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OCR transcription for search; preserved printed pages are authoritative

# Chapter 600 Parts, Form and Content of Application

607.01 (a)
Inventor Leaves Service of United States

601
Petition

601.01
Amendment of

601.02
Power of Attorney or Authorization of Agent

607.02
Returnability

602
Original Oath

608
Disclosure

602.01
Cannot Be Amended

602.02
New Oath or Substitute for Original

608.01 (a)

608.01 (b)

May Be Omitted

608.01 (c)

Brief Summary of Invention

608.01 (d)
Reservation Clauses Not Permitted

602.05
Too Old at Time of Filing

602.05 (a) In Division and Continuation Cases

608.01 (g)
Detailed Description of Invention

603.01
After Allowance

604
Administration or Execution of Oaths

608.01 (1)

608.01 (k)
Statutory Requirement

604.02
Venue

604.03
Notaries and Extent of Jurisdiction

608.01 (m)

608.01 (n)
Dependent Claims

608.01 (0)

Basis for Terminology in Descrip-
tion

604.04 (a)
Omission of Certificate

604.05
Consular Fee Stamp

604.05 (a)
Omission

604.06
By Attorney in Case

605
Applicant

605.01
Citizenship

605.02
Residence

605.03
Post Office Address

605.04
Signature and Name

605.04 (a)
Single Signature Form

605.04 (b)
Full First Name Required

605.04 (c)
Change of Name

608.02 (b) Informal

608.02

608.02 (đ)

608.02 (e)
Examiner Determines

608.02 (f)
Modification

608.02 (g)
608.02 (h)
Additional, Duplicate, or Substitute
Transfer From Prior Application

608.02 (j)

608.02 (k)

608.02 (1)
To Continuation or Substitute

608.02 (m) Prints

608.02 (n)
Dates Entered on
Patentability Report Cases
608.02 (0)

607
Filing Fee

607.01
Fee Exempt

608.01 (p)
Completeness

608.01 (r)
Derogatory Remarks About Prior Art

608.01 (s)
Restoration of Canceled Matter

601.01 (t)
Use in Subsequent Application

608.01 (u)
Of Formerly Filed Incomplete Applica-
tion

608.01 (v) Trade-Marks and Trade Names

608.02
Drawing

608.02
a) When New Drawing Is Required

605.04 (d)
Unable To Write

605.04 (e)
Use of Title
Joint-Order of Names

605.04 (f)
605.04 (g)
Correction of Name, Send File to Appli-
cation Branch

605.04 (h)
To Drawing
605.05
Administrator, Executor or Other Legal Rep-
resentative

605.05 (a)
Signature

605.06
Filing by Other Than Inventor

606
Title of Invention

606.01
Examiner May Require Change in Title

608.01
Specification

Parts

Preamble

602.03

Defective Oath Must Not Be Waived by the
Examiner

602.04
Foreign

602.04

a) Ribboned to Other Application Papers

608.01 (e)

608.01 (f)
Brief Description of Drawings

603
Supplemental Oath

608.01 (h)
Mode of Operation

608.01 (1)

Claims

Numbering

604.01
Seal

Original

608.01 (1)

Form

604.04
Consul

604.03 (a) Notarial Powers of Some Military Officers

608.01 (q)
Substitute or Rewritten

Illustration of Prior Art

608.02 (1)
Canceled Sheets to Divisional

\*
Patented, to Reissue

607.01 (b)
Fee Exempt Changed to Fee Filed

607.01 (c)
Fee Filed Changed to Fee Exempt

608.02 (p)
Correction of

608.02 (q)
Conditions Precedent to Amendment of
Drawings

608.02 (r)
Separate Letter to Draftsman

608.02 (s)
Estimating Cost of Correcting Drawings

608.02 (t)
Cancelation of Figures

608.02 (u)
Changing Name of Attorney on Drawing
Forbidden

608.02 (v)

608.02 (w)

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

608.02 (x)

Disposition of Orders for Amendments
of Drawing

608.02 (y)
Return of Drawing

608.03

608.03 (a)
Models, Exhibits, Specimens
Handling of

608.04
New Matter

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

608.04 (b)

By Preliminary Amendment

608.04 (c)
Review of Examiner's Holding

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

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

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

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

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

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

The parts of the application may be included
in a single document, and an approved single
signature form may be used.

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

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

NOTE

Reissue patents, 1401.

Design patents, Chapter 1500.

Plant patents, Chapter 1600.

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

Rule 59. Papers of complete application not to be
returned. The papers in a complete application .will
not be returned for any purpose whatever. If appli-

eants have not preserved copies of the papers, the
Office will furnish copies at the usual cost. See rule
87 for return of drawing.

## 601 Petition

(
1.

Rule 61. Petition. The petition must be addressed to
the Commissioner of Patents and request the grant of a
patent. The residence, and post office address of the
petitioner must appear in the petition if not stated else-
where in the application. The petition need not be
separately signed when part of and attached to the
specification and oath, otherwise it must be signed by
the petitioner.

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

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

The petition need not be dated.

## 601.01 Amendment of Petition

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

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

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

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

## 602 Original Oath

Rule 65. Oath of applicant. (a) The applicant, if
the inventor, must make oath or affirmation that he
does verily believe himself to be the original and first
inventor or discoverer of the process, machine, manu-
facture, composition of matter, or improvement thereof,
for which he solicits a patent ; that he does not know
and does not believe that the same was ever known
or used before his invention or discovery thereof, and
shall state of what country he is a citizen and where
he resides, and whether he is a sole or joint inventor
of the invention claimed in his application. In every
original application the applicant must distinctly state
under oath that to the best of his knowledge and belief
the invention has not been in public use or on sale in
the United Nintes for more than one year prior to his
application, or patented or described in any printed
publication in any country before his invention or more
than one year prior to his application, or patented in
any foreign country prior to the date of his application
on an application filed by himself or his legal repre-

## PARTS, FORM AND CONTENT OF APPLICATION

sentatives or assigns more than twelve months prior
to his application in this country. The oath shall state
whether or not any application for patent on the same
invention has been filed in any foreign country, either
by the applicant or by his legal representatives or
assigns
If any such application has been filed, the
applicant shall name the country in which the earliest
such application was filed, and shall give the day,
month, and year of its filing; he shall also identify
by country and by day, month, and year of filing, every
such foreign application filed more than twelve months
before the filing of the application in this country.
This oath must be subscribed to by the affiant.

See rule 153 for oath in design cases and rule 162 for
oath in plant patent applications.

(b) If the application is made as provided in rules
42, 43, or 47, the oath shall state the relationship of
the affiant to the inventor and, upon information and
belief, the facts which the inventor is required by this
rule to make oath to.

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

Rule 65 has been amended with respect to the
recitation of prior foreign applications. The
applicant must state that no foreign applica-
tions have been filed, if such is the case. If all
foreign applications have been filed within
twelve months of the U. S. filing date, he is re-
quired only to recite the first such foreign ap-
plication, and it should be clear that the for-
eign application referred to is the first filed
foreign application. The applicant is required
to recite all foreign applications filed more
than twelve months prior to the U. S. filing.
It should be noted that an oath in the form
proper before January 1, 1953 is still accept-
able.

The single signature form mentioned in
605.04 (a) includes the oath.

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

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

When joint inventors execute separate oaths,
each oath should make reference to the fact
that the affiant is a joint inventor together with
each of the other inventors indicating them by
name. This may be done by stating that he
does verily believe himself to be the original,
first and joint inventor together with "A or A
& B, etc." as the facts may be.

The oath usually bears an impressed seal of
the administering official but such seal may not
always be required. See Rule 66, and 604.

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

## 602.01 Oath Cannot Be Amended

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

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

## 602.02 New Oath or Substitute for Original

In requiring a new oath, the Examiner should
always give the reason for the requirement and
call attention to the fact that the application of
which it is to form a part must be properly iden-
tified in the body of the new oath, preferably by
giving the serial number and the date of filing.
Where neither the original oath, nor the sub-
stitute oath is complete in itself, but the two
taken together give all the required data, no
further oath is needed.

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

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

## 602.04 Foreign Oath

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

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

Extract from Rule 66. (b) When the oath is taken
before an officer in a country foreign to the United
States, all the application papers, except the drawings,
must be attached together and a ribbon passed one or

more times through all the sheets of the application,
except the drawings, and the ends of said ribbon
brought together under the seal before the latter is
affixed and impressed, or each sheet must be impressed
with the official seal of the officer before whom the
oath is taken. If the papers as filed are not properly
ribboned or each sheet impressed with the seal, the
case will be accepted for examination but before it
is allowed, duplicate papers, prepared in compliance
with the foregoing sentence, must be filed.

## 602.05 Oath Too Old at Time of Filing

The time elapsed between the date of execu-
tion of oath and the filing date of the applica-
tion should be checked for compliance with Rule
65 (c). If an unreasonable time has elapsed,
the Examiner should call for a new oath. What
constitutes a reasonable time is a question of
judgment to be determined by all the circum-
stances in the particular case. (Five weeks plus
time of transmission in the mails was consid-
ered reasonable under the circumstances of ex
parte Heinze, 1919 C. D. 67; 265 O. G. 145).
Note 602.05 (a).

## 602.05 (a) Oath in Division and Con- tinuation Cases

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

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

## 603 Supplemental Oath

Rule 67. Supplemental oath for matter not origi-
nally claimed. (a) When an applicant presents a
claim for matter originally shown or described but
not substantially embraced in the statement of in-
vention or claim originally presented, he shall file a
supplemental oath to the effect that the subject mat-
ter of the proposed amendment was part of his inven-
tion ; that he does not know and does not believe that
the same was ever known or used before his inven-
tion or discovery thereof, or patented or described in
any printed publication in any country before his in-
vention or discovery thereof, or more than one year
before his application, or in public use or on sale in
the United States for more than one year before the
date of his application, that said invention has not
been patented in any foreign country prior to the

date of his application in this country on an applica-
tion filed by himself or his legal representatives or
assigns more than twelve months prior to his appli-
cation in the United States, and has not been aban-
doned. Such supplemental oath should accompany
and properly identify the proposed amendment, other-
wise the proposed amendment may be refused con-
sideration.

(b) In proper cases the oath here required may be
made on information and belief by an applicant other
than inventor.

Rule 67 requires in the supplemental oath
substantially all the data called for in Rule 65
for the original oath. As to the purpose to be
served by the supplemental oath, the Examiner
should bear in mind that it cannot be availed of
to introduce new matter into an application. It
applies only to matter originally shown or de-
scribed but not embraced in the statement of
invention or claims as originally presented.

## 603.01 Supplemental Oath Filed After Allowance

Since the decision in Cutter Co. v. Metropolitan
Electric Mfg. Co., 275 Fed. 158, many supplemental
oaths covering the claims in the case have been filled
after the case is allowed. Such oaths may be filed
as a matter of right and when received they will be
placed in the file by the Issue Branch, but their re-
ceipt will not be acknowledged to the party filing
them. They should not be filed or considered as
amendments under Rule 312, since they make no
change in the wording of the papers on file. (Order
No. 2798.) See 714.16.

## 604 Administration or Execution of Oath

Extract From Rule 66. Officers authorized to ad-
minister oaths. (a) The oath or affirmation may be
made before any person within the United States au-
thorized by law to administer oaths, or, when made in
a foreign country, before any diplomatie or consular
officer of the United States authorized to administer
oaths, or before any officer having an official seal and
authorized to administer oaths in the foreign country
in which the applicant may be, whose authority shall
be proved by a certificate of a diplomatic or consular
officer of the United States, the oath being attested
in all cases in this and other countries, by the proper
official seal of the officer before whom the oath or
affirmation is made. Such oath or affirmation shall be
valid as to execution if it complies with the laws of the
state or country where made. When the person before
whom the oath or affirmation is made in this country
is not provided with a seal, his official character shall
be established by competent evidence, as by a certifi-

## PARTS, FORM AND CONTENT OF APPLICATION

cate from a clerk of a court of record or other proper
officer having a seal.

NOTE: Seals, 604.01.

When unnecessary, 604.01.

In foreign case, 602.04 (a).

### 604.01 Seal

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

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

### 604.02 Venue

That portion of an oath or affidavit indicating
where the oath is taken is known as the venue.
Where the county and state in the venue agree
with the county and state in the seal, no prob-
lem arises. If the venue and seal do not cor-
respond in county and state, the jurisdiction of
the notary must be determined from statements
by the notary appearing on oath, or from the
listing at 604.03. Venue and notary jurisdic-
tion must correspond or the oath is improper.
The oath should show on its face that it was
taken within the jurisdiction of the certifying
officer or notary. This may be given as the
caption of the oath, or in the body of the jurat.
Otherwise, a new oath, or a certificate of the
notary that the oath was taken within his juris-
diction, must be required. Ex parte Delavoye,
1906 C. D. 320; 124 O. G. 626; Ex parte Irwin,
1928 C. D. 13, 367 O. G. 701.

### 604.03 Notaries and Extent of Juris- diction

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

STATEWIDE

Alaska

Illinois

Arkansas

Indiana

Canal Zone

Louisiana

Colorado

Maine

Connecticut

Maryland

Delaware

Massachusetts

District of Columbia

Michigan

Florida

Minnesota

Georgia

Montana

Idaho

Nevada

604.03 (a)

New Hampshire

Puerto Rico

New Jersey

Rhode Island

New Mexico

South Carolina

New York (c)

South Dakota

North Carolina

Utah

North Dakota

Vermont

Oklahoma

Washington

Oregon

Wisconsin

Pennsylvania

Wyoming

COUNTY ONLY

Alabama

Mississippi

Arizona

Tennessee

California

Texas

Kansas

West Virginia

VARIABLE JURISDICTION
(See explanatory paragraphs (a-f) below)

Hawaii (e)

Nebraska (b)

Iowa (a)

Ohio (f)

Kentucky (a)

Virginia (d)

Missouri (a)

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

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

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

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

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

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

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

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

Public Law 506 (81st Congress, Second Ses-
sion) Article 136: (a) The following persons

604.04

on active duty in the armed forces . . . shall
have the general powers of a notary public and
of a consul of the United States, in the per-
formance of all notarial acts to be executed by
members of any of the armed forces, wherever
they may be, and by other persons subject to
this code [Uniform Code of Military Justice]
outside the continental limits of the United
States:

(1) All judge advocates of the Army and Air
Force;

(2) All law specialists;

(3) All summary courts-martial;

(4) All adjutants, assistant adjutants, acting
adjutants, and personnel adjutants;

(5) All commanding officers of the Navy and
Coast Guard;

(6) All staff judge advocates and legal offi-
cers, and acting or assistant staff judge advo-
cates and legal officers; and

(7) All other persons designated by regula-
tions of the armed forces or by statute.

(d) The signature without seal of any such
person acting as notary, together with the title
of his office, shall be prima facie evidence of
his authority.

### 604.04 Consul

When the oath is made in a foreign country,
the authority of any officer other than a diplo-
matic or consular officer of the United States
authorized to administer oaths must be proved
by certificate of a diplomatic or consular officer
of the United States. Rule 66, 604.

### 604.04 (a) Consul-Omission of Cer- tificate

If the consular certificate is omitted, in cases
in which the oath is taken before a notary
abroad, steps must be taken to have an appro-
priate consular officer authenticate the oath.

### 604.05 Consular Fee Stamp

SEc. 10, Act approved April 5, 1906, 22 U. S. C. 1196;
"Whenever a consular officer is required or finds it
necessary to perform any consular or notarial act he
shall prepare and deliver to the party or parties at
whose instance such act is performed a suitable and
appropriate document as prescribed in the consular
regulations and affix thereto and duly cancel an adhe-
sive stamp in the denomination or denominations
equivalent to the fee prescribed for such consular
or notarial act, and no such act shall be legally valld
within the jurisdiction of the Government of the
United States unless such stamp or stamps is or are
affixed and cancelled."

Embassies and legations are not supplied with fee
stamps, and are not required to attach any such
stamps to papers executed by them. (Extract from
Notice of Aug. 4, 1914.)

## 604.05 (a) Omission of Consular Fee Stamp

In applications executed abroad before a con-
sular officer and in which a consular fee stamp
is required but from which the required stamp
is lacking, the Examiner should not require a
consular fee stamp to be furnished. The appli-
cant should be informed that the oath or au-
thentication, as the case may be, does not carry
the required consular fee stamp and that the
applicant should obtain a statement from the
consular officer that a fee stamp had been af-
fixed when the paper was executed.

## 604.06 By Attorney in Case

The language of Rule 66 and 35 U. S. C.
115 is such that an attorney in the case is no
longer barred from administering the oath as
notary. If such practice is permissible under
the law of the jurisdiction where the oath is
administered, then the oath is a valid oath.

The law of the District of Columbia pro-
hibits the administering of oaths by the attor-
ney in the case and hence the old bar still applies
in the case of oaths administered in the Dis-
trict of Columbia. If the oath is known to be
void because of being administered by the attor-
ney in a jurisdiction where the law holds this
to be invalid, the proper action for the Office
to take is to strike the application since there
is in effect no proper application before the
Office and the Examiner will refer the file to
the Solicitor's Office to initiate such action.
(Riegger v. Beierl, 1910 C. D. 12; 150 O. G.
826.) Rule 66, 604.

## 605 Applicant

Rule 41. Applicant for patent. A patent must be
applied for and the application papers must be signed
and the necessary oath executed by the actual inventor
in all cases, except as provided by rules 42, 43, and
47. See rule 147.

Unless the contrary is indicated, the word "appli-
cant" when used in these rules refers to the inventor,
joint inventors who have applied for a patent, or to
the person mentioned in rules 42, 43, or 47 who has
applied for a patent in place of the inventor.

Extract from Rule 15. Joint inventors. (a) Joint
inventors must apply for a patent jointly and each
must sign the application papers and make the re-
quired oath; neither of them alone, nor less than the

=
(

(
€

(
(

(

605.04 (b)

entire number, can apply for a patent for an inven-
tion invented by them jointly, except as provided in
rule 47.

For convertibility from a joint to sole or sole
to joint application see 201.03.

Rule 46. Assigned inventions and patents. In case
the whole or a part interest in the invention or in the
patent to be issued is assigned, the application must
still be made by the inventor or one of the persons
mentioned in rules 42, 43, or 47. However, the patent
may be issued to the assignee or jointly to the inventor
and the assignee as provided in rule 334.

This section concerns filing by the actual in-
ventor. If filed by other, see 409.03.

## NOTE

Disposition of application by inventor, 301.

Inventor dead or insane, 409.

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

### 605.01 Applicant's Citizenship

The statute (35 U. S. C. 115) requires an
applicant to state his citizenship. Where an
applicant is not a citizen of any country, a state-
ment to this effect is accepted as satisfying the
statutory requirement; but a statement as to
citizenship applied for or first papers taken out
looking to future citizenship in this (or any
other) country does not meet the requirement.

### 605.02 Applicant's Residence

The rules of practice require that the appli-
cant state his place of residence. In the case of
an applicant who is in the U. S. Army or U. S.
Navy, a statement to that effect is sufficient as to
residence. For change of residence see 717.02
(b).

### 605.03 Applicant's Post Office Address

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

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

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

Any amendment of the post office address re-
quires the signature of the applicant himself.

### 605.04 Applicant's Signature and Name

Rule 57. Signature. The application must be signed
by the applicant in person. The signature to the oath
will be accepted as the signature to the application
provided the oath is attached to and refers to the
petition, specification and claim to which it applies.
Full names must be given, including the full first
name without abbreviation, and the middle initial or
name if any.

Rule 76. Signature to the specification. The speci-
fication need not be signed when followed by the oath
and constituting part of the original application pa-
pers, otherwise it must be signed by the applicant in
person. See rule 57.

The signing and execution by the applicant
of certain Divisional applications may be
omitted. Rule 147, Section 201.06.

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

### 605.04 (a) Single Signature Form

The single signature form should be executed
only when attached to a complete application
as the last page thereof. Such a form is shown
as No. 16 in the List of Forms on pages 106 and
107 of Rules of Practice of January 1, 1953.

### 605.04 (b) Full First Name Required

Rule 57 requires "full names". The full first
name must appear somewhere in the papers as
filed, and there must be consistency in the
names and signatures. Otherwise, appropriate
amendment is required.

All applications which disclose the full first and
last names with middle initial or name, if any, of the
applicant at any place in the application papers will
be received and considered as a sufficient compliance
with Rules 57 and 76 of the Rules of Practice.

When the full first name of the applicant does not
appear either in the signature or elsewhere in the
papers the Examiner will, in the first official action,
require an amendment over applicant's signature
supplying the omission, and he will not pass the
application to issue until the omission has been sup-
plied unless a statement be filed over the applicant's

1 C.V.
45; 595

Money. .. . analiz
7.0Scew

605.04 (c)

# MANUAL OF PATENT EXAMINING PROCEDURE

own signature setting forth that his full first name is
as signed or what is in fact his full first name.

No affidavit should be required.

The requirement should be made only when for
the first name in the signature a mere initial appears
or what can be only an abbreviation of a name.
(Order No. 3140 Revised.)

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

In the first Office letter, call attention to the
lack of uniformity and request information over
the applicant's signature as to the correct form
of his name, together with any necessary
amendment.

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

If applicant gives the name with the middle
name or initial, interpret the reply as a direc-
tion that the middle name or initial is to be used
in the name on the printed patent. As the
printer takes the name from the signature of the
application, the addition of the middle name or
initial must be indicated in red ink adjacent the
signature.

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

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

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

# 605.04 (c) Applicant Changes Name

In cases where an applicant's name has been
changed after his application has been filed and the
applicant desires that the patent when issued carry
an endorsement as to the change in his name, it will
be sufficient for the applicant to make a request in
writing accompanied by an oath signed with both

names and setting forth the procedure whereby the
change of his name was effected. When such
papers are received the application will be forwarded
to the Assignment Branch and the oath pertain-
ing to the change of name will be recorded in the
assignment records. The Assignment Branch will
then forward the application to the Application
Branch for a change in their records. (Order No.
5106, Revised.)

No change is made on the face of the file
by the Docket Clerk of the examining division,
a suitable endorsement being made by the
Assignment Branch. When ready for allow-
ance, the case should be sent to the Drafting
Branch for the addition of the new name to
the drawing.

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

# 605.04 (d) Applicant Unable To Write

If the applicant is unable to write, his mark
as affixed to the application must be attested to
by a witness. In the case of the oath, the no-
tary's signature to the jurat is sufficient to
authenticate the mark.

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

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

# 605.04 (f) Signature on Joint Appli- cations-Order of Names

It is not essential that the names appear in
the same order in the signatures to the petition,
specification, oath, and drawing.

In joint applications, where the single signature
form is used, the signatures thereto should be in the
same order as the typewritten names. Where the
single signature form is not used, the signatures to
the application should be in the same order as the
typewritten names in the body of the papers. The
order of names of joint patentees in the heading of
the patent is taken from the order in which the
typewritten names first appear in the application
papers. Care should be exercised in selecting the
order of typewritten names before filing, as requests
for subsequent shifting of the names would entail

(

(
E

(

changing numerous records in the Office. Since the
particular order in which the names appear is of no
consequence insofar as the legal rights of the joint
applicants are concerned, no changes will be made
except by permission of the Commissioner. It is
suggested, at the time of filing, that the names of
joint applicants appear in alphabetical order for
facilitating filing and record keeping in the Office.
(Notice of April 4, 1952, Revised.)

# 605.04 (g) When Name Is Corrected, Send to Application Branch

When the name is corrected by amendment,
the file should be sent to the Application Branch
for correction of the name in its record. When
the name is changed, see 605.04 (c).

## 605.04 (h) Signature to Drawing

Rule 82. Signature to drawing. Signatures are not
required on the drawing if it accompanies and is re-
ferred to in the other papers of the application, other-
wise the drawing must be signed. The drawing may
be signed by the applicant in person or have the name
of the applicant placed thereon followed by the sig-
nature of the attorney or agent as such.

Extract from Rule 8', Drawings. (h) Location of
signature and names. The signature of the applicant,
or the name of the applicant and signature of the
attorney or agent, may be placed in the lower right-
hand corner of each sheet within the marginal line,
or may be placed below the lower marginal line.

The Rules now permit (a) the drawing to be
signed as in the past, (b) to be signed as in the
past but below the lower marginal line, or (c)
no signature on the drawing provided it accom-
· panies and is referred to in the other papers of
a new application.

The signature when placed on the drawing
should never cross the marginal line. The full
first name of the inventor is not required on
the drawing. Drawings filed without the in-
ventor's name thereon, will have the name
applied in pencil by the Mail Branch.

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

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

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

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

The name or signature of the inventor must
be identified as such by an appropriate legend.
Each sheet must be signed when the signature
is necessary.

## 605.05 Administrator, Executor, or Other Legal Representative

In an application filed by a legal representa-
tive of the inventor, the specification should
not be written in the first person. Instead of
the usual "I have found," the wording should
be "it was found."

For prosecution by administrator or executor,
see 409.01 (a).

For prosecution by heirs, see 409.01 (a) and
409.01 (d).

For prosecution by representative of legally
incapacitated inventor, see 409.02.

For prosecution by other than inventor, see
409.03.

## 605.05 (a) Signature of Legal Repre- sentative

If the drawing is signed by the legal repre-
sentative it must follow this form:

John A. Jones, deceased,
by Mary A. Jones, Administratrix.
The other signatures must either be in the
above form or:

Mary A. Jones
Administratrix of Estate of
John A. Jones, deceased.

If the drawing is signed by the attorney, this
form must be used :

John A. Jones, deceased,
by Mary A. Jones, Administratrix,
by William A. Smith, Atty.

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

## 605.06 Filing by Other Than Inventor See 409.03.

### 606 Title of Invention

Rule 72. Title of the invention. The title of the in-
vention, which should be as short and specific as pos-
sible, should appear as a heading on the first page of
the specification, if it does not otherwise appear in the
beginning of the application.

Despite the statement in the Rule, the Ex-
aminer should not require that the title be
placed at this particular location.

606.01

The title of the invention should be in the
singular as this is the way it will appear on the
face of the file and in the patent. Even though
applicant should use a plural title, this Office
will employ the title in the singular.

### 606.01 Examiner May Require Change in Title

Where the title is not descriptive of the invention
claimed, the Examiner should require the substitu-
tion of a new title that is clearly indicative of the
invention to which the claims are directed. This
may result in slightly longer titles, but the loss in
brevity of title will be more than offset by the gain
in its informative value in indexing, classifying,
searching, etc. If a satisfactory title is not supplied
by the applicant, the Examiner may change the title
by Examiner's Amendment on or after allowance.
(Extract Notice of July 1, 1946.)

If a change in title is the only change being made
by the Examiner at the time of allowance a separate
Examiner's Amendment need not be prepared. The
change in title will be incorporated in the Notice
of Allowance. This will be accomplished by adding
the typewritten notation in capital letters "AS
AMENDED BY EXAMINER" following the heading
"Title of Invention or Improvement" and entering
thereunder the title as changed by the examiner.

The Primary Examiner or the assistant examiner
making the change must initial any Notice of Allow-
ance containing a change in the title of invention.

The Notice of Allowance containing a change of
title will be authority for the clerk to make the
change indicated.

However, if an Examiner's Amendment must be
prepared for other reasons any change in title will
be incorporated therein. (Notice of May 23, 1950.)

### 607 Filing Fee

While a filing fee, except in certain applica-
tions in which the Government has an interest,
is a sine qua non part of the complete applica-
tion, it seldom presents any question requiring
the attention of the Examiner. The requisite
fee must be paid before the application is given
a filing date, and hence before it is sent to the
examining division, Rule 22. Fees are listed
in Rule 21.

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

### 607.01 Fee Exempt

There are two types of Fee Exempt appli-
cations: (a) those filed under 35 U. S. C. 266

and (b) those filed under a ruling of the Comp-
troller General's Opinion B-111, 648:

FILED UNDER U. S. C. 266

35 U. S. C. 266. Issue of patents without fees to
Government employees. The Commissioner may grant,
subject to the provisions of this title, to any officer,
enlisted man, or employee of the Government, except
officers and employees of the Patent Office, a patent
without the payment of fees, when the head of a de-
partment or agency certifies the invention is used or
likely to be used in the public interest and the appli-
cant in his application states that the invention de-
scribed therein, if patented, may be manufactured and
used by or for the Government for governmental pur-
poses without the payment to him of any royalty
thereon, which stipulation shall be included in the
patent. (Based on Act Mar. 3, 1883, amended Apr.
30, 1928.)

In revising such applications for issue, the specifi-
cation should be checked to assure the presence of
the substance of the following statement therein:

"The invention described herein may be manu-
factured and used by or for the Government for
governmental purposes without the payment of any
royalty thereon."

If the substance of such a statement does not
appear in the specification, but is present elsewhere
in the record, the same should be entered, by Exam-
iner's Amendment, as the first paragraph of the
specification.

If the substance of this statement is not present
at any point in the record of the application, an
action should be made requiring such statement,
signed by the applicant, and an amendment direct-
ing insertion of same as the first paragraph of the
specification. A shortened statutory period for re-
sponse should be set and the application withheld
from issue until such response has been made.
(Notice of June 6, 1949, Revised.)

FILED UNDER COMPTROLLER GENERAL'S OPINION

For these applications to be fee exempt, the
inventor does not have to be a Government em-
ployee but there must be an assignment giving
the Government the entire right, title and inter-
est in the application without any reversionary
clause and/or condition which is less than the
entire ownership for the full term of the patent.

If an application is received in the Examin-
ing Division that is filed under Comptroller
General's Opinion B-111,648 but does not
have the assignment to the Government en-
dorsed thereon, it should not be examined until
the application is so assigned.

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

An opinion of the Attorney General, dated
January 14, 1936, rules that an application filed
under the Act of 1883, as amended, now 35
U. S. C. 266, which meets the requirements of
this statute as to the status of the inventor at
the time of filing, is sufficient warrant for the
issuance of a patent to the inventor if the in-
vention claimed therein is found patentable,
whether or not he is in the service of the United
States at the time the patent issues.

### 607.01 (b) Fee Exempt Changed to Fee Filed

Where an application is filed under 35 U. S. C.
266, the regular filing fee can be subsequently
paid and proper amendment made by the in-
ventor, concurred in by the Head of the Depart-
ment concerned, cancelling the offer of dedica-
tion, the fee being entered on the file and the
original date of the application retained.

### 607.01 (c) Fee Filed Changed to Fee Exempt

An application for which a filing fee has been paid
may issue under 35 U. S. C. 266 if the applicant
qualifies under this section, and files the required
dedication by amendment signed by the inventor
and certified by the Head of the Department. In
such case the docket clerk of the division will for-
ward the application to the Application Branch for
appropriate amendment of the file wrapper and of
the record in the Application Branch. (Notice of
August 10, 1938, Revised.)

### 607.02 Returnability of Fees

All questions pertaining to the return of fees will
be referred to the Financial Division. Examiners
and Chiefs of other divisions will express no opinion
to attorneys or applicants as to whether or not fees
are returnable in particular cases. (Notice of Oct.
11, 1937.)

### 608 Disclosure

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

### 608.01 Specification

Rule 71. Detailed description and specification of
the invention. (a) The specification must include a
written description of the invention or discovery and
of the manner and process of making and using the
same, and is required to be in such full, clear, con-
cise, and exact terms as to enable any person skilled
in the art or science to which the invention or dis-
covery appertains, or with which it is most nearly
connected, to make and use the same.

(b) The specification must set forth the precise in-
vention for which a patent is solicited, in such manner
as to distinguish it from other inventions and from
what is old. It must describe completely a specific
embodiment of the process, machine, manufacture,
composition of matter or improvement invented, and
must explain the mode of operation or principle when-
ever applicable. The best mode devised by the in-
ventor of carrying out his invention must be set forth,

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

Certain cross notes to other related applica-
tions may be made. Rule 78, 202.01.

Rule 52. Language, paper, writing, margins. (a)
The petition, specification, and oath must be in the
English language. All papers which are to become a
part of the permanent records of the Patent Office must
be legibly written or printed in permanent ink.

(b) The specification and claims, and also papers
subsequently filed, must be plainly written on but one
side of the paper. A wide margin must be reserved on
the left-hand side and on the top of each page and the
lines must not be crowded too closely together. Legal
paper, 8 to 81% by 121/2 to 13 inches, typewritten and
double spaced with margins of one and one-half inches
on the left-hand side and top is deemed preferable.
Typewritten or printed papers suitable for use by the
Office may be required if the papers originally filed are
not correctly, legibly and clearly written.

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

In order that specifications may be expeditiously
handled by the Office, page numbers should be
placed at the center of the bottom of each page.
A top margin of at least 11/2 inches should be re-
served on each page to prevent possible mutilation

of text when the papers are punched for insertion
in a file jacket. (Notice of March 8, 1950.)

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

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

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

The requirement that the specification must
be in the English language is not satisfied by
the filing of a signed specification in a foreign
language together with a sworn translation
thereof. In re Incomplete Application 659
O. G. 917.

The specification does not require a date.

If a newly filed application obviously fails to
disclose an invention with the clarity required
by 35 U. S. C. 112, revision of the application
should immediately be required. See 702.01.

As the specification is never returned to ap-
plicant under any circumstance, he should re-
tain a line for line copy thereof. In amend-
ing, the attorney or the applicant requests in-
sertions, cancellations, or alterations, giving the
page and the line.

### 608.01 (a) Parts of Specification

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

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

(b) Brief summary of the invention.

(d) Detailed description.

(e) Claim or claims.

(f) Signature (see rule 76).

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

### NOTE

Design patent specification, 1503.01.

Plant patent specification, 1601.5.

Reissue patent specification, 1401.06.

### 608.01 (b) Preamble

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

### 608.01 (c) Preamble May Be Omitted

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

### 608.01 (d) Brief Summary of Inven- tion

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

Since the purpose of the brief summary of
invention is to apprise the public, and more
especially those interested in the particular art
to which the invention relates, of the nature of
the invention, the summary should be directed
to the specific invention being claimed, in con-
tradistinction to mere generalities which would
be equally applicable to numerous preceding
patents. That is, the subject matter of the in-
vention should be described in one or more
clear, concise sentences or paragraphs. Stereo-
typed general statements that would fit one case
as well as another serve no useful purpose and
may well be required to be canceled as surplus-
age, and, in the absence of any illuminating
statement, replaced by statements that are
directly in point as applicable exclusively to the
case in hand.

The brief summary, if properly written to set
out the exact nature, operation and purpose of
the invention will be of material assistance in
aiding ready understanding of the patent in
future searches. See 905.04. The brief sum-
mary should be more than a mere statement of
the objects of the invention, which statement is
also permissible under Rule 73.

The brief summary of invention should be
consistent with the subject matter of the claims.
Note final review of application and prepara-
tion for issue, 1302.

(

### 608.01 (e) Reservation Clauses Not Permitted

Rule 79. Reservation clauses not permitted. A res-
ervation for a future application of subject matter dis-
closed but not claimed in a pending application will
not be permitted in the pending application, but an
application disclosing unclaimed subject matter may
contain a reference to a later filed application of the
same applicant or owned by a common assignee dis-
closing and claiming that subject matter.

### 608.01 (f) Brief Description of Draw- ings

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

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

### 608.01 (g) Detailed Description of In- vention

A detailed description of the invention and
drawings follows the general statement of in-
vention and brief description of the drawings.
This detailed description, required by Rule 71,
608.01, must be in such particularity as to en-
able any person skilled in the pertinent art or
science to make and use the invention without
involving extensive experimentation. An ap-
plicant is ordinarily permitted to use his own
terminology, as long as it can be understood.
Necessary grammatical corrections, however,
should be required by the Examiner, but it must
be remembered that an examination is not made
for the purpose of securing grammatical
perfection.

The reference characters must be properly
applied, no single reference character being
used for two different parts or for a given part
and a modification of such part. In the latter
case, the reference character, applied to the
"given part," with a prime affixed may advan-
tageously be applied to the modification. Every
feature specified in the claims must be illus-
trated, but there should be no superfluous
illustrations.

The description is a dictionary for the claims
and should provide clear support or antecedent

basis for all terms used in the claims. See Rule
75 in 608.01 (i), 608.01 (o), and 1302.01.

NOTE .- Completeness 608.01 (p).

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

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

În chemical cases, complete data necessary for
the preparation and use of at least one example
of the invention should be presented.

NOTE .- Completeness 608.01 (p).

### 608.01 (i) Claims

Rule 75. Claim. (a) The specification must con-
clude with a claim particularly pointing out and dis-
tinctly claiming the subject matter which the applicant
regards as his invention or discovery.

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

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

(d) The claim or claims must conform to the inven-
tion as set forth in the remainder of the specification
and the terms and phrases used in the claims must find
clear support or antecedent basis in the description so
that the meaning of the terms in the claims may be
ascertainable by reference to the description.

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

### NOTE

Numbering of Claims, 608.01 (j).

Form of Claims, 608.01 (m).

Dependent claims, 608.01 (n).
Examination of claims, 706.

Claims in excess of fee, 714.10.

### 608.01 (j) Numbering of Claims

Rule 126. Numbering of claims. The original num
bering of the claims must be preserved throughout the
prosecution. When claims are cancelled, the remaining
claims must not be renumbered. When claims are
added by amendment or substituted for canceled
claims, they must be numbered by the applicant con-
secutively beginning with the number next following
the highest numbered claim previously presented
(whether entered or not). When the application is
ready for allowance, the examiner, if necessary, will
renumber the claims consecutively in the order in

# MANUAL OF PATENT EXAMINING PROCEDURE

## 608.01 (k)

which they appear or in such order as may have been
requested by applicant.

## 608.01 (k) Statutory Requirement of Claims

Sec. 35 U. S. C. 112 requires that the appli-
cant shall particularly point out and distinctly
claim the subject matter which he regards as
his invention. The portion of the application
in which he does this forms the claim or claims.
This is an important part of the application,
as it is the definition of that for which protec-
tion is granted.

## 608.01 (1). Original Claims

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

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

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

## 608.01 (m) Form of Claims

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

See Rejections not based on Prior Art 706.03.

## 608.01 (n) Dependent Claims

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

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

For example, claim 2, a dependent claim,
could read as follows:

2\. The product of claim 1 in which . . .

A dependent claim cannot directly refer back
to two or more preceding claims. For example,
a claim reading as follows:

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

is not permitted. Such a claim disguises the
true number of claims, since it is in reality two
claims. It is also alternative.

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

2\. The machine of claim 1 in which

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

is permitted.

There may be several series of dependent claims
in a single application. All the claims in each series
of dependent claims (i. e., those in addition to the
base or independent claim) must either be in im-
mediate consecutive order or as close thereto as is
physically possible. In other words, it is permissi-
ble to have dependent claims which are dependent
on the same dependent claim and are separated
therefrom only by each other. (Notice of December
9, 1946, and Memorandum of July 16, 1951, revised.)

A dependent claim, which is otherwise allow-
able, should not be rejected merely because the
basic claim is rejected. See 707.07 (j).

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

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

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

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

☒

608.01 (r)

(

New claims and amendments to the claims
already in the case should be scrutinized not
only for new matter but also for new terminol-
ogy. While an applicant is not limited to the
nomenclature used in the application as filed,
yet whenever by amendment of his claims, he
departs therefrom, he should make appropriate
amendment of his specification so as to have
therein clear support or antecedent basis for the
new terms appearing in the claims. . This is
necessary in order to insure certainty in con-
struing the claims in the light of the specifica-
tion. Ex parte Kotler 1901 C. D. 62; 95 O. G.
2684. See Rule 75, 608.01 (i) and 1302.01.

## 608.01 (p) Completeness

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

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

While the prior art setting may be mentioned
in general terms, the essential novelty, the es-
sence of the invention, must be described in
such details, including proportions and tech-
niques where necessary, as to enable those per-
sons skilled in the art to make and utilize the
invention.

Specific operative embodiments or examples
of the invention must be set forth. Examples
and description should be of sufficient scope as
to justify the scope of the claims. Markush
claims must be provided with support in the
disclosure for each member of the Markush
group. Where the constitution and formula of
a chemical compound is stated only as a proba-
bility or speculation, the disclosure is not suffi-
cient to support claims identifying the com-
pound by such composition or formula.

A complete disclosure should include a state-
ment of utility. This usually presents no prob-
lem in mechanical cases. In chemical cases,
varying degrees of specificity are required.

A disclosure involving a new chemical com -.
pound or composition must teach persons
skilled in the art how to make the compound
or composition. Incomplete teachings may not
be completed by reference to subsequently filed
applications. If the starting material is old
but difficult to locate in the literature, the liter-
ature citation should be incorporated into the
specification. This may be done by amend-
ment. In the application as filed, preparation
of a new chemical starting material may be

described generally along with reference to a
concurrently or previously filed application by
the same inventor wherein the detailed prepa-
ration is given. If a concurrently or previously
filed application of the same inventor ade-
quately discloses the preparation of the start-
ing material, amendments to include reference
to such application by serial number and a gen-
eral method of preparation are proper.

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

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

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

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

## 608.01 (q) Substitute or Rewritten Specification

Rule 125. Substitute specification. If the number or
nature of the amendments shall render it difficult to
consider the case, or to arrange the papers for printing
or copying, the examiner may require the entire speci-
fication or claims, or any part thereof, to be rewritten.
A substitute specification will ordinarily not be ac-
cepted unless it has been required by the examiner.

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

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

New matter in amendment, see 608.04.

Application prepared for issue, see 1302.02.

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

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

(

# 608.01 (s)

# MANUAL OF PATENT EXAMINING PROCEDURE

## 608.01 (s) Restoration of Canceled Matter

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

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

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

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

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

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

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

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

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

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

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

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

(2) In this country, their meanings are well
known and satisfactorily defined in the litera-
ture.

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

The relationship between a trade-mark and the
product it identifies is sometimes indefinite, uncer-
tain and arbitrary. The formula or characteristics
of the product may change from time to time and

yet it may continue to be sold under the same trade-
mark. In patent specifications, every element or
ingredient of the product should be set forth in
positive, exact, intelligible language, so that there
will be no uncertainty as to what is meant. Arbi-
trary trade-marks which are liable to mean differ-
ent things at the pleasure of manufacturers do not
constitute such language.

However, if the product to which the trade-mark
refers is otherwise set forth in such language that
its identity is clear the Examiners are authorized to
permit the use of the trade-mark if it is distin-
guished from common descriptive nouns, as by capi-
talization and/or quotation marks. If the trade-
mark has a fixed and definite meaning it constitutes
sufficient identification unless some physical or
chemical characteristic of the article or material is
involved in the invention. In that event as also in
those cases where the trade-mark has no fixed and
definite meaning, identification by scientific or other
explanatory language is necessary.

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

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

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

( )

(

608.02 (c)

(

€

## 608.02 Drawing

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

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

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

## NOTE

Standards for drawings, Rule 84.

A booklet "Guide for Patent Draftsmen" is avail-
able from the Superintendent of Documents, U. S.
Government Printing Office, Washington 25, D. C.,
Price 15 cents.

Design patent drawings, Rule 152, 1503.02.
Plant patent drawings, Rule 165.

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

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

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

I See: Correction of drawings, 608.02 (p).
Prints, preparation and distribution, 508, 608.02
(m). Prints, Return of drawing, 608.02 (y).

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

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

If the drawings are informal, but may be
admitted for examination purposes the Drafts-
man writes in lead pencil in the margin of the

drawing "Inf. A. F. E." (admit for examina-
tion) together with his criticism and if the
drawings can be corrected he adds the words
"can be corrected." On all informal drawings
that cannot be freed from objection he notes the
words "New drawings required." The drawings
are then returned to the Application Branch.

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

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

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

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

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

## 608.02 (b) Informal Drawings

Rule 85. Informal drawings. The requirements of
Rule 84 relating to drawings will be strictly enforced.
A drawing not executed in conformity thereto may be
admitted for purpose of examination, but in such case
the drawing must be corrected or a new one furnished,
as required. The necessary corrections will be made
by the Office upon applicant's request and at his ex-
pense. (See Rule 21.)

If the drawing is such that the prosecution
of the application can be properly carried on
without the corrections being made, the Exam-
iner should inform the applicant that the cor-
rections need not be made until patentable sub-
ject matter is found in the application. Even
where appeal is taken, if no claim has been
allowed, correction of the drawing will not be
insisted on.

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

The photographic copies of the drawings must
always be kept on top of the papers on the right of

## 608.02 (d)

## MANUAL OF PATENT EXAMINING PROCEDURE

the file wrapper so as to be visible upon opening the
wrapper and easily detached.

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

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

Immediately upon the receipt of the hard copies
of patents issued by the examining division, the
docket clerk should have the prints pulled, marked
in the upper left hand corner with the patent num-
ber and sent to the Issue and Gazette Branch.

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

No application should be sent to issue or to aban-
doned files unless the original drawing is checked up
and found in the division. (Order No. 3104, Revised,
and Memorandum of Sept. 23, 1952.)

## 608.02 (d) Complete Illustration in Drawings

Rule 83. Content of drawing. The drawing must
show every feature of the invention specified in the
claims. When the invention consists of an improve-
ment on an old machine the drawing must when pos-
sible exhibit, in one or more views, the improved por-
tion itself, disconnected from the old structure, and
also in another view, so much only of the old struc-
ture as will suffice to show the connection of the in-
vention therewith.

## 608.02 (e) Examiner Determines Completeness of Drawings

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

## 608.02 (f) Modifications in Drawings

Modifications may not be shown in broken
lines on figures which show in solid lines
another form of the invention. (Ex parte
Badger, 1901 C. D. 195; 97 O. G. 1596.)

All modifications described must be illus-
trated, or the text canceled. (Ex parte Peck,
1901 C. D. 136; 96 O. G. 2409.) Likewise, any
structural detail that is of sufficient importance
to be described should be shown in the drawing.
(Ex parte Good, 1911 C. D. 43; 164 O. G. 739.)
This requirement does not apply to a mere ref-
erence to well-known and conventional parts.
NOTE .- Correction of drawing, 608.02 (p).

## 608.02 (g) Illustration of Prior Art

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

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

When an amendment is filed stating that at the
same time substitute or additional sheets of draw-
ings are filed and such drawings have not been trans-
mitted to the examining division, the docket clerk in
the examining division should call the Application
Branch before entering the amendment to ascertain
if the drawing was not received. In the next com-
munication of the Examiner the applicant is noti-
fied if the drawings have not been received. (Notice
of March 24, 1919, Revised.)

To avoid accumulation of canceled sheets of
drawings, the Examiners will not admit an
additional or substitute drawing, unless the
necessities of the case so require. If the Exam-
iner considers an additional or substitute sheet
of drawing necessary it must be submitted to
the Chief Draftsman before entering it in the
case.

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

For return of drawing, see 608.02 (y).

## 608.02 (i) Transfer of Drawings From Prior Applications

Rule 88. Use of old drawings. If the drawings of a
new application are to be identical with the drawings
of a previous application of the applicant on file in
the Office, or with part of such drawings, the old draw-
ings or any sheets thereof may be used if the prior
application is, or is about to be, abandoned, or if the
sheets to be used are cancelled in the prior applica-

(

(
(

(
E

608.02 (n)

(

tion. The new application must be accompanied by a
letter requesting the transfer of the drawings, which
should be completely identified.

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

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

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

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

## 608.02 (k) Transfer of Drawings to Reissue

Extract from Rule 174. The drawings upon which
the original patent was issued may be used in reissue
applications if no changes whatsoever are to be made in
the drawings. In such cases, when the reissue appli-
cation is filed, the applicant must submit a temporary
drawing which may consist of a copy of the printed
drawings of the patent or a photoprint of the original
drawings securely mounted by pasting on sheets of
drawing board of the size required for original draw-
ing, or an order for the same.

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

If there is more than one sheet of original
drawing, a required change on any sheet will
preclude the use of the entire set of the original
drawings which must be kept intact and in the
condition existing at the time of issue of the
original patent. See 1401.05.

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

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

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

Prints submitted in lieu of drawings are dated
on the back by the Correspondence and Mail
Branch of the General Services Division.
These prints are mounted upon Bristol board
by the Application Branch and the back of the
board upon which the prints are mounted bears
a date stamped by the Application Branch to
correspond with the then covered date of the
Mail Branch.

### 608.02 (m) Prints

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

Photographic prints are made of the draw-
ings of an acceptable application. Prints of
the drawings as filed are entered in the appli-
cation, given a paper number and kept on top of
the papers on the right side of the file wrapper,
see 717.01 (b).

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

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

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

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

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

When a case that has had Patentability Report
prosecution is passed for issue or becomes aban-

## 608.02 (0)

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

## 608.02 (o) Dates Entered on Drawing

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

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

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

The Examining Division receipt date is ap-
plied by the clerk of the Examining Division.

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

## 608.02 (p) Correction of Drawings

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

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

NOTE .- Correction is deferrable, see 608.02 (b),
correction at allowance and issue, see 608.02 (w) and
1802.05.

## 608.02 (q) Conditions Precedent to Amendment of Drawing

Correction and alterations in the disclosure of the
drawings of a pending application may be made only
under the supervision of, or by the Chief Draftsman.

No alterations as above indicated will be permitted
unless required by an Examiner's letter in each case,
or proposed in writing by applicant or his attorney.
In either case the alterations or corrections as indi-
cated in the sketches filed after the requirement by
the Examiner, or with the request of the applicant
or his attorney receive the written approval of the

Examiner before the case is sent to the Chief Drafts-
man. (Extract from Order No. 1958, Revised.)

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

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

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

NOTE .- Changes which may require sketches, 608.02
(v).

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

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

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

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

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

When giving an estimate in a case where no al-
lowable subject matter has been found the Exam-
iner should inform the applicant that no correction
will be made until a claim is found to be allowable.
If specifically requested by the applicant, the draw-
ing will be corrected whether or not a claim is allow-
able. (Extract from Notice of February 1, 1932.)

If an application is ready for allowance ex-
cept for a correction required by the Official
Draftsman, such as in a case where the lines are
rough and blurred, the Examiner will obtain
an estimate of the cost of this work from the
Draftsman even though applicant has not re-

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608.02 (x)

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quested such an estimate. Including the esti-
mate in the final requirement for correction of
the drawing may avoid prolonging the prose-
cution.

## 608.02 (t) Cancelation of Figures

Cancelation of one or more figures which do not
occupy entire sheets of the drawings is done by the
docket clerk of the examining division who encloses
a figure and its legend with a red ink line. No por-
tion of the figure itself should be crossed by the red
line. The words "Canceled Per" and the letter
identifying the amendment directing the cancela-
tion should be written in red ink within the red line.

Cancelation of an entire sheet of drawings is done
by stamping the words "Canceled Per" in the 11/4"
x 8" area at the top of the drawing within the mar-
ginal line in the space reserved for the heading.

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

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

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

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

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

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

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

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

Blueprints with the changes to be made
sketched thereon may be used. If a blueprint
is submitted with the changes made in pencil,

the Draftsman will ink in the changes and
charge the applicant for the work of inking the
pencil. Blueprints are not returned.

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

Where an application is ready for issue except for
a slight defect in the drawing not involving change
in structure, the Examiner will prepare an Examin-
er's Amendment indicating the change made and
note in pencil on the drawing the addition or altera-
tion to be made and send the drawing by the file
clerk to the Draftsman for the required correction.

As a guide to the Examiner the following correc-
tions are illustrative of those that may thus be made:

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

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

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

5\. Changing Roman Numerals to Arabic Numer-
als to agree with specification.

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

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

8\. Changing lead lines.

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

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

Where the ordered correction of the drawing in
a case up for action by the Examiner is approved,
the application and drawing are forwarded to the
draftsman provided there is an allowable claim or
there has been a specific request by applicant that
the drawing be corrected regardless of whether or
not a claim has been allowed (608.02 (s)). For
forwarding, applicant's letter to the draftsman is
attached to the outside of the file and the Examiner
writes on said letter "Approved", with the date of
approval and his initials. If the ordered correction
for the drawing will put the case in condition for
allowance, the Examiner adds a "Special this case
is ready for allowance" tag to the outside of the file
wrapper and sends the file, drawing, letter for cor-
rection of drawing, and special tag to the draftsman
by the file clerk. The tag is signed by the Primary
Examiner, or, in his absence by the assistant chief.
These cases must be so marked if the draftsman is
expected to make the correction "special."

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## 608.02 (y)

Where the correction is not approved, for exam-
ple, because the proposed changes are erroneous, or
involve new matter or (although otherwise proper)
do not include all necessary corrections, the case and
request for correction of drawing are not sent to the
draftsman. The Examiner's reasons for not approv-
ing the corrections to the drawing should be set forth
in the Office action. (Extract from Notice of Febru-
ary 1, 1932, Revised.)

## 608.02 (y) Return of Drawing

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

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

If there is an accepted drawing in the case,
other drawings (except those originally filed)
that have been finally denied admission will be
returned to the applicant.

The Examiner states in his letter that the
drawing is being returned under separate cov-
er, giving the reason therefor; e. g., unentered
because of new matter, paper poor, or returned
at applicant's request.

Such a request must be filed within a reasonable
time; otherwise the drawing may be disposed of at
the discretion of the Commissioner.

When a drawing is to be returned, the file, letter
and drawing are taken to the Drafting Branch where
the letter will be stamped and the drawing returned.
The letter stating that the drawing is returned is
mailed by the Examining Division.

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

## 608.03 Models, Exhibits, Specimens

Rule 91. Models not generally required as part of
application or patent. Models were once required in
all cases admitting a model, as a part of the applica-
tion, and these models became a part of the record of
the patent. Such models are no longer generally re-
quired (the description of the invention in the specifi-
cation, and the drawings, must be sufficiently full and
complete, and capable of being understood, to dis-
close the invention without the aid of a model), and
will not be admitted unless specifically called for.

Rule 92. Model or exhibit may be required. A
model, working model, or other physical exhibit, may
be required if deemed necessary for any purpose on
examination of the application.

With the exception of cases involving perpet-
ual motion, a model is not ordinarily required
by the Office to demonstrate the operativeness of
a device. If operativeness of a device is ques-

tioned, the applicant must establish it to the
satisfaction of the Examiner, but he may choose
his own way of so doing.

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

Rule 93. Specimens. When the invention relates to
a composition of matter, the applicant may be required
to furnish specimens of the composition, or of its in-
gredients or intermediates, for the purpose of inspec-
tion or experiment.

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

All models received in this Office, whether form-
ing part of an application, or filed upon request from
the Examiner, must be received from the Model
and Receiving Room and not from the applicant or
his agent. It is necessary that all models should be
taken to the Model Room for proper recording in
order that they may be located under subsequent
inquiry and for final disposition. The Examiners
should, therefore, refuse to accept models from in-
ventors or attorneys. Models properly received and
entered upon the books of the Model Clerk will be
delivered by a representative of the Property Clerk's
Office (Notice of Nov. 26, 1921).

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

When an exhibit or model is received, it will
be forwarded from the Model Room to the
examining division together with Form PO-
244a. A label showing attorney's name and ad-
dress should be attached to the model or exhibit
so that it can be returned after prosecution of
case. If exhibit is too large to be kept in the
division during prosecution of case, it may be
sent to the Model Room together with Form
PO-244a properly checked to indicate whether
exhibit is to be held or returned to sender.

Rule 94. Return of models, exhibits or specimens.
Models, exhibits, or specimens in applications which
have become abandoned, and also in other application
on conclusion of the prosecution, may be returned to
the applicant upon demand and at his expense, unless
it be deemed necessary that they be preserved in the
Office. Such physical exhibits in contested cases may
be returned to the parties at their expense. If not
claimed within a reasonable time, they may be disposed
of at the discretion of the Commissioner.

When a model is to be returned a letter should
be written to applicant by the Examining Divi-
sion stating that it is being returned under sep-

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# PARTS, FORM AND CONTENT OF APPLICATION

608.04 (c)

arate cover and the model room should be
properly notified to return the model.

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

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

NOTE .- Plant specimens, 1607, Rule 166.

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

## 608.04 New Matter

Rule 118. Amendment of disclosure. In original ap-
plications, all amendments of the drawings or specifi-
cations, and all additions thereto, must conform to at
least one of them as it was at the time of the filing of
the application. Matter not found in either, involving
a departure from or an addition to the original disclo-
sure, cannot be added to the application even though
supported by a supplemental oath, and can be shown
or claimed only in a separate application.

In establishing a disclosure applicant may
rely not only on the specification and drawing
as filed but also on the original claims if their
content justifies it. Note 608.01 (1).

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

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

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

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

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

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

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

## 608.04 (b) New Matter by Prelimi- nary Amendment

As an applicant has the right to amend before
action on his case provided the number of claims
is kept within the limit imposed by his filing
fee, an amendment is sometimes filed along with
the filing of the application. Such amendment
does not enjoy the status as part of the original
disclosure. Its test as to involving new matter
is the same as though filed on a subsequent date.
Ex parte Leishman, 137 Ms. 366, Pat. No. 1,581,-
937, and Ex parte Adams, Pat. No. 1,789,921.

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

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

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