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# MANUAL OF

# PATENT EXAMINING PROCEDURE

PATENT

PROPERTY OF THE UNITED STATES GOVERNMENT

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## MANUAL OF

## PATENT EXAMINING PROCEDURE

Second Edition, November 1953

NEED STATES O

\*
AMERICA

707.02
mattino requiring
Personal relation of
Primano

U. S. PATENT OFFICE . DEPARTMENT OF COMMERCE

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First Edition, November 1949
Revision 1, November 1950
Revision 2, December 1951
Revision 3, May 1952
Second Edition, November 1953

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## Foreword

This Manual is published to provide examiners in the Patent Office with
a reference work on the practice and procedure within the Office as it relates
to their duties and operations. It contains instructions to examiners, as well
as other material in the nature of information and interpretation, and gen-
erally outlines the current procedure which the examiners are required or
authorized to follow in appropriate cases in the normal examination of
applications.

Examiners will continue to be governed as in the past by the applicable
statutes, the Rules of Practice, decisions, and orders and instructions issued
by the Commissioner, the Executive Examiner or the Supervisory Examiners.
Orders and Notices still in force which relate to the subject matter included
in this Manual are incorporated and identified as such. Some Orders and
Notices have been revised to coordinate them with changes in the patent laws
and in the Rules of Practice, and are included in their revised form. Orders
and Notices, or portions thereof, relating to the examiners' duties and functions
included in this Manual which have been omitted or not incorporated in the text
may be considered obsolete.

Subsequent changes in practice and other revisions will be incorporated
in the form of substitute or additional pages for the Manual.

ROBERT C. WATSON,
Commissioner.

NOVEMBER 30, 1953.

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## Acknowledgments

Preparation of the text of the Second Edition of the Manual was directed
by E. A. Faller, Secretary, Committee on Practice and Procedure, under the
supervision of the Executive Examiner.

The following members of the Committee on Practice and Procedure took
an active part in this work :

E. A. Faller, P. J. Federico, M. H. Friedman, H. Magil, E. L. Reynolds, M. C.
Rosa, A. Shapiro, I. G. Stone, B. Yung Kwai.

They were assisted by the following members of the Examining Corps:

D. D. Andrews, M. F. Bailey, H. B. Freehof, C. F. Gareau, A. J. Goldberg,
R. Leibowitz, R. A. O'Leary.

Suggestions for improving the form and content of the Manual are always
welcome. They should be addressed to :

Commissioner of Patents,
Washington 25, D. C.,

and marked for the attention of the Committee on Practice and Procedure.

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## Numbering System

The system of numbering used in this Manual was selected to indicate to
the reader topical indentations in the tables of contents. It may be under-
stood by considering specific examples. Thus, the symbol "1100" refers to
Chapter 1100 as a whole; the symbol "1101" refers to a subdivision indented
under 1100; the symbol "1101.01" refers to a further subdivision indented
under 1101; and "1101.01 (a)" refers to a still further indentation under
1101.01. Thus Chapter 1100 is numbered as follows:

## Chapter 1100 Interference

1101
Preliminaries to an Interference

1101.01
Between Applications

1101.01 (a)
In Different Divisions

1101.01 (b)
Common Ownership

1101.01 (c)
The Interference Search

1101.01 (d)
Correspondence Under Rule 202

1101.01 (e)
How Conducted

Indentations beyond the third indentation are ignored in the assignment of a
symbol. Fourth and further indentations are given the same type of symbol as
a third indentation. Thus in the above example the section entitled "How
Conducted" has the same type of symbol as the section entitled "Correspond-
ence Under Rule 202." Because a fourth indent in the table of contents does
not show up in the numbering system, those sections which are a fourth indent
in the table of contents are given a title in the text which includes the title of
the section under which they are indented. Thus, in the text, the heading for
Sec. 1101.01 (e) reads: "Correspondence Under Rule 202, How Conducted."

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## Contents

Page

Introduction

1

Chapter 100

Secrecy and Access

3

200

Types, Cross-noting, and Status of Applications

7

300

Ownership and Assignment

19

400

Representative of Inventor or Owner.

21

500

Receipt and Handling of Mail and Papers

29

600

Parts, Form and Content of Application

31

700

Examination of Applications

55

800

Restriction; Double Patenting

103

900

Prior Art, Classification, Search

121

1000

Petitions; Cases Submitted to Commissioner and Super-

137

visory Examiners

1100

Interference.

141

1200

Appeal

183

1300

Allowance and Issue

193

1400

Correction of Patent

201

1500

Design Patents

207

1600

Plant Patents

211

1700

Miscellaneous

215

Appendix I

Table of Orders and Notices

217

Appendix II

List of Decisions Cited

223

Index

227

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## Introduction

### Constitutional Basis

The Constitution of the United States pro-
vides :

"ART. 1, SEC. 8. The Congress shall have
power . . . To promote the progress of science
and useful arts, by securing for limited times
to authors and inventors the exclusive right to
their respective writings and discoveries."

### Statutes

Pursuant to the foregoing provision of the
Constitution, Congress has passed a number of
statutes under which the Patent Office is organ-
ized and our patent system is established. The
provisions of the statutes can in no way be
changed or waived by the Patent Office. Prior
to January 1, 1953, the law relating to patents
consisted of various sections of the Revised
Statutes of 1874, derived from the Patent Act
of 1870 and numerous amendatory and addi-
tional acts. These statutes, as well as old Title
35 of the United States Code, were compiled
and reprinted several times prior to January 1,
1953, in a pamphlet entitled"Patent Laws".

By an Act of Congress approved July 19,
1952, which came into effect on January 1, 1953,
the patent laws were revised and codified.
With certain exceptions applying to applica-
tions filed and patents issued before January 1,
1953, this law governs all cases in the Patent
Ofice. The patent law is Title 35 of the United
States Code, which contains 95 sections num-
bered from 1 to 293, with gaps in the numbering
between various chapters of the title. In re-
ferring to a particular section of the new pat-
ent code the citation is given, for example, as,
35 U. S. C. 31. The current edition of the
pamphlet "Patent Laws" reprints the patent
code and some additional statutes; following
each section of the patent code, the citation of
the old statute corresponding to that section is
given in parentheses, and the pamphlet also
contains tables of the old section numbers with
the corresponding new sections.

### Rules of Practice

One of the sections of the patent statute,
namely, 35 U. S. C. 6, authorizes the Commis-

278993-54-2

sioner of Patents, subject to the approval of the
Secretary of Commerce, to establish regula-
tions, not inconsistent with law, for the conduct
of proceedings in the Patent Office. These reg-
ulations are set forth in a Patent Office booklet
entitled "Rules of Practice of the United States
Patent Office in Patent Cases". The Rules of
Practice have a long history, going back to
pamphlets of general information to the public,
first issued in 1836. The content has been de-
termined by history, tradition and other fac-
tors. Primarily the function of the Rules of
Practice is to advise the public of the regula-
tions which have been established in accordance
with the statutes and which must be followed
before the Office. But the Patent Office Rules
of Practice have always additionally included,
as numbered rules, informational material,
copies of sections of the patent statutes, purely
internal procedure, and the like. It goes with-
out saying that the Rules of Practice govern the
Examiners, as well as applicants and their at-
torneys.

### Commissioner's Orders and Notices

From time to time, the Commissioner of Pat-
ents has issued Orders and Notices relating to
various specific situations that have arisen in
operating the Patent Office. Notices and cir-
culars of information or instructions have also
been issued by the Supervisory Examiners
under authority of the Commissioner. Orders
and Notices have served various purposes in-
cluding directions to the examiners giving them
instructions, information, interpretations and
the like. Some may be for the information of
the public, advising what the Office will do
under specified circumstances.

### Decisions

In addition to the statutory regulations, the
actions taken by the Examiner in the examina-
tion of applications for patents are to a great
extent governed by decisions on prior cases.
Those dissatisfied with an Examiner's action
may have it reviewed. In general, it may be
stated that from that portion of the Examiner's
action pertaining to objections on formal mat-
ters, a petition for review may be taken to the

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## MANUAL OF PATENT EXAMINING PROCEDURE

Commissioner of Patents (1002) and from that
portion of the Examiner's action pertaining to
the rejection of claims on the merits, an appeal
may be taken to the Board of Appeals (1201).
The distinction is set forth in Rules 181 and
191. The decision of the Commissioner on for-

mal matters is final but the decision of the
Board of Appeals on questions passed on by
it may be carried to the courts. See 1216.
In citing decisions as authority for his actions,
the Examiner should cite the decision in the
manner set forth in 707.06.