

705.01

(f)

Interviews With Applicants

707.05

(e)

Data Used in Citing References

706

Rejection of Claims

707.05

(f)

Effective Dates of Declassified Printed

706.01

Contrasted With Objections

Matter

706.02

On

Prior Art

707.05

(g)

Incorrect Citation of References

706.02

(a)

Establishing "Well Known" Prior Art

707.06

Citation of Decisions, Orders and Notices

706.03

Not based on Prior Art

707.07

Completeness and Clarity

706.03

(a)

Nonstatutory Subject Matter

707.07

(a)

Action on Formal Matters

706.03

(b)

Barred by Atomic Energy Act

707.07

(b)

Requiring New Oath

706.03

(c)

Functional

707.07

(c)

Draftsman's Requirement

706.03

(đ).

Indefinite

707.07

(d)

Language To Be Used in Rejections

706.03

(e)

Product by Process

707.07

(e)

Note All Outstanding Requirements

706.03

(f)

Incomplete.

707.07

(f)

Answer All Material Traversed

706.03

(g)

Prolix

707.07

(g)

Piecemeal Prosecution

706.03

(h)

Nonstatutory Claim

707.07

(h)

Notify of Inaccuracies in Amendment

706.03

(i)

Aggregation

707.07

(1)

Each Claim To Be Mentioned in Each

706.03

(j)

Old Combination

Letter

706.03

(k)

Duplicate Claims; Double Patenting

707.07

(j)

State When Claims Are Allowable Except

706.03

(1)

Multiplicity

as to Form

706.03

(m)

Non-elected Inventions :

707.07

(k)

Numbering Paragraphs

706.03

(n)

Correspondence of Claims and Disclosure

707.08

Review by Assistant Examiner

706.03

(0)

New Matter

707.09

Signing by Primary or Acting Primary

706.03

(p)

No Utility

707.10

Entry

706.03

(g)

Obvious Method

707.11

Date

706.03

(r)

Mere. Function of Machine

707.12

Mailing

706.03

(s)

: Statutory Bar

707.13

Returned Office Action

706.03

(t)

Earlier Assigned Case

707.14

Action Preceding Final

706.03

(u)

Disclaimer

708

Order

of Examination

706.03

(v)

After Interference or Public Use Pro-

708.01

List of Special Cases

ceeding

708.02

Petition to Make Special

706.03

(w)

Res Judicata

708.03

Examiner Tenders His Resignation

760.03

(x)

Defective Reissue Oath

709

Suspension of Action

706.04

Previously Allowed Claim

709.01

Overlapping Applications by Same Applicant

706.05

After Allowance of Application

or owned by Same Assignee

706.06

Claims Copied from Patent

709.02

Actions Following Correspondence under Rule

202

706.07

Final Rejection

710

Period for Response

706.07

(a)

When Proper

710.01

Statutory

706.07

(b)

When Proper on First Action

710.01

(a)

How Computed

706.07

(c)

Premature

710.02

Shortened Statutory Period and Time Limit

706.07

(d)

Withdrawal of Premature

Actions

706.07

(e)

Withdrawal, General

710.02

(a)

Approval of Time Set in Case of Short-

707

Examiner's Letter of Action

ened Statutory Period

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# MANUAL OF PATENT EXAMINING PROCEDURE

710.01 (b)
Situations in Which Used: Shortened-
Statutory Period

710.02 (e)
Situations in Which Used : Nonstatutory
Time Limit

710.02 (d)
Differences Between Shortened Statutory
and Time Limit Periods

710.02 (e)
Extension of Time

710.03
Three Year Period, Government-owned Cases

710.04
Two Periods Running

710.04 (a)
Copying Patent Claims

710.05
Period Ending on Sunday or Holiday

710.06
Miscellaneous Factors Determining Date

711
Abandonment

711.01
Express or Formal Abandonment

711.02
Failure to Take Required Action During Time
Period

711.02 (a)
Insufficiency of Response

711.02 (b)
Special Cases Involving Abandonment

711.03
Reconsideration of Holding of Abandonment :
Revival

711.03 (a)
Holding Based on Insufficiency of Re-
sponse

711.03 (b)
Holding Based on Failure to Respond
Within Period

711.03 (c)
Petitions Relating to Holding of Abandon-
ment

711.03 (d)
Examiner's Statement on Petition

711.04
Disposal of Abandoned Files

711.04 (a)
Pulling, Counting, Listing

711.04 (b)
Ordering Abandoned Files

711.05
Letter of Abandonment Received After Appll-
cation is Allowed

711.06
Publication of Abstracts

711.06 (a)
Requirements of the Request

711.06 (b)
Handling of Papers by Examiner

711.06 (c)
Handling of Papers by Supervisory Ex-
aminers

711.06 (d)

Request Does Not Serve as a Response
to Office Action

711.06 (e)
If the Request Indicates That the Appli-
cation Will Be Abandoned Only If No
Interfering Application Is Found

711.06 (f)
Use as Reference

712
Forfeiture

713
Interviews

713.01
General Policy, How Conducted

713.02
Interviews Prior to First Official Action

713.03
Interviews for "Sounding Out" Examiner Not
Permitted

713.04
Substance of Interview Must Be Made of
Record

713.05

Interviews Prohibited or Granted, Special
Cases

713.06
No Inter Partes Questions Discussed Ex Parte

713.07
Exposure of Other Cases

713.08
Demonstration, Exhibits, Models

713.09
Finally Rejected Application

713.10
Interview Preceding Filing Amendment Under
Rule 312

714
Amendments, Applicant's Actions

714.01 Signatures to Amendments

714.01 (a)
Unsigned or Improperly Signed Amend-
ment
Disposal of

714.01 (b)

714.01 (c)
Signed by Attorney Not of Record

714.01 (d)
Amendment Signed by Applicant But Not
by Attorney of Record

714.01 (e)
Power of Attorney to a Firm

714.02

Must Be Fully Responsive

714.03

Amendments Not Fully Responsive, Action to
Be Taken

714.04

Claims Presented in Amendment with No At-
tempt to Point Out Patentable Novelty

714.05

Examiner Should Immediately Inspect

714.06

Amendments Sent to Wrong Division

714.07

Amendments Not in Permanent Ink

714.08

Telegraphic Amendment

714.09
Amendments Before First Office Action

714.10
Claims Added in Excess of Filing Fee

714.11
Amendment Filed During Interference Pro-
ceedings

714.12
Amendments After Final Rejection or Action

714.13

Amendments After Final Rejection or Action,
Letter Written

714.14
Amendments After Allowance of All Claims

714.15

Amendment Mailed Before, but Received in
Examining Division After Allowance

714.16
Amendment After Notice of Allowance, Rule
312

714.16 (a)
Copied Patent Claims

714.16 (b)
Filed with a Motion Under Rule 234

714.16 (c)
Excess Number of Claims

714.16 (d)
Handling

714.16 (e)
Entry in Part

714.17
Amendment Filed After the Period for Re-
sponse Has Expired

714.18

Entry of Amendments

714.19

List of Amendments, Entry Denied

714.20
List of Amendments Entered in Part

714.21
Amendments Inadvertently Entered, No Legal
Effect

714.22
Entry of Amendments, Directions for

714.23
Entry of Amendments, Directions for, Defec-
tive

714.24
Amendment of Amendment

714.25
Discourtesy of Applicant or Attorney

715
Swearing Back of Reference-Affidavit Under
Rule 131

715.01
Reference Patent Entitled to Foreign Filing
Date

715.02
General Rule as to Generic Claims

715.03
Exceptions and Practice Relative to Chemical
Cases

715.04
Who May Make Affidavit

715.05
Patent Claiming Same Invention

715.06
Affidavit Under Rule 131 Must Be Removed
Before Interference

715.07
Facts and Documentary Evidence

715.07 (a)
Diligence

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702.01

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715.07 (b)
Interference Testimony Sometimes Used

715.07 (c)
Acts Relied Upon Must Have Been Car-
ried Out in This Country

715.07 (d)
Disposition of Exhibits

715.08
Passed Upon By Primary Examiner

715.09
Seasonable Presentation

716
Affidavits Traversing Rejections

717
File Wrapper

717.01
Papers in File Wrapper

717.01 (a)
Arrangement

717.01 (b)
Prints

717.02
Date Entered on

717.02 (a)
Statutory Period Ends On Sunday or
Holiday

717.02 (b)
Name or Residence of Inventor or Title
Changed

717.03
Classification During Examination

717.04
Index of Claims

717.05
Field of Search

717.06
Foreign Filing Dates

717.07
Related Applications

## 701 Statutory Authority for Examina- tion

The authority for the examination of applica-
tions for patents is set forth in Sec. 4893 R. S .;
35 U. S. C. 36.

On the filing of any such application and the pay-
ment of the fees required by law, the Commissioner
of Patents shall cause an examination to be made of
the alleged new invention or discovery ; and, if on such
examination it shall appear that the claimant is justly
entitled to a patent under the law, and that the same
is sufficiently useful and important, the commissioner
shall issue a patent therefor. (R. S. Sec. 4893.)

The examination, made under the provisions
of Sec. 4893 is to ascertain two things:

1\. Is the applicant the first inventor of a pat-
entable invention ?

2\. Has he taken the necessary steps to obtain
a patent ?

The main conditions precedent to the grant of
a patent to an applicant inventor are set forth
in Sec. 4886, R. S .; 35 U. S. C. 31 :

Any person who has invented or discovered any new
and useful art, machine, manufacture, or composition
of matter, or any new and useful improvements thereof,
or who has invented or discovered and asexually repro-
duced any distinct and new variety of plant, other than
a tuber-propagated plant, not known or used by others
in this country, before his invention or discovery there-
of, and not patented or described in any printed publi-
cation in this or any foreign country, before his inven-
tion or discovery thereof, or more than one year prior
to his application, and not in publie use or on sale in
this country for more than one year prior to his appli-
cation, unless the same is proved to have been aban-
doned, may, upon payment of the fees required by law,

and other due proceeding had, obtain a patent therefor.
(R. S. sec. 4886; Mar. 3, 1897, ch. 391, sec. 1, 29 Stat. 692;
May 23, 1930, ch. 312, sec. 1, 46 Stat. 376; Aug. 5, 1939,
ch. 450, sec. 1, 53 Stat. 1212.)

The other Statutes, Rules of Practice and de-
cisions of the Courts determine what "other due
proceeding" must be had to obtain a patent.

## 702 Requisites of the Application

The Examiner should be careful to see that
the application meets all the requisites set forth
in Chapter 600 both as to formal matters and as
to the completeness and clarity of the disclosure.
If all of the requisites are not met, applicant
may be called upon for necessary amendments.
Such amendments, however, must not include
new matter.

## 702.01 Obviously Informal Cases

Whenever in the assignment of applications the
Primary Examiner finds that a newly filed applica-
tion obviously fails to disclose an invention with the
clarity required by Sec. 4888 R. S., 35 U. S. C. 33, or
whenever immediately after assignment his atten-
titon is directed to such an application, he should
call attention to Rule 71 and require in the first
Office action, which should be taken immediately,
that the application be revised to conform with the
practice prevailing before this Office. A shortened
statutory period may be set for compliance with
this requirement, the duration of such shortened
period, if set, being determined by the Primary
Examiner in accordance with the complexity of the
case, the revision of the specification necessary, and
time necessary for communication with the appli-
cant. These actions, in all cases, regardless of
whether a shortened statutory period is set, should
be submitted to the Supervisory Examiners for ap-
proval. (Notice of Jan. 23, 1947.)

A suitable form for this action is as follows:

A preliminary examination of this applica-
tion discloses that it fails to comply with Sec.
4888 R. S. in that the invention is not pre-
sented with sufficient clarity to make possible
an intelligent examination on the merits in a
reasonable time.

In accordance with Rule 71, it is required
that this application be revised to conform
with the practice before this Office within the
shortened statutory period hereinafter set to
avoid any question of abandonment.

THE SHORTENED STATUTORY PE-
RIOD FOR RESPONSE TO THIS AC-
TION IS SET TO EXPIRE

For the procedure to be followed when the
drawing is informal, see 608.02 (a) and 608.02
(b).

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703

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

703
"General Information Concerning
Patents" Sent Instead of "Rules of
Practice"

Whenever in the examination of an application
the Examiner deems it advisable to send information
about patent matters to the applicant for his guid-
ance, the small pamphlet entitled "General Infor-
mation Concerning Patents" should be sent if suit-
able. (Notice of January 15, 1924, Revised.)

## 704 Search

After reading the specification and claims,
the Examiner searches the prior art. The in-
vention should be thoroughly understood before
a search is undertaken. However, informal
cases, or those which can only be imperfectly
understood when they come up for action in
their regular turn are also given a search, in
order to avoid piecemeal prosecution. The
search on an informal application should be as
complete as can be made in view of the under-
standing of the invention to be had therefrom.
See 904 through 904.02 and 717.05.

## 705 Patentability Reports

Where an application, properly assigned to one
examining division, is found to contain one or more
claims per se classifiable in one or more other divi-
sions, which claims are not divisible inter se or from
the claims which govern classification of the applica-
tion in the first division, the application may be re-
ferred to the other division or divisions concerned
for a report as to the patentability of certain desig-
nated claims. This report will be known as a Patent-
ability Report (P. R.) and will be signed by the
Primary Examiner of the reporting division. Credit
for an action will be given for each such report.
(Extract from Notice of November 10, 1948.)

## 705.01 Instructions re Patentability Reports

705.01 to 705.01 (f) are quotations from the
Notice of November 12, 1948.

In the prosecution of an application under condi-
tions authorized in the Notice of November 10, 1948,
relating to Patentability Reports, the following pro-
cedure should be observed.

When an application comes up for any action and
the Primary Examiners involved agree that a Pat-
entability Report is necessary, the application will
be forwarded to the proper division with a memo-
randum attached, for instance, For Patentability
Report from Division \_\_\_\_\__. as to Claims .\_\_\_\_\_.

## 705.01 (a) Nature of P. R., Its Use and Disposal

The Primary Examiner of the division from which
the Patentability Report is requested, if he approves

the request, will direct the preparation of the Pat-
entability Report. This Patentability Report will
be made on Memo Form #64 and will include the
citation of all pertinent references and a complete
action on all claims involved. The field of search
covered should be endorsed on the file wrapper by
the examiner making the report. When an exam-
iner to whom a case has been forwarded for a
Patentability Report is of the opinion that final
action is in order as to the referred claims, he should
so state. The Patentability Report when signed by
the Primary Examiner of the reporting division will
be returned to the division to which the application
is regularly assigned.

The examiner preparing the Patentability Report
will be entitled to receive an explanation of the dis-
closure from the examiner to whom the case is as-
signed to avoid duplication of work. If the Primary
Examiner of a reporting division is of the opinion
that a Patentability Report is not in order, he should
so advise the Primary Examiner of the forwarding
division.

Conflict of opinion as to classification or joinder
may be referred to an Examiner of Classification for
decision.

If the Primary Examiner of the Division having
jurisdiction of the case agrees with the patentabil-
ity Report, he should incorporate the substance
thereof in his action, which action will be complete
as to all claims. The Patentability Report in such
a case will not be given a paper number but will be
allowed to remain in the file until the case is finally
disposed of by allowance or abandonment, at which
time it should be removed.

If the Primary Examiner does not agree with the
Patentability Report or any portion thereof, he may
consult with the Primary Examiner responsible for
the report. If agreement as to the resulting action
cannot be reached, the Primary Examiner having
jurisdiction of the case need not rely on the Patent-
ability Report but may make his own action on the
referred claims, in which case the Patentability Re-
port should be removed from the file.

## 705.01 (b) Sequence of Examination

In the event that the Primary Examiners con-
cerned in a P. R. case cannot agree as to the order
of examination by their divisions, the Primary Ex-
aminer having jurisdiction of the case will direct
that a complete search be made of the art relevant
to his claims prior to referring the case to another
division for report. The division to which the case
is referred will be advised of the results of this
search.

If the Primary Examiners are of the opinion that
a different sequence of search is expedient, the order
of search should be correspondingly modified.

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## 705.01 (c) Counting and Recording P. R.'s

The forwarding of the application for a Patent-
ability Report is not to be treated as a transfer by
the forwarding division. When the P. R. is com-
pleted and the application is ready for return to the
forwarding division, the reporting division will
simultaneously count the P. R. as a receipt and ac-
tion by transfer and so enter it on the current
Weekly Work Report.

The number of actions by Patentability Report

2
will be recorded each week by a notation in the lower
left-hand corner of the Weekly Work Report, for
instance, "P. R. _____._.. "

The file of an application in which a Patentability
Report has been made will be distinguished by
noting in pencil in the upper left-hand corner of the
file directly below "Div. ______ " the following: "P. R.
Div.
»

The date status of the application in the reporting
division will be determined on the basis of the dates
in the division of original jurisdiction.

### 705.01 (d) Duplicate Prints of Draw- ings

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 de-
stroyed.

### 705.01 (e) Limitation as to Use

The above outlined Patentability Report practice
is not obligatory and should be resorted to only
where it will save total examiner time or result in
improved quality of action due to specialized knowl-
edge. A saving of total examiner time that is re-
quired to give a complete examination of an appli-
cation is of primary importance. Patentability Re-
port practice is based on the proposition that when
plural, indivisible inventions are claimed, in some
instances either less time is required for examina-
tion, or the results are of better quality, when spe-
cialists on each character of claimed invention treat
the claims directed to their specialty. However, in
many instances a single examiner can give a com-
plete examination of as good quality on all claims,
and in less total examiner time than would be
consumed by the use of the Patentability Report
practice.

Where claims are directed to the same character
of invention but differ in scope only, prosecution by
Patentability Report is never proper.
*
Exemplary situations where Patentability Reports
are ordinarly not proper are as follows:

(1) Where the claims are related as a manufac-
turing process and a product defined by the process
of manufacture. The examiner having jurisdic-
tion of the process can usually give a complete, ade-
quate examination in less total examiner time than
would be consumed by the use of a Patentability
Report.

(2) Where the claims are related as a product
and a process which involves merely the fact that
a product having certain characteristics is made.
The examiner having jurisdiction of the product
can usually make a complete and adequate exam-
ination.

(3) Where the claims are related as a combina-
tion distinguished solely by the characteristics of
a subcombination and such subcombination per se.
The examiner having jurisdiction of the subcom-
bination can usually make a complete and adequate
examination.

### 705.01 (f) Interviews With Applicants

In case of an interview on an application in which
a Patentability Report has been adopted, the Pri-
mary Examiner of the division having jurisdiction of
the case may call on the Primary Examiner of the
reporting division for assistance at the interview
when it concerns the claims treated by the reporting
divisions. (Notice of November 12, 1948.) (See 713
to 713.10 regarding interviews in general.)

### 706 Rejection of Claims

Rule 106 Rejection of claims. If the invention is
not considered patentable, or not considered patentable
as claimed, the claims, or those considered unpatentable
will be rejected.

In rejecting claims for want of novelty or for want
of invention, the examiner must cite the best refer-
ences at his command. When a reference is complex or
shows or describes inventions other than that claimed by
the applicant, the particular part relied on must be
designated as nearly as practicable. The pertinence
of each reference, if not obvious, must be clearly ex-
plained and each rejected claim specified.

[Old Rule 66, par. 1]

Rule 112 Re-examination and reconsideration.
After response by applicant (rule 111) the application
will be re-examined and reconsidered, and the applicant
will be notified if claims are rejected, or objections or
requirements made, in the same manner as after the
first examination. Applicant may respond to such Of-
fice action, in the same manner provided in rule 111, with
or without amendment, but any amendments after the
second Office action must ordinarily be restricted to the
rejection or to the objections or requirements made,
and the application will be again considered, and so

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on repeatedly, unless the examiner has indicated that
the action is final.

### 706.01 Contrasted With Objection

The refusal to grant claims because the subject
matter as claimed is considered unpatentable is
called a "rejection." The term "rejected" must
be applied to such claims in the Examiner's let-
ter. If the form of the claim (as distinguished
from its substance) is improper, an "objection"
is made. The practical difference between a re-
jection and an objection is that a rejection, in-
volving the merits of the claim, is subject to
review by the Board of Appeals, while an objec-
tion, if persisted in, may be reviewed only by
way of petition to the Commissioner.

An example of a matter of form as to which
objection is made is improper dependency of a
claim. See 608.01 (n).

### 706.02 Rejection on Prior Art

By far the most frequent ground of rejection
is on the ground of unpatentability in view of
the prior art, that is, that the claimed matter is
not "new" and patentable or does not involve
invention. The reference relied upon is iden-
tified and the claim is accordingly rejected
either because it is fully met therein, or if there
is a difference between the requirements of the
claim and the showing of this prior art, as
unpatentable thereover.

In the event that there is no invention in-
volved in combining several elements of two or
more prior structures, the rejection is made on
the combination of the several references. See
707.07 (d) for language to be used in rejecting
claims.

A patent can be used as a reference against an
application even though the patent date is after
the filing date of an application provided that
the filing date of the patent is prior to the filing
date of the application. The fact that the sec-
ond applicant had no way of knowing about the
prior application that is now a patent does not
matter. It is proper to use such a patent as a
basic or an auxiliary reference and such patents
may be used as both basic and auxiliary refer-
ences. The doctrine of the Milburn Co. v.
Davis-Bournonville Co. decision, 1926 C. D.
303; 344 O. G. 817, has been thus construed in
In re Youker (C. C. P. A.), 1935 C. D. 658; 461
O. G. 10, and in Minn. Mining & Mfg. Co. v. Coe
(C. A. D. C.) 1938 C. D. 100; 497 O. G. 766.

For the proper way to cite a patent granted
after the filing of an application, see 707.05 (e)
and the sample letter in 707.03.

## 706.02 (a) Establishing "Well Known" Prior Art

Things believed to be known to those skilled
in the art are often asserted by the Examiner to
be "well known" or "matters of common knowl-
edge". If justified, the examiner should not be
obliged to spend time to produce documentary
proof. If the knowledge is of such notorious
character that judicial notice can be taken, it is
sufficient so to state. In re Malcolm, 1942 C. D.
589; 543 O. G. 440. If the applicant traverses
such an assertion the Examiner should, if pos-
sible, cite a reference in support of his position.

Failure of the applicant to seasonably chal-
lenge such assertions establishes them as ad-
mitted prior art. See In re Gunther, 1942 C. D.
332; 538 O. G. 744; In re Chevenard, 1944 C. D.
141; 560 O. G. 196. This applies also to asser-
tions of the Board. In re Selmi, 1946 C. D.
525; 591 O. G. 160; In re Fischer, 1942 C. D.
295; 538 O. G. 503.

## 706.03 Rejections Not Based on Prior Art

Although they constitute a relatively small
percentage of all rejections made, there are a
number of rejections which may be appropriate
despite the fact that no pertinent prior art is
discovered in the search. The Examiner's func-
tion is not to scrutinize each claim with the idea
of rejecting it on some far-fetched technical
ground. Nevertheless, claims which, for ex-
ample, are drawn to nonstatutory subject mat-
ter, or are functional, or present new matter,
or are barred by some prior act of the inventor
should be recognized as such and rejected.
These rejections are explained in the following
sections.

## 706.03 (a) Nonstatutory Subject Mat- ter

Patents are not granted for all new and useful
inventions and discoveries. The subject matter
of the invention or discovery must come within
the boundaries set forth by R. S. 4886; 35 U. S. C.
31 (701), which permits patents to be granted
only for "any new and useful art, machine,
manufacture, or composition of matter, or any
new useful improvements thereof, or.
any distinct and new variety of plant other than
a tuber-propagated plant."

This subject matter is further limited by the
Atomic Energy Act explained in 706.03 (b).
Judicial decisions, have determined the limits of
the classes set forth in R. S. 4886. Examples of
subject matter not patentable under the Statute
follow :

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706.03 (d)

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### PRINTED MATTER

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

### NATURALLY OCCURRING ARTICLE

Similarly, a thing occurring in nature, which
is substantially unaltered, is not a "manufac-
ture." A shrimp with the head and digestive
tract removed is an example. Ex parte Grayson,
51 USPQ 413.

#### METHOD OF DOING BUSINESS

Though seemingly within the category of an
"art" or method, the law is settled that a method
of doing business can be rejected as not being
within the statutory classes. Hotel Security
Checking Co. v. Lorraine Co., 160 Fed. 467.

#### SCIENTIFIC PRINCIPLE

A scientific principle, divorced from any
tangible structure, can be rejected as not within
the statutory classes. O'Reilly v. Morse, 15
Howard 62.

## 706.03 (b) Barred by Atomic Energy Act

A limitation on what can be patented is im-
posed by the Atomic Energy Act, Public Law
585, 590 O. G. 195. Sec. 11 (a) of the Act con-
tains the following provisions:

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

Section 5 (a) (1) defines "Fissionable ma-
terial" as follows:

As used in this act, the term "fissionable material"
means plutonium, uranium, enriched in the isotope 235,
any other material which the Commission determines
to be capable of releasing substantial quantities of
energy through nuclear chain reaction of the material,
or any material artificially enriched by any of the fore-
going ; but does not include source materials, as de-
fined in Section 5 (b) (1).

Section 11 (d) provides in part as follows :

The Commissioner of Patents shall notify the Com-
mission of all applications for patents heretofore or
hereafter filed which in his opinion disclose such in-
ventions or discoveries and shall provide the Commis-
sion access to all such applications.

Extract from Rule 14 (c) Applications for patents
which disclose or which appear to disclose, or which

purport to disclose, inventions or discoveries relating to
atomic energy are reported to the Atomic Energy Com-
mission and the Commission will be given access to
such applications, but such reporting does not consti-
tute a determination that the subject matter of each
application so reported is in fact useful or an invention
or discovery or that such application in fact discloses
subject matter in categories specified by sec. 11 (d) of
the Atomic Energy Act of 1946, 60 Stat. 768, 42 U. S. C.
1811.

All applications relating to atomic energy
should be submitted to Division 70 for considera-
tion (Memorandum of February 1, 1949, 107).

## 706.03 (c) Functional

Claims which are rejected as functional are so
broad in scope that it is considered to be against
public policy to allow them, even though they
do not read upon any prior art. A so-called
"single means" claim, such as :

In a device of the class described, means for trans-
ferring clothes-carrying rods from one position and
depositing them on a suitable support.

covers every possible means for accomplishing
the desired result. Ex parte Bullock, 1907 C. D.
93; 127 O. G. 1580.

As is suggested in Heidbrink v. Mckesson,
1924 C. D. 407; 320 O. G. 227, a claim which
defines a method only by its result may be prop-
erly rejected as functional. Holland v. Perkins
Glue, 1928 C. D. 266; 372 O. G. 517, applies the
doctrine of functionality to product claims and
holds them to be invalid if the product is de-
fined only by its desirable properties. This re-
jection is not based on the prior art and is to be
distinguished from a rejection as differing from
the prior art only by a functional statement.
General Electric Co. v. Wabash, 1938 C. D. 813;
491 O. G. 463. Obviously this last-mentioned
rejection requires that the Examiner find in the
prior art everything called for by the claim with
the exception of a functional limitation. The re-
jection as functional should not be confused with
a rejection of a claim as being the mere function
of the machine. See 706.03 (r).

## 706.03 (d) Indefinite

The rejection of a claim as indefinite would
appear to present no difficulties. On occasion,
however, a great deal of effort is required to
explain just what is wrong with the claim, when
writing the Examiner's letter. Although coop-
eration with the attorney is to be commended,
undue time should not be spent trying to figure
out what the attorney was trying to say in the
claim. Sometimes, a rejection as indefinite plus
the statement that a certain line is meaningless
is sufficient. Inclusion of a negative limitation,
such as a "metal, excepting nickel", may make

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## 706.03 (e)

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a claim indefinite. Expressions such as : "anhy-
drous", "colorless" and "non-poisonous" have
been permitted because they are definite and by
far the least cumbersome way to express the
limitation.

Alternative expressions such as "brake or
locking device" may make a claim indefinite if
the limitation covers two different elements.
If two equivalent parts are referred to such as
"rods or wires", the alternative expression may
be considered proper.

Still another way in which a claim can be in-
definite is where a non sequitur occurs. For ex-
ample, a claim is inferential and therefore in-
definite when it recites "said lever" and there
was no earlier reference or no antecedent in the
claim to a lever. An indirect limitation also
affords a ground of rejection as indefinite. If
a "lever" is set forth and, later in the claim,
"said aluminum lever" is recited, the claim is
rejected as indefinite.

## 706.03 (e) Product by Process

An article which cannot be described in any
other manner, may be claimed by a process of
making it. In re Moeller, 1941 C. D. 316, 527
O. G. 559. Applicant must, however, make a
showing that the product cannot be described
except by reference to the process of making it,
In re Dreyfus and Whitehead, 1935 C. D. 386,
457 O. G. 479. Accordingly both product
claims described by characteristics and product
by process claims concurrently presented are
inconsistent.

## 706.03 (f) Incomplete

A claim can be rejected as incomplete if it
omits essential elements, steps or necessary
structural cooperative relationship of elements,
such omission amounting to a gap between the
elements, steps or necessary structural connec-
tions.

## 706.03 (g) Prolix

Claims are rejected as prolix when they con-
tain long recitations of unimportant details
which hide or obscure the invention. Ex parte
Iagan, 1911 C. D. 10; 162 O. G. 538, expresses
the thought that very long detailed claims set-
ting forth so many elements that invention can-
not possibly reside in the combination should
be rejected as prolix.

## 706.03 (h) Nonstatutory Claim

Many applications when filed contain an om-
nibus claim such as "A device substantially as
shown and described". Such a claim is often
included in an application as filed because the
application is to serve as a basis for a duplicate

foreign application in a country where this type
of claim is permitted. This type of claim is
not permitted in a United States patent because
R. S. 4888, 35 U. S. C. 33, states that Applicant
"shall particularly point out and distinctly claim
the part, improvement, or combination which
he claims as his invention or discovery". Such
a claim can be rejected as follows:

Claim
is rejected for failing to "par-
ticularly point out and distinctly claim" the
invention as required in R. S. Sec. 4888.

For cancellation of such a claim by Examin-
er's Amendment, see 1302.04 (b).

## 706.03 (i) Aggregation

Rejections on the ground of aggregation
should be based upon a lack of cooperation be-
tween the elements of the claim. No prior art
need be relied upon in this rejection. However,
citation of art showing the various elements
may be advisable to support this rejection.
Many decisions and some legal writers extend
the term to include old and exhausted combina-
tion (706.03 (j)). Rejections on the latter
grounds, however, involve the state of the art,
and cooperation is present. Confusion as to
what is meant can be avoided by treating all
claims which include more than one element as
combinations (patentable or unpatentable) if
there is actual cooperation between the elements,
and as aggregations if there is no cooperation.

Example of aggregation: A washing machine
combined with a dial telephone.

Example of old combination: An improved
carburetor claimed in combination with a gaso-
line engine.

A claim is not necessarily aggregative because
the various elements do not function simultane-
ously. A typewriter, for example, is a good
combination.

## 706.03 (j) Old Combination

The rejection on the ground of old combina-
tion (synonymous with "exhausted combina-
tion") requires the citation of a reference, but
is treated here because of its relation to aggre-
gation. The reference is cited, not to anticipate
the claim, but to anticipate the broad combina-
tion set forth in the claim. Moreover, the co-
operation between the elements in the reference
must be the same as it is in the claim.

Example: An improved (specifically recited)
carburetor claimed in combination with a gaso-
line engine. A reference is cited which shows
a carburetor combined with a gasoline engine.
This shows the broad combination to be old.
Both in the reference and in the claimed combi-
nation, the cooperation between the carburetor

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and engine is the same. The claimed combina-
tion is an improvement over the prior art only
because of the improved carburetor. The carbu-
retor has separate status, since entire subclasses
are devoted to carburetors, claimed as such. A
reference is preferably cited to show the sepa-
rate status and development. (See 904.01 (d).)

## 706.03 (k) Duplicate Claims; Double Patenting

Inasmuch as a patent is supposed to be limited
to only one invention or, at most, several closely
related indivisible inventions, limiting an appli-
cation to a single claim, or a single claim to each
of the related inventions might appear to be.
logical as well as convenient. However, court
decisions have confirmed applicant's right to re-
state (i.e., by plural claiming) his invention in
a reasonable number of ways. Indeed, a mere
difference in scope between claims has been held
to be enough.

Nevertheless, when two claims are duplicates,
or else are so close in content that they both
cover the same thing, despite a slight difference
in wording, it is proper after allowing one claim
to reject the other as being a substantial dupli-
cate of the allowed claim. Also, it is possible
to reject one claim on an allowed claim if they
differ only by subject matter old in the art. The
latter ground of rejection is set forth in the
following paragraph quoted from Ex parte
Whitelaw, 1915 C. D. 18; 219 O. G. 1237:

"Claim 54 is not patentable over claim 51 and
claims 53, 55 and 56 are not patentable over
claim 50 in view of Comstock, No. 590,657,
which shows that it is old to employ an engine-
casing in tools of this character. The claims
held patentable are considered as fully covering
applicant's invention, and applicant cannot be
permitted to multiply his claims by presenting
alleged combinations which distinguish from the
real invention only by including elements which
are old in the art and perform no new function."

This rejection (the ex parte Whitelaw doc-
trine) is usually not applied if only one applica-
tion is involved and there are only a few claims
in that application.

Where a claim of an application is for the
same, or substantially the same, subject matter
as that claimed in a patent to the same inventor
(Chapter 800) or of common ownership (305),
the claim of the application may be rejected on
the ground of double patenting. The same re-
jection may be used where the claim of the appli-
cation is unpatentable over a claim of the patent
in view of prior art.

The rejection on the ground of double patent-
ing applies also where a claim in the application

under examination fails to distinguish patent-
ability over an allowed claim in another appli-
cation by the same applicant (822 through
822.03) or of common ownership. It is im-
proper to grant more than one patent for a
single invention to the same applicant or as-
signee even though the several applications
issue on the same day.

The fact that the subject matter claimed in the
application under examination was disclosed in
the other application or patent does not, of it-
self, justify a rejection on the ground of double
patenting. Such subject matter must also have
been claimed in the other application or patent
(305, 801). See Ex parte Mullen and Mullen,
1890 C. D. 9; 50 O. G. 837.

See also 304, 305, and Chapter 800.

### 706.03 (1) Multiplicity

An unreasonable number of claims; that is
unreasonable in view of the relative simplicity
of applicant's invention and the state of the art,
affords a basis for a rejection on the ground of
multiplicity. A rejection on this ground should
include all the claims in the case inasmuch as it
relates to confusion of the issue. The exam-
iner may in his letter, indicate the number of
claims which, in his opinion, would be adequate.
See Rule 75 (b).

### 706.03 (m) Nonelected Inventions See 821 to 821.03 (a).

#### 706.03 (n) Correspondence of Claim and Disclosure

Rule 117 Amendment and revision required. The
specification, claims and drawing must be amended and
revised when required, to correct inaccuracies of de-
scription and definition or unnecessary prolixity, and
to secure correspondence between the claims, the speci-
fication and the drawing.

[Old Rule 71]

Another category of rejections not based on
the prior art is based upon the relation of the
rejected claim to the disclosure. In chemical
cases, a claim may be so broad as to not be sup-
ported by disclosure, in which case it is rejected
as unwarranted by the disclosure. If aver-
ments in a claim do not correspond to the aver-
ments or disclosure in the specification, a rejec-
tion on the ground of inaccuracy may be in
order. It must be kept in mind that an original
claim is part of the disclosure and might ade-
quately set forth subject matter which is com-
pletely absent from the specification. Applicant
is required in such an instance to add the subject
matter to the specification. If subject matter
capable of illustration is claimed and it is not

844380-49 --- 5

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706.03 (o)

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shown in the drawing, applicant is required to
add it to the drawing. (See 608.01 (1).)

##### 706.03 (o) New Matter

In the examination of an application follow-
ing amendment thereof, the Examiner must be
on the alert to detect new matter.

In amended cases, subject matter not disclosed
in the original application is sometimes added
and a claim directed thereto. Such a claim is
rejected on the ground that it is drawn to new
matter. New matter includes not only the addi-
tion of wholly unsupported subject matter, but
also, adding specific percentages or compounds
after a broader original disclosure, or even the
omission of a step from a method. See 608.04
to 608.04 (c) to 7-8-4 (c).)

##### 706.03 (p) No Utility

A rejection on the ground of lack of utility
includes the more specific grounds of inopera-
tiveness, involving perpetual motion, frivolous,
fraudulent, against public policy, and insuffi-
ciently useful and important under Sec. 4893
R. S., 35 U. S. C. 36. (See 608.01 (p).)

##### 706.03 (q) Obvious Method

An applicant may invent a new and useful
article of manufacture. Once the article is
conceived, it often happens that anyone skilled
in the art would at once be aware of a method
of making it. In such a case, if applicant as-
serts both article and method claims, the article
claims are allowed but the method claims may
be rejected as being drawn to the obvious meth-
od of making the article. [ According to the de-
cision In re Barnett, 1946 C. D. 457, 590 O. G.
509 this rejection is applicable only when the
method is not only obvious but the only method
of making the article. Similarly, method
claims to the obvious method of using a new
device may be rejected.

##### 706.03 (r) Mere Function of Machine

Judicial decisions on mere function of the
machine, like those on aggregation, cannot be
fitted into a single pattern. There is logic, as
well as precedent, in limiting such rejections
to the following cases: First, method claims
only should be rejected on this ground. Com-
pare 706.03 (c). Second, the method must be
such that it cannot be carried out by hand, nor
by a machine which differs materially from ap-
plicant's. This rejection, which is rarely
availed of, appears to be based upon the theory

that, in such cases, claims to the machine alone
suffice. Of course, if applicant's machine is not
new, the method claims are more readily
handled by rejecting them as being unpatent-
able in view of the ordinary operation of the
prior machine.

##### 706.03 (s) Statutory Bar

Another category of rejections not based on
the prior art finds a basis in some prior act
of applicant, as a result of which the claim
is denied him.

Sec. 4887 R. S. (U. S. C. title 35, sec. 32).
(First Paragraph).

No person otherwise entitled thereto shall be de-
barred from receiving a patent for his invention or
discovery, nor shall any patent be declared invalid
by reason of its having been first patented or caused
to be patented by the inventor or his legal represen-
tatives or assigns in a foreign country, unless the ap-
plication for said foreign patent was filed more than
twelve months, in cases within the provisions of sec-
tion 31 of this title, and six months in cases of de-
signs, prior to the filing of the application in this
country, in which case no patent shall be granted in
this country.

The first paragraph of R. S. 4887, above
quoted, establishes four conditions which, if
all are present, establish a bar against the grant-
ing of a patent in this country. These four con-
ditions are as follows :

(1) The foreign application must be filed
more than one year before the filing in the
United States (Modified by Public Law 690,
201.16).

(2) It must be filed by the inventor, his legal
representatives or assigns.

(3) The foreign patent must be actually
granted (e. g., by sealing of the papers in Great
Britain).

(4) The same invention must be involved.

If such a foreign patent is discovered by the
Examiner, the rejection is made on the ground
of statutory bar.

Further, claims to an invention in public use
or on sale in the United States more than twelve
months before his effective filing date are simi-
larly rejected. (Sec. 4886 R. S .; 35 U. S. C. 31.)

##### 706.03 (t) Assigned Application

Where there is a conflict in the ownership of
two applications by the same inventor, see 304.

##### 706.03 (u) Disclaimer

Claims may be rejected on the ground that
applicant has disclaimed the subject matter in-

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706.07

volved. Such disclaimer may arise, for ex-
ample, from the applicant's failure

(a) to make claims suggested for interference
with another application under Rule 203
(1101.01 (m)),

(b) to copy a claim from a patent when sug-
gested by the Examiner (1101.02(f) ), or

(c) to respond or appeal, within the time
limit fixed, to the Examiner's rejection of claims
copied from a patent (see Rule 206 (b) and
(1101.02(f)).

The rejection on disclaimer applies to all
claims not patentably distinct from the dis-
claimed subject matter as well as to the claims
directly involved.

#### 706.03 (v) After Interference or Pub- lic Use Proceeding

For rejections following an interference, see
1109 to 1110.

The outcome of public use proceedings may
also be the basis of a rejection. "(See Rule 292).

#### 706.03 (w) Res Judicata

Note 822.02, rejection on ground of res
judicata of claims in one application on final
decision on claims in another application, same
inventor.

A prior adjudication against the inventor on
the same or similar claims constitutes a proper
ground of rejection as res judicata. Where a
different question of patentability is presented
the rejection of res judicata does not apply.

N
To constitute a bar, the earlier decision must
have been a final one, for instance a final rejec-
tion when the remedies against it have been ex-
hausted or the time limits for their exercise have
expired.

"When making a rejection on res judicata, action
should ordinarily be made also on the basis of prior
art." (Extract from Notice of April 20, 1938.)

#### 706.03 (x) Defective Reissue Oath

A defective reissue oath affords a ground for
rejecting all the claims in the reissue applica-
tion. See 1401.08.

### 706.04 Rejection of Previously Al- lowed Claims

A claim noted as allowable shall thereafter be
rejected only after the proposed rejection has been
submitted to the primary Examiner or, in his ab-
sence, to the Assistant Chief, for consideration of
all the facts and approval of the proposed action.

Great care should be exercised in authorizing such
a rejection. See Ex parte Grier, 1923 C. D. 27; 309
O. G. 223; Ex parte Hay, 1909 C. D. 18; 139 O. G. 197
(Order 3157).

Because it is unusual to reject a previously
allowed claim, the Examiner should point out in
his letter that the claim now being rejected was
previously allowed.

#### 706.05 Rejection After Allowance of Application

See 1308.01 for a rejection based on a refer-
ence.

For rejection of claims in an allowed case
which has failed to make the date of a senior
application in correspondence under Rule 202,
see 1101.01 (i).

#### 706.06 Rejection of Claims Copied From Patent

See 1101.02 (f).

#### 706.07 Final Rejection

Rule 113 Final rejection or action. (a) On the
second or any subsequent examination or considera-
tion, the rejection or other action may be made final,
whereupon applicant's response is limited to appeal in
the case of rejection of any claim (rule 191) or to
amendment as specified in rule 116. Petition may be
taken to the Commissioner in the case of objections
or requirements not involved in the rejection of any
claim (rule 181). Response to a final rejection or
action must include cancellation of, or appeal from
the rejection of, each claim so rejected and, if any claim
stands allowed, compliance with any requirement or
objection as to form.

(b) In making such final rejection, the examiner
shall repeat or state all grounds of rejection then con-
sidered applicable to the claims in the case, clearly
stating the reasons therefor.

Before final rejection is in order a clear issue
should be developed between Examiner and ap-
plicant. To bring the prosecution to as speedy
conclusion as possible and at the same time to
deal justly by both the applicant and the public,
the invention as disclosed and claimed should be
thoroughly searched in the first action and the
references fully applied; and in response to
this action the applicant should amend with a
view to avoiding all the grounds of rejection
and objection. Switching from one subject
matter to another in the claims presented by ap-
plicant in successive amendments, or from one
set of references to another by the Examiner in
rejecting in successive actions claims of substan-
tially the same subject matter, will alike tend to
defeat attaining the goal of reaching a clearly
defined issue for an early termination; i. e.,
either an allowance of the case or a final rejec-
tion.

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### 706.07 (a)

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While the Rules do not give to an appli-
cant the right to "amend as often as the Ex-
aminer presents new references or reasons for
rejection", present practice does not sanction
hasty and ill-considered final rejections. The
applicant who is seeking to define his invention
in claims that will give him the patent protec-
tion to which he is justly entitled should re-
ceive the cooperation of the Examiner to that
end, and not be prematurely cut off in the prose-
cution of his case. But the applicant who dal-
lies in the prosecution of his case, resorting to
technical or other obvious subterfuges in order
to keep the application pending before the
Primary Examiner, can no longer find a refuge
in the Rules to ward off a final rejection.

The Examiner should never lose sight of the
fact that in every case the applicant is entitled
to a full and fair hearing, and that a clear issue
between applicant and Examiner should be de-
veloped, if possible, before appeal is prosecuted.
However, it is to the interest of the applicants
as a class as well as to that of the public that
prosecution of a case be confined to as few ac-
tions as is consistent with a thorough consid-
eration of its merits.

E@ parte Hoogendam 1939 C. D. 3; 499
O. G. 3, states the attitude of the Office on
the matter of final rejections. The position
therein taken holds that neither the Statutes
nor the Rules of Practice confer any right on
an applicant to a more extended prosecution of
his application than is comprised in an "exami-
nation" and a "re-examination" thereof. It is
recognized, however, that the equities in a
given case may justify a larger number of Office
actions than the two specified in the Statute.

In making the final rejection, all outstanding
grounds of rejection of record should be carefully
reviewed, and any such grounds relied on in the
final rejection should be reiterated and clearly de-
veloped to such an extent that applicant may readily
judge the advisability of an appeal. (Extract from
Notice of February 18, 1949.)

The final rejection should include a summary
indicating the final disposition of each claim.

All final rejections should conclude with the
following :

The above rejection is made FINAL.
With reference to any further action that
may be taken in this case attention is di-
rected to new Rules 116 and 191-195 now in
force.

(Extract from Notice of March 3, 1949.)

("This action is FINAL" may be employed
alternatively in lieu of "The above rejection is
made FINAL.")

For amendments filed after final rejection,
see 714.12 and 714.13.

### 706.07 (a) Final Rejection, When Proper

Due to the change in practice as affecting
final rejections, older decisions on questions of
prematureness of final rejection or admission of
subsequent amendments do not necessarily re-
flect present practice. Where a claimed sub-
ject matter has been held unpatentable over a
reference or combination of references, finality
of rejection cannot be avoided by presenting
that subject matter anew in a re-worded claim,
especially if the state of prosecution of the case
is beyond the second Office action; nor can final
action be forestalled by adding to the claim limi-
tations clearly disclosed in the reference patent.

It may therefore be proper to make the rejec-
tion final even though the references are ap-
plied and combined in a manner different from
that employed in the prior Office actions.

In the consideration of claims in an amended
case where no attempt is made to point out the
patentable novelty, the Examiner should be on
guard not to allow such claims. See 714.04.
The claims, however, may be finally rejected if,
in the opinion of the Examiner, they are clearly
open to rejection on grounds of record.

### 706.07 (b) Final Rejection, When Proper on First Action

In certain instances, the claims of a new ap-
plication may be finally rejected in the first ac-
tion. This may be done when the claims of the
new application are similar to those of an earlier
application filed by the same applicant, and if
the claims of the earlier application were re-
jected on the grounds which are also applicable
against the claims of the new application. Such
procedure is quite consistent with the provisions
of Rule 113, since the action on the claims in
the new application is, in effect, a "re-examina-
tion" or a "reconsideration" of claims which had
been treated previously in the earlier applica-
tion.

For example, if the claims of a continuation
application are, in the examiner's opinion, met
by the art of record of the parent application,
the examiner may make the rejection final in the
first action on the continuation. If the rejection
is based on res judicata, however, it may not be
made final in the first action, since this would
constitute a new ground of rejection.

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707.02

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### 706.07 (c) Final Rejection, Prema- ture

The examiner should guard against prema-
ture final rejections. A premature final rejec-
tion may result from failure to permit a full de-
velopment of clear-cut issues, especially in cases
involving complex machines or processes. Or,
again, if the Examiner waits until the final re-
jection before giving an adequate explanation
of the application of the references against the
claims, such final rejection may be premature.
This would hold even if the references and rea-
sons relied on in the final rejection are the same
as those advanced in a prior Office action.

Any question as to prematureness of a final
rejection should be raised, if at all, while the
case is still pending before the Primary Exam-
iner. This is purely a question of practice,
wholly distinct from the tenability of the rejec-
tion. It may therefore not be advanced as a
ground for appeal, or made the basis of com-
plaint before the Board of Appeals.

### 706.07 (d) Final Rejection, With- drawal of, Premature

If, on request by applicant for reconsidera-
tion, the Examiner finds the final rejection to
have been premature, he should withdraw the
final rejection, if the approval of the Super-
visory Examiner is obtained. (1004.)

### 706.07 (e) Withdrawal of Final Re- jection, General

See 714.12 and 714.13, Amendments after final
rejection.

Once a final rejection that is not premature
has been entered in a case, however, it should
not be withdrawn at the applicant's request ex-
cept on the showing required by Rule 116. This
does not mean that no further amendment or
argument will be considered. An amendment
that will place the case either in condition for
allowance or in better form for appeal may be
admitted.

The Examiner may withdraw the rejection of
finally rejected claims whenever he deems the
conditions appropriate for such action. If, for
example, new facts or reasons are presented
such as to convince the Examiner that the previ-
ously rejected claims are in fact allowable,
then the final rejection should be withdrawn.
Occasionally a final rejection may be withdrawn
in order to apply a new ground of rejection.

If the Examiner's action in which the prior
final rejection is withdrawn is not itself made

final, it must be submitted to the Supervisory
Examiner for approval. (See 1004.)

#### 707 Examiner's Letter or Action

Extract from Rule 104. (b) The applicant will be
notified of the examiner's action. The reasons for
any adverse action or any objection or requirement
will be stated and such information or references will
be given as may be useful in aiding the applicant to
judge of the propriety of continuing the prosecution of
his application.

#### 707.01 Primary Indicates Action for New Assistant

After the seach has been completed, action
is taken in the light of the references found.
Where the assistant Examiner has been in the
Office but a short time, it is the duty of the
Primary Examiner to go into the case thor-
oughly. The usual procedure is for the assist-
ant Examiner to explain the invention and dis-
cuss the references which he regards as most
pertinent. The Primary Examiner may indi-
cate the action to be taken, whether division
or election of species is to be required, or
whether the claims are to be considered on their
merits. If action on the merits is to be given,
he may indicate how the references are to be
applied in cases where the claim is to be re-
jected, or authorize allowance if it is not met
in the references and no further field of search
is known.

Until a new assistant becomes familiar with
Patent Office phraseology, his letters will gen-
erally be dictated to him by the Primary Ex-
aminer. Later, the wording of the Office
action is usually left to the assistant, the char-
acter of the action being supervised by the
Primary.

## 707.02 Actions Which Require the Per- sonal Attention of the Primary Examiner

The Primary Examiner, though responsible
for all of the actions and decisions made in
the conduct of the work of his division, must,
in view of the amount of that work, delegate
to the experienced and reliable assistant Exam-
iners of his division authority to pass on many
of the questions to be decided in the prosecu-
tion of cases. There are some questions, how-
ever, which existing practice requires the Pri-
mary Examiner, personally, to decide. The
following actions fall in this category :

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## 707.02 (a)

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1\. Third action on any case (707.02 (a) ).

2\. Action on a case pending 5 or more years
(707.02 (a)).

3\. Final rejection.

4\. Withdrawal of final rejection. (Sub-
mitted to Supervisory Examiner 706.07 (e).)

5\. Decision on reissue oath.

6\. Decision on affidavit under Rule 131
(715.08).

7\. Sealing of Rule 131 affidavit prior to in-
terference.

8\. Setting up an interference. (Order 2687,
revised, 1101.01 (c).)

9\. Disposition of an amendment in a case in
interference looking to the formation of an-
other interference involving that application
(1111.05).

10\. Decisions on interference motions under
Rules 232 to 235; also, actions taken under Rule
237 (1105.02 to 1105.05).

11\. Rejection of a previously allowed claim
(706.04).

12\. Proposed rejection of a copied patent
claim. (If applicable to a patentee permis-
sion of Commissioner must be obtained
(1101.02 (f)).

13\. Classification of allowed cases (903.07).

14\. Holding of abandonment for insufficient
response.

15\. Suspension of Examiner's action (Rule
103).

16\. Treatment of newly filed application
which obviously fails to comply with Section
4888 R. S .; 35 U. S. C. 33 (702.01).

17\. Consideration of the advisability of a pat-
entability report (705.01).

For a list of actions that are to be submitted
to the Supervisory Examiners before mailing
and for action requiring the attention of the
Commissioner, see 1003 and 1004.

## 707.02 (a) Cases Up for Third Action and Five-Year Cases

::
The Principal Examiners should impress their
assistants with the fact that the shortest path to
the final disposition of an application is by finding
the best references on the first search and carefully
applying them.

The Principal Examiners are expected to person-
ally consider every application which is up for the
third official action with a view to finally concluding
its prosecution.

Any case that has been pending five years should
be carefully studied by the Principal Examiner and
every effort made to terminate its prosecution. In

order to accomplish this result, the case is to be con-
sidered "special" by the Examiner. (Notice of Oc-
tober 11, 1930.)

## 707.03 Sample of Conventional "First Action" Letter

A conventional "First Action" letter is here-
with presented :
POL-90
Address only
Commissioner of Patents
Washington 25, D. C.

PAPER NO. 8
All communications respecting
this application should give the
serial number, date of filing,
and name of the applicant.

DEPARTMENT OF COMMERCE
UNITED STATES PATENT OFFICE
Washington

ABC: ab
Please find below a communication from the
EXAMINER in charge of this application.

Commissioner of Patents.

(Date)
(Stamp)

Division : 9-Room 5701.
Applicant : James Brown.

Ser. No.
753,946.
Filed
September 1, 1948.

For
Circulator.

JOHN SMITH,
16753 Main Street, Detroit, Michigan.

This application has been examined.

References applied :

Sutton, 2,452.699, Nov. 2, 1948 (Filed Feb. 18,
1944), 255-64uxr.

Jones (British), 394,890, July 6, 1933, (4
sheets of drawing, 8 pages of specification.
Only Fig. 4 of the drawing and page 6 of the
specification are relied upon) 230-259.

Spear, 389,335, Sept. 11, 1888, 255-69xr.

Reference further showing the state of the
art :

Halsey, Reissue No. 19,090, Feb. 20, 1934,
255-70.

The Official Draftsman has objected to the
drawing because the lines are rough and blurred.
Correction of the drawing is required.

NOTE :- If no claim is allowed there should be a
statement that the drawing need not be corrected until
a claim is allowed.

A new oath is required since the oath of rec-
ord was executed on December 1, 1947, some nine
months before the filing of the application. This
is not "within a reasonable time" as required by
the last paragraph of Rule 65 (c). The new
oath must properly identify this application in
the body of the oath, preferably by referring to

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707.05 (d)

the serial number and filing date of the applica-
tion.

The title of the invention should be made
more specific to meet the requirements of Rule
72.

The brief summary of the invention set forth
in the second paragraph of page 1 is too general
to meet the requirements of Rule 73. This para-
graph should be directed to the specific inven-
tion claimed.

In page 4, line 21, "37" should be 73.

Claim 1 is rejected as fully met by the patent
to Sutton, cited above. Element 87 of Sutton is
a spring pressed latch.

Claim 5 is objectionable because it depends
from a dependent claim and is not in immedi-
ate sequence with the latter. If the formal ar-
rangement of this claim is corrected, it will be
allowable as at present advised.

Claim 6 is rejected as being drawn to the old
combination of a motor, a fan driven thereby
and a common base for supporting the same.
The combination is shown to be old by the Brit-
ish patent to Jones cited above. The combina-
tion of claim 6 differs from that shown in Jones
only in setting forth a specific construction of
the motor itself. The claim is, therefore, re-
jected because it is believed that the improve-
ment, if any, is not in the combination, but in
such specific motor.

Claim 6 is additionally rejected for lack of
invention over the British patent to Jones in
view of the patent to Spear, both cited above.
It would involve no invention to substitute for
the motor M of the British patent the motor
shown in Spear at 63. Such a substitution
would be obvious to one skilled in the art.

Claims 2, 3, and 4 are allowable as at present
advised.

Claims 1 and 6 are rejected and claim 5 is ob-
jected to on formal grounds.

(Signature)
Examiner.

(Initials of Assistant Examiner.)

## 707.04 Initial Sentence

The initial sentence of each letter should in-
dicate the status of that action, as, "This appli-
cation has been examined" if it is the first action
in the case, or, "This is in response to amend-
ment filed * * * " if such is the case.

Preliminary amendment in a new case should
be acknowledged by adding some sentence such
as "Amendment filed (date) has been received"
following the initial sentence. It should be
noted, however, that in cases in which claims in
excess of the number supported by the filing fee
are presented before the first official action in

the case, action is given only on the claims
originally presented and applicant advised
accordingly. See 714.10.

## 707.05 Citation of References

The citation of all references used for the
first time in the prosecution of the case should
then be made.

Rule 107 Citation of references. If domestic pat-
ents be cited, their numbers and dates, the names of
the patentees, and the classes of inventions must be
stated. If foreign patents be cited, their nationality
or country, numbers and dates, and the names of the
patentees must be stated, and such other data must be
furnished as may be necessary to enable the appli-
cant to identify the patents cited. In citing foreign
patents, the number of pages of specification and
sheets of drawing must be specified, and in case part
only of the patent be involved, the particular pages
and sheets containing the parts relied upon must be
identified. If printed publications be cited, the author
(if any), title, date, pages or plates, and place of pub-
lication, or place where a copy can be found, shall be
given. When a rejection is based on facts within the
personal knowledge of an employee of the Office, the
data shall be as specific as possible, and the reference
must be supported, when called for by the applicant, by
the affidavit of such employee, and such affidavit shall
be subject to contradiction or explanation by the affi-
davits of the applicant and other persons.

[Old Rule 66, par. 2]

## 707.05 (a) Grouped at Beginning of Letter

In citing references for the first time, the identify-
ing data of the citation should be placed immediately
following the initial introductory sentence (707.04),
or acknowledgment of preliminary amendment (if
any). (Extract from Order No. 2938.)

## 707.05 (b) References Applied

The references selected as needed for treating the
claims should be preceded by a heading such as:
"References Applied." (Extract from Order No.
2938.)

## 707.05 (c) References Pertinent

Any references selected to cover subject
matter disclosed but not claimed should be
separately listed under a heading such as
"References further showing the state of the
art," or some similar expression.
3-6

707.05 (d) References Cited in Subse-
quent Actions

When references are cited in a subsequent action,
the heading should be "Additional references made

Int 22. 71-15-49
Vlas & M. OLong Dr 30

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# MANUAL OF PATENT EXAMINING PROCEDURE

of record," or "Additional references relied upon."
(Extract from Order 2938.)

Where an applicant in an amendatory paper re-
fers to a reference which is subsequently relied upon
by the Examiner, such reference shall be cited by
the Examiner in the usual manner. (Notice of De-
cember 20, 1946.)

## 707.05 (e) Data Used in Citing Refer- ences

3-6
The data in citing references should be fully
given, as set forth in Rule 107 (707.05).

Official cross-references should be marked "XR"
and unofficial cross-references "UXR." (Extract
from Order 3217.)

Some U. S. patents issued in 1861 have two
numbers thereon. The larger one should be
cited.

Section 901.04 should be noted for informa-
tion about various series of U. S. patents and
the data to be used in citing them.

If the patent date of a patent cited as a ref-
erence is after the date of filing of the appli-
cation, the filing date of the patent must be set
forth in parentheses below the citation of the
patent. See the citation of the Sutton patent
în the sample letter in 707.03. This calls atten-
tion to the fact that the particular patent relied
on is a reference because of its filing date and
not its patent date.

Data to be used in citing foreign patents
is given in Rule 107, in 901.05 (a).

In citing the number of pages of specification
and sheets of drawing of foreign patents a
number should be given which corresponds to
the number of items to be photostated. For
example, if the Examiner's copy of a foreign
patent has two pages of drawing but in the
bound volume of patents used for photostating,
there is only one sheet of drawing, then only
one sheet should be cited.

"In some instances the entire copy of a foreign
patent will not be needed for the purpose of a rejec-
tion. In these instances the number of sheets of
drawing and pages of specification must be specified
and also the particular part of the drawing and the
particular pages of specification relied upon must be
given." (Order No. 3251, Revised.) See citation of
foreign patent in sample letter of 707.03.

In citing publications the Examiner should
give the information that a copy is in the Sci-
entific Library, if this be the fact. For ex-
ample, a photostat of a page of a publication
may be in the shoes of a certain class and sub-
class but the volume of the publication may be
in the library.

Whenever in citing references in applications and
in Form PO-98 (1302.12) the titles of periodicals are
abbreviated, the abbreviations of titles used in Chem-
ical Abstracts and printed in the list of periodicals
abstracted by Chemical Abstracts should be adopted
with the following exceptions: (1) the abbreviation
for the Berichte der deutschen chemischen Gesell-
schaft should be Ber. Deut. Chem. rather than Ber.,
and (2) where a country or city of origin is a neces-
sary part of a complete identification, the country
or city of origin should be added in parentheses, e. g.,
J. Soc. Chem. Ind. (London). (Extract from Memo-
randum of Feb. 3, 1947.)

## 707.05 (f) Effective Dates of Declassi- fied Printed Matter

A large amount of printed matter prepared for use
during the war and classified as secret, confidential,
or restricted, has been declassified and is now avail-
able to the public at large. In using this material as
references there are usually two pertinent dates to
be considered, namely, the printing date and the
publication date. The printing date in some in-
stances will appear on the material and may be
considered as that date when the material was pre-
pared for limited distribution. The publication date
is the date of release when the material was made
available to the public. If the date of release does
not appear on the material, this date may be deter-
mined by reference to the Office of Technical Serv-
ices, Commerce Department.

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

For the purpose of anticipation predicated upon
prior knowledge under Sec. 4886 R. S .; 35 U. S. C. 31
the above noted declassified material may be taken
as prima facie evidence of such prior knowledge as
of its printing date even though such material was
classified at that time. When so used the material
does not constitute a statutory bar and its printing
date may be antedated by an affidavit under Rule
131. (Notice of Feb. 24, 1947, Revised.)

## 707.05 (g) Incorrect Citation of Ref- erences

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

Where a wrong citation of a patent has been made
by the Examiner and this is evidenced by the sub-

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mission of the purchased copy, it is customary as a
matter of courtesy to mail the applicant a correct
copy. See also 710.06.

In any case otherwise ready for issue, in which the
erroneous citation has not been formally corrected
in an official paper, the Examiner is directed to cor-
rect the citation by way of an Examiner's Amend-
ment. (Extract from Notice of May 13, 1948.)

## 707.06 Citation of Decisions, Orders and Notices

In citing published decisions the tribunal render-
ing the decision should be identified and wherever
possible the C. D. and O. G. citation should be given.
The U. S., C. C. P. A., Federal Reporter or U. S. P. Q.
citation should also be given when it is convenient
to do so. (Order 3357, Revised.)

In citing a manuscript decision which is avail-
able to the public but which has not been pub-
lished, the tribunal rendering the decision and
complete data identifying the paper should be
given. Thus, a decision of the Board of Ap-
peals which has not been published but which
is available to the public in the patented file
should be cited as, "Ex parte ____ , decision of
the Board of Appeals, Patent No. ____ , paper
"

No.
pages.

The citation of manuscript decisions which are
not available to the public should be avoided. If an
examiner believes that a particular manuscript de-
cision not open to public inspection would be useful,
he may call it to the attention of the Supervisory
Examiners who will determine whether steps should
be taken to release it or an abstract thereof for
publication, (Order 1370, Revised.)

When a Commissioner's Order, Notice or Memo-
randum is cited in any official action, the date of the
order, notice or memorandum or the Official Gazette
in which the same may be found should also be given.
(Notice of Feb. 12, 1924, Revised.)

## 707.07 Completeness and Clarity

Rule 105 Completeness of examiners' action. The
examiner's action will be complete as to all matters,
except that in appropriate circumstances, such as mis-
joinder of invention, fundamental defects in the appli-
cation, and the like, the action of the examiner may be
limited to such matters before further action is made.
However, matters of form need not be raised by the ex-
aminer until a claim is found allowable.

[Old Rule 64]

## 707.07 (a) Action on Formal Matters

When, upon examination, the specification and
claims are such that the invention may be readily
understood, Examiners ordinarily should make no
requirements on matters of form in the specifica-
tion until some claim is found to be allowable. In

every such case the first letter should say in sub-
stance:

On allowance of any claim, revision as to form
may be required (Rule 105).

In every instance requirements to correct infor-
malities noted on Form PO-152 (pink slip) by the
Head of the Application Branch and Draftsman's
criticisms of the drawings should be made in the
first letter.

Every action on the merits should be complete
and thorough as to merits and, whenever any claim
is allowed, also complete as to form. (Extract from
Order 5267.)

When a claim is found allowable, or for other
reasons it is deemed best to take up matters of
form, the Examiner should note all of his objec-
tions, and clearly point them out. In all cases,
whether or not a claim is indicated as allowable,
informalities as to the drawing, oath, or signa-
tures should be noted. See 714.02.

## 707.07 (b) Requiring New Oath See 602.02.

## 707.07 (c) Draftsman's Requirement

The Examiner should embody the Drafts-
man's statement with regard to the drawing in
his first letter to the applicant, and in so doing he
should be careful to state distinctly that a new
drawing will not be admitted or that a new
drawing will be required, if the case is found to
contain patentable matter, in accordance with
the Draftsman's directions. See also 608.02 (a),
608.02 (e), 608.02 (t).

## 707.07 (d) Language To Be Used in Rejecting Claims

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

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

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

(a) obviously fully met by, or

(b) clearly readable on, or

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707.07 (e)

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(c) fully anticipated by, (or other equivalent
expression)

the reference.

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

The above phrasings should not be used un-
less the claim reads as well on the patent as it
does on the application.

(2) If the claim is met in substance in the
reference, but has immaterial variations there-
over or involves mechanical equivalents, the
claim should be rejected as

(a) substantially met by, or

(b) lacking invention over, or

-(c) unpatentable over, or

(d) finding its full equivalent in, (or other
equivalent expression)

the reference. Such rejection should be accom-
panied by a statement taking note of that fea-
ture or those features of the claim which are
not fully met in the reference and pointing out
why said feature or features do not render the
claim patentable.
In b

(3) If the claim is rejected on A in view of
B, such rejection should be accompanied by a
statement that

(a) there is no invention in substituting for
the element X of A the element X' as shown
(or taught, or disclosed) in B; or

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

It is not sufficient in a rejection based on A
in view of B merely to state that B teaches (or
shows) the element defined in the claim. This
is not conclusive that the claim should be re-
jected; for even if B does disclose the element
as claimed, it might require invention to in-
corporate this element in the A organization.
In some cases, in addition to the above gen-
eral statement as set forth in (a) or (b), it
may be advisable to point out specifically how
the substitution can be made. The pertinency
of each reference should be fully set forth.

Everything of a personal nature must be
avoided. Whatever may be the Examiner's
view as to the utter lack of patentable merit
in the disclosure of the application examined,
he should not express in the record the opinion
that the application is, or appears to be, devoid
of patentable subject matter. Nor should he
express doubts as to the allowability of allowed
claims or state that every doubt has been re-
solved in favor of the applicant in granting him
the claims allowed.

A constructive suggestion by the Examiner
as to how some specific rejection or objection
may be avoided often saves considerable time
and is generally welcomed by the attorney or
applicant.

An omnibus rejection of the claims "on the
references and for the reasons of record" is
stereotyped and usually not informative and
should therefore be avoided. This is especially
true where certain claims have been rejected
on one ground and other claims on another
ground.

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

## 707.07 (e) Note All Outstanding Re- quirements

In taking up an amended case for action the
Examiner should note in every letter all the
requirements outstanding against the case.
Every point in the prior action of an Exam-
iner which is still applicable must be repeated
to prevent the implied waiver of the require-
ment.

## 707.07 (f) Answer All Material Trav- ersed

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

Where the applicant traverses any rejection,
the Examiner should, if he repeats the rejec-
tion, take note of the applicant's argument and
answer the substance of it.

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

## 707.07 (g) Piecemeal Prosecution

Piecemeal prosecution should be avoided as
much as possible. The Examiner ordinarily
should reject each claim on all valid grounds
available, avoiding, however, undue multipli-
cation of references. (See 904.02.) More-
over, when there exists a sound rejection on
the basis of prior art which discloses the "heart"
of the alleged invention (as distinguished from
prior art which merely meets the terms of the
claim), secondary rejections on technical
grounds ordinarily should not be made,

X

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## 707.07 (h) Notify of Inaccuracies in Amendment

See 714.23.

## 707.07 (i) Each Claim To Be Men- tioned in Each Letter

In every letter each claim should be men-
tioned by number, and its treatment or status
given. Since a claim retains its original nu-
meral throughout the prosecution of the case, its
history through successive actions is thus easily
traceable. Each action should conclude with a
summary of rejected, allowed and cancelled
claims.

Claims retained under Rule 142 and claims
retained under Rule 146 should be rejected as
set out in 821 to 821.03 (a) and 809.02 (a).

See 1109.02 for treatment of claims corre-
sponding to issue in application of losing party
in interference.

The Index of Claims should be kept up to
date as set forth in 717.04.

## 707.07 (j) State When Claims Are Al- lowable Except as to Form

When the Examiner finds that a claim is al-
lowable except as to form, this fact should be
stated, the objections as to form being specifi-
cally pointed out.

## 707.07 (k) Numbering Paragraphs

Paragraphs may be successively numbered on
each page of the letter to facilitate identifica-
tion in the future prosecution of the case.

## 707.08 Reviewing and Initialing by As- sistant Examiner

Two carbon copies of the letter are also made.
All copies, together with the rough draft, if
there be one, and the file are then put on the
Assistant Examiner's desk, who will compare
the copy with the rough draft, paying particu
lar attention to the data of the references. If
any corrections are to be made, he will note
them in lead pencil and return the papers to
the typist for correction. When the corrections
have been properly made, or when there are no
corrections required, the Assistant Examiner
will initial the original copy and place the file
with the several copies of the letter on the desk
of the Primary Examiner for his inspection and
signature to the original copy. Carbon copies
should not be signed by the Assistant or
Primary.

## 707.09 Signing by Primary or Acting Examiner

In each Examiner's letter, the word "Examiner"
without the number of the Division, should appear
at the end on both the original and carbon copies,
the original only being signed. The words "Acting
Examiner" should be used whenever that official
signs the letter. (Extract from Order 2938.)

## 707.10 Entry

After the original copy has been signed by the
Primary Examiner, the typist places it in the
file wrapper on the right hand side, and enters
in black on the outside of the wrapper, under
"Contents", the character of the action. If any
claim has been rejected, the word "Rejection" is
entered on the file wrapper, or if the rejection
has taken the form of a requirement for divi-
sion, the entry will so indicate; otherwise, the
word "Letter" is used. Errors will be avoided
if the Assistant Examiner enters the character
of the action on the file in lead pencil before
giving the file to the typist.

## 707.11 Date

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

## 707.12 Mailing

The carbon copies are mailed to the proper
address after the original, initialed by the As-
sistant and signed by the Primary Examiner,
has been placed in the file.

## 707.13 Returned Office Action

Letters are sometimes returned to the Office
because the Post Office has not been able to de-
liver them. The Examiner should use every
reasonable means to ascertain the correct ad-
dress and forward the letter again, after stamp-
ing it "remailed" with the date thereof and re-
directing it if there be any reason to believe that
the letter would reach applicant at such new
address. If the Office letter was addressed to
an attorney, a letter may be written to the in-
ventor or assignee informing him of the re-
turned letter. The six months running against
the application begins with the date of remail-
ing. (Ex parte Gourtoff, 1924 C. D. 153; 329
O. G. 536.)

If the Office is not finally successful in de-
livering the letter, it is placed, with the en-
velope, in the application, which is filed away

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with the pending files, eventually to be sent to
the Abandoned Files storage room.

## 707.14 Action Preceding Final

The following statement should be added at the
end of all regular Office actions when it appears that
the next action taken by the Examiner may be final:

This application should be prepared for
final action. No further amendments
that do not place the case in condition for
allowance or better form for appeal will be
entered after final action unless accom-
panied by a proper showing of good and
sufficient reasons why they were not eariler
presented. Rule 116.

(Extract from Notice of April 30, 1948).
For final rejection form see 706.07.

## 708 Order of Examination

Rule 101 Order of examination. Applications filed
in the Patent Office and accepted as complete applica-
tions (rules 53 and 55) are assigned for examination
to the respective examining divisions having the clas-
ses of inventions to which the applications relate. Ap-
plications shall be taken up for examination by the
examiner to whom they have been assigned in the order
in which they have been filed.

Applications which have been acted upon by the
examiner, and which have been placed by the appli-
cant in condition for further action by the examiner
(amended applications) shall be taken up for such
action in the order in which they have been placed
in such condition (date of amendment).

[Old Rule 63, pars. 1, 2]

## 708.01 List of Special Cases

Rule 102 Advancement of examination. Applica-
tions will not be advanced out of turn for examination
or for further action except as provided by these rules,
or upon order of the Commissioner to expedite the
business of the Office, or upon a verified showing which,
in the opinion of the Commissioner, will justify so
advancing it.

Applications wherein the inventions are deemed of
peculiar importance to some branch of the public serv-
ice and the head of some department of the Govern-
ment requests immediate action for that reason, may
be advanced for examination ; but in this case it shall
be the duty of the head of that department to be repre-
sented before the Commissioner in order to prevent
the improper issue of a patent. (See 29 Stat. 694;
35 U. S. C. 43.)

[Old Rule 63, pars. 3 and 5]

If an Examiner has a case which he is satisfied is
in condition for allowance, or which he is satisfied
will have to be finally rejected, he should give such
action forthwith instead of making the case await
its turn. (Extract from Order 3084.)

If the applicant makes prompt response to the Ex-
aminer's requirement for division, the application
will thereafter be considered "special" until it has
received an action on the merits. For this purpose,
response within 60 days for domestic applicants and,
within 90 days for foreign applicants should be con-
sidered as being prompt. (Extract from Order
5282.)

(

The following is a list of special cases (those
which are advanced out of turn for examina-
tion) :

(a) Applications wherein the inventions are
deemed of peculiar importance to some branch
of the public service and when for that reason
the head of some department of the Govern-
ment requests immediate action and the Com-
missioner so orders (Rule 102).

(b) Cases made special by the Commissioner
as the result of a petition. (See 708.02.)

(c) Applications for reissues (Rule 176).

(d) Cases remanded by an appellate tribunal
for further action.

(e) Applications in which a brief has been
filed under Rule 193 or wherein a petition has
been filed under Rule 181. (See 1002, 1208)

(f) Applications which appear to interfere
with other applications previously considered
and found to be allowable, or which it is de-
manded shall be placed in interference with an
unexpired patent or patents (Rule 201).

(g) Cases ready for allowance, or ready for
allowance except as to formal matters. (See
Order 3084 above, and Order 5267 in 710.02
(b).)
1

(h) Cases which are in condition for final
rejection. (See Order 3084 above.)

(i) Cases pending more than five years
(707.02 (a)).

(j) Cases where the first action on the case
has been limited to a requirement for division
and applicant has made a prompt response.
(See Order 5282 above.)

(k) New cases which are obviously informal
(702.01).

## 708.02 Petition to Make Special

A petition to make special an original appli-
cation or any other application requiring a
search is sent to the Examining Division to
which the case is assigned for report of approxi-
mate date when the case will be reached for
action in its regular course. The petition is
not entered in the file; but the Examiner should
note on his calendar at the date reported the
serial number of the application with appro-
priate memorandum so that the case will not
be overlooked in the event that this report date
forms a factor in the Commissioner's decision
on the petition. The Examiner forwards the

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petition together with his report to the Law
Examiner for submission to the Commissioner
or the Assistant Commissioner who decides the
petitions to make special.

A petition to make special a division, a continua-
tion or a continuation-in-part of an earlier applica-
tion will be referred to a Supervisory Examiner
where the petition alleges that the later application
contains only claims which have been searched in
the prior art and held allowable in the earlier appli-
cation, or claims differing from such allowable claims
only in matters of form or by immaterial phrase-
ology, and the Examiner will furnish a report stating
whether the allegation in the petition is correct and
including a list of the prior art references over which
the claims were allowed unless such references have
been listed in the petition. If, in the opinion of the
Examiner, the claims in the application do not qual-
ify it for special status as above noted, but he is able
to determine from inspection that the application is
allowable in matters of substance or that the claims
are otherwise such as would by reason of the previous
prosecution be clearly subject to immediate final
action he should report that fact.

All other petitions and requests to make an appli-
cation special should be forwarded with the file to
the Law Examiner accompanied by a report indicat-
· ing when the case will be reached for action in its
regular course. (Notice of July 25, 1938, Revised.)

The petition to make special if, and when,
granted becomes a part of the file record.
Otherwise it is placed in the miscellaneous cor-
respondence file.

## 708.03 Examiner Tenders His Resigna- tion

Whenever an Examiner tenders his resignation,
the Principal should see that the Assistant spends
his remaining time as far as possible in winding up
the old complicated cases or those with involved
records and getting as many of his amended cases as
possible ready for final disposition. (Extract from
Order 3084.)

## 709 Suspension of Action

Rule 103. Suspension of action. Suspension of action
by the Office will be granted at the request of the appli-
cant for good and sufficient cause and for a reasonable
time specified. Only one suspension may be granted
by the primary examiner ; any further suspension must
be approved by the Commissioner.

If action on an application is suspended when not
requested by the applicant, the applicant shall be noti-
fied of the reasons therefor.

Action by the examiner may be suspended by order
of the Commissioner in the case of applications owned
by the United States whenever publication of the in-

vention by the granting of a patent thereon might be
detrimental to the public safety or defense, at the re-
quest of the appropriate department or agency.

[Old Rule 77, pars. 5, 6]

One suspension of action by the Office for a
"reasonable time" at the request of the appli-
cant under Rule 103, may be granted by the
Examiner; but any further suspension requires
the approval of the Commissioner.

It is to be noted that suspensions under this
Rule are granted with respect to impending
Office actions, not actions by applicants.
That is, if the case is awaiting action by appli-
cant he has the statutory or set shortened period
within which to respond. While the shortened
period may be extended within the limits of
the statutory period, no suspension can operate
to extend a statutory period that may be run-
ning against a case.

Suspension under Rule 103, which is at the
instance of the applicant, is to be distinguished
from suspensions originating with the ex-
aminer. Thus, where an applicant has two ap-
plications whose claims are directed to
overlapping subject matter and one of them be-
comes involved in interference, action on the
other application is, under the ex parte
McCormick (1904 C. D. 575; 113 O. G. 2508)
practice, sometimes suspended pending the ter-
mination of the interference. See 709.01. No
suspension, however, is necessary where the
subject matter claimed in the said other appli-
cation is patentably distinct from the disclosure
of the opposing party to the interference.

## 709.01 Overlapping Applications by Same Applicant or Owned by Same Assignee

Examiners should not consider ex parte,
when raised by an applicant, questions which
are pending before the Office in inter partes
proceedings involving the same applicant or
party of interest. (See ex parte Jones, 1924
C. D. 59; 327 O. G. 681).

Because of this where one of several appli-
cations of the same inventor or assignee which
contain overlapping claims gets into an inter-
ference it was formerly the practice to suspend
action by the Office on the other applications.
Now, partly in view of In re Seebach, 1937
C. D. 495; 484 O. G. 503 the prosecution of all
the cases not in the interference is required to
be carried as far as possible, by treating as
prior art the counts of the interference and by
rejections forcing the drawing of proper lines
of division. In some instances, however, sus-
pension of action by the Office can not be
avoided. See 1111.03.

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# 709.02 Actions Following Correspond- ence Under Rule 202

See 1111.01 (i).

## 710 Period for Response

For periods for response in connection with
appeals see 1206.

## 710.01 Statutory Period

Extract from rule 135. (a) If an applicant fails to
prosecute his application within six months after the
date when the last official notice of any action by the
Office was mailed to him, or within such shorter time
as may be fixed (rule 136), the application will become
abandoned.

[Old Rule 77]

The portion of Rule 135 quoted above sets
forth the provisions of Sec. 4894 R. S. ; 35 U. S.
C. 37, with reference to the prosecution of an
application by an applicant. The normal statu-
tory period for response to an Office action is
six months.

## 710.01 (a) Statutory Period, How Computed

The period is computed from the day of the
mailing of the Office action to the date of receipt
by the Office of applicant's response. No cog-
nizance is taken of fractions of a day and appli-
cant's action is due on the corresponding day
six months after the Office action.

The date of receipt of a response to an Office
action is given by the "Office date" stamp which
appears on the responding paper. See 505.

Response to an Office action dated August 30,
is due on the following February 28 (or 29 if it
is a leap year), while a response to an Office
action dated February 28 is due on August 28
and not on the last day of August.

In some cases the Examiner's letter does not
determine the beginning of a statutory response
period. For example, the Examiner may write
a letter adhering to a final rejection, in which
case the statutory response period running from
the date of the final rejection is not disturbed.
In all cases where the statutory response period
runs from the date of a previous action, a state-
ment to that effect should be included at the end
of the letter, and the date on which the statutory
response terminates should be given.

## 710.02 Shortened Statutory Period and Time Limit Actions

Under Rule 136 (Sec. 4894 R. S .; 35 U. S. C.
37) an applicant does not always have six
months within which to respond to an Office
action. He may be required to respond in a

shorter period, not less than 30 days, whenever
it is deemed "necessary or expedient". Some
conditions deemed "necessary or expedient" are
listed in Section 710.02 (b).

In setting a shortened statutory time for response
to an Office action, the date on which the shortened
period ends must be specified thus:

A SHORTENED STATUTORY PERIOD
FOR RESPONSE TO THIS ACTION IS
SET TO EXPIRE (DATE).
(This should be in capital letters.)
(Notice of June 11, 1940, Revised.)

In addition to the statutory provisions for short-
ened periods of response the Examiner may also,
in some cases, require the applicant to make re-
sponse within a specified limited time. These are
known as time limit actions. An example is a time
limit for the response to the rejection of a copied
patent claim.

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

Furthermore, the legend "SHORTENED TIME
FOR REPLY" is stamped on the first page of every
action in which a shortened time for reply has been
set. This legend is applied preferably across the
date stamp just under the date, so prominently that
a person locking merely for the mailing date of the
action and not reading the action as a whole cannot
reasonably avoid seeing the legend. (Notice of No-
vember 22, 1941, Revised.)

### 710.02 (a) Approval of Time Set in Case of Shortened Statu- tory Period

Before being mailed, a letter setting a shortened
statutory period for response must be approved by
the Commissioner, but this approval is obtained from
the Supervisory Examiner, to whom the Commis-
sioner has delegated this authority. (Extract from
Order 3494.) (See 1004.)

### 710.02 (b) Situations in Which Used: Shortened Statutory Pe- riod

From time to time the Commissioner through
the Supervisory Examiners adds to or removes
from the list of types of actions calling for a
shortened statutory period. In general where
the prosecution has obviously been dilatory, or
where the circumstances are such that the pub-
lic interest requires the prosecution to be
promptly closed, a shortened statutory period
may be set.

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Some specific cases are:

(a) When an application is in condition for allow-
ance, except as to matters of form, such as correc-
tion of drawings or specification, a new oath, etc.,
the case will be considered special and prompt action
taken to require correction of formal matters. Such
action should include a statement that prosecution
on the merits is closed in accordance with the deci-
sion in ex parte Quayle, 1935 C. D. 11; 453 O. G. 213,
and should conclude with the setting of a shortened
statutory period for response. (Extract from Order
5267.)

(b) When a prompt issue as a patent is de-
sired to avoid futile interference proceedings,
as where the junior party fails to overcome the
senior party's filing date under Rule 202, a
shortened period may be set for response by the
senior party. See 1101.01 (i).

(c) Where, after the termination of an interfer-
ence proceeding, the application of the winning party
contains an unanswered office action, final rejection
or any other action, the Primary Examiner notifies
the applicant of this fact. In this case response to
the Office action is required within a shortened stat-
utory period (40 days) running from the date of such
notice. See Ex parte Peterson, 1941 C. D. 8; 525
O. G. 3. (Extract from Notice of April 14, 1941.)

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

(e) When the Primary Examiner finds that
a newly filed application obviously fails to
disclose an invention with the clarity required
by Sec. 4888 (35 U. S. C. 33) R. S. See 702.01.

710.02 (c) Situations in Which Used:
Nonstatutory Time-Limit

Under certain conditions it is deemed more
desirable to set nonstatutory shortened time-
limits for response, such as :

(a) Rule 203 provides that in suggesting
claims for interference :

The parties to whom the claims are suggested will be
required to make those claims (i.e., present the sug-
gested claims in their applications by amendment)
within a specified time, not less than 30 days, in order
that an interference may be declared.

See 1101.01(j), and 1101.01(m).

(b) Rule 206 provides :

Where claims are copied from a patent and the exam-
iner is of the opinion that none of the claims can be
made, he shall state in his action why the applicant
can not make the claims and set a time limit, not less
than 30 days, for reply. If, after response by the ap-

plicant, the rejection is made final, a similar time
limit shall be set for appeal.

See 1101.02 (f).

(c) When applicant's action is not fully re-
sponsive to the Office action, the Examiner may
give applicant a limited time, usually 20 days
to complete his response. See third paragraph
of Rule 135 which reads as follows :

When action by the applicant is a bona fide attempt
to advance the case to final action, and is substantially
a complete response to the examiner's action, but con-
sideration of some matter or compliance with some re-
quirement has been inadvertently omitted, opportunity
to explain and supply the omission may be given before
the question of abandonment is considered.

See 714.03.

### 710.02 (d) Difference Between Short- ened Statutory and Time- Limit Periods

The distinction between a limited time for
reply and a shortened statutory period under
Rule 136 should not be lost sight of. The first
is set by the Primary Examiner, while the sec-
ond requires the approval of the Supervisory
Examiner. The penalty attaching to failure to
reply within the time limit ( from the suggestion
of claims or the rejection of copied patent
claims) is loss of the subject matter involved on
the doctrine of disclaimer, and is an appealable
matter; while failure to respond within the set
statutory period results in abandonment of the
entire application. This is not appealable.
Further, where applicant responds a day or two
after the time limit, this may be excused by the
Examiner if satisfactorily explained; but a
response one day late in a case carrying a short-
ened statutory period under the Rule 136, no
matter what the excuse, results in abandonment ;
however, if asked for in advance extension of
the period may be granted by the Examiner, pro-
vided the extension does not go beyond the six
months' period from the date of the Office action.
See also 1101.02 (f).

#### 710.02 (e) Extension of Time

Extract from Rule 136 (b) The time for reply, when
a time less than six months has been set, will be ex-
tended only for good and sufficient cause, and for a
reasonable time specified. Any request for such ex-
tension must be filed on or before the day on which
action by the applicant is due, but in no case will the
mere filing of the request effect any extension. Only
one extension may be granted by the primary examiner
in his discretion; any further extension must be ap-
proved by the Commissioner. In no case can any ex-
tension carry the date on which response to an action

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is due beyond six months from the date of the action.
[Old Rule 77, par. 3]

It should be very carefully noted that neither
the Primary Examiner nor the Commissioner
has authority to extend the shortened statutory
period unless request for the extension is filed
on or before the day on which applicant's ac-
tion is due. While the shortened period may
be extended within the limits of the statutory
six months' period, no extension can operate to
extend the time beyond the six months.

Compare, however, Rule 135 (c) and 714.03.

# 710.03 Three Year Period, Govern- ment Owned Cases Three Year Statutory Period

A Government-owned case is, under Sec. 4894,
R. S., entitled to a three year period for response to
an Office action, provided there has been filed in the
application a request to that effect by the head of
the department concerned. Such request holds for
only one three year period in such case. However, if
actions by the applicant and Office are taken within
the period the applicant is still privileged to delay
his response to any such Office action at least until
the expiration of the original three year period. The
status of the application as coming within the three
year provision of the statute may be continued for
another three year period upon a request from the
department head for reapplication of the statute.
A letter from head of the department requesting
such reapplication of the statute must be seasonably
filed. (Notice of April 7, 1945, Revised.)

Where an application is placed under the
three year statutory provision, it is required
that the Office notify the head of the depart-
ment within 90 days and not less than 30 days
before the expiration of the three year period
of the approaching end of said period.

When ready for allowance, Government-
owned "Three Year" applications must be re-
ferred to Div. 70 for clearance before allow-
ance. See 109.

## 710.04 Two Periods Running

There sometimes arises a situation where two
different periods for response are running
against an application, the one limited by the
regular statutory period, the other by the lim-
ited period set in a subsequent Office action.
The running of the first period is not suspended
nor affected by an ex parte limited time action
or even by an appeal therefrom. For an ex-
ception, involving suggested claims, see
1101.01 (n).

## 710.04 (a) Copying Patent Claims

Where in an application in which there is an
unanswered rejection of record, claims are
copied from a patent and all of these claims
are rejected there results a situation where two
different periods for response are running
against the application. One period, the first,
is the regular statutory period of the unan-
swered rejection of record, the other period is
the limited period set for response to the re-
jection (either first or final), established under
Rule 206. The date of the last unanswered
Office action on the claims other than the copied
patent claims is the controlling date of the
statutory period. (Ex parte Milton, 164 Ms 1,
63 USPQ 132 and Ex parte Nelson, 164 Ms
361, 26 J. P. O. S. 564.) See also 1101.02 (f).

## 710.05 Period Ending on Sunday or Holiday

Rule 7 Times for taking action; expiration on Sun-
day or holiday. Whenever periods of time are specified
in these rules in days, calendar days are intended
unless otherwise indicated. When the day, or the last
day, fixed by statute or by or under these rules for
taking any action or paying any fee falls on Sunday,
or on a holiday within the District of Columbia, the
action may be taken, or the fee paid, on the next suc-
ceeding day which is not a Sunday or a holiday.

[Old Rule 31, par. 6]

The holidays in the District of Columbia are:
New Year's Day, January 1; Washington's
Birthday, February 22; Memorial Day, May
30; Independence Day, July 4; Labor Day
(first Monday in September) ; Armistice Day,
November 11; Thanksgiving Day (fourth
Thursday in November) ; Christmas Day, De-
cember 25; Inauguration Day (January 20,
every four years).

Where an amendment is filed a day or two later
than the expiration of the period fixed by statute
care should be taken to ascertain whether the last
day of that period was Sunday or a holiday in the
District of Columbia, and if, so, whether the amend-
ment was filed or the fee paid on the next succeed-
ing secular day.

An amendment received on such succeeding se-
cular or business day which was due on Sunday or a
holiday is endorsed on the file wrapper with both
dates, such as June 6, 1927 (June 5, Sunday). AI-
though the Office is closed on Saturdays, any amend-
ment or payment due on a Saturday must be pre-
sented no later than such Saturday, unless the Satur-
day falls on a legal holiday. (Order No. 3017,
revised.)

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# 710.06 Miscellaneous Factors Deter- mining Date

When applicant writes the Office pointing out
an incorrect citation of a reference (707.05 (g) ),
which was relied on for a rejection the period
of six months running against the application
begins anew on the date of the Office response
giving the correct citation.

Where for any reason it becomes necessary
to remail any action (707.13), the action should
be correspondingly redated, as it is the re-mail-
ing date that establishes the beginning of the
six months period. (Ex parte Gourtoff, 1924
C. D. 153; 329 O. G. 536).

A supplementary action after a rejection ex-
plaining the references more explicitly or giv-
ing the reasons more fully, even though no
further references are cited, establishes a new
date from which the statutory period runs.

If for any other reason an Office action is de-
fective in some matter necessary for a proper
response applicant's time to respond begins
with the date of correction of such defect.

## 711 Abandonment

Rule 135 Abandonment for failure to respond
within time limit. (a) If an applicant fails to prose-
cute his application within six months after the date
when the last official notice of any action by the
Office was mailed to him, or within such shorter time
as may be fixed (rule 136), the application will be-
come abandoned.

(b) Prosecution of an application to save it from
abandonment must include such complete and proper
action as the condition of the case may require. The
admission of an amendment not responsive to the
last official action, or refusal to admit the same, and
any proceedings relative thereto, shall not operate to
save the application from abandonment.

(c) When action by the applicant is a bona fide
attempt to advance the case to final action, and is
substantially a complete response to the examiner's
action, but consideration of some matter or compliance
with some requirement has been inadvertently omitted,
opportunity to explain and supply the omission may
be given before the question of abandonment is con-
sidered.

(d) Prompt ratification or filing of a correctly
signed copy may be accepted in case of an unsigned
or improperly signed paper.

See rule 7.

[Old Rules 77, par. 1; 171, par. 2]

Rule 138 Express abandonment. An application
may be expressly abandoned by filing in the Patent
Office a written declaration of abandonment, signed
by the applicant himself and the assignee of record, if
any, and identifying the application.

[Old Rule 171, par. 1]

Abandonment may be either of the invention
or of an application. This discussion is con-
cerned with abandonment of the application for
patent.

An abandoned application is one which is re-
moved from the Office docket of pending cases
through :

1\. formal abandonment by the applicant (ac-
quiesced in by the assignee if there be one),
or through

2\. failure of applicant to take appropriate
action within a specified time at some stage in
the prosecution of the case.

## 711.01 Express or Formal Abandon- ment

Applications expressly abandoned (Rule
138) present no particular problem. It should
be borne in mind, however, that formal aban-
donment must have the signature of the as-
signee, if any, as well as of the inventor. But
see 711.06 (e). When a letter of express
abandonment which complies with Rule 138 is
received the Examiner should notify the appli-
cant that the letter of express abandonment has
been received, that the application is abandoned
and is being relegated to the abandoned files.

In view of the doctrine set forth in Ex parte
Lasscell, 1884 C. D. 66; 29 O. G. 861, an amend-
ment canceling all of the claims, even though
said amendment is signed by the applicant him-
self and the assignee, is not an express abandon-
ment. Such an amendment is regarded as non-
responsive and should not be entered, and ap-
plicant should be notified as explained in 714.03,
714.05.

## 711.02 Failure To Take Required Ac- tion During Time Period

Rule 135 specifies that an application be-
comes abandoned if applicant "fails to prose-
cute" his application within the fixed statutory
period. This failure may result either from

1\. failure to respond within the statutory
period, or

2\. insufficiency of response, i. e., failure to
take "complete and proper action, as the condi-
tion of the case may require" within the statu-
tory period (Rule 135)

. Abandonment by entire failure to respond
presents no problems.

Nor is there ordinarily any particular diffi-
culty when an amendment reaches the Office
(not the division) after the expiration of the
statutory period. The case is abandoned and
the remedy is to petition to revive it. The Ex-
aminer should notify the applicant or attorney
at once that the application has been aban-

<!-- PageFooter="Rev. 3, May 1952" -->

NO
VA

<!-- PageBreak -->

## 711.02 (a)

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

doned. The late amendment is endorsed on the
file wrapper but not formally entered. (See
714.17.)

To pass on questions of abandonment, it is
essential that the Examiner know the dates that
mark the beginning and end of the statutory
period under varying situations. The ex parte
prosecution before the Examiner presents few
departures from the ordinary type in which the
applicant's response must reach the Office with-
in six months from the mailing date of the
Office letter, or not later than the date set as
ending the shortened period for reply. (See
710 to 710.06.)

## 711.02 (a) Insufficiency of Response

A frequent case of abandonment is where a
response is made by the applicant within the
statutory time but, in the opinion of the Ex-
aminer, is not fully responsive to the Office
action. See 714.02 to 714.04.

## 711.02 (b) Special Cases Involving Abandonment

The following situations involving questions
of abandonment often arise, and should be spe-
cially noted :

a) Copying claims from a patent when not
suggested by the Patent Office does not consti-
tute a response to the last Office action and will
not save the case from abandonment, unless the
last Office action relied solely on the patent for
the rejection of all the claims rejected in that
action.

b) A case may become abandoned through
withdrawal of, or failure to prosecute, an ap-
peal to the Board of Appeals. See 1215.01 to
1215.04.

c) Likewise it may become abandoned
through dismissal of appeal to C. C. P. A. or
suit in equity, where there was not filed prior
to such dismissal an amendment putting the
case in condition for issue or fully responsive
to the Board's decision. See 1215.05.

d) Also, abandonment may result from appli-
cant's failure to tender the final fee and have
it accepted within the twelve months' period of
forfeiture. See 712.

e) Where claims are suggested for interfer-
ence near the end of the statutory period run-
ning against the case, see 1101.01 (n).

## 711.03 Reconsideration of Holding of Abandonment; Revival

When advised of the abandonment of his
application, applicant may either ask for re-

consideration of such holding, if he disagrees
with it; or petition for revival if he acquiesces
with the holding.

## 711.03 (a) Holding Based on Insuffi- ciency of Response

Applicant may deny that his response was
incomplete.

While the Examiner has no authority to act
upon an application in which no action was
taken during the statutory or shortened period,
he may reverse his judgment as to whether or
not an amendment received during such period
was responsive and act on a case of such char-
acter which he has previously held abandoned.
This is not a revival of an abandoned appli-
cation but merely a holding that the case was
never abandoned. See also 714.03.

## 711.03 (b) Holding Based on Failure To Respond Within Period

When an amendment reaches the Patent
Office (not the division) after the expiration
of the statutory period and there is no dispute
as to the dates involved, no question of recon-
sideration of a holding of abandonment can be
presented.

However, the Examiner and the applicant
may disagree as to the date on which the statu-
tory period commenced to run or ends. In this
situation, as in the situation involving suffi-
ciency of response, the applicant may take issue
with the Examiner and point out to him that
his holding was erroneous.

## 711.03 (c) Petitions Relating to Aban- donment

Rule 137 Revival of abandoned application. An
application abandoned for failure to prosecute may be
revived as a pending application if it is shown to the
satisfaction of the Commissioner that the delay was
unavoidable. A petition to revive an abandoned ap-
plication must be accompanied by a verified show-
ing of the causes of the delay, by the proposed re-
sponse unless it has been previously filed, and by the
petition fee.

[Old Rule 172]

Rule 181 (Reproduced and discussed in chap-
ter 1000), is of general nature and provides
remedy from the action of the Examiner in
holding a case abandoned because of late or
insufficient response.

A petition to revive an abandoned applica-
tion should not be confused with a petition
from an Examiner's holdings of abandonment.
As stated above abandonment may result not
only from insufficiency of response but also

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(

(

(

(

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<!-- PageHeader="711.06 (a)" -->
<!-- PageHeader="EXAMINATION OF APPLICATIONS" -->

from entire failure to respond, within the statu-
tory period following an Office action.

Where the holding of abandonment is predi-
cated on the insufficiency of the response, or
disagreement as to controlling dates the peti-
tion from such holding comes under Rule 181
and does not require a fee.

Where the applicant acquiesces in the hold-
ing of abandonment, or where the petition from
such holding is denied, applicant's only re-
course, so far as concerns the particular case in-
volved, is by petition to revive. Such petition
must be accompanied by a fee of $10.00, a pro-
posed amendment in response to the preceding
Office action, if no such amendment had been
previously filed, and a verified satisfactory
showing that the delay in prosecution was un-
avoidable. Rule 137.

## 711.03 (d) Examiner's Statement on Petitions Relating to Aban- donment

## ON PETITION TO SET ASIDE EXAMINER'S HOLDING

Rule 181 states that the Examiner "may be
directed by the Commissioner to furnish a
written statement within a specified time set-
ting forth the reasons for his decision upon the
matters averred in the petition, supplying a
copy thereof to the petitioner". Often, how-
ever, the Supervisory Examiner passes upon
the question without requesting such statement
from the Examiners, if the issue raised is clear
from the record.

## ON PETITION TO REVIVE

In answering a petition to revive an abandoned
application the Examiner should state the date when
the application became abandoned, whether the
amendment, if any, is responsive and if not, in what
respect it is defective, and whether it puts the appli-
cation in condition for allowance. If no amendment
is filed or if the petition is not verified the answer
should so state. Attention should be directed to the
history of the case, so far as pertinent to the ques-
tion of revival, but no recommendation should be
made. A copy of the answer should be sent the
petitioner. (Notice of November 18, 1916.)

## 711.04 Disposal of Abandoned Files

Extract from Rule 14. Abandoned applications may
be destroyed after twenty years from their filing date,
except those to which particular attention has been

called and which have been marked for preservation.
Abandoned applications will not be returned.

## 711.04 (a) Pulling, Counting, Listing

At the expiration of each quarter an examination
is made of the files in each division to list which
applications have become abandoned during such
quarter. (Extract from Notice of September 29,
1933.)

Those applications which have become aban-
doned are then forwarded to the Abandoned
Files Section.

## 711.04 (b) Ordering Abandoned Files

Abandoned files may be obtained from the
Abandoned Files Section by filling out Form
PO-125 with the necessary data and leaving
these forms with the clerk in charge. The
name of the Examiner ordering the file should
appear on the form. The file should be
promptly returned when the Examiner has fin-
ished with it.

## 711.05 Letter of Abandonment Re- ceived After Application Is Allowed

Receipt of a letter of abandonment after an
application is allowed is acknowledged by the
Issue and Gazette Branch, such acknowledg-
ment being signed by the Executive Officer.

### 711.06 Publication of Abstracts

If an owner of a pending application is willing to
abandon said application, it is possible for him to
have an abstract of said application published in
the Official Gazette and the application simultane-
ously made available to the public.

### 711.06 (a) Requirements of the Re- quest

The request for publication must be made by the
owner or by the attorney of record. It must be
received while the application is pending. It must
state that the application is to be available to the
public when published (this may be implied where
it is clear that the request for publication of the
abstract is made in accordance with the notice of
Jan. 25, 1949, 619 O. G. 258). It must be accom-
panied by either (a) a formal abandonment of the
application, which may be qualified to take effect
on publication, or (b) a specific statement that the
application will be or is intended to be abandoned
immediately after the publication, or (c) a state-

<!-- PageBreak -->

<!-- PageHeader="711.06 (b)" -->
<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

ment of the character indicated in section 711.06 (e).
A proposed abstract may accompany the request.
The submission of a proposed abstract is desirable.

#### 711.06 (b) Handling of Papers by Ex- aminer

The papers are initially referred to the examiner
for consideration of (a) the formalities of the re-
quest, (b) whether the abstract should or should not
be published, and (c) the nature of the abstract to
be published. The examiner will prepare a letter to
be sent to the applicant through the attorney or
agent. This letter is signed but not dated or mailed,
and the application file and drawing, together with
all the papers, are forwarded to the Supervisory
Examiner.

If the examiner finds that the request for publica-
tion does not comply with the requirements (see
section 711.06 (a)), the letter will simply so state.
The following type of letter may be used where the
request is presented in an abandoned application:

This will acknowledge the letter of
requesting publication of
an abstract of this application. Such pub-
lication under the Commissioner's Notice of
January 25, 1949, 619 O. G. 258, cannot be
considered since the application was aban-
doned before the request was received.

If the disclosure of the application appears to the
examiner to be purely fanciful, or inoperative or
incomplete, publication should not be recommended
by the examiner; likewise, if the disclosure is fully
met by readily available prior art or if its publica-
tion is deemed to be of no value. However, questions
of patentability of the claims over the prior art
should not be considered. If the examiner recom-
mends that an abstract not be published, either for
one of the reasons mentioned above or for any spe-
cial reason, the letter to the applicant mentioned
in the first paragraph of this section will simply
state that it has been determined not to publish any
abstract, without giving any reasons. The reasons
should be stated in a separate memorandum for the
Supervisory Examiner.

If the request for publication is not defective and
the examiner has not determined to recommend
adversely, the nature of the abstract must be con-
sidered. If no abstract has been submitted, the
examiner will prepare a suitable abstract of the dis-
closure. If the applicant has submitted a proposed
abstract, this should be reviewed and compared with
the specification and revised or rewritten, if nec-
essary. If the abstract submitted by the applicant
is modified by the examiner in any manner, even
to the extent of adding reference numerals, a copy

of. the abstract in its final form for publication
should be mailed with the letter to the applicant.
In either of the above situations the applicant should
be notified as follows:

This will acknowledge the letter of
requesting publication of an abstract of this
application under the Commissioner's No-
tice of January 25, 1949, 619 O. G. 258. In
accordance with your request, an abstract
of the application, a copy of which is at-
tached, will be published in the Official
Gazette.

If the abstract furnished by the applicant is ac-
cepted, it should not be retyped but merely identi-
fied in the proper space of Form PO-242 by paper
number. In this event applicant should be advised
as follows:

This is to acknowledge the letter of
requesting publication of an abstract of
this application under the Commissioner's
Notice of January 25, 1949, 619 O. G. 258.
In accordance with your request, an ab-
stract of the application corresponding to
the copy which you have submitted will be
published in the Official Gazette.

In cases having drawings, a figure of the drawing
will also be published and the abstract may refer
to and use reference numerals appearing in the se-
lected figure. In these cases the original drawings
should be forwarded with the file and the prints re-
tained in the division for interference search pur-
poses until the file and original drawings are returned
to the division, at which time the prints should be
reinserted in the file.

In cases where the Primary Examiner believes that
publication of more than one figure of the drawing
is desirable, he should discuss the matter with the
Supervisory Examiner before preparation of an ab-
stract or before acceptance of the applicant's ab-
stract.

The abstract should be an abstract of the spe-
cific embodiment or embodiments disclosed and
should be sufficiently complete so as to serve as a
disclosure of the device, process or composition.
Unessential details can be omitted and theoretical
matters and discussions should be omitted. The
abstract should be typed on legal size paper with a
suitable heading, with one carbon copy. The letter
prepared by the examiner to be sent to the applicant
will state that an abstract in accordance with the
attached copy will be published in the Official Ga-
zette. The papers will then be forwarded to the
Supervisory Examiner together with Form PO-242.
Applicant does not receive a copy of this form. A
sample of this form as filled out follows:

<!-- PageBreak -->

<!-- PageHeader="EXAMINATION OF APPLICATIONS" -->
<!-- PageHeader="711.06 (e)" -->

##### SAMPLE FORM

INFORMATION FOR INCLUSION IN PUBLISHED ABSTRACT
OF APPLICATION

Serial No.

875,473

Title

ELECTRICAL RESISTOR ELEMENT

(Title should be clearly descriptive of abstracted

subject matter.)

Applicant

ALLEN O. VICTOR

(1)

JOHN M. SMITH

(2)

Residence

MADISON, NEW JERSEY

(1)

NEW YORK, NEW YORK

(2)

Residence
Assignor to
(Here copy assignment data exactly as it appears
on face of file.)

×

Filed March 16, 1948

Size of Application * sheets drawings, * pages specification (Est.)

Published *

Classification Class 201 . Subclass 76.2

Publish figure No. 1 ** For abstract see paper No. ***

Primary Examiner (Signature)

*Not to be filled in by Examiner.

** Where there is no drawing or no figure of the
drawing to be published insert "None."

*** Paper number containing abstract submitted
by Applicant, or paper number containing abstract
prepared by Examiner.

# 711.06 (c) Handling of Papers by Supervisory Examiners

The Supervisory Examiners will review all cases
forwarded to them. In those cases ready for pub-
lication, the letters are mailed to the applicants and
the files, including the drawing, forwarded to the
Issue and Gazette Division. The papers will be en-
tered in the file. In those cases where it has been
determined not to publish an abstract, the letters
will be mailed and the files returned to the examiner,
the correspondence in such cases including the
original request will not become part of the record
in the application file, but will be kept on file for
reference in the Office of the Supervisory Examiners.

The files that have been forwarded to the Issue
and Gazette Division for publication of the abstract

will be returned through the Office of the Super-
visory Examiners to the examining division.

711.06 (d) Request Does Not Serve
as Response to Office
Action

In no event will a request for publication avoid
abandonment of an application for failure to re-
spond to an outstanding Office action awaiting
response by the applicant, but such abandonment
will not prevent publication of the abstract.

711.06 (e) If the Request Indicates
That the Application Will
Be Abandoned Only If No
Interfering Application Is
Found

The request for publication may indicate that
the application will be abandoned only if no inter-
fering applications of others are found by the
examiner. These cases will be processed and the
abstracts published in the same manner as above.
If the application is awaiting response by the appli-
cant, and no response is filed within the statutory
period, the application will be abandoned in the
usual way and the examiner need do nothing further.
If the application is up for action or is brought up
for action by an appropriate response to the last
Office action, the examiner will not act on the appli-
cation until at least a year has passed after the
date of the publication of the abstract. During this
period if interference searches on other applications
reveal an interference, the published application will
be taken up for preparation for interference in the
same manner as any other application. After the
year has passed, and a further period of at least
one month, the examiner will take up the applica-
tion for the purpose of making an interference
search. If interfering applications are found ac-
cording to the usual standards for determining the
existence of interferences; the preparations for in-
terference will proceed in the usual manner. If no
interfering applications are found, the examiner
will prepare a letter stating that an interference
search has been made and no applications which in-
terfere with the application have been found, and
that abandonment of the application in accordance
with applicant's request is now in order and should
be promptly filed. This letter will be forwarded to
the Supervisory Examiners before mailing.

After the publication of the abstract, in those
cases in which the delay for interference search
purposes has not been requested, the applicant will
be expected to file a formal abandonment of the
application, if such has not already been filed,
within a reasonable period after the publication;
but if the application is awaiting action by the ap-

\* to un atrag.
Van tano
fred regulations

<!-- PageBreak -->

# 711.06 (f)

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

plicant it may be permitted to abandon for failure
to reply. In those cases which requested a delay
for interference search purposes and a letter has
been sent indicating that no interfering application
was found by the examiner, a formal abandonment
of the application will be expected to be filed. If
the abandonments have not been filed within a
reasonable time after they should be, the examiner
will refer the particular applications to the Super-
visory Examiners for instructions as to further ac-
tion to be taken. If the parties necessary to a formal
abandonment have signed the original letter stating
that the application will be abandoned, formal
abandonment signed by the attorney alone will be
accepted.

# 711.06 (f) Use as Reference

The published abstracts will be used as references
against any application in which they may be ap-
plicable. Care must be taken by the examiner not
to refer to these abstracts as patents or as applica-
tions. They may be designated and cited as follows:

Brown, abstract of application serial
number
O. G.
published

These abstracts will be used by the examiner as
a basis for rejection only as printed publications
effective from the date of publication in the Official
Gazette (This is similar to the practice with respect
to applications published for the Alien Property
Custodian, see notice of May 14, 1943), If properly
prepared, it should not be necessary to refer to the
complete application file, but in any case in which
material in the application file is used as a reference
it should only be used as evidence of matters of:
public knowledge on the date of the publication of
the abstract. (Notice of Jan. 25, 1949, Circular of
Apr. 13, 1949, and Notice of May 6, 1949, Revised.)

# 712 Forfeiture

Rule 316 Forfeited application. A forfeited appli-
cation is one upon which a patent has been withheld
for failure to pay the final fee within the prescribed
time. (See rule 314.)

=

A forfeited application is not considered as pending
while forfeited, and, if the final fee is not subsequently
paid and accepted as provided in rule 317, the appli-
cation is abandoned, as of the date it became forfeited.
[Old Rules 174, 178]

It is seen that a forfeited application is one
which had the status of an allowed case for six
months and on which the final fee was not paid.
(Rule 316.) Its legal status during the year
dating from its forfeiture makes possible its
being issued as a patent on petition to the Com-
missioner when the petition is supported by a
verified statement and accompanied by the final
fee and the petition fee ($10). (Rule 317).

When the six months' period within which
the final fee might have been paid has expired,
the file is returned by the Issue and Gazette Di-
vision to the examining division. The clerk
of the examining division takes out the draw-
ing, stamps it "Forfeited", stamps the file like-
wise, makes the proper entry in the register,
and forwards the file and drawing to the proper
section of the Record and Attorney's Room
which is under the supervision of the Librarian.
The application is recorded as forfeited and
filed away in the abandoned files section. If
not patented within eighteen months after the
date of allowance, the forfeited case becomes
abandoned; and such abandoned application
cannot be revived. In this respect an aban-
doned application that has passed through the
twelve months' period of forfeiture differs in
status from an application that has become
abandoned under the provisions of Rules 135
and 136 in that the latter may be revived under
the provisions of Rule 137.

# 713 Interviews

The personal appearance of an applicant,
attorney, or agent before the Examiner pre-
senting matters for the latter's consideration is
considered an interview. In its more limited
sense, however, an interview generally relates
to a consideration by the Examiner and the
applicant, or his representative, of an issue in a
pending application.

# 713.01 General Policy, How Con- ducted

The conditions under which interviews with
the Examiner may be had is governed by Rule
133 the first paragraph of which states :

(a) Interviews with examiners concerning applica-
tions and other matters pending before the Office must
be had in the examiners' rooms at such times, within
office hours, as the respective examiners may designate.
Interviews will not be permitted at any other time or
place without the authority of the Commissioner. In-
terviews for the discussion of the patentability of pend-
ing applications will not be had before the first official
action thereon. Interviews should be arranged for in
advance.

[Old Rule 18.]

"If the assistant examiner in charge of the ap-
plication is of P-5 grade, the interview is con-
ducted by such examiner. In other cases, the
interview is ordinarily conducted by the Pri-
mary Examiner, but the latter may, at his dis-
cretion, authorize the assistant examiner in
charge of the application to conduct the inter-
view.

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<!-- PageHeader="EXAMINATION OF APPLICATIONS" -->
<!-- PageHeader="713.04" -->

An interview should normally be arranged for
in advance, as by letter, telegram or phone call,
in order to insure that the Primary Examiner
and/or the Examiner in charge of the applica-
tion will be present in the Office. The unex-
pected appearance of an attorney or applicant
requesting an interview without any previous
notice to the Examiner may well justify his re-
fusal of the interview at that time, particularly
in an involved case. The right to an interview
lies wholly within the discretion of the Primary
Examiner.

An interview should be had only when the
nature of the case is such that the interview
could serve to develop and clarify specific is-
sues and lead to a mutual understanding be-
tween the Examiner and the applicant, and
thereby advance the prosecution of the applica-
tion. Thus the attorney when presenting him-
self for an interview should be fully prepared
to discuss the issues raised in the Office action.
When it is obvious that the attorney is not so
prepared or does not understand the issues in-
volved an interview should not be permitted.

The Examiner should not hesitate to state, if
such be the case, that claims presented for con-
sideration at the interview require further
search and study. Nor should the Examiner
hesitate to conclude an interview when it ap-
pears that no common ground can be reached
nor when it becomes apparent that the appli-
cation requires further amendment or an addi-
tional action by the Examiner.

In no case should an interview be allowed to
become protracted with the expenditure of an
unreasonable amount of the Examiner's time.
It is the duty of the Primary Examiner to see
that an interview is not extended beyond a
reasonable period even when he does not per-
sonally participate in the interview. Matters
irrelevant to the subject matter should not be
discussed.

During an interview with an applicant who
is prosecuting his own case and is not familiar
with Office procedure the Examiner may make
suggestions that will advance the prosecution
of the case; this lies wholly within his discre-
tion. Too much time, however, should not be
allowed for such interviews. (See 705.01 (f)
for interviews in cases involving patentability
reports.)

# 713.02 Interviews Prior to First Offi- cial Action

No interview is permitted for discussion of
the patentability of an application prior to the
first official action thereon. And it obviously
follows that no interview can be held in advance
of the filing of an application. In this regard

it is the practice of many attorneys, searchers
and inventors to consult the Examiner as to the
field of search or as to whether he knows of any
art, domestic or foreign, not covered by a search
already made. Ordinary courtesy to those
doing business with the Office has countenanced
this practice. The Examiner when confronted
by such a request may in his discretion comply
with it but in no case should he permit a de-
tailed explanation of the invention with attend-
ant discussion thereof as to the field of search,
entailing the expenditure of an unreasonable
amount of time. The Office cannot act as an
expounder of the patent law, nor as counsellor
for individuals. Nor should the Examiner per-
mit searching in the division without the con-
sent of the Primary Examiner.

# 713.03 Interview for "Sounding Out" Examiner Not Permitted

Interviews that are solely for the purpose of
"sounding out" the Examiner, as by a local at-
torney acting for an out-of-town attorney,
should not be permitted when it is apparent
that any agreement that would be reached is
conditional upon being satisfactory to the prin-
cipal attorney. Such practice nullifies the real
purpose of interviews and is a waste of the Ex-
aminer's time in the event the agreement is not
satisfactory to the principal attorney.

# 713.04 Substance of Interview Must Be Made of Record

The substance of an interview must always be
made of record in the application, particularly
where agreement between attorney and the Ex-
aminer is reached. Rule 133 (second para-
graph) specifically requires that :

(b) In every instance where reconsideration is re-
quested in view of an interview with an examiner, a
complete written statement of the reasons presented at
the interview as warranting favorable action must be
filed by the applicant. An interview does not remove
the necessity for response to Office actions as specified
in rules 111, 185.

[Old Rules 13, 68, par. 1]

This is further brought out by the following
Rule :

Rule 2 Business to be transacted in writing. All
business with the Patent Office should be transacted in
writing. The personal attendance of applicants or
their attorneys or agents at the Patent Office is un-
necessary. The action of the Patent Office will be based
exclusively on the written record in the Office. No at-,
tention will pe paid to any alleged oral promise, stipu-
lation, or understanding in relation to which there is
disagreement or doubt.

· [Old Rules 1, 4]

<!-- PageBreak -->

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

## 713.05 Interviews Prohibited or Granted, Special Cases

Patent Office employees are forbidden to hold
either oral or written communication with a dis-
barred attorney regarding an application unless
it be one in which said attorney is the applicant.
See 105.

Interviews are frequently requested by per-
sons whose credentials are of such informal
character that there is serious questions as to
whether such persons are entitled to any infor-
mation under the provisions of Rule 14. In
general, interviews are not granted to anyone
who lacks proper authority from the applicant
or attorney of record in the form of a paper
on file in the case. A mere power to inspect is
not sufficient authority for granting an inter-
view involving the merits of the application.

However, interviews may be granted to per-
sons who are known to be the local representa-
tives of the attorney in the case, even though
their power of attorney be not of record in the
particular application. When prompt action is
important an interview with the local represent-
ative may be the only way to save the applica-
tion from abandonment. (See 408.)

If the person seeking the interview is un-
known to the Examiner but has in his possession
a copy of the application file, the Examiner may
accept his statement that he is the person named
as the attorney of record or an employee of such
attorney.

In the case of an application in which there
is a secrecy order, the Examiner must require
more reliable identification before discussing
the application.

# 713.06 No Inter Parte Questions Dis- cussed Ex Parte

The Examiner may not discuss inter partes
questions ex parte with any of the interested
parties. See 1111.01.

# 713.07 Exposure of Other Cases

Prior to an interview the Examiner should
arrange his desk so that files, drawings and
other papers, except those necessary in the in-
terview, are placed out of view. See 101.

:

# 713.08 Demonstration, Exhibits, Models

The invention in question may be exhibited
or demonstrated during the interview by a
model thereof which may be sent to the Office
prior to the interview where it is received in
the model room and forwarded to the division.
A model is not to be received by the Examiner

directly from the applicant or his attorney.
(See 608.03 and 608.03 (a).)

Oftentimes a model or exhibit is not given
into the custody of the Office but is brought
directly into the division by the attorney solely
for inspection or demonstration during the
course of the interview. This is permissible.
Demonstrations of apparatus or exhibits too
large to be brought into the Office may be
viewed by the Examiner outside of the Office,
(in Washington) with the approval of the
Primary Examiner. It is presumed that the
witnessing of the demonstration or the viewing
of the exhibit is actually essential in the de-
veloping and clarifying of the issues involved
in the application.

## 713.09 Finally Rejected Application

The grace extended an applicant after final
rejection will be determined in part by the
length of prosecution prior to final rejection,
and the possible patentable subject matter in
the case. Interviews on finally rejected cases
can be justified only on the ground that the
applicant has not fully understood the position
of the Examiner or that the Examiner has not
fully appreciated the limitations in the claims
over the prior art, or that the Examiner may
be able to offer some constructive aid in amend-
ing finally rejected claims or in formulating
a new claim that would distinguish over the
prior art where the case contains patentable
subject matter not fully protected by any al-
lowed claims.

## 713.10 Interview Preceding Filing Amendment Under Rule 312

After a case is sent to issue, it is technically
no longer under the jurisdiction of the Primary
Examiner, Rule 312. An interview with an
Examiner that would involve a detailed con-
sideration of claims sought to be entered and
perhaps entailing a discussion of the prior art
for determining whether or not the claims are
allowable should not be given. Obviously an
applicant is not entitled to a greater degree of
consideration in an amendment presented in-
formally than is given an applicant in the con-
sideration of an amendment when formally
presented, particularly since consideration of
an amendment filed under Rule 312 cannot be
demanded as a matter of right. However, it is
entirely proper, should the Examiner be con-
fronted with a request to state whether a claim
of a proposed amendment under Rule 312 is
allowable, to peruse the same and inform the at-
torney either; (1) that the claim is patentable
or (2) that it is not obvious that the proposed
claim is patentable. A suggestion by the Ex-

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<!-- PageHeader="714.02" -->
<!-- PageHeader="EXAMINATION OF APPLICATIONS" -->

aminer of an amendment that would render
the claim allowable is always in order.

### 714 Amendments, Applicant's Action

Rule 115 Amendment by applicant. The applicant
may amend before or after the first examination and
action, and also after the second or subsequent exam-
ination or reconsideration as specified in rule 112 or
when and as specifically required by the examiner.
[Old.Rule 68, par. 1]

### 714.01 Signatures to Amendments

Note 605.04 to 605.05 (a) for a discussion of
signatures to the application.

### 714.01 (a) Unsigned or Improperly Signed Amendment

An unsigned amendment or one not properly
signed by a person having authority to prose-
cute the case is not entered. This applies, for
instance, where the amendment is signed by
one only of two applicants and the one signing
has not been given a power of attorney by the
other applicant.

# 714.01 (b) Unsigned or Improperly Signed Amendment, Dis- posal of

When an unsigned amendment or an improperly
signed amendment is received it is returned, but
when there is not sufficient time for the return of
the paper for signature before the expiration of the
time allowed by law within which to take proper ac-
tion, the Examiner will endorse such amendment on
the file wrapper and notify the applicant of the
status of the case.

The Examiner in carrying out the provisions of
the above paragraph gives applicant a specified time
(as 20 days) to furnish a duplicate amendment prop-
erly signed, or to ratify the amendment already
filed. [See Rule 135, 711.]

Informal amendments which are to be returned
will be forwarded to the Register, Correspondence
and Mail Branch with a memorandum giving the
name and address of the attorney, the date of the
last Office action in the case and a statement as to
why the paper is to be returned. The R. C. and M.
Branch will cancel the impression of the receiving
stamp and conduct the correspondence incident to
the return of the papers. (Order No. 1961, Revised.)

Note 717.01 on return of papers entered on
File Wrapper.

Before taking action as prescribed in the pre-
ceding paragraph, the Examiner should call in
the local representative of the attorney if there
be one, as he may have authority to sign the
amendment.

# 714.01 (c) Signed by Attorney Not of Record

Where an amendment is filed, signed by an attor-
ney whose power is not of record both the attorney
and applicant are notified that the amendment can-
not be entered. (Extract from Notice of September
30, 1918.)

If this is after the death of an attorney of
record, see 406.

## 714.01 (d) Amendment Signed by Ap- plicant But Not by Attor- ney of Record

If an amendment signed by the applicant is
received in an application in which there is a
duly appointed attorney, the amendment
should be entered and acted upon. Attention
should be called to Rule 35 and a copy of the
action should be mailed to the applicant, as
well as to the attorney.

## 714.01 (e) Power of Attorney to a Firm

See 402.05 and 402.05 (a).

## 714.02 Must Be Fully Responsive

Rule 111 Reply by applicant. (a) After the Office
action, if adverse in any respect, the applicant, if he
persist in his application for a patent, must reply
thereto and may request re-examination or reconsid-
eration, with or without amendment.

(b) In order to be entitled to re-examination or re-
consideration, the applicant must make request there-
for in writing, and he must distincly and specifically
point out the supposed errors in the examiner's action ;
the applicant must respond to every ground of ob-
jection and rejection in the prior Office action (except
that request may be made that objections or require-
ments as to form not necessary to further considera-
tion of the claims be held in abeyance until a claim
is allowed), and the applicant's action must appear
throughout to be a bona fide attempt to advance the
case to final action. The mere allegation that the
examiner has erred will not be received as a proper
reason for such re-examination or reconsideration.

(c) In amending an application in response to a
rejection, the applicant must clearly point out the
patentable novelty which he thinks the claims present
in view of the state of the art disclosed by the refer-
ences cited or the objections made. He must also show
how the amendments avoid such references or ob-
jections.

See rules 135 and 136 for time for reply.

[Old Rules 65, 68, par. 1, 69]

Compliance with or discussion of a require-
ment for the correction of formal matters may

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be deferred by applicant until a claim is indi-
cated to be allowable. See 707.07 (a).

Formal matters generally include drawing
corrections, correction of the specification and
the presentation of a new oath. However, the
line between formal matters and substance is
not sharp, and the determination of the merits
of a case may sometimes require that drawing
corrections, corrections of the specifications and
the presentation of a new oath be insisted upon
prior to allowance of a claim.

Extract from Rule 119 Amendment of Claims . . .
In presenting new or amended claims, the applicant
must point out how they avoid any reference or ground
of rejection of record which may be pertinent.

The prompt development of a clear issue re-
quires that the responses of the applicant meet
the objections and rejections of the Examiner.

Responses to requirements to divide are
treated under 820.

## 714.03 Amendments Not Fully Re- sponsive, Action To Be Taken

If there is sufficient time remaining in the six
months' statutory period or set shortened period
when applicant's amendment is found to be not
fully responsive to the last Office action, a letter
should at once be sent applicant pointing out
wherein his amendment fails to fully respond
coupled with a warning that the response must
be completed within the time period in order to
avoid abandonment. See Order 22151/2, 714.05.

Where a bona fide response to an Examiner's ac-
tion is filed before the expiration of a permissible
period, but through an apparent oversight or inad-
vertence some point necessary to a complete re-
sponse has been omitted,-such as an amendment
or argument as to one or two of several claims in-
volved or signature to the amendment,-the Ex-
aminer, as soon as he notes the omission, should
require the applicant to complete his response within
a specified time limit (usually 20 days) if the period
has already expired or not sufficient time is left to
take action before the expiration of the period. If
this is done the application should not be held
abandoned even though the prescribed period has
expired. (Circular of July 26, 1934, Revised.)

See Rule 185.

The Examiner must exercise discretion in ap-
plying this practice to safeguard against abuses
thereof.

The practice outlined above does not apply
where there has been a deliberate omission of
some necessary part of a complete response.
For example, if an election of species has been
required and applicant does not make election
because he holds the requirement to be wrong,

the amendment on its face is not a "bona fide
attempt to advance the case to final action"
(Rule 111), and the Examiner is without au-
thority to postpone decision as to abandonment.

If there be ample time for applicant's reply
to be filed within the time period, no reference
is made to the time limit other than to note in
the letter that the response must be completed
within the statutory period dating from the last
Office action.

## 714.04 Claims Presented in Amend- ment With No Attempt To Point Out Patentable Novelty

In the consideration of claims in an amended case
where no attempt is made to point out the patent-
able novelty, the claims should not be allowed.
(Order 2801, Revised.) (See Rule 111, 714.02.)

An amendment failing to point out the pat-
entable novelty which the applicant believes to
exist in his case should be held to be non-
responsive and a time limit set to furnish a
proper response if the statutory period has ex-
pired or almost expired (714.03). An alterna-
tive procedure is to finally reject the claims if
they are clearly open to rejection on grounds of
record.

See Ex parte Peterson, 1928 C. D. 31; 376
O.G. 3, sustaining the holding of abandonment
for a non-responsive amendment, wherein it
was held that Order 2801 was intended merely
to emphasize the necessity of enforcement of
old Rule 68 (now 111) as to the presentation of
proper arguments, reasons or showing as to
patentability.

## 714.05 Examiner Should Immediately Inspect

Actions by applicant, especially those filed near
the end of the statutory period, should be inspected
immediately upon filing to determine whether they
are completely responsive to the preceding Office
action so as to prevent abandonment of the appli-
cation. If found inadequate, and sufficient time
remains, applicant should be notified of the defi-
ciencies and warned to complete the response within
the statutory period. (Order 22151/2.) See 714.03.

All amended cases when put on the Examin-
er's desk should be inspected by him at once to
determine:

If the amendment is properly signed (714.01).

If the amendment has been filed within the
statutory period, set shortened period or time
limit (710).

If the amendment is fully responsive. See
714.03 and 714.04.

If the changes made by the amendment war-
rant transfer.

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# 714.13

<!-- PageHeader="EXAMINATION OF APPLICATIONS" -->

If the case is special. See 708.01.

If the claims are copied for interference and
to ascertain the probability of an interference
with any pending application.

If there is a traverse of a requirement for
division, in which case the application should
be promptly submitted to an Examiner of
Classification for review.

## 714.06 Amendments Sent to Wrong Division

See 508.01.

## 714.07 7 Amendments Not in Permanent Ink

If an amendment in other than permanent
ink is filed, it is entered, but a permanent copy
is required to be filed. Rule 52 (a). A good
carbon copy is acceptable.

## 714.08 Telegraphic Amendment

When a telegram amendment is received it
is placed in the file but not entered. If con-
firmation of this amendment by a properly
signed formal amendment does not follow in
due time, the applicant is notified that proper
confirmation is required; otherwise, the tele-
gram will not be accepted as a response to the
former Office action. If he does confirm
promptly, the amendment is entered. (See
Ex parte Wheary, 1913 C. D. 253; 197
O. G. 534.)

The same test as to completeness of response
applies to an amendment sent by telegraph as
to one sent by mail. See 714.02.

## 714.09 Amendments Before First Of- fice Action

As an applicant has the right to amend be-
fore 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 status as part of the
original disclosure. It is entered in the case
and acted on in the first Office action. In re-
gard to the introduction of new matter by such
an amendment, see 608.04 (b).

## 714.10 Claims Added in Excess of Filing Fee

In cases in which claims in excess of the number
supported by the filing fee are presented before the
first Official action on the case, the clerk will place
the amendment in the file and enter it on the file
wrapper but the Examiner will defer action on the
claims presented in the amendment. In his first

action the Examiner should act on the claims orig-
inally presented and for which the appropriate fee
was paid. In this first action the Examiner also
should inform the applicant that if he believes that
any of the claims presented by the amendment are
patentable, he can have them entered and consid-
ered in the next action but only by specifically point-
ing out wherein the claims presented in the amend-
ment are patentable over the references cited by the
Examiner. (Extract from Notice of August 18, 1928.)

## 714.11 Amendment Filed During In- terference Proceedings

See 1111.05.

## 714.12 Amendments After Final Re- jection or Action

Rule 116 Amendments after final action (a) After
final rejection or action (rule 113) amendments may
be made cancelling claims or complying with any re-
quirement of form which has been made, and amend-
ments presenting rejected claims in better form for
consideration on appeal may be admitted ; but the ad-
mission of any such amendment or its refusal, and any
proceedings relative thereto, shall not operate to re-
lieve the application from its condition as subject to
appeal or to save it from abandonment under rule 135.

(b) If amendments touching the merits of the appli-
cation be presented after final rejection, or after ap-
peal has been taken, or when such amendment might
not otherwise be proper, they may be admitted upon a
showing of good and sufficient reasons why they are
necessary and were not earlier presented.

(c) No amendment can be made as a matter of right
in appealed cases. After decision on appeal, amend-
ments can only be made as provided in rule 198, or
to carry into effect a recommendation under rule 196.
[Old Rule 68, pars. 2, 3, 5]

Once a final rejection that is not premature
has been entered in a case it should not be with-
drawn except on the showing required by Rule
116 and the approval of the Supervisory Exam-
iner. This does not mean that no further
amendment or argument will be considered.
Any amendment that will place the case either
in condition for allowance or in better form
for appeal will be entered. See 706.07 (e) and
714.13.

## 714.13 Amendments After Final Rejec- tion or Action, Letter Written

Whenever an amendment is filed after final
rejection or action, the applicant should be
promptly notified of its disposition. When-"
ever possible such notification should be given
within the statutory period following the final
rejection or action.

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Where the amendment places the case in con-
dition for allowance the notice of allowance is
of course sufficient.

Where an amendment filed after final action
within the statutory period, not accompanied
by the filing of an appeal, does not place the
case in condition for allowance, applicant is in-
formed that the amendment has not been en-
tered as it is not considered to be a proper re-
sponse to the final rejection. When such an
amendment is also presented for purposes of
appeal and is considered by the Examiner to
place the case in better condition for appeal,
applicant also is informed that the amendment
will be entered for appeal upon the filing of
the appeal. The Examiner should write a letter
stating the reasons for nonentry such as. for
example,

(a) the claims as amended do not avoid any
of the rejections set forth in the last Office
action, and thus the amendment does not place
the case in condition for allowance or in better
condition for appeal,

(b) the claims as amended avoid the rejec-
tion on indefiniteness but do not avoid the re-
jection on the references. The amendment will
be entered upon the filing of an appeal,

(c) the claims as amended present new is-
sues requiring further consideration or search,

(d) since the amendment presents additional
claims without cancelling corresponding finally
rejected claims it is not considered as placing
the application in better condition for appeal;
Ex parte Wirt, 1905 C. D. 247; 117 O. G. 399.

Ordinarily, such letter should not discuss the
specific deficiencies of the proposed amend-
ment. Of course, any claims which are consid-
ered by the Examiner to be allowable in view
of the amendment should be so indicated.

The refusal should never be arbitrary. The
proposed amendment should be given sufficient
consideration at least to determine whether it
obviously places any of the claims in condition
for allowance or would simplify the issues on
appeal.
::

Applicant cannot, as a matter of right, add
, new claims after a final rejection (Rule 116)
or reinstate previously cancelled claims for
purpose of appeal.

4

Failure of applicant to properly respond to
a final rejection within the statutory period re-
sults in a holding of abandonment of the case.
For an exception see 714.20, item 3.

For amendments filed with or after appeal, see
1207 and 1211.

## 714.14 Amendments After Allowance of All Claims

Under the decision in Ex parte Quayle, 1935
C. D. 11; 453 O. G. 213, after all claims in a
case have been allowed the prosecution of the
case on the merits is closed even though there
may be outstanding formal objections which
preclude making the action final.

Amendments touching the merits are treated
in a manner similar to amendments after final
rejection, though the prosecution may be con-
tinued as to the formal matters. See 714.12
and 714.13.

## 714.15 Amendment Mailed Before, But Received in Examining Division After Allowance

Where an amendment, even though prepared
by applicant prior to allowance, does not reach
the Office until after the notice of allowance has
been mailed, such amendment has the status of
one filed under Rule 312. Its entry is a matter
of grace. For discussion of amendments filed
under Rule 312, see 714.16 to 714.16 (e).

If, however, the amendment is filed in the
Office, but is not received by the Examiner prior
to the mailing out of the notice of allowance,
it has the same standing in the case as though
the notice had not been mailed. Where the case
has not been closed to further prosecution, as
by final rejection of one or more claims, or by an
action allowing all of the claims, applicant may
be entitled to have such amendment entered
even though it may be necessary to withdraw
the application from issue. Such withdrawal,
however, is unnecessary if the amendatory mat-
ter is such as the Examiner would recommend
for entry under Rule 312.

As above implied, the case will not be with-
drawn from issue for the entry of an amend-
ment that would reopen the prosecution if the
Office action next preceding the notice of allow-
ance closed the case to further amendment,
i. e., by indicating the patentability of all of the
claims, or by allowing some and finally reject-
ing the remainder.

After an applicant has been notified that the
claims are all allowable, further prosecution of
the merits of the case is a matter of grace and
not of right (Ex parte Quayle, 1935 C. D. 11;
453 O. G. 213). To this extent the practice
affecting the status of an amendment received in
the Office on the date of mailing the notice of
allowance, as set forth in Ex parte Miller, 1922
C. D. 36; 305 O. G. 419, is modified.

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<!-- PageHeader="Am . Fiables" -->

714.16 (d)

<!-- PageHeader="EXAMINATION OF APPLICATIONS" -->

## 714.16 Amendment After Notice of Allowance, Rule 312

Rule 312 Amendments after allowance. Amend-
ments after the notice of allowance of an application
will not be permitted as a matter of right, but may be
made, if the printing of the specification has not begun,
on the recommendation of the primary examiner, ap-
proved by the Commissioner, without withdrawing the
case from issue.

[Old Rule 78]

After a case is sent to issue, it is technically no
longer under the jurisdiction of the Primary
Examiner. However, the Examiner has for
many years had authority to make Examiner's
amendments correcting obvious errors, as when
brought to the attention of the Examiner by
the printer, and also to admit amendments un-
der Rule 312 which are confined to matters of
form in specification or claims, or to the can-
cellation of a claim or claims.

Consideration of an amendment filed under
Rule 312 cannot be demanded as a matter of
right; hence, if a claim requiring an additional
search is presented, an adverse recommendation
as to its admission on this score is made by
the Examiner. New issues may not be raised
for determination once a case has been allowed.
Rule 312 was not intended to provide a way for :
the continued prosecution of an application aft-
er it has been passed for issue.

For the reason just stated, an adverse recom-
mendation does not require a lengthy statement
of reasons in support of such recommendation.
The mere statement that a further search or
examination would be required is usually
adequate. Of course where it can be made, a
suggestion of an amendment that would, in
the opinion of the Examiner, render the claim
allowable is always in order.

The requirements of Rule 111 (714.02) with
respect to pointing out the patentable novelty
of any claim sought to be added, apply in the
case of an amendment under Rule 312, as in or-
dinary amendments.

Sometimes a supplemental oath is filed after the
application has gone to issue. Such oath is not
treated as an amendment under Rule 312, but is
merely placed in the file by the Issue and Gazette
Branch. No acknowledgment of its receipt is made.
(Order 2798, Revised.) (See 603.01.)

Amendments submitted after the notice of allow-
ance of an application which embody merely the
correction of formal matters in the specification, or
formal changes in a claim without changing the
scope thereof, or the cancellation of claims from the

application, shall be acted upon by the Primary Ex-
aminer and not forwarded to the Commissioner for
approval.

[Similar practice obtains in the matter of amend-
ment of the drawing.]

Any amendment affecting the disclosure of the
specification, or adding claims, or changing the
scope of any claim, shall be submitted, as hereto-
fore, to the Commissioner for approval in accordance
with the provisions of Rule 312. (Order 3311.)

## 714.16 (a) Amendments Under Rule 312, Copied Patent Claims

See 1101.02(g) for the procedure to be fol-
lowed when an amendment is received after no-
tice of allowance, which includes one or more
claims copied or substantially copied from a
patent.

The entry of the copied patent claims is not a
matter of right. See 714.19 item (4).

## 714.16 (b) Amendment Under Rule 312 Filed With a Motion Under Rule 234 *

Where an amendment filed with a motion
under Rule 234 applies to a case in issue, the
case is not immediately withdrawn from issue
if the date set for transmitting the motion
'comes well within the six months' period of al-
lowance. Otherwise, the case is withdrawn,
but the amendment is not entered unless and
until the motion has been granted. See 1105.03.

## 714.16 (c) Amendment Under Rule 312, Excess Number of Claims

When an amendment under Rule 312 which has
been approved adds claims which increase the total
number in the case above twenty, the Examiner's
clerk in preparing the forms will see that the notice
bears the statement, "The final fee in this case will
now be $ ______ " (Form POL-95), filled in according
to the number of claims that stand allowed in the
case after the entry of the amendment. (Notice of
Jan. 26, 1928, Revised.)

## 714.16 (d) Amendments Under Rule 312, Handling

Petitions to amend under Rule 312 will be sent by
the Mail Room to the Issue and Gazette Branch.

The Issue and Gazette Branch will send the peti-
tion with the file to the division which allowed the
case.

The application will be submitted to the Exam-
iner for his recommendation, which must be
promptly made. When the recommendation is fa-
vorable (to be indicated by applying on the amend-

<!-- PageFooter="Rev. 3, May 1952" -->

NO9

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<!-- PageHeader="714.16"(e)" -->
<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

ment the stamp reading "Entry recommended under
Rule 312"), the Examiner's clerk will enter the
amendment and prepare a letter, in duplicate (Form
POL-97) to the applicant, notifying him that the
amendment has been entered. This letter should
be placed in the file, entered on the file wrapper
and in the Examiner's register. The file, together
with the unmailed duplicate, should be sent back to
the Issue and Gazette Branch which will forward
it to the Commissioner.

If the Examiner's recommendation is adverse to
the entry of the amendment, a letter (Form POL-
105) should be prepared in duplicate, to the appli-
cant so advising him, and including the Examiner's
report. This letter should be placed in the file and
entered on the file wrapper and in the Examiner's
register. The unmailed duplicate, together with the
file, should be forwarded to the Commissioner as
above.

After the Commissioner has acted on the petition,
the file will be forwarded to the Issue and Gazette
Branch, which will mail the communication pre-
pared by the Examiner. (Order No. 2698.)

The physical entry of the amendment by the
clerk in the use of Form POL-95 does not sig-
nify that the amendment has been admitted;
for, though actually entered, it is not construc-
tively admitted unless and until approved by
the Commissioner. If not approved by the
Commissioner, the entry is erased.

Amendments concerning merely formal mat-
ters are entered without permission of the Com-
missioner. See Order 3311, 714.16. The
amendment is stamped "Entered Under Order
3311" and form POL-66 is used by the typist.
If such amendment is disapproved a report is
prepared by the Examiner and form POL-105
is used. In each case the file and unmailed du-
plicate of the letter are forwarded to the Issue
and Gazette Branch.

# 714.16 (e) Amendments Under Rule 312, Entry in Part

The general rule that an amendment cannot be
entered in part and refused in part should not be
relaxed, but when, under Rule 312, an amendment is
proposed containing a plurality of claims, some of
which may be entered and some not, the acceptable
claims should be entered in the case and if necessary
they should be renumbered to run consecutively with
the claims already in the case. The refused claims
should be cancelled in lead pencil on the amendment.

The Examiner should then submit a report on
Form POL-103 recommending the entry of the ac-
ceptable portion of the amendment and the non-
entry of the remaining portion together with his
reasons therefor. The claims entered should be
indicated by number in this report. (Notice of Au-
gust 11, 1922, Revised.)

# 714.17 Amendment Filed After the Pe- riod for Response Has Expired

When an application is not prosecuted within six
months from the date of the last Office action therein,
or within a set shortened statutory period or a set
time limit and thereafter an amendment is filed,
such amendment shall be endorsed on the file wrap-
per of the application, but not formally entered and
the Examiner shall immediately notify the applicant
that the amendment was not filed within the time
period and therefore cannot be entered. The appli-
cant should also be notified that the application is
abandoned. (Order 1854, Revised.)

## 714.18 Entry of Amendments

On arrival from the Mail Branch to the re-
spective examining divisions, the amendments
are put in the files to which they pertain, and
the files with the unentered amendments placed
on the Primary's desk for inspection and such
penciled comments as he may wish to note on
the margin of the amendatory papers.

The files and amendments are then turned
over to the clerk, whose duty it is to enter the
amendments. The clerk stamps the amend-
ment with the date of its receipt in the division.
It is important to observe the distinction which
exists between the stamps which shows the date
of receipt of the amendment in the division
("Division Date" stamp) and the stamp bearing
the date of receipt of the amendment by the
Office ("Office Date" stamp). The latter date,
placed in the left-hand corner, should always
be referred to in writing to the applicant with
regard to his amendment.

Every amendment entered by the clerk must
be initialed by the clerk. See Clerk's Manual-
Amendments -.

The amendment or letter is placed in the file,
given its number as a paper in the application,
and its character endorsed on the file wrapper
in red ink.

When several amendments are made in an ap-
plication on the same day no particular order
as to the hour of the receipt or the mailing of
the amendments can be assumed, but considera-
tion of the case must be given as far as possible
as though all the papers filed were a composite
single paper.

After entry of the amendment the applica-
tion is "up for action", and it is very important
that it should be kept separate from those ap-
plications which await action by the applicant.
It is placed on the Examiner's desk, and he is
responsible for its proper disposal. The Ex-
aminer should immediately inspect the amend-
ment as set forth in 714.05. After inspection
if no immediate or special action is required,

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the application is placed in the amended case
files to await re-examination in regular order.

Amendments or other papers filed in cases before
the Law Examiner should be promptly forwarded to
him. (Extract from Notice of April 18, 1919.)

# 714.19 List of Amendments, Entry Denied

The following types of amendments are or-
dinarily denied entry :

(1) An amendment presenting an unpatent-
able claim, or a claim requiring a new search
or otherwise raising a new issue in a case whose
prosecution before the Primary Examiner has
been closed, as where

(a) All claims have been allowed,

(b) All claims have been finally rejected,

(c) Some claims allowed and remainder
finally rejected.

See 714.12 to 714.14.

(2) Substitute specification that has not been
required and is not needed. See Rule 125,
608.01 (q) and 714.20.

(3) A patent claim suggested by the Ex-
aminer and not presented within the time limit
set or a reasonable extension thereof, unless
entry is authorized by the Commissioner. See
Notice of September 27, 1933, revised,
1101.02 (f).

(4) While copied patent claims are gener-
ally admitted even though the case is under
final rejection or on appeal, yet where, prima
facie, the applicant has no basis in his disclo-
sure for the copied patent claim or its essence,
or where the patent claim is for another, even
though not divisably different, invention than
that claimed by the application (Patent file
No. 1,927,086), the claim may be refused ad-
mission if the application falls in class (a),
(b), or (c) of category (1) supra, and espe-
cially if the application is an old one. See
1101.02 (g).

(5) An unsigned amendment or one not
properly signed by a person having authority
to prosecute the case. See 714.01 to 714.01 (e) ;
714.08.

(6) An amendment filed in the Patent Of-
fice after the expiration of the statutory period
or set time limit for response. See 714.17.

(7) An amendment so worded that it cannot
be entered with certain accuracy. See 714.23.

(8) An amendment cancelling all of the
claims and presenting no substitute claim or
claims. (711.01.)

(9) An amendment in a case no longer
within the Examiner's jurisdiction with certain
exceptions in applications in issue (714.16), ex-
cept on approval of the Commissioner.

(10) An amendment filed before the first ac-
tion increasing the number of claims in excess
of the filing fee. See 714.10.

(11) Amendments to the drawing held by
the Examiner to contain new matter are not en-
tered until the question of new matter is settled.
This practice of non-entry because of alleged
new matter, however, does not apply in the
case of amendments to the specification and
claims.

(12) An amendatory paper containing ob-
jectionable remarks that, in the opinion of the
Examiner, brings it within the condemnation
of Rule 3, will be submitted to the Commis-
sioner with a view toward its being returned
to applicant. See 714.25.

While amendments falling within any of the
foregoing categories should not be entered by
the Examiner at the time of filing, a subsequent
showing by applicant may lead to entry of the
amendment.

# 714.20 List of Amendments Entered in Part

To avoid confusion of the record the general
rule prevails that an amendment should not be
entered in part. As in the case of most other
rules, the strict observance of its letter may
sometimes work more harm than would result
from its infraction, especially if the amend-
ment in question is received at or near the end
of the statutory period. Thus,

(1) An amendment presenting an uncalled-for
and unnecessary substitute specification along with
other amendatory matter, as amendments to claims
or new claims, should be entered in part, rather
than refused entry in toto. The substitute specifi-
cation should be denied entry and so marked, while
the rest of the amendatory paper should be entered.
The case as thus amended is acted on when reached
in its turn, the applicant being advised that the sub-
stitute specification has not been required and is not
necessary and therefore has not been entered, and
that any desired changes in the original specifica-
tion must be made by specific amendments. (Notice
of August 17, 1934, Revised.) See also Rule 125,
608.01 (q).

It may be noted in this connection, however,
that the fact that a substitute specification, in
the opinion of the Examiner, contains new mat-
ter is not in itself a proper reason for refusing
entry thereof. So far as the subject matter
itself is concerned, an applicant has the right
to a hearing on any amendment he may see fit
to present. Whether the amendment will be
entered in the form of a substitute specification
or a series of alterations of the original speci-

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fication is an administrative matter for the Of-
fice to determine.

(2) An amendment under Rule 312, which in
part is approved and in other part disapproved,
is entered only as to the approved part. See
714.16 (e).

(3) In a case having some claims allowed and
others finally rejected, where an amendment
is received at or near the close of the statutory
period cancelling the finally rejected claims
and presenting one or more new ones which
the Examiner cannot allow, the amendment,
after the statutory period has ended, is en-
tered to the extent only of cancelling the finally
rejected claims. Of course, if any of the new
claims were, in the Examiner's opinion, patent-
able, they too would be entered. The appli-
cant is notified that the new claims which are
held unpatentable have not been admitted, and
at the same time the case is passed for issue.

(4) Where all of the claims are under final
rejection and the amendment cancels these
claims and presents new ones, only some of
which are deemed allowable by the Examiner,
the same practice is followed as indicated
in (3).

(5) In a case having all claims allowed and
some formal defect noted, where an amendment
is presented at or near the close of the statutory
period curing the defect and adding one or
more claims some of which or all of which are .
in the opinion of the Examiner not patentable,
or will require a further search, the procedure
indicated in (3) is followed. After the statu-
tory period has ended, the amendment in such
a case will be entered only as to the formal
matter and any of the claims that may be
deemed patentable.

(6) In an amendment accompanying a mo-
tion granted only in part, only so much of the
amendment as is covered in the grant is entered.
See 1108.

# 714.21 Amendments Inadvertently En- tered, No Legal Effect

If the clerk inadvertently enters an amend-
ment when it should not have been entered, such
entry is of no legal effect, and the same action
is taken as if the changes had not been actually
made, inasmuch as they have not been legally
made. Unless such unauthorized entry is de-
leted, suitable notation should be made on the
margin of the amendatory paper, as, "Not Offi-
cially Entered".

An amendatory paper, even though not en-
tered, should be given a paper number, and
appropriately endorsed on the file jacket, as by
"Not Entered".

# 714.22 Entry of Amendments, Direc- tions for

Rule 121 Manner of making amendments. Era-
sures, additions, insertions, or alterations of the
papers and records must not be made by the applicant.
Amendments are made by filing a paper (which should
conform to rule 52), directing or requesting that speci-
fied amendments be made. The exact word or words
to be striken out or inserted in the application must
be specified and the precise point indicated where the
deletion or insertion is to be made.

[Old Rule 73, par. 1]

# 714.23 Entry of Amendments, Direc- tions for, Defective

3-3

Where the directions for the entry of an amend-
ment are defective, as, inaccuracy in the line desig-
nated, or lack of precision where the word to which
the amendment is directed occurs more than once
in the specified line, and it is clear from the context
what is the correct place of entry, the amendatory
paper will be properly amended in the examining
division, and notation thereof, initialed by the Ex-
aminer, will be made on the margin of the amenda-
tory paper. In the next Office action the applicant
should be informed of this alteration in his amenda-
tory paper and the entry of the amendment as thus
amended. He will also be informed of the non-
entry of an amendment where defective directions
and context leave doubt as to the intent of applicant.
(Notice of June 30, 1939, Revised.)

## 714.24 Amendment of Amendment

Rule 124 Amendment of amendments. When an
amendatory clause is to be amended, it should be
wholly rewritten and the original insertion cancelled,
so that no interlineations or deletions shall appear in
the clause as finally presented. Matter cancelled by
amendment can be reinstated only by a subsequent
amendment presenting the cancelled matter as a new
insertion.

[Old Rule 74]

However, where a relatively small amend-
ment to a previous amendment can be made
easily without causing the amendatory matter
to be obscure or difficult to follow, such small
amendment should be entered.

# 714.25 Discourtesy of Applicant or At- torney

Rule 3 Business to be conducted with decorum and
courtesy. Applicants and their attorneys or agents
are required to conduct their business with the Patent
Office with decorum and courtesy. Papers presented
in violation of this requirement will be submitted to
the Commissioner and will be returned by his direct
order. Complaints against examiners and other em-

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ployees must be made in communications separate
from other papers.

[Old Rule 22a, b]

If the attorney is discourteous in the remarks
or arguments in his amendment, either the dis-
courtesy should be entirely ignored or the paper
submitted to the Commissioner with a view
toward its being returned.

## 715 Swearing Back of Reference Affi- davit Under Rule 131

Rule 131 Affidavit of prior invention to overcome
cited patent or publication. (a) When any claim of an
application is rejected on reference to a domestic pat-
ent which substantially shows or describe but does
not claim the rejected invention, or on reference to a
foreign patent or to a printed publication, and the
applicant shall make oath to facts showing a comple-
tion of the invention in this country before the filing
date of the application on which the domestic patent
issued, or before the date of the foreign patent, or
before the date of the printed publication, then the pat-
ent or publication cited shall not bar the grant of a
patent to the applicant, unless the date of such patent
or printed publication be more than one year prior to
the date on which the application was filed in this
country.

(b) The showing of facts shall be such, in character
and weight, as to establish reduction to practice prior
to the effective date of the reference, or conception of
the invention prior to the effective date of the reference
coupled with due diligence from said date to a subse-
quent reduction to practice or to the filing of the appli-
cation. Original exhibits of drawings or records, or
photographic or photostatic copies thereof, must ac-
company and form part of the affidavit or their absence
satisfactorily explained.

[Old Rule 75]

Any printed publication dated prior to an ap-
plicant's effective filing date, or any patent of
prior filing date, which is in its disclosure per-
tinent to the claimed invention, is available for
use by the examiner as a reference, either basic
or auxiliary, in the rejection of the claims of
the application.

Such a reference may be overcome, in certain
instances noted below, by applicant's filing of
an affidavit under Rule 131, known as "swear-
ing back" of the reference.

Affidavits under Rule 131 may be used :

(1) Where the date of the foreign patent or
that of the publication is less than one year
prior to applicant's effective filing date.

(2) Where the reference, a U. S. Patent, with
a patent date less than one year prior to appli-
cant's effective filing date, shows but does not
claim the invention.

Affidavit under Rule 131 is not appropriate in
the following situations :

(1) Where reference publication date is more
than one year back of applicant's effective filing
date. Such a reference is a "statutory bar".
Sec. 4886, R. S .; 35 U. S. C. 31.

(2) Where the reference U. S. patent claims
the invention. See 1101.02 (a).

(3) Where reference is a foreign patent for
the same invention to applicant or his legal
representatives or assigns issued on an applica-
tion filed more than twelve months prior to the
filing date of the domestic application.

(4) Where the effective filing date of appli-
cant's parent application or an International
Convention proved filing date is prior to the
effective date of the reference, affidavit under
Rule 131 is unnecessary and the reference is not
used. See 201.11 to 201.15.

(5) Where the reference is a prior U. S. pat-
ent to the same party, claiming the same in-
vention, the question involved is one of "double
patenting."

(6) Where the reference is the disclosure or
a prior U. S. patent to the same party, not co-
pending, the question is one of dedication to
the public.

Should it be established that the portion of
the patent disclosure relied on as the reference
was introduced into the patent application by
amendment and as such was new matter, the
date to be overcome by the affidavit is the date of
the amendment. In re Williams et al., 1935
C. D. 229 ; 454 O. G. 535.

# 715.01 Reference Patent Entitled to Foreign Filing Date

In overcoming, under Rule 131, a domestic
patent where the patentee has an earlier foreign
filing date to which he would be entitled in
establishing priority to the invention claimed
in the patent, it is not necessary for the appli-
cant to carry his date back of the patentee's for-
eign filing date. (Viviani v. Taylor v. Herzog,
72 U. S. P. Q. 448).

# 715.02 General Rule as to Generic Claims

A reference applied against generic claims
may (in most cases) be antedated as to such
claims by an affidavit under Rule 131 showing
completion of the invention of only a single
species, within the genus, prior to the effec-
tive date of the reference (assuming, of course,
that the reference is not a statutory bar or a
patent claiming the same invention). See,
however, 715.03.

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# 715.03 Exceptions and Practice Rela- tive to Chemical Cases

A patent showing a species was used against
an application having generic claims. The
affidavit showed a reduction to practice of a
different species. It was held that this affi-
davit did not overcome the reference. A sec-
ond affidavit showed a reduction to practice of
the same species as the patent prior to the effec-
tive date of the patent and said second affidavit
was held to overcome the reference. Ex parte
Fryling, 1947 C. D. 5; 604 O. G. 5.

"The principle is well established in chemical
cases, and in cases involving composition of
matter, that the disclosure of a species in a cited
reference is sufficient to prevent a later appli-
cant from obtaining generic claims, although
the disclosure in an application of a species may
not be sufficient basis for a generic claim." In
re Steenbock, 1936 C. D. 594; 473 O. G. 495.

A further case along this line is In re
Kyrides, 1947 C. D. 254; 600 O. G. 501, wherein
Kyrides had previously been in interference
with Anderson. Anderson was the senior
party and both parties had generic disclosures.
Kyrides was awarded priority by the court as
to the generic claims on the basis that he had an
earlier copending application which disclosed
a single species. The interference having ter-
minated and ex parte prosecution resumed the
examiner rejected the generic claims in
Kyrides' application on the Anderson applica-
tion on the ground that while the court had
awarded Kyrides priority in the generic in-
vention it did not necessarily follow that
Kyrides was entitled to the allowance of claims
for such generic invention. The court upheld
the examiner, stating :

"We have heretofore stated that the award-
ing of priority to an applicant in an interfer-
ence proceeding does not insure or even suggest,
that he is necessarily entitled to his claim in a
patent."

Kyrides by affidavit under former Rule 75
(now 131) attempted to overcome the Anderson
application by Kyrides' earlier application.
The affidavit was held to establish no more
than that one species had been reduced to prac-
tice as of that date. A showing of species insuffi-
cient to support the genus, by either a Rule 131
affidavit or an earlier application, does not over-
come a reference whose effective date is prior
to the filing date of the application in which
the generic claim is asserted.

The quantum of showing in an affidavit under
Rule 131 necessary to overcome a rejection of

generic chemical claims on disclosed but un-
claimed species varies with the circumstances.

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

"Markush" Type Genus Claim :

Where a claim reciting a Markush group
is rejected on a reference disclosing but not
claiming a specific member of the group, the
reference cannot be avoided by an affidavit
under Rule 131 showing different members of
the group.

## 715.04 Who May Make Affidavit

### A. The Inventor.

B. One of two joint inventors is accepted
where suitable excuse is given for failure of
the other applicant to sign. In re Carlson et
al, 1936 C. D. 95; 462 O. G. 479.

C. The Assignee or other party in interest
when it is not possible to produce the affidavit
of the inventor. Ex parte Foster, 1903 C. D.
213; 105 O. G. 261.

## 715.05 Patent Claiming Same Inven- tion

When the reference in question is a patent
claiming the same invention as applicant and
its issue date is less than one year prior to
the filing date of the application being exam-
ined, applicant's remedy, if any, must be by
way of Rule 204 instead of Rule 131. The Ex-
aminer should therefore take note whether the
status of the patent as a reference is that of a
PATENT or a PUBLICATION. If the pat-
ent is claiming the same invention as the appli-
cation, this fact should be noted in the Office
Ietter. The reference patent can then be over-
come only by way of interference. Note, how-
ever, R. S. 4903, 35 U. S. C. 51, second para-
graph, 1101.02 (f).

## 715.06 Affidavit Under Rule 131 Must Be Removed Before Interfer- ence

Where an application in which an affidavit
under Rule 131 has been filed is to be involved
in an interference, the affidavit must be sealed
in an envelope properly labeled before for-
warding the application to the interference
division.

The same practice obtains with respect to a
Rule 131 affidavit in the file of an application
made the subject of a motion under Rule 234
or 235.

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Under the practice established in Ferris v.
Tuttle, 1940 C. D. 5; 521 O. G. 523, the Rule
131 affidavit is thrown open to the opposing
party or parties to the interference at the time
the preliminary statements are opened. See
1101.03 and 1102.01.

## 715.07 Facts and Documentary Evi- dence

The essential thing to be shown under Rule
131 is priority of invention and this may be
done by any satisfactory evidence of the fact.
FACTS, not conclusions must be shown by the
evidence accompanying an affidavit under Rule
131.

(A) As shown in attached sketches.

B) As shown in attached blueprints.

C) As indicated by accompanying model.

D) As shown in attached photographs.

(E) As shown in reproductions of notebook
entries.

(F) If verbal disclosures were made instead
of the above, supporting statements by the wit-
ness will be acceptable.

(G) If the dates of the exhibits have been
removed or blocked off, the matter of dates can
be taken care of in the body of the oath.

The dates in the oath may be the actual dates
or, if the applicant does not desire to disclose
his actual dates, he may merely allege that the
acts referred to occurred prior to a specified
date.

A general allegation that the invention was
completed prior to the date of the reference is
not sufficient. Ex parte Saunders, 1883 C. D. 23;
23 O. G. 1224.

"If the applicant made sketches he should so
state, and produce and describe them; if the
sketches were made and lost, and their contents
remembered, they should be reproduced and
furnished in place of the originals. The same
course should be pursued if the disclosure was
by means of models. If neither sketches nor
models are relied upon, but it is claimed that
verbal disclosures, sufficiently clear to indicate
definite conception of the invention, were made
the witness should state as nearly as possible
the language used in imparting knowledge of
the invention to others." Ex parte Donovan,
1890 C. D. 109; 52 O. G. 309.

The affidavit must state FACTS and produce
such documentary evidence and exhibits in sup-
port thereof as are available to show conception
and completion of invention IN THIS COUN-
TRY, the conception at least being at a date
prior to the effective date of the reference.

Where there has not been reduction to practice
prior to the date of the reference, the applicant
must show diligence in the completion of his
invention from a time just prior to the date of
the reference continuously up to the date of an
actual reduction to practice or up to the date
of filing of his application, which constitutes a
constructive reduction to practice. Rule 131.
In this connection, note the following :

A conception of an invention, evidenced by
disclosure, drawings, and even a model, is not
a complete invention under the patent laws, and
confers no rights on an inventor, and has no
effect on a subsequently granted patent to an-
other, UNLESS HE FOLLOWS IT WITH
REASONABLE DILIGENCE BY SOME
OTHER ACT, such as an actual reduction to
practice or filing an application for a patent.
Automatic Weighing Mach. Co. v. Pneumatic
Scale Corp., Limited, 1909 C. D. 498; 139 O. G.
991.

Conception is the mental part of the inven-
tive act, but it must be capable of proof, as by
drawings, complete disclosure to another per-
son, etc. In Mergenthaler v. Scudder, 1897
C. D. 724; 81 O. G. 1417, it was established that
conception is more than a mere vague idea of
how to solve a problem; the means themselves
and their interaction must be comprehended
also.

The facts to be established under Rule 131
are similar to those to be proved in interference.
The difference lies in the way in which the evi-
dence is presented.

## 715.07 (a) Diligence

Where conception occurs prior to the date of
the reference, but reduction to practice is after-
ward it is not enough merely to allege that ap-
plicant had been diligent. Ex parte Hunter,
1889 C. D. 218; 49 O. G. 733.

What is meant by diligence is brought out in
Christie 1. Seybold, 1893 C. D. 515; 64 O. G.
1650. In patent law, an inventor is either dili-
gent at a given time or he is not diligent; there
are no degrees of diligence. A man may be
diligent within the meaning of the patent law
when he is doing nothing, if his lack of activity
is excused.

## 715.07 (b) Interference Testimony Sometimes Used

In place of an affidavit the testimony of the
applicant in an interference may be sometimes
used to antedate a reference in lieu of a Rule
131 affidavit.

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## 715.07 (c)

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The part of the testimony to form the basis
of priority over the reference should be pointed
out. Ex parte Bowyer, 1939 C. D. 5; 505 O. G.
759.

## 715.07 (c) Acts Relied Upon Must Have Been Carried Out in This Country

The affidavit must contain an allegation that
the acts relied upon to establish the date prior
to the reference were carried out in this coun-
try. See Section 9 of Public Law 690.

## 715.07 (d) Disposition of Exhibits Submitted as Evidence to Support Facts

Exhibits filed as part of an affidavit under
Rule 131 that are too bulky to be placed in the
application file are retained in the Examining
Division until the case is finally disposed of.
When the case goes to issue (or abandonment)
the exhibits are sent to the Model Room, nota-
tion to this effect being made on the margin of
the affidavit.

## 715.08 Passed Upon by Primary Ex- aminer

The question of sufficiency of affidavits under Rule
131 should be reviewed and decided by the Examiner
in charge of the division. (Order 2712, Revised.)

## 715.09 Seasonable Presentation

Affidavits under Rule 131 must be seasonably
presented. Ex parte Berg, 1906 C. D. 36; 120
O. G. 903; Ex parte Romunder, 1910 C. D. 121;
157 O. G. 209; Ex parte Hale, 49 U. S. P. Q. 209;
Ex parte Bowyer, 1939 C. D. 5; 505 O. G. 759.

For affidavits under Rule 131 filed after ap-
peal, see Rule 195 and 1212.

## 716 Affidavits Traversing Rejections, Rule 132

Rule 132 Affidavits traversing grounds of rejec-
tion. When any claim of an application is rejected
on reference to a domestic patent which substantially
shows or describes but does not claim the invention, or
on reference to a foreign patent, or to a printed publi-
cation, or to facts within the personal knowledge of
an employee of the Office, or when rejected upon a
mode or capability of operation attributed to a ref-
erence, or because the alleged invention is held to be
inoperative or lacking in utility, or frivolous or in-

jurious to public health or morals, affidavits traversing
these references or objections may be received.

[Old Rule 76]

Applicants sometimes file affidavits attempt-
ing to overcome rejections. Such affidavits
should be directed to an issue raised in the case
Ex parte Robinson, 1905 C. D. 123; 115 O. G.
1584; and should recite facts instead of con-
clusions and opinions Ex parte Romunder,
1910 C. D. 121; 157 O. G. 209.

As to ex parte affidavits in which the opera-
bility of a patent is attacked, this principle is
followed :

A patent has the benefit of presumptive
validity; and one who would attack its opera-
tiveness, especially ex parte, assumes a pre-
ponderant burden of proof. For this reason,
and also since the Office has no laboratory
means of checking the tests made by affiant, and
since the patentee has no opportunity to de-
fend the operativeness of his claimed invention,
the affidavit should not be given the usual
status of an affidavit in its binding effect as to
factual statements therein made, but should be
accorded merely the status of an expression of
opinion of an expert in the art. With its status
thus construed, the affidavit will be admitted
and considered by the Examiner.

Affidavits to show inoperativeness of the ref-
erence are closely scrutinized.

". . . the failures of experimenters who have
no interest in succeeding should not be accorded
great weight .. . " (citations) In re Michalek,
1947 C. D. 458, 604 O. G. 223.

Affidavits under Rule 132 must be seasonably
filed. In re Taub 1942 C. D. 337; 538 O. G. 29.
The burden is on applicant to prove non-
equivalency where examiner had held the ref-
erence to be equivalent to the claimed invention.
Id.

Though affidavits are often said to be "help-
ful", it depends on the fact situation of each
case whether they help the applicant's conten-
tions. See In re Smith, 1947 C. D. 341; 603
O. G. 184. In re Crossley 1947 C. D. 152; 598
O. G. 323; In re Kokatnur, 1943 C. D. 436; 554
O. G. 6.

Affidavit may relate to meaning of the dis-
closure to those "skilled in the art". Dow v.
Converse, 1903 C. D. 404; 106 O. G. 2291.

Affidavit that applicant has "produced a
grease in accordance with the teachings of Pat-
ent
" and that this grease will not pass
a certain test, states nothing but conclusions.
In re Kokatnur, 1943 C. D. 436, 554 O. G. 6.

In general, an affidavit concerning tests
should state the precise structures or composi-

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tion made and tested, or the precise process
carried out with the precise conditions, and give
the experimental data secured, so that the tri-
bunal before which the affidavit comes can form
its own conclusions. It is desirable that appli-
cant in his letter of transmittal state the con-
clusion he draws. However "no weight can
be given to statements of counsel unsupported
by the record." In re Mason 1946 C. D. 268;
558 O. G. 522. In re Casey 76 USPQ 463.
General expressions of opinion of an affiant in
respect to patentability of claims is not entitled
to weight. In re Garrett 1906 C. D. 645; 122
O. G. 1047.

## 717 File Wrapper

### 717.01 Papers in File Wrapper

Every paper entered on the "Contents" of a file
should be entered in ink and not in pencil. If the
paper is not to be allowed entry in the case, that
fact may be noted in ink at the time the entry on
the "Contents" is made. If subsequently the paper
is allowed entry in the case a line may be drawn
through the "not entered" note. No paper entered
on the "Contents" of the file should ever be with-
drawn or returned to the applicant without special
authority of the Commissioner (Order 2799).

It is directed that entries shall not be made on
the back of a file wrapper, containing the applica-
tion papers for a patent, of papers or actions which
do not become a permanent part of the contents
of the file (Order 767).

The papers when placed in the file are num-
bered and noted in the contents column, the
application papers being No. 1, the print of
the drawing, if there is one, being No. 2, and
the next paper, usually the first Office letter
being No. 3, etc.

The papers are noted in the contents column
according to their character. If it is an Office
action rejecting any claim, the word "Rejec-
tion" is entered on the file, or if the rejection
has taken the form of a requirement for divi-
sion, the entry will so indicate, otherwise the
word "Letter" is used. Papers from the ap-
plicant amending the case are designated
"Amendment", "Letter to Draftsman", "Asso-
ciate Attorney", etc.

Correspondence from the applicant is en-
tered in the contents column in red ink and
Office correspondence is entered in black ink.

After the notation of the character of the
papers, the mailing date is entered in regard
to Office correspondence and the filing date in
regard to correspondence from the applicant.
See Clerk's Manual Part I, Sec. 4.

# 717.01 (a) Arrangement of Papers in File Wrapper

All papers in applications must be arranged and
marked uniformly in the following manner.

The specification and all amendments that are to
be printed must be kept separate from office let-
ters, appeals and miscellaneous correspondence.
The specification and amendments must be fastened
to the second or middle page of the jacket with the
original specification and claims on the bottom and
the last amendment on the top. The print of the
drawing, the Office letters and other papers not
needed by the printer must be fastened to the third
page of the jacket, the print of the drawing being
always kept uppermost. A communication contain-
ing amendments, and explanations should ordinar-
ily not be divided. If the amendments and ex-
planatory matter be presented in the same paper,
it should be treated as an amendment and placed
on the amendment side, or second page of the jacket,
care being taken so to mark and enclose the parts
to be printed by red ink that the printer can readily
distinguish the amendment from the explanatory
matter. All the papers in the case will be marked
serially as heretofore.

Amendments will be lettered serially in the order
of their receipt, all the amendments of the same
date bearing the same serial letter. If the amend-
ment is short it should be transcribed in red ink at
the proper place, and the notation per "A", per "B",
etc. should be written in red ink on the margin,
Amendments that are transcribed should never be
marked A1, A2, B1, B2. Amendments that are too
long to be transcribed should be marked A1, A2, B1, B2,
etc. on the margin, the first amendment of this
character in amendment sheet "A" being A1 the
second A2, etc. At the margin point at which the
amendment is to be inserted should be written "In-
sert A1", "A"", etc., as the case may be, and the same
letters placed in the angle of a caret at the proper
point of insertion, so that when several insertions
are placed in the same line these different insertions
may be readily distinguished.

All insertions and substitutions should be marked
on the original application, if practicable. For in-
stance, if Amendment A provides that claims 1 to 5
should be canceled and new claims substituted, a
red line should be drawn diagonally across claims 1
to 5 and in the margin should be written "Sub. A1".
If at a later date the claims contained in Amend-
ment A' are canceled and a series of claims con-
tained in Amendment B' are submitted, the claims
in Amendment At should be canceled and the proper
notation made in the margin, and in addition the
notation "Sub A"" on the original paper should be
canceled and in its place should be written "Sub B"".

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## 717.01 (b)

## MANUAL OF PATENT EXAMINING PROCEDURE

The last requirement is very important, as the work
of the printer is needlessly delayed and complicated
if he is compelled to search from paper to paper for
the proper insertion.

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

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

## 717.01 (b) Prints

The clerks shall enter as Paper No. 2 the prints
of the drawings fastened inside the file wrapper by
the Application Branch. Such entry, of course, re-
quires endorsement on the file wrapper and on each
print of the appropriate date of receipt and paper
number.

The prints shall always be kept on top of the
papers on the right of the file wrapper.

All prints and inked sketches subsequently filed
to be part of the record should be endorsed with the
date of their receipt in the office and given their
appropriate paper number. (Order 3240, Revised.)

## 717.02 Data Entered on File Wrapper

See also 707.10, 717.01 and 1302.08.

If the Examiner notices an error in any of the
data on the file wrapper set forth in the ten fol-
lowing paragraphs, he should have the same
corrected by the Application Branch :

1\. The serial number given the application
in the Application Branch.

2\. The number of the Examining Division to
which the case is assigned by the Application
Branch.

3\. The name of the applicant.

4\. The residence of the applicant.

5\. The title of the invention.

6\. The date of receipt of the various parts
of the application.

7\. The date when it is considered a complete
application. If the parts of the application
have been received at different dates, the date of
receipt of the last part is the date of the com-
plete application or filing date.

8\. The name and address of the attorney or
representative.

9\. The filing date and name of country of
earliest foreign application, if any, and also of
each additional foreign application filed out-

side the 12-months period, if any. This should
be checked against the oath.

10\. Where a case for which the filing fee was
paid is brought under the Act of 1883, entry on
the file wrapper is made by the Application
Branch.

If the Examiner notices an error in the name
and address of the assignee he should have it
corrected by the Assignment Branch.

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

## 717.02 (a) Statutory Period Ends on Sunday or Holiday

See 710.05.

## 717.02 (b) Name or Residence of In- ventor or Title Changed

When the name or residence of applicant or
7
title or invention is changed by amendment it
must be changed on the face of the file in red
ink by the clerk of the division.
J

Sec. 605.04 (c) explains the procedure to
be followed concerning sending the applica-
tion to the Assignment Branch and the Appli-
cation Branch when Applicant changes name.

## 717.03 Classification During Examina- tion

When a new case is received in a division the
Primary Examiner notes in pencil in the upper
left-hand corner of the face of the file wrapper
the classification of the case and indicates the
assistant examiner who will examine it.

In the upper right hand corner on the face
of the file wrapper is noted Examiner's Book
number, page and item numbers indicating
where the case is recorded in the Examiner's
Register. (See Clerk's Manual.)

## 717.04 Index of Claims

Constant reference is made to the "Index of
Claims" found in the inside of the file wrapper of
all applications. It should be kept up to date so as
to be a reliable index of all claims standing in a case,
and of the amendment in which the claims are to be
found.

A line in ink should be drawn below the number
corresponding to the number of claims originally
presented. Thereafter, a line in ink should be drawn
below the number corresponding to the highest
numbered claim added by each amendment, and to
the left of the number corresponding to the first

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717.07

claim of each amendment there should be placed
the letter designating the amendment.

As any claim is canceled a line should be drawn
through its number. (Circular of February 17,
1936, Revised.)

## 717.05 Field of Search

In each action by an Examiner upon an applica-
tion he shall make an initialed indorsement in ink
on the left-hand page of the open file wrapper, stat-
ing the classes and sub-classes of domestic and for-
eign patents, and the publications in which search
for references was made and also the date of the
search. (Former Order 2146.)

In the above order "initialed indorsement"
means the Examiner's initials should be noted.
Also, the date of search in the Scientific Li-
brary for foreign patents issued to the appli-
cant when sending an application to issue which
was not filed within 12 months of applicant's
earliest foreign application should be noted in
the file wrapper.

# 717.06 Foreign Filing Dates See 1302.06.

## 717.07 Related Applications

The file wrapper should identify earlier filed
related applications. See 202.02.