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OCR transcription for search; preserved printed pages are authoritative

# Chapter 700 Examination of Applications

701
Statutory Authority for Examination

702
Requisites of the Application

702.01
Obviously Informal Cases

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

704 Search

705
Patentability Reports

705.01
Instructions re Patentability Reports

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

705.01 (b)
Sequence of Examination

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

705.01 (d)
Duplicate Prints of Drawings

705.01 (e)
Limitation as to Use

705.01 (f)
Interviews With Applicants

706
Rejection of Claims

706.01
Contrasted With Objections

706.02
On Prior Art

Establishing "Well Known" Prior Art

706.02 (a)
706.03

Not Based on Prior Art

706.03 (a)
Nonstatutory Subject Matter

706.03 (b)
Barred by Atomic Energy Act

706.03 (e)
Functional

706.03 (đ)
Indefinite

706.03 (e)
Product by Process

706.03 (f)
Incomplete

706.03 (g)
Prolix

706.03 (h)
Nonstatutory Claim

706.03 (1)
Aggregation

706.03 (j)
Old Combination

706.03 (k)
Duplicate Claims; Double Patenting
706.03 (1)
Multiplicity

706.03 (m)
Nonelected Inventions
Correspondence of Claims and Disclosure

706.03 (n)

706.03 (0)
New Matter

706.03 (p)
No Utility

706.03 (q)
Obvious Method

706.03 (s)
Statutory Bar

706.03 (t)
Earlier Assigned Case

706.03 (u)
Disclaimer

706.03 (v)
After Interference or Public Use Pro-
ceeding

706.03 (w)
Res Judicata

706.03 (x)
Reisse

706.03 (y)
Improper Markush

706.04
Previously Allowed Claim

706.05
After Allowance of Application

706.06

Claims Copied from Patent

706.07
Final Rejection

706.07 (a)
When Proper

706.07 (b)
When Proper on First Action

706.07 (c)
Premature

706.07 (d)
Withdrawal of Premature

706.07 (e)
Withdrawal, General

707
Examiner's Letter or Action

707.01
Primary Examiner Indicates Action for New
Assistant

707.02
Actions which Require the Personal Attention
of the Primary Examiner

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

707.03
Sample of Conventional "First Action" Letter

707.04
Initial Sentence

707.05
Citation of References

707.05 (a)
Grouped at Beginning of Letter

707.05 (b)
"References Applied"

707.05 (c)
References Pertinent

707.05 (d)
References Cited in Subsequent Actions

707.05 (e)
Data Used in Citing References

707.05 (f)
Effective Dates of Declassified Printed
Matter

707.05 (g)
Incorrect Citation of References

707.06
Citation of Decisions, Orders and Notices

707.07
Completeness and Clarity

707.07 (a)
Action on Formal Matters

707.07 (b)
Requiring New Oath

707.07 (c)
Draftsman's Requirement

Language To Be Used in Rejections

707.07 (d)
Note All Outstanding Requirements

707.07 (e)

707.07 (f)
Answer All Material Traversed

707.07 (g)
Piecemeal Prosecution

707.07 (h)
Notify of Inaccuracies in Amendment

707.07 (i)
Each Claim To Be Mentioned in Each
Letter

707.07 (j)
State When Claims Are Allowable Except
as to Form

707.07 (k)
Numbering Paragraphs

707.08
Review by Assistant Examiner

707.09
Signing by Primary or Acting Primary

707.10
Entry

707.11
Date

707.12
Mailing

707.13
Returned Office Action

707.14
Action Preceding Final

708
Order of Examination

708.01
List of Special Cases

708.02
Petition to Make Special

708.03
Examiner Tenders His Resignation

709
Suspension of Action

709.01
Overlapping Applications by Same Applicant
or owned by Same Assignee

# MANUAL OF PATENT EXAMINING PROCEDURE

709.02
Actions Following Correspondence under Rule
202
710
Period for Response

710.01
Statutory

710.01 (a) How Computed

710.02
Shortened Statutory Period and Time Limit
Actions

710.02 (a)
Approval of Time Set in Case of Short-
ened Statutory Period

710.02 (b)
Situations in Which Used: Shortened
Statutory Period

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

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

710.02 (e)
Extension of Time

710.08

Three Year Period, Government-owned Cases

710.04
Two Periods Running

710.04 (a)
Copying Patent Claims

710.05
Period Ending on Saturday, Sunday or Holi-
day

710.06
Miscellaneous Factors Determining Date

711
Abandonment

711.01
Express or Formal Abandonment

711.02
Failure to Take Required Action During Time
Period

711.02 (a)
Insufficiency of Response

711.02 (b)
Special Situations Involving Abandon-
ment

711.02 (c)
Termination of Proceedings

711.03
Reconsideration of Holding of Abandonment :
Revival

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

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

711.03 (c)
Petitions Relating to Holding of Aban-
donment

711.03 (d)
Examiner's Statement on Petition

711.04
Disposal of Abandoned Files

711.04 (a)
Pulling and Forwarding

711.04 (b)
Ordering Abandoned Files

711.05
Letter of Abandonment Received After Appli-
cation is Allowed

711.06
Publication of Abstracts

711.06 (a)
Use of Abstract as Reference

712
Forfeiture

713
Interviews

718.01
General Policy, How Conducted

713.02
Interviews Prior to First Official Action

713.03
Interviews for "Sounding Out" Examiner Not
Permitted

713.04
Substance of Interview Must Be Made of
Record

713.05
Interviews Prohibited or Granted, Special
Situations

713.06
No Inter Partes Questions Discussed Ex
Parte

713.07
Exposure of Other Cases

713.08
Demonstration, Exhibits, Models

713.09
Finally Rejected Application

713.10
Interview Preceding Filing Amendment
Under Rule 312

714
Amendments, Applicant's Actions

714.01
Signatures to Amendments

714.01 (a)
Unsigned or Improperly Signed Amend-
ment

714.01 (b)
Disposal of

714.01 (c)
Signed by Attorney Not of Record

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

714.01

(e)
Power of Attorney to a Firm

714.02
Must Be Fully Responsive

714.03
Amendments Not Fully Responsive, Action to
Be Taken

714.04

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

714.05

Examiner Should Immediately Inspect

714.06

Amendments Sent to Wrong Division

714.07

Amendments Not in Permanent Ink

714.08
Telegraphic Amendment

714.09
Amendments Before First Office Action

714.10
Claims Added in Excess of Filing Fee

714.11
Amendment Filed During Interference Pro-
ceedings

714.12
Amendments After Final Rejection or Action

714.13

Amendments After Final Rejection or Action,
Letter Written

714.14
Amendments After Allowance of All Claims

714.15
Amendment Mailed Before, but Received in
Examining Division After Allowance

714.16
Amendment After Notice of Allowance, Rule
312

714.16 (a)
Copied Patent Claims

714.16 (b)
Filed with a Motion Under Rule 234

714.16 (c)
Excess Number of Claims

714.16 (d)
Handling

714.16 (e)
Entry in Part

714.17
Amendment Filed After the Period for Re-
sponse Has Expired
714.18
Entry of Amendments

714.19
List of Amendments, Entry Denied

714.20
List of Amendments Entered in Part

714.21
Amendments Inadvertently Entered, No Legal
Effect

714.22
Entry of Amendments, Directions for

714.23
Entry of Amendments, Directions for, Defec-
tive

714.24
Amendment of Amendment

714.25
Discourtesy of Applicant or Attorney

715
Swearing Back of Reference Affidavit Under
Rule 131

715.01
Reference Patent Entitled to Foreign Filing
Date

715.02
General Rule as to Generic Claims

715.03
Exceptions and Practice Relative to Chemical
Cases

715.04
Who May Make Affidavit

715.05
Patent Claiming Same Invention

715.06
Affidavit Under Rule 131 Must Be Removed
Before Interference

715.07
Facts and Documentary Evidence

715.07 (
(a)
Diligence

715.07

(b)
Interference Testimony Sometimes Used

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

715.07 (d) Disposition of Exhibits

715.08
Passed Upon By Primary Examiner

715.09
Seasonable Presentation

716
Affidavits Traversing Rejections

717
File Wrapper

717.01
Papers in File Wrapper

717.01 (a)
Arrangement

717.01 (b)
Prints :

717.02

Date Entered on

717.02 (a)
Statutory Period Ends On Sunday or
Holiday

717.02 (b)

Name or Residence of Inventor or Title
Changed

717.03
Classification During Examination

717.04
Index of Claims

717.05
Field of Search

717.06
Foreign Filing Dates

717.07
Related Applications

## 701 Statutory Authority for Examina- tion

The authority for the examination of applica-
tions for patents is set forth in 35 U. S. C. 131.

The Commissioner shall cause an examination to be
made of the application and the alleged new invention ;
and if on such examination it appears that the appli-
cant is entitled to a patent under the law, the Com-
missioner shall issue a patent therefor.

The examination is to ascertain two things:

1\. Is the applicant the first inventor of a
patentable invention ?

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

The main conditions precedent to the grant
of a patent to an applicant are set forth in 35
U. S. C. 101, 102, 103.

## 702 Requisites of the Application

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

## 702.01 Obviously Informal Cases

Whenever in the assignment of applications the
Primary Examiner finds that a newly filed applica-
tion obviously fails to disclose an invention with the
clarity required by 35 U. S. C. 112, or whenever im-
mediately after assignment his attention is directed
to such an application, he should call attention to
Rule 71 and require in the first Office action, which
should be taken immediately, that the application
be revised to conform with the practice prevailing
before this Office. A shortened statutory period
may be set for compliance with this requirement,
the duration of such shortened period, if set, being
determined by the Primary Examiner in accordance
with the complexity of the case, the revision of the
specification necessary, and time necessary for com-
munication with the applicant. These actions, in
all cases, regardless of whether a shortened statu-
tory period is set, should be submitted to the Super-
visory Examiners for approval. (Notice of Jan. 23,
1947.) The above procedure should be used only
when there is a registered attorney or agent of
record.

A suitable form for this action is as follows:

A preliminary examination of this applica-
tion discloses that it fails to comply with 35
U. S. C. 112 in that the invention is not pre-
sented with sufficient clarity to make possible
an intelligent examination on the merits in a
reasonable time.

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

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

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

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

The pamphlet "General Information Concerning
Patents" may be sent to an applicant handling his
own case when the Examiner deems it advisable.
(Notice of January 15, 1924, Revised.)

### 704 Search

After reading the specification and claims,
the Examiner searches the prior art. The in-
vention should be thoroughly understood before
a search is undertaken. However, informal
cases, or those which can only be imperfectly
understood when they come up for action in

their regular turn are also given a search, in
order to avoid piecemeal prosecution. See 904
through 904.02 and 717.05.

## 705 Patentability Reports

Where an application, properly assigned to one
examining division, is found to contain one or more
claims per se classifiable in one or more other divi-
sions, which claims are not divisible inter se or from
the claims which govern classification of the appli-
cation in the first division, the application may be
referred to the other division or divisions concerned
for a report as to the patentability of certain desig-
nated claims. This report will be known as a Pat-
entability Report (P. R.) and will be signed by the
Primary Examiner of the reporting division. (Ex-
tract from Notice of November 10, 1948.)

## 705.01 Instructions re Patentability Reports

705.01 to 705.01 (f) are quotations from the
Notices of November 12, 1948, and April 12,
1951.

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

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

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

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

The examiner preparing the Patentability Report
will be entitled to receive an explanation of the dis-
closure from the examiner to whom the case is as-
signed to avoid duplication of work. If the Primary

Examiner of a reporting division is of the opinion
that a Patentability Report is not in order, he should
so advise the Primary Examiner of the forwarding
division.

()
Conflict of opinion as to classification may be re-
ferred to an Examiner of Classification for decision.

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

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

When an appeal is taken from the rejection of
claims, all of which are examinable in the division
preparing a Patentability Report, and the applica-
tion is otherwise allowable, formal transfer of the
case to said division should be made for the pur-
pose of appeal only. The receiving division will
take jurisdiction of the application and prepare the
examiner's answer. At the time of allowance, the
application may be sent to issue by said division
with its classification determined by the controlling
claims remaining in the case. (Extract from Notice
of April 12, 1951.)

## 705.01 (b) Sequence of Examination

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

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

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

The forwarding of the application for a Patent-
ability Report is not to be treated as a transfer by
the forwarding division. When the P. R. is com-
pleted and the application is ready for return to the

(

(

forwarding division, it is not counted either as a
receipt and action by transfer. Credit, however, is
given for the time spent. See 1705.

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

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

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

In Patentability Report cases having drawings,
the examiner to whom the case is assigned will
furnish to the division to which the case is referred,
prints of such sheets of the drawings as are appli-
cable, for interference search purposes.

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

### 705.01 (e) Limitation as to Use

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

Where claims are directed to the same character
of invention but differ in scope only, prosecution by
Patentability Report is never proper.

Exemplary situations where Patentability Reports
are ordinarily not proper are as follows:

(1) Where the claims are related as a manufac-
turing process and a product defined by the process
of manufacture. The examiner having jurisdic-

tion of the process can usually give a complete, ade-
quate examination in less total examiner time than
would be consumed by the use of a Patentability
Report.

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

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

## 705.01 (f) Interviews With Applicants

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

## 706 Rejection of Claims

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

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

Identification of the part of the reference
relied on is especially helpful in the event that
soft copies of the reference are exhausted.

Rule 112. Reexamination and reconsideration.
After response by applicant (rule 111) the application
will be reexamined and reconsidered, and the appli-
cant will be notified if claims are rejected, or objec-
tions or requirements made, in the same manner as
after the first examination. Applicant may respond to
such Office action, in the same manner provided in
rule 111, with or without amendment, but any amend-
ments after the second Office action must ordinarily
be restricted to the rejection or to the objections or re-
quirements made, and the application will be again
considered, and so on repeatedly, unless the examiner
has indicated that the action is final.

## 706.01 Contrasted With Objection

The refusal to grant claims because the sub-
ject matter as claimed is considered unpatenta-
ble is called a "rejection." The term "rejected"
must be applied to such claims in the Exam-
iner's letter. If the form of the claim (as dis-
tinguished from its substance) is improper, an
"objection" is made. The practical difference
between a rejection and an objection is that a
rejection, involving the merits of the claim, is
subject to review by the Board of Appeals,
while an objection, if persisted in, may be re-
viewed only by way of petition to the Commis-
sioner.

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

## 706.02 Rejection on Prior Art

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

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

A U. S. patent is a valid reference against an
application even though the patent date is after
the filing date of an application provided that
the filing date of the patent is prior to the filing
date of the application. The fact that the sec-
ond applicant had no way of knowing about the
prior application that is now a patent does not
matter. It is proper to use such a patent as a
basic or an auxiliary reference and such patents

may be used as both basic and auxiliary refer-
ences. The doctrine of the Milburn Co. v.
Davis-Bournonville Co. decision, 1926 C. D.
303; 344 O. G. 817, has been thus construed in
In re Youker (C. C. P. A.), 1935 C. D. 658; 461
O. G. 10, and in Minn. Mining & Mfg. Co. v.
Coe (C. A. D. C.) 1938 C. D. 100; 497 O. G. 766.
See also Detrola Corp. v. Hazeltine (U. S. S.
C.), 1941 C. D. 811; 528 O. G. 245.

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

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

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

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

## 706.03 Rejections Not Based on Prior Art

Although they constitute a relatively small
percentage of all rejections made, there are a
number of rejections which may be appropriate
despite the fact that no pertinent prior art is
discovered in the search. The Examiner's func-
tion is not to scrutinize each claim with the idea
of rejecting it on some far-fetched technical
ground. Nevertheless, claims which, for ex-
ample, are drawn to nonstatutory subject mat-
ter, or present new matter, should be recognized
as such and rejected. Such rejections are ex-
plained in 706.03 (a) to 706.03 (y). IF THE
ITALICIZED LANGUAGE IN THESE
SECTIONS IS INCORPORATED IN THE
REJECTION, THERE WILL BE LESS
CHANCE OF A MISUNDERSTANDING
AS TO THE GROUNDS OF REJECTION.

## 706.03 (a) Nonstatutory Subject Matter

Patents are not granted for all new and useful
inventions and discoveries. The subject matter
of the invention or discovery must come within
the boundaries set forth by 35 U. S. C. 101,
which permits patents to be granted only for
"any new and useful process, machine, manu-
facture, or composition of matter, or any new
and useful improvement thereof.

The term "process" as defined in 35 U. S. C.
100, means process, art or method, and includes
a new use of a known process, machine, manu-
facture, composition of matter, or material.

(

706.03 (c)

# EXAMINATION OF APPLICATIONS

# {

Judicial decisions, have determined the limits
of the statutory classes. Examples of subject
matter not patentable under the Statute follow :

## PRINTED MATTER

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

## NATURALLY OCCURRING ARTICLE

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

### METHOD OF DOING BUSINESS

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

### SCIENTIFIC PRINCIPLE

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

This subject matter is further limited by the
Atomic Energy Act explained in 706.03 (b).

### 706.03 (b) Barred by Atomic Energy Act

A limitation on what can be patented is imposed by
the Atomic Energy Act of 1954. Section 151 (a) thereof
(42 U. S. C. 2181) reads as follows :

No patent shall hereafter be granted for any inven-
tion or discovery which is useful solely in the utiliza-
tion of special nuclear material or atomic energy
in an atomic weapon.

The terms" atomic energy" and "special nuclear
material" are defined in Section 11 of the Act (42
U. S. C. 2014).

Sections 151 (c) and 151 (d) (42 U. S. C. 2181 c
and d) set up categories of pending applications relat-
ing to atomic energy that must be brought to the
attention of the U. S. Atomic Energy Commission.
Under Rule 14 (c), applications for patents which dis-

close or which appear to disclose, or which purport to
disclose, inventions or discoveries relating to atomic
energy are reported to the Atomic Energy Commission
and the Commission will be given access to such appli-
cations, but such reporting does not constitute a de-
termination that the subject matter of each application
so reported is in fact useful or an invention or dis-
covery or that such application in fact discloses subject
matter in categories specified by the Atomic Energy Act.

All applications relating to atomic energy within the
terms of the Atomic Energy Act or Rule 14 (c) should
be promptly submitted to Division 70 for consideration.
Rejections based on Section 151 (a) and the reporting
of applications to the U. S. Atomic Energy Commis-
sion under Section 151 (d) are handled by Division 70.

### 706.03 (c) Functional

See Ex parte Ball et al., 1953 C. D. 4; 675
O. G. 5 and In re Arbeit et al., 1953 C. D. 409;
677 O. G. 843.

Section 112 of the Patent Act of 1952 consists
of three paragraphs, which read as follows:

The specification shall contain a written description
of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art
to which it pertains, or with which it is most nearly
connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor of
carrying out his invention.

The specification shall conclude with one or more
claims particularly pointing out and distinctly claim-
ing the subject matter which the applicant regards as
his invention.

An element in a claim for a combination may be
expressed as a means or step for performing a specified
function without the recital of structure, material, or
acts in support thereof, and such claim shall be con-
strued to cover the corresponding structure, material,
or acts described in the specification and equivalents
thereof.

Paragraph 3 of section 112 has the effect of
prohibiting the rejection of a claim for a com-
bination of elements (or steps) on the ground
that the claim distinguishes from the prior art
solely in an element (or step) defined as a
"means" (or "step") coupled with a statement
of function. However this provision of para-
graph 3 must always be considered as subordi-
nate to the provision of paragraph 2 that the

## 706.03 (d)

# MANUAL OF PATENT EXAMINING PROCEDURE

claim particularly point out and distinctly
claim the subject matter. If a claim be found
to contain language approved by paragraph 3
such claim should always be tested additionally
for compliance with paragraph 2 and if it fails
to comply with the requirements of paragraph
2, the claim should be so rejected and the rea-
sons fully stated.

Paragraph 3 of section 112 makes no change
in the established practice of rejecting claims
as functional in situations such as the.
following:

1\. A claim which contains functional lan-
guage not supported by recitation in the claim
of sufficient structure to warrant the presence
of the functional language in the claim. An
example of a claim of this character may be
found in In re Fuller, 1929 C. D. 172; 388 O. G.
279\. The claim reads :

A woolen cloth having a tendency to wear
rough rather than smooth.

2\. A claim which recites only a single means
and thus encompasses all possible means for
performing a desired function. For an ex-
ample, see the following claim in Ex parte
Bullock, 1907 C. D. 93; 127 O. G. 1580:

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

## 706.03 (d) Indefinite

The rejection of a claim as indefinite would
appear to present no difficulties. On occasion,
however, a great deal of effort is required to
explain just what is wrong with the claim, when
writing the Examiner's letter. Although coop-
eration with the attorney is to be commended,
undue time should not be spent trying to figure
out what the attorney was trying to say in the
claim. Sometimes, a rejection as indefinite plus
the statement that a certain line is meaningless
is sufficient. Inclusion of a negative limitation,
such as a "metal, excepting nickel", may make
a claim indefinite. Expressions such as : "anhy-
drous", "colorless" and "non-poisonous" have
been permittted because they are definite and by
far the least cumbersome way to express the
limitation.

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

Still another way in which a claim can be in-

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

## 706.03 (e) Product by Process

An article which cannot be described in any
other manner, may be claimed by a process of
making it. In re Moeller, 1941 C. D. 316, 527
O. G. 559. Applicant must, however, make a
showing that the product cannot be described
except by reference to the process of making it,
In re Dreyfus and Whitehead, 1935 C. D. 386,
457 O. G. 479. Accordingly both product
claims described by characteristics and product-
by-process claims concurrently presented are
inconsistent. As a rule, the product-by-process
claims should be limited to one, unless it appears
that there are material differences between the
products produced by the processes recited in
the different claims.

## 706.03 (f) Incomplete

A claim can be rejected as incomplete if it
omits essential elements, steps or necessary
structural cooperative relationship of elements,
such omission amounting to a gap between the
elements, steps or necessary structural connec-
tions. Greater latitude is permissible with re-
spect to the definition in a claim of matters not
essential to novelty or operability than with
respect to matters essential thereto.

## 706.03 (g) Prolix

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

## 706.03 (h) Nonstatutory Claim

Many applications when filed contain an om-
nibus claim such as "A device substantially as
shown and described".

Such a claim can be rejected as follows:

(
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X
☒

# EXAMINATION OF APPLICATIONS

706.03 (k)

Claim
is rejected for failing to "par-
☒
ticularly point out and distinctly claim" the
invention as required in 35 U. S. C. 112.

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

## 706.03 (i) Aggregation

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

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

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

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

## 706.03 (j) Old Combination

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

Example : An improved (specifically recited)
carburetor claimed in combination with a gaso-
line engine. A reference is cited which shows
a carburetor combined with a gasoline engine.
This shows the broad combination to be old.
Both in the reference and in the claimed combi-
nation, the cooperation between the carburetor
and engine is the same. The claimed combina-
tion is an improvement over the prior art only
because of the improved carburetor. The car-
buretor has separate status, since entire sub-
classes are devoted to carburetors, claimed as
such. A reference is preferably cited to show

the separate status and development. (See
904.01 (d).) See 707.03 for form.

# 706.03 (k) Duplicate Claims; Double Patenting

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

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

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

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

Situations related to that given above are as
follows:

Conflicting subject matter in two applica-
tions of the same inventor, one of which is as-
signed, see Section 304.

Where there is a common assignee for two or
more applications by different inventors, see
Section 305.

Where the same inventor has two or more
applications for species or for related inven-
tions, see Chapter 800, particularly Sections
804-804.02, 822 and 822.01 for double patenting
rejections of inventions not patentable over
each other.

# 706.03 (1)

## 706.03 (1) Multiplicity

Rule 75 (b). More than one claim may be presented,
provided they differ substantially from each other
and are not unduly multiplied.

An unreasonable number of claims; that is
unreasonable in view of the relative simplicity
of applicant's invention and the state of the art,
affords a basis for a rejection on the ground of
multiplicity. A rejection on this ground should
include all the claims in the case inasmuch as it
relates to confusion of the issue. The exam-
iner may in his letter, indicate the number of
claims which, in his opinion, would be adequate.
See also 706.03 (k).

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

# 706.03 (n) Correspondence of Claim and Disclosure

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

Another category of rejections not based on
the prior art is based upon the relation of the
rejected claim to the disclosure. In chemical
cases, a claim may be so broad as to not be sup-
ported by disclosure, in which case it is rejected
as unwarranted by the disclosure. If aver-
ments in a claim do not correspond to the aver-
ments or disclosure in the specification, a rejec-
tion on the ground of inaccuracy may be in
order. It must be kept in mind that an original
claim is part of the disclosure and might ade-
quately set forth subject matter which is com-
pletely absent from the specification. Appli-
cant is required in such an instance to add the
subject matter to the specification. If subject
matter capable of illustration is claimed and it
is not shown in the drawing, applicant is re-
quired to add it to the drawing. See 608.01 (1).

## 706.03 (o) New Matter

In the examination of an application follow-
ing amendment thereof, the Examiner must be
on the alert to detect new matter. The prohibi-
tion against new matter has been incorporated
into the New Patent Code. See 35 U. S. C. 132.
In amended cases, subject matter not disclosed
in the original application is sometimes added
and a claim directed thereto. Such a claim is
rejected on the ground that it is drawn to new

matter. New matter includes not only the addi-
tion of wholly unsupported subject matter, but
also, adding specific percentages or compounds
after a broader original disclosure, or even the
omission of a step from a method. See 608.04
to 608.04 (c).

## 706.03 (p) No Utility

A rejection on the ground of lack of utility
includes the more specific grounds of inopera-
tiveness, involving perpetual motion, frivolous,
fraudulent, against public policy. See 608.01
(p).

## 706.03 (q) Obvious Method

An applicant may invent a new and useful
article of manufacture. Once the article is
conceived, it often happens that anyone skilled
in the art would at once be aware of a method
of making it. In such a case, if applicant as-
serts both article and method claims, the article
claims are allowed but the method claims may
be rejected as being drawn to an obvious meth-
od of making the article.

## 706.03 (s) Statutory Bar

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

35 U. S. C. 102. Conditions for patentability ; novelty
and loss of right to patent. A person shall be entitled
to a patent unless-

(d) the invention was first patented or caused to
be patented by the applicant or his legal representatives
or assigns in a foreign country prior to the date of the
application for patent in this country on an applica-
tion filed more than twelve months before the filing of
the application in the United States.

NOTE .- Section 4 (b) of the Act of July 19,
1952, provides:

"Section 102 (d) of Title 35, as enacted by section 1
bereof, shall not apply to existing patents and pending
applications, but the law previously in effect, namely
the first paragraph of R. S. 4887, shall apply to such
patents and applications."

The statutory bar of prior foreign patenting
stated in the first paragraph of R. S. 4887 has
been changed as expressed in paragraph (d) of
Section 102 of the new law. An application
for United States patent filed more than one
year after the filing of an application for the
same invention in a foreign country is no longer
barred unless the foreign patent issued before
the United States application is filed.

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The statute above quoted establishes four con-
ditions which, if all are present, establish a bar
against the granting of a patent in this country :

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

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

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

(4) The same invention must be involved.

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

The new law does not apply to applications
pending on January 1, 1953, but only applies
to new applications filed after January 1, 1953.
All applications filed before January 1, 1953,
in which a foreign application was filed more
than a year before the United States applica-
tion will continue to be treated under the old
law.

Further, claims to an invention in public use
or on sale in the United States more than twelve
months before his effective filing date are simi-
larly rejected. 35 U. S. C. 102 (b).

## 706.03 (t) Assigned Application

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

## 706.03 (u) Disclaimer

Claims may be rejected on the ground that
applicant has disclaimed the subject matter in-
volved. Such disclaimer may arise, for ex-
ample, from the applicant's failure :

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

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

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

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

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

For rejections following an interference, see
1109 to 1110.

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

# 706.03 (w) Res Judicata

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

The rejection should only be used when the
earlier decision was a final, appellate one, such
as a Board of Appeals decision where the time
limit for further remedies has expired, or a
decision by the Court of Customs and Patent
Appeals.

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

See also 608.01 (p) and 715.03.

# 706.04 Rejection of Previously Al- lowed Claims

A claim noted as allowable shall thereafter be
rejected only after the proposed rejection has been

submitted to the primary Examiner or, in his ab-
sence, to the Assistant Chief, for consideration of
all the facts and approval of the proposed action.

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

Full faith and credit should be given to the
search and action of a previous examiner unless
there is a clear error in the previous action or
knowledge of other prior art. In general, an
examiner should not take an entirely new ap-
proach or attempt to reorient the point of view
of a previous examiner, or make a new search
in the mere hope of finding something.

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

## 706.05 Rejection After Allowance of Application

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

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

## 706.06 Rejection of Claims Copied From Patent

See 1101.02 (f).

## 706.07 Final Rejection

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

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

Before final rejection is in order a clear issue
should be developed between Examiner and ap-
plicant. To bring the prosecution to as speedy
conclusion as possible and at the same time to
deal justly by both the applicant and the public,

2\)

(

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706.07 (b)

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

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

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

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

In making the final rejection, all outstanding
grounds of rejection of record should be carefully
reviewed, and any such grounds relied on in the
final rejection should be reiterated and clearly de-
veloped to such an extent that applicant may readily

### judge the advisability of an appeal. (Extract from Notice of February 18, 1949.)

However, where a single previous Office ac-
tion contains a complete statement of a ground
of rejection, the final rejection may refer to
such a statement and also should include a re-
buttal of any arguments raised in the appli-
cant's response. If appeal is taken in such a
case, the examiner's answer should contain a
complete statement of the examiner's position.

A summary indicating the final disposition
of each claim is desirable and also a statement
that :

"The above rejection is made FINAL", or
"This is a FINAL rejection".

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

# 706.07 (a) Final Rejection, When Proper

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

It may therefore be proper to make the rejec-
tion final even though the references are ap-
plied and combined in a manner different from
that employed in the prior Office actions or if
a reference whose pertinency has been previ-
ously pointed out, is relied upon for the first
time. See 707.05 (c).

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

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

In certain instances, the claims of a new ap-
plication may be finally rejected in the first ac-
tion. This may be done when the claims of the
new application are similar to those of an earlier
application filed by the same applicant, and if
the claims of the earlier application were re-

# 706.07 (c)

# MANUAL OF PATENT EXAMINING PROCEDURE

jected on the grounds which are also applicable
against the claims of the new application.

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

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

The examiner should guard against prema-
ture final rejections. A premature final rejec-
tion may result from failure to permit a full de-
velopment of clear-cut issues, especially in cases
involving complex machines or processes. Or,
again, if the Examiner waits until the final re-
jection before giving an adequate explanation
of the application of the references against the
claims, such final rejection may be premature.

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

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

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

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

See 714.12 and 714.13, Amendments after final
rejection.

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

The Examiner may withdraw the rejection of
finally rejected claims whenever he deems the
conditions appropriate for such action. If, for
example, new facts or reasons are presented
such as to convince the Examiner that the previ-
ously rejected claims are in fact allowable,

then the final rejection should be withdrawn.
Occasionally a final rejection may be withdrawn
in order to apply a new ground of rejection.

If the Examiner's action in which the prior
final rejection is withdrawn is not itself made
final, it must be submitted to the Supervisory
Examiner for approval.

# 707 Examiner's Letter or Action

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

# 707.01 Primary Indicates Action for New Assistant

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

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

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

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

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# EXAMINATION OF APPLICATIONS

707.02 (a)

€

following actions fall in this category :

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

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

Final rejection.

Setting up an interference. (1101.01 (c).)

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

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

Rejection of a previously allowed claim
(706.04).

Proposed rejection of a copied patent claim.
(If applicable to a patentee, see 1101.02 (f).)
Classification of allowed cases (903.07).

Holding of abandonment for insufficient re-
sponse.

Suspension of Examiner's action (Rule 108).
Treatment of newly filed application which
obviously fails to comply with 35 U. S. C. 112
(702.01).

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

Requirements for restriction (803.01).

Withdrawal of final rejection (706.07 (e).)
Decision on reissue oath.

Decision on affidavit under Rule 131 (715.08).
Sealing of Rule 131 affidavit prior to inter-
ference.

For a list of actions that are to be submitted
to the Supervisory Examiners see 1003, 1004,
and 1005.

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

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

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

Any case that has been pending five years should
be carefully studied by the Principal Examiner and
every effort made to terminate its prosecution. In
order to accomplish this result, the case is to be
considered "special" by the Examiner. (Notice of
October 11, 1930.)

(

# MANUAL OF PATENT EXAMINING PROCEDURE 707.03 Sample of Conventional "First Action" Letter

POL-90
Roy.

ADORISE ONLY
THE COMMISSIONHER OF PATENT#
WASHINGTON 2, D. C.

DEPARTMENT OF COMMERCE
UNITED STATES PATENT OFFICE
WASHINGTON

AR communications suspecting
chia application should give the
vial number, date of fling.
and name of the aplica

PAPER NO.
3

John A. Smith
16, 753 Main Street
Detroit 2, Michigan

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

Rist Cluster

Commissioner of Fatents.

This application has been examined.

References applied:

Spea's
Sutton

389,335

Apr. 11, 1888

255-69

2,651,598

Sept.

8, 1953

255-65 uxr

(Filed

Mar.
17,
1951)

Renoir (French)

1,009,197
(1 p.) Mar. 5, 1952

167-75

(Corresponding U.S. - Renoir 2,650,334 Aug. 25, 1953

167-75)

Monnet (French)
975,000

July
17, 1945

167-75

(4 shts. drwg. - 8 pp. spec.)
(Only Fig. 4 of the drawing and page 6 of
the specification are relied on)

References further showing the state of the art:

Halsey
Re.
100,176
Feb. 20, 1888
255-70

Mead, abstract of application serial number 11, 520
published May 1, 1948, 615 O.G. 71

255-70

"Ventilation" (Johnson) Published by Simms (Bombay) 1931
(Page 3 relied on. Copy in Scientific Library and in Div. 9)

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

The oath is defective, some nine months having elapsed between
the date of the jurat and the date of filing of the application. A new oath
is required. It should identify this application by title, serial number
and date of filing.

The title of the invention should be made more specific to meet
the requirements of Rule 72. The objects of invention set forth on page 3
are too general and should be either canceled or directed to the specific
invention claimed.

(

Applicant: JAMES A. BROWN

Ser. No. 346,213

MAILED DEC 16 1953 PAT DIY 9

Filed

April 1, 1953

For

AIR CIRCULATOR

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Serial No. 346,213
\- 2 -

Claim 1 is rejected as fully met by Sutton. Element 87 of
Sutton is the spring-pressed latch claimed.

Claim 5 is objectionable because it reads "Circulator as in
claims 1-4 wherein ---- " and hence is directly dependent upon more
than one preceding claim. If corrected so as to depend upon either
claim 2 or claim 3, it would appear to be allowable.

Claim 6 is rejected as being drawn to the old combination of
a motor, a fan driven thereby, and a common base for supporting the
motor and fan. This combination is shown to be old by the patent to
Spears which discloses the same elements functionally interrelated in
the same manner. The combination of claim 6 differs from that shown
in Spears only in setting forth a specific construction of the motor itself.
Therefore, claim 6 is rejected because it is believed that the improve-
ment over the prior art is not in the combination, which is old, but in
the specific motor. Attention is called to the patents to Renoir and
Monnet which indicate that motors have been recognized as being
separate subjects of invention, capable of independent use, and as having
a distinct status of their own.

Claim 7 is rejected as unpatentable over Sutton. The fan blades
in Sutton are driven directly from the motor shaft, whereas the claim
calls for a flexible drive. In view of the common practice of providing
yielding drive means from electric motors for various reasons, it would
not be considered invention to substitute a flexible drive for the direct
drive shown in Sutton.

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

Claims 1, 6 and 7 are rejected and claim 5 is objected to.

A.B. Connor/bc
avec

HBKaway
Examiner

## 707.04 Initial Sentence

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

Preliminary amendment in a new case should
be acknowledged by adding some sentence such
as "Amendment filed (date) has been received"
following the initial sentence. It should be
noted, however, that in cases in which claims in
excess of the number supported by the filing fee
are presented before the first official action in
the case, action is given only on the claims
originally presented and applicant advised
accordingly. See 714.10.

## 707.05 Citation of References

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

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

## 707.05 (a) Grouped at Beginning of Letter

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

## 707.05 (b) References Applied

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

## 707.05 (c) References Pertinent

Any references selected to cover subject
matter disclosed but not claimed should be
separately listed under a heading such as
"References further showing the state of the
art," or some similar expression. Their perti-
nency should be stated briefly in the Office ac-
tion. See 706.07 (a).

## 707.05 (d) References Cited in Subse- quent Actions

When references are cited in a subsequent action,
the heading should be "Additional references made
of record," or "Additional references relied upon."
(Extract from Order 2938.)

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

If an English language patent is found cor-
responding to an earlier cited foreign language
patent, see 707.05 (e).

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

Rule 107 (707.05 and 901.05 (a) ) requires the
Examiner to give certain data when citing ref-
erences. See 901.04 for details concerning the
various series of U. S. patents and how to cite
them. Note that patents of the X-Series (dated
prior to July 4, 1836) are not to be cited by
number. Some U. S. patents issued in 1861 have
two numbers thereon. The larger number
should be cited.

If the patent date of a U. S. patent is after the
effective U. S. filing date of the application, the
filing date of the patent must be set forth in
parentheses below the citation of the patent.
This calls attention to the fact that the partic-
ular patent relied on is a reference because of
its filing date and not its patent date. Simi-
larly, when the reference is a continuation-
in-part of an earlier-filed application which
discloses the anticipatory matter and it is neces-
sary to go back to the earlier filing date, the fact
that the subject matter relied upon was origi-
nally disclosed on that date in the first applica-
tion should be stated.

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

Cite abstracts as in 711.06 (a) giving class and
subclass.

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

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# EXAMINATION OF APPLICATIONS

# 707.05 (g)

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

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

In order to direct attention of interested parties
to English translations of foreign language patents,
the following practice should be observed:

Cite the foreign language patent as usual. If at
that time the Examiner knows of a corresponding
English language patent, but because of date or dis-
closure, the Examiner must rely upon the foreign
language patent, he should cite both, thus:

Herrmann French, 860,963, 3 pp., Oct. 15, 1940,
167-75.

(Corresponding U. S .- Herrmann 2,537,757, Jan.
9, 1951, 167-75.)-

If the corresponding English language patent is
found later, the Examiner should cite it in the next
regular Office action or, if the application is being
sent to issue, in an Examiner's Amendment calling
attention to its correspondence to the previously
cited foreign language patent in the following
manner:

Herrmann, 2,537,757, Jan. 9, 1951, 167-75.

(U. S. Corresponding to Herrmann-French Cited
in paper No. ______.. )

To insure inclusion of both patents and to indi-
cate the correspondence between them in the list
of references (Form PO-98), the Examiner should
make a marginal notation adjacent the citation of
the foreign language patent, such as:

"See Paper No. ______ for corresponding U. S.
patent." 'This should be in pencil and initialed by
the Examiner. (Extract from Notice of September
27, 1951.)

In citing publications, sufficient information
should be given to facilitate the location of the
publications. The data required by Rule 107
(Sec. 707.05) should be given and it should be
stated that a copy is in the Scientific Library,
if this is known. Otherwise, the place where
a copy is known to be available should be stated.
In the instances where another copy or repro-
duction of the publication may be found in a

particular subclass, the Examiner, for his con-
venience, may cite the class and subclass in
addition to stating that a copy is in a particular
library or division. Where the only known
copy can be found in an Examining Division,
the Examiner should indicate the division,
stating the class and subclass if appropriate.

Whenever in citing references in applications and
in Form PO-98 (1302.12) the titles of periodicals are
abbreviated, the abbreviations of titles used in
Chemical Abstracts and printed in the list of period-
icals abstracted by Chemical Abstracts should be
adopted with the following exceptions: (1) the ab-
breviation for the Berichte der deutschen chemi-
schen Gesellschaft should be Ber. Deut. Chem.
rather than Ber., and (2) where a country or city
of origin is a necessary part of a complete identifi-
cation, the country or city of origin should be added
in parentheses, e. g., J. Soc. Chem. Ind. (London).
(Extract from Memorandum of Feb. 3, 1947.)

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

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

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

For the purpose of anticipation predicated upon
prior knowledge under 35 U. S. C. 102 (a) the above
noted declassified material may be taken as prima
facie evidence of such prior knowledge as of its
printing date even though such material was classi-
fied at that time. When so used the material does
not constitute an absolute statutory bar and its
printing date may be antedated by an affidavit under
Rule 131. (Notice of Feb. 24, 1947, Revised.)

# 707.05 (g) Incorrect Citation of Ref- erences

Whenever a reference has been incorrectly cited
in any official paper forming part of an application

707.06

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

Where a wrong citation of a patent has been made
by the Examiner and this is evidenced by the sub-
mission of the purchased copy, it is customary as a
matter of courtesy to mail the applicant a correct
copy. See also 710.06.

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

## 707.06 Citation of Decisions, Orders and Notices

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

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

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

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

## 707.07 Completeness and Clarity

Rule 105. Completeness of examiners' action. The
examiner's action will be complete as to all matters,
except that in appropriate circumstances, such as mis-
joinder of invention, fundamental defects in the appli-
cation, and the like, the action of the examiner may be

limited to such matters before further action is made.
However, matters of form need not be raised by the ex-
aminer until a claim is found allowable.

## 707.07 (a) Action on Formal Matters

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

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

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

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

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

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

707.07 (c) Draftsman's Requirement

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

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

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

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be otherwise advised as to what the claim re-
quires to render it complete.

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

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

(a) obviously fully met by, or

(b) clearly readable on, or

the reference.

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

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

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

(a) substantially met by, or

(b) lacking invention over, or

c) unpatentable over, or

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

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

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

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

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

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

the substitution can be made. The pertinency
of each reference should be fully set forth.

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

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

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

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

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

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

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

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

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

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

### 707.07 (g) Piecemeal Prosecution

Piecemeal prosecution should be avoided as
much as possible. The Examiner ordinarily
should reject each claim on all valid grounds
available, avoiding, however, undue multipli-
cation of references. (See 904.02.) Moreover,
when there exists a sound rejection on the basis
of prior art which discloses the "heart" of the
alleged invention (as distinguished from prior
art which merely meets the terms of the claim),
secondary rejections on technical grounds ordi-
narily should not be made. Where a major
technical rejection is proper (e. g., aggregation,
lack of proper disclosure, undue breadth), such
rejection should be stated with a full develop-
ment of the reasons rather than by a mere con-
clusion coupled with some stereotyped expres-
sion. Certain technical rejections (e. g. nega-
tive limitations, indefiniteness) should not be
made where the examiner, recognizing the lim-
itations of the English language, is not aware
of an improved mode of definition.

### 707.07 (h) Notify of Inaccuracies in Amendment

See 714.23.

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

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

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

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

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

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

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

707.07 (k) Numbering Paragraphs
It is good practice to number the paragraphs

of the letter consecutively. This facilitates
their identification in the future prosecution of
the case.

# 707.08 Reviewing and Initialing by As- sistant Examiner

The typed Office action is compared with the
rough draft by the Assistant Examiner and the
original copy initialed when satisfactory.

# 707.09 Signing by Primary or Acting Examiner

In each Examiner's letter, the word "Examiner"
or "Acting Examiner" without the number of the
Division, should appear at the end on both the orig-
inal and carbon copies, the original only being
signed. (Extract from Order 2938.)

# 707.10 Entry

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

# 707.11 Date

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

# 707.12 Mailing

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

# 707.13 Returned Office Action

Letters are sometimes returned to the Office
because the Post Office has not been able to de-
liver them. The Examiner should use every
reasonable means to ascertain the correct ad-

{

dress and forward the letter again, after stamp-
ing it "remailed" with the date thereof and re-
directing it if there be any reason to believe that
the letter would reach applicant at such new
address. If the Office letter was addressed to
an attorney, a letter may be written to the in-
ventor or assignee informing him of the re-
turned letter. The six months running against
the application begins with the date of remail-
ing. (Ex parte Gourtoff, 1924 C. D. 153; 329
O. G. 536.)

If the Office is not finally successful in de-
livering the letter, it is placed, with the en-
velope, in the file wrapper.

# 707.14 Action Preceding Final

If when making a regular Office action it appears
that the next Office action may be final, the Exam-
iner should add at the end of the action a simple
sentence advising applicant to prepare for final
action. (Notice of Nov. 7, 1949.)

# 708 Order of Examination

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

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

# 708.01 List of Special Cases

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

(

Applications wherein the inventions are deemed of
peculiar importance to some branch of the public serv-
ice and the head of some department of the Govern-
ment requests immediate action for that reason, may
be advanced for examination.

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

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

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

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

(b) Subject alone to diligent prosecution by
the applicant, an application for patent that has
once been made special and advanced out of
turn for examination by reason of a ruling made
in that particular case by the Commissioner or
an Assistant Commissioner will continue to be
special throughout its entire course of prose-
cution in the Patent Office, including appeal, if
any, to the Board of Appeals; and any inter-
ference in which such an application becomes
involved shall, in like measure, be considered
special by all Patent Office officials concerned.
(Notice of Dec. 3, 1954.) (See 708.02.)

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

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

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

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

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

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

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

(k) New cases which are obviously informal
(702.01). See also 714.13 and 1207.

(

708.02
708.02 Petition to Make Special

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

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

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

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

# 708.03 Examiner Tenders His Resig- nation

Whenever an Examiner tenders his resignation,
the Principal should see that the Assistant spends
his remaining time as far as possible in winding up
the old complicated cases or those with involved
records and getting as many of his amended cases as

possible ready for final disposition. (Extract from
Order 3084.)

# 709 Suspension of Action

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

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

Action by the examiner may be suspended by order
of the Commissioner in the case of applications owned
by the United States whenever publication of the in-
vention by the granting of a patent thereon might be
detrimental to the public safety or defense, at the re-
quest of the appropriate department or agency.

Suspension of action (Rule 103) should not
be confused with extension of time for reply
(Rule 136). It is to be noted that a suspension
of action applies to an impending Office action
by the examiner whereas an extension of time
for reply applies to action by the applicant.

Rule 103 provides for suspension of Office
action in three different situations as follows:
(a) The first paragraph of the Rule pro-
vides for a suspension of Office action upon re-
quest by the applicant. If the request is ac-
companied by a showing of "good and sufficient
cause" and specifies a "reasonable time" the ex-
aminer may grant one suspension, but any fur-
ther suspension must be approved by the Com-
missioner.

(b) The second paragraph of the Rule pro-
vides for a suspension of Office action by the
examiner on his own initiative, as in Secs.
709.01 and 1101.01 (i).

(c) The third paragraph of the Rule pro-
vides for a suspension of examiner's action by
order of the Commissioner in certain cases.

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

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

Because of this where one of several appli-
cations of the same inventor or assignee which
contain overlapping claims gets into an inter-
ference it was formerly the practice to suspend
action by the Office on the other applications.

(

€
(

(

Now, partly in view of In re Seebach, 1937 C. D.
495; 484 O. G. 503 the prosecution of all the
cases not in the interference is required to be
carried as far as possible, by treating as prior
art the counts of the interference and by rejec-
tions forcing the drawing of proper lines of
division. In some instances, however, where
warranted by the particular facts of a case,
suspension of action by the Office cannot be
avoided. See ex parte McCormick, 1904 C. D.
575; 113 O. G. 2508. See 1111.03.

# 709.02 Actions Following Correspond- ence Under Rule 202

See 1111.01 (i).

## 710 Period for Response

For periods for response in connection with
appeals see 1206.

## 710.01 Statutory Period

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

The normal statutory period for response to
an Office action is six months. 35 U. S. C. 133.

## 710.01 (a) Statutory Period, How Computed

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

Response to an Office action dated August 30,
is due on the following February 28 (or 29 if it
is a leap year), while a response to an Office
action dated February 28 is due on August 28
and not on the last day of August. Ex parte
Messick, 1930 C. D. 6; 400 O. G. 3.

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

In some cases the Examiner's letter does not
determine the beginning of a statutory response
period. For example, the Examiner may write
a letter adhering to a final rejection, in which
case the statutory response period running from
the date of the final rejection is not disturbed.
In all cases where the statutory response period

runs from the date of a previous action, a state-
ment to that effect should be included at the end
of the letter, and the date on which the statutory
response terminates should be given.

# 710.02 Shortened Statutory Period and Time Limit Actions

Under Rule 136 (35 U. S. C. 133) an appli-
cant does not always have six months within
which to respond to an Office action. He may
be required to respond in a shorter period, not
less than 30 days, whenever it is deemed "neces-
sary or expedient". Some conditions deemed
"necessary or expedient" are listed in Section
710.02 (b).

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

A SHORTENED STATUTORY PERIOD
FOR RESPONSE TO THIS ACTION IS
SET TO EXPIRE (DATE).

(This should be in capital letters.)
(Notice of June 11, 1940, Revised.)

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

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

Furthermore, the legend "SHORTENED TIME
FOR REPLY" is stamped on the first page of every
action in which a shortened time for reply has been
set. This legend is applied preferably just under
the date stamp so prominently that a person looking
merely for the mailing date of the action and not
reading the action as a whole cannot reasonably
avoid seeing the legend. (Notice of November 22,
1941, Revised.)

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

Before being mailed, a letter setting a shortened
statutory period for response must be approved by
the Commissioner, but this approval is obtained from
the Supervisory Examiner, to whom the Commis-
sioner has delegated this authority. (Extract from
Order 3494.) (See 1005.)

710.02 (b)

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

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

Some specific cases are :

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

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

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

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

In order to reduce the future accumulation of five-
year cases a shortened statutory period of 60 days
should be set in any fourth or subsequent complete
action on the merits which does not close the prose-
cution of the case. (Extract from Memorandum of
Sept. 14, 1951.)

(e) When the Primary Examiner finds that
a newly filed application obviously fails to
disclose an invention with the clarity required
by 35 U. S. C. 112. See 702.01.

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

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

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

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

(b) Rule 206 provides :

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

See 1101.02 (f).

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

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

See 714.03.

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

The distinction between a limited time for
reply and a shortened statutory period under
Rule 136 should not be lost sight of. The
former is set by the Primary Examiner, while
the latter requires the approval of the Super-
visory Examiner. The penalty attaching to
failure to reply within the time limit (from the
suggestion of claims or the rejection of copied
patent claims) is loss of the subject matter in-
volved on the doctrine of disclaimer, and is an
appealable matter; while failure to respond
within the set statutory period results in aban-
donment of the entire application. This is not
appealable. Further, where applicant responds
a day or two after the time limit, this may be
excused by the Examiner if satisfactorily ex-
plained; but a response one day late in a case
carrying a shortened statutory period under
the Rule 136, no matter what the excuse, results
in abandonment; however, if asked for in ad-

(

vance extension of the period may be granted by
the Examiner, provided the extension does not
go beyond the six months' period from the date
of the Office action. See also 1101.02 (f).

## 710.02 (e) Extension of Time

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

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

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

## 710.03 Three Year Period, Certain Government Owned Cases

35 U. S. C. 267. Time for taking action in Govern-
ment applications. Notwithstanding the provisions of
sections 133 and 151 of this title, the Commissioner
may extend the time for taking any action to three
years, when an application has become the property
of the United States and the head of the appropriate
department or agency of the Government has certified
to the Commissioner that the invention disclosed there-
in is important to the armament or defense of the
United States.

### 710.04 Two Periods Running

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

#### 710.04 (a) Copying Patent Claims

Where in an application in which there is an
unanswered rejection of record, claims are

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

## 710.05 Period Ending on Saturday, Sunday or Holiday

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

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

When an amendment is filed a day or two
later than the expiration of the period fixed by
statute, care should be taken to ascertain
whether the last day of that period was Satur-
day, Sunday or a holiday in the District of
Columbia, and if so, whether the amendment
was filed or the fee paid on the next succeed-
ing day which is not a Saturday, Sunday or a
holiday.

An amendment received on such succeeding
day which was due on Saturday, Sunday or a
holiday is endorsed on the file wrapper with
both dates, such as June 8, 1953 (June 6, Satur-
day) or June 8, 1953 (June 7, Sunday).

## 710.06 Miscellaneous Factors Deter- mining Date

. When applicant writes the Office pointing out
an incorrect citation of a reference (707.05 (g)),
which was relied on for a rejection the period

of six months running against the application
begins anew on the date of the Office response
giving the correct citation.

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

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

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

### 711 Abandonment

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

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

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

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

See rule 7.

Rule 188. Express abandonment. An application
may be expressly abandoned by filing in the Patent
Office a written declaration of abandonment, signed
by the applicant himself and the assignee of record, if
any, and identifying the application.

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

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

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

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

## 711.01 Express or Formal Abandon- ment

Applications expressly abandoned (Rule
138) present no particular problem. It should
be borne in mind, however, that formal aban-
donment must have the signature of the as-
signee, if any, as well as of the applicant.
When a letter of express abandonment which
complies with Rule 138 is received the Exam-
iner should notify the applicant that the letter
of express abandonment has been received, that
the application is abandoned and is being rele-
gated to the abandoned files.

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

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

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

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

Abandonment by entire failure to respond
presents no problems.

Nor is there ordinarily any particular diffi-
culty when an amendment reaches the Office
(not the division) after the expiration of the
statutory period. The case is abandoned and
the remedy is to petition to revive it. The Ex-
aminer should notify the applicant or attorney
at once that the application has been aban-
doned. The late amendment is endorsed on the
file wrapper but not formally entered. (See
714.17.)

To pass on questions of abandonment, it is
essential that the Examiner know the dates that
mark the beginning and end of the statutory

(
C

(
(

(

{

period under varying situations. The ex parte
prosecution before the Examiner presents few
departures from the ordinary type in which the
applicant's response must reach the Office with-
in six months from the mailing date of the
Office letter, or not later than the date set as
ending the shortened period for reply. (See
710 to 710.06.)

## 711.02 (a) Insufficiency of Response

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

## 711.02 (b). Special Situations Involv- ing Abandonment

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

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

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

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

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

(e) When drawings are transferred under
Rule 88. See 608.02 (1).

# 711.02 (c) Termination of Proceed- ings

In the new Patent Code, Section 120, co-
pendency of applications is defined in the pro-
vision that requires the second application to
be filed before (a) the patenting, or (b) the
abandonment of, or (c) other termination of
proceedings in the first application.

Termination of proceedings in an application
occurs when it is abandoned or when the patent
has been granted, hence this expression is the
broadest of the three.

In each of the following situations, proceed-
ings are terminated :

1\. When the final fee is not paid and the ap-
plication is forfeited, proceedings are termi-
nated as of the date the final fee was due and the
application is the same as if it were abandoned
on that date (but if the final fee is later ac-
cepted, on petition, the application is in a sense
revived).

2\. If an application is in interference involv-
ing all the claims present in the application as
counts and the application loses the interfer-
ence as to all the claims, then proceedings on
that application are terminated as of the date
appeal or review by civil action was due if no
appeal or civil action was filed.

3\. Proceedings are terminated in an applica-
tion after decision by the Board of Appeals
as explained in Section 1214.06.

4\. Proceedings are terminated after a deci-
sion by the court as explained in Sections
1215.05 and 1216.01.

# 711.03 Reconsideration of Holding of Abandonment; Revival

When advised of the abandonment of his
application, applicant may either ask for re-
consideration of such holding, if he disagrees
with it; or petition for revival if he acquiesces
with the holding.

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

Applicant may deny that his response was
incomplete.

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

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

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

However, the Examiner and the applicant
may disagree as to the date on which the statu-

Rev 1 April 1958

## 711.03 (c)

## MANUAL OF PATENT EXAMINING PROCEDURE

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

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

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

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

A petition to revive an abandoned applica-
tion should not be confused with a petition
from an Examiner's holding of abandonment.
As stated above abandonment may result not
only from insufficiency of response but also
from entire failure to respond, within the statu-
tory period following an office action.

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

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

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

ON PETITION TO SET ASIDE EXAMINER'S
HOLDING

Rule 181 states that the Examiner "may be
directed by the Commissioner to furnish a
written statement within a specified time set-
ting forth the reasons for his decision upon the
matters averred in the petition, supplying a
copy thereof to the petitioner". Often, how-

ever, the Supervisory Examiner passes upon
the question without requesting such statement
from the Examiners, if the issue raised is clear
from the record.

### ON PETITION TO REVIVE

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

#### 711.04 Disposal of Abandoned Files

Extract from Rule 14. Abandoned applications may
be destroyed after twenty years from their filing date,
except those to which particular attention has been
called and which have been marked for preservation.
Abandoned applications will not be returned.

See also 1302.07.

#### 711.04 (a) Pulling and Forwarding

Once each month, the files of such applica-
tions as have become abandoned during the
preceding month are pulled and forwarded to
the Abandoned Files Unit.

They should be carefully scrutinized to make
sure that no files having a decision of the Board
of Appeals and containing allowed claims are
being erroneously sent to the Abandoned Files
Unit.

#### 711.04 (b) Ordering Abandoned Files

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

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

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

(

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713.01

application is forfeited, the Docket Branch
prepares and sends the acknowledgment.

#### 711.06 Publication of Abstracts

The practice of publishing abstracts of abandoned
applications, instituted by Commissioner's Notice of
January 25, 1949, 619 O. G. 258, will be discontinued.
No requests for publication of abstracts received
after August 3, 1953 will be considered. (Commis-
sioner's Order of May 26, 1953; 671 O. G. 316.)

#### 711.06 (a) Use of Abstract as Refer- ence

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

Brown, abstract of application serial
number
published

---- O. G.
(Give class and subclass.)

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

See 901.06 (d).

#### 712 Forfeiture

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

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

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

When the six months' period within which
the final fee might have been paid has expired,
the file is returned by the Issue and Gazette

Branch to the examining division. The clerk
of the examining division takes out the draw-
ing, stamps it "Forfeited", stamps the file like-
wise, makes the proper entry in the register,
and forwards the file and drawing to the proper
section of the Record and Attorney's Room
which is under the supervision of the Librarian.
The application is recorded as forfeited and
filed away in the abandoned files unit. When
the final fee is not paid and the application is
forfeited, proceedings are terminated as of the
date the final fee was due and the application
is the same as if it were abandoned on that date
(but if the final fee is later accepted, on petition,
the application is in a sense revived). If the
final fee is not tendered within eighteen months
after the date of allowance and accepted, the
forfeited case becomes abandoned; and such
abandoned application cannot be revived. In
this respect an abandoned application that has
passed through the twelve months' period of
forfeiture differs in status from an application
that has become abandoned under the provi-
sions of Rules 135 and 136 in that the latter may
be revived under the provisions of Rule 137.

#### 713 Interviews

The personal appearance of an applicant,
attorney, or agent before the Examiner pre-
senting matters for the latter's consideration is
considered an interview.

#### 713.01 General Policy, How Con- ducted

Rule 133 Interviews. (a) Interviews with exam-
iners concerning applications and other matters pend-
ing before the Office must be had in the examiners'
rooms at such times, within office hours, as the re-
spective examiners may designate. Interviews will not
be permitted at any other time or place without the
authority of the Commissioner. Interviews for the
discussion of the patentability of pending applications
will not be had before the first official action thereon.
Interviews should be arranged for in advance.

An interview should normally be arranged
for in advance, as by letter, telegram or phone
call, in order to insure that the Primary Exam-
iner and/or the Examiner in charge of the ap-
plication will be present in the Office. When a
second division is involved (Patentability Re-
port), the availability of the second Examiner
should also be checked. (See 705.01 (f).) The
unexpected appearance of an attorney or appli-
cant requesting an interview without any previ-
ous notice to the Examiner may well justify his
refusal of the interview at that time, particu-
larly in an involved case.

#### 713.02

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

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

It is the duty of the Primary Examiner to
see that an interview is not extended beyond a
reasonable period even when he does not per-
sonally participate in the interview.

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

#### 713.02 Interviews Prior to First Offi- cial Action

No interview is permitted for discussion of
the patentability of an application prior to the
first official action thereon. And it obviously
follows that no interview can be held in advance
of the filing of an application. In this regard
it is the practice of many attorneys, searchers
and inventors to consult the Examiner as to the
field of search or as to whether he knows of any
art, domestic or foreign, not covered by a search
already made. Ordinary courtesy to those do-
ing business with the Office has countenanced
this practice. The Examiner when confronted
by such a request may in his discretion comply
with it but in no case should he permit a de-
tailed explanation of the invention with attend-
ant discussion thereof as to the field of search,
entailing the expenditure of an unreasonable
amount of time. The Office cannot act as an
expounder of the patent law, nor as counsellor
for individuals. Nor should the Examiner per-

mit searching in the division without the con-
sent of the Primary Examiner.

#### ( 713.03 Interview for "Sounding Out" Examiner Not Permitted

Interviews that are solely-for the purpose of
"sounding out" the Examiner, as by a local at-
torney acting for an out-of-town attorney,
should not be permitted when it is apparent
that any agreement that would be reached is
conditional upon being satisfactory to the prin-
cipal attorney.

#### 713.04 Substance of Interview Must Be Made of Record

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

(b) In every instance where reconsideration is re-
quested in view of an interview with an examiner, a
complete written statement of the reasons presented at
the interview as warranting favorable action must be
filed by the applicant. An interview does not remove
the necessity for response to Office action as specified
in rules 111, 135.

This is further brought out by the following
Rule :.

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

#### 713.05 Interviews Prohibited or Granted, Special Situations

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

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

(

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not sufficient authority for granting an inter-
view involving the merits of the application.

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

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

# 713.06 No Inter Parte Questions Dis- cussed Ex Parte

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

## 713.07 Exposure of Other Cases

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

## 713.08 Demonstration, Exhibits, Models

The invention in question may be exhibited
or demonstrated during the interview by a
model thereof which may be sent to the Office
prior to the interview where it is received in
the model room and forwarded to the division.
A model is not to be received by the Examiner
directly from the applicant or his attorney.
See 608.03 and 608.03 (a).

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

## 713.09 Finally Rejected Application

The grace extended an applicant after final
rejection will be determined in part by the

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

## 713.10 Interview Preceding Filing Amendment Under Rule 312

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

## 714 Amendments, Applicant's Action

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

# 714.01 Signatures to Amendments

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

# 714.01 (a) Unsigned or Improperly Signed Amendment

An unsigned amendment or one not properly
signed by a person having authority to prose-
cute the case is not entered. This applies, for

# MANUAL OF PATENT EXAMINING PROCEDURE

## 714.01 (b)

instance, where the amendment is signed by
one only of two applicants and the one signing
has not been given a power of attorney by the
other applicant.

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

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

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

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

Note 717.01 on return of papers entered on
File Wrapper.

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

## 714.01 (c) Signed by Attorney Not of Record

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

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

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

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

action should be mailed to the applicant, as well
as to the attorney.

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

See 402.03, 402.04, 402.04 (a).

## 714.02 Must Be Fully Responsive

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

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

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

See rules 135 and 136 for time for reply.

Compliance with or discussion of a require-
ment for the correction of formal matters may
be deferred by applicant until a claim is indi-
cated to be allowable. See 707.07 (a).

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

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

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

Responses to requirements to restrict are
treated under 818.

(

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714.07

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

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

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

See Rule 135.

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

The practice outlined above does not apply
where there has been a deliberate omission of
some necessary part of a complete response.
For example, if an election of species has been
required and applicant does not make election
because he holds the requirement to be wrong,
the amendment on its face is not a "bona fide
attempt to advance the case to final action"
(Rule 111), and the Examiner is without au-
thority to postpone decision as to abandonment.

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

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

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

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

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

### 714.05 Examiner Should Immediately Inspect

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

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

If the amendment is properly signed
(714.01).

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

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

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

If the case is special. See 708.01.

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

If there is a traverse of a requirement for
restriction.

## 4.06 Amendments Sent to Wrong Division

See 508.01.

714.07 Amendments Not in Perma-
nent Ink

If an amendment in other than permanent
ink is filed, it is entered, but a permanent copy

### 714.08

is required to be filed. Rule 52 (a). A good
carbon copy is acceptable.

### 714.08 Telegraphic Amendment

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

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

### 714.09 Amendments Before First Of- fice Action

As an applicant has the right to amend be-
fore action on his case provided the number of
claims is kept within the limit imposed by his
filing fee, an amendment is sometimes filed
along with the filing of the application. Such
amendment does not enjoy status as part of the
original disclosure. It is entered in the case
and acted on in the first Office action. In re-
gard to the introduction of new matter by such
an amendment, see 608.04 (b).

### 714.10 Claims Added in Excess of Filing Fee

In cases in which claims in excess of the number
supported by the filing fee are presented before the
first Official action on the case, the clerk will place
the amendment in the file and enter it on the file
wrapper but the Examiner will defer action on the
claims presented in the amendment. In his first
action the Examiner should act on the claims orig-
inally presented and for which the appropriate fee
was paid. In this first action the Examiner also
should inform the applicant that if he believes that
any of the claims presented by the amendment are
patentable, he can have them entered and consid-
ered in the next action but only by specifically point-
ing out wherein the claims presented in the amend-
ment are patentable over the references relied upon
in rejecting any claim. (Extract from Notice of
August 18, 1928, Revised.)

### 714.11 Amendment Filed During In- terference Proceedings

See 1111.05.

### 714.12 Amendments After Final Re- jection or Action

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

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

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

Once a final rejection that is not premature
has been entered in a case it should not be with-
drawn except on the showing required by Rule
116 and the approval of the Supervisory Exam-
iner. This does not mean that no further
amendment or argument will be considered.
Any amendment that will place the case either
in condition for allowance or in better form
for appeal will be entered. See 706.07 (e) and
714.13, 1207.

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

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

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

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

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the appeal. The Examiner should write a letter
stating the reasons for nonentry such as, for
example,

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

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

(d) since the amendment presents additional
claims without cancelling corresponding finally
rejected claims it is not considered as placing
the application in better condition for appeal;
Ex parte Wirt, 1905 C. D. 247; 117 O. G. 599.

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

In the consideration of the proposed amend-
ment, a new reference may be discovered which
is pertinent to the claims as amended. The
practice set forth in 1207, last two paragraphs,
should be followed.

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

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

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

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

### 714.14 Amendments After Allowance of All Claims

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

Amendments touching the merits are treated
in a manner similar to amendments after final
rejection, though the prosecution may be con-

tinued as to the formal matters. See 714.12
and 714.13.

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

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

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

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

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

## '714.16 Amendment After Notice of Allowance, Rule 312

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

The Commissioner has delegated the approval
of such recommendation to the Supervisory
Examiners.

714.16

## 714.16 (a)

## MANUAL OF PATENT EXAMINING PROCEDURE

A supplemental oath is not treated as an
amendment under Rule 312, see 603.01.

After a case is sent to issue, it is technically
no longer under the jurisdiction of the Primary
Examiner. Amendments may, however, be
made under Rule 312 subject to the following
qualifications :

The Primary Examiner has authority to
make Examiner's Amendments, see Section
1302.04; and also authority to enter amend-
ments submitted after Notice of Allowance of
an application which embody merely the cor-
rection of formal matters in the specification or
drawing, or formal matters in a claim without
changing the scope thereof, or the cancellation
of claims from the application, without for-
warding to the Supervisory Examiner for ap-
proval. (Extract from Order 3311, Revised.)

Recommendations concerning any amend-
ment affecting the disclosure of the specifica-
tion or drawing, or adding claims, or changing
the scope of any claim shall be submitted to the
Supervisory Examiner. The following general
considerations relative to amendments of this
type are noted.

Consideration of an amendment under Rule
312 cannot be demanded as a matter of right.
Prosecution of a case should be conducted be-
fore, and thus be complete at the time of the
Notice of Allowance. However, where amend-
ments of the type noted are shown (1) to be
needed for proper disclosure or protection of
the invention, and (2) to require no substan-
tial amount of additional work on the part of
the Office, they may be considered and, if
proper, entry may be recommended by the
Primary Examiner.

The requirements of Rule 111 (c) (714.02)
with respect to pointing out the patentable
novelty of any claim sought to be added or
amended, apply in the case of an amendment
under Rule 312, as in ordinary amendments.
As to amendments affecting the disclosure, the
scope of any claim or that add a claim, the re-
marks accompanying the amendment must fully
and clearly state the reasons on which reliance'
is placed to show: (1) why the amendment is
needed; (2) why the proposed amended or new
claims require no additional search or exami-
nation and (3) why the claims are patentable.

Where the recommendation is against entry,
the adverse recommendation does not require a
lengthy statement. A succinct statement may
be made which need comprise no more than
allegation : that the reasons advanced for the
necessity of the amendment are not persuasive;
or that an additional search or examination is
required; or that the proposed claims are not

obviously allowable; or other allegation indi-
cating materially added work on the part of the
Office.

The consideration of amendments under Rule
312 should not be cursory with statements of
refusal as indicated above used in a stereo-
typed manner. Where it can be made, a sug-
gestion of an amendment that would, in the
opinion of the Primary Examiner, render the
claim allowable, or the amendment otherwise
enterable, is always in order.

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

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

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

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

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

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

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

A proposed amendment under Rule 312
which, if entered, would increase the final fee
beyond that remitted, and received both with-
out the additional necessary fee and too late in
the period to notify applicant so that the addi-
tional fee will be received within the period,
should be refused entry. Applicant should be
promptly informed of this act and also whether
or not the proposed amendment is otherwise
enterable.

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# 714.18

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

Petitions to amend under Rule 312 will be sent by
the Mail Room to the Issue and Gazette Branch.
The Issue and Gazette Branch will send the peti-
tion with the file to the division which allowed the
case.

The application will be submitted to the Exam-
iner for his recommendation, which must be
promptly made. When the recommendation is fa-
vorable (to be indicated by applying on the amend-
ment the stamp reading "Entry recommended under
Rule 312"), the Examiner's clerk will enter the
amendment and prepare a letter, in duplicate (Form
POL-97) to the applicant, notifying him that the
amendment has been entered. This letter should
be placed in the file, entered on the file wrapper
and in the Examiner's register. The file, together
with the unmailed duplicate, should be sent back to
the Issue and Gazette Branch which will forward
it to the Supervisory Examiner.

If the Examiner's recommendation is adverse to
the entry of the amendment, a letter (Form POL-
105) should be prepared in duplicate, to the appli-
cant so advising him, and including the Examiner's
report. This letter should be placed in the file and
entered on the file wrapper and in the Examiner's
register. The unmailed duplicate, together with the
file, should be forwarded as above. (Order No.
2698, Revised.)

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

Amendments concerning merely formal mat-
ters are entered without permission of the
Supervisory Examiner. See Order 3311, 714.16.
The amendment is stamped "Entered Under
Order 3311" and form POL-66 is used by the
typist. Where an amendment under Rule 312
is disapproved a report is prepared by the
Examiner and form POL-105 is used.

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

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

the claims already in the case. The refused claims
should be cancelled in lead pencil on the amendment.

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

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

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

## 714.18 Entry of Amendments

Amendments are stamped with the date of
their receipt in the division. It is important
to observe the distinction which exists between
the stamps which shows the date of receipt
of the amendment in the division ("Division
Date" stamp) and the stamp bearing the date
of receipt of the amendment by the Office ("Of-
fice Date" stamp). The latter date, placed in
the left-hand corner, should always be referred
to in writing to the applicant with regard to
his amendment.

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

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

After entry of the amendment the applica-
tion is "up for action", and it is very important
that it should be kept separate from those ap-
plications which await action by the applicant.
It is placed on the Examiner's desk, and he is

responsible for its proper disposal. The Ex-
aminer should immediately inspect the amend-
ment as set forth in 714.05. After inspection
if no immediate or special action is required,
the application is placed in the amended case
files to await re-examination in regular order.

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

## 714.19 List of Amendments, Entry Denied

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

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

(a) All claims have been allowed,

(b) All claims have been finally rejected,

See 714.12 to 714.14.

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

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

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

(5) An unsigned or improperly signed
amendment or one signed by a person having
no authority.'

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

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

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

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

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

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

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

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

## 714.20 List of Amendments Entered in Part

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

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

It may be noted in this connection, however,
that the fact that a substitute specification, in
the opinion of the Examiner, contains new mat-
ter is not in itself a proper reason for refusing
entry thereof. So far as the subject matter
itself is concerned, an applicant has the right

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# 714.24

to a hearing on any amendment he may see fit
to present. Whether the amendment will be
entered in the form of a substitute specification
or a series of alterations of the original speci-
fication is an administrative matter for the Of-
fice to determine.

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

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

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

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

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

## 714.21 Amendments Inadvertently En- tered, No Legal Effect

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

margin of the amendatory paper, as, "Not Offi-
cially Entered".

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

## 714.22 Entry of Amendments, Direc- tions for

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

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

Where the directions for the entry of an
amendment are defective, as, inaccuracy in the
line designated, or lack of precision where the
word to which the amendment is directed oc-
curs more than once in the specified line, and it
is clear from the context what is the correct
place of entry, the amendatory paper will be
properly amended in the examining division,
and notation thereof, initialed by the Examiner,
who will assume full responsibility for the
change, will be made on the margin of the
amendatory paper. In the next Office action
the applicant should be informed of this altera-
tion in his amendatory paper and the entry of
the amendment as thus amended. He will also
be informed of the nonentry of an amendment
where defective directions and context leave
doubt as to the intent of applicant. (Notice of
June 30, 1939, as amended May 7, 1951.)

### 714.24 Amendment of Amendment

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

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

# 714.25 Discourtesy of Applicant or At- torney

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

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

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

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

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

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

Such a rejection may be overcome, in certain
instances noted below, by applicant's filing of

an affidavit under Rule 131, known as "swear-
ing back" of the reference.

Affidavits under Rule 131 may be used :

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

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

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

(1) Where reference publication date is more
than one year back of applicant's effective filing
date. Such a reference is a "statutory bar".

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

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

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

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

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

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

## 715.01 Reference Patent Entitled to Foreign Filing Date

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

(

(

## 715.02 General Rule as to Generic Claims

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

### 715.03 Exceptions and Practice Rela- tive to Chemical Cases

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

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

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

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

278993-54 ---- 8

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

The quantum of showing in an affidavit under
Rule 131 necessary to overcome a rejection of
generic chemical claims on disclosed but un-
claimed species varies with the circumstances.

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

"Markush" Type Genus Claim :

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

#### 715.04 Who May Make Affidavit

##### A. The Inventor.

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

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

#### 715.05 Patent Claiming Same Inven- tion

When the reference in question is a patent
claiming the same invention as applicant and
its issue date is less than one year prior to
the filing date of the application being exam-
ined, applicant's remedy, if any, must be by
way of Rule 204 instead of Rule 131. The Ex-
aminer should therefore take note whether the
status of the patent as a reference is that of a
PATENT or a PUBLICATION. If the pat-
ent is claiming the same invention as the appli-
cation, this fact should be noted in the Office
letter. The reference patent can then be over-
come only by way of interference. Note, how-
ever, 35 U. S. C. 135, 1101.02 (f).

€

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

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

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

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

#### 715.07 Facts and Documentary Evi- dence

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

(A) As shown in attached sketches.

(B) As shown in attached blueprints.

(D) As shown in attached photographs.

E) As shown in reproductions of notebook
entries.

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

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

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

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

"If the applicant made sketches he should so
state, and produce and describe them; if the
sketches were made and lost, and their contents
remembered, they should be reproduced and
furnished in place of the originals. The same
course should be pursued if the disclosure was
by means of models. If neither sketches nor

models are relied upon, but it is claimed that
verbal disclosures, sufficiently clear to indicate
definite conception of the invention, were made
the witness should state as nearly as possible
the language used in imparting knowledge of
the invention to others." Ex parte Donovan,
1890 C. D. 109; 52 O. G. 309.

The affidavit must state FACTS and produce
such documentary evidence and exhibits in sup-
port thereof as are available to show conception
and completion of invention IN THIS COUN-
TRY, the conception at least being at a date
prior to the effective date of the reference.
Where there has not been reduction to practice
prior to the date of the reference, the applicant
must show diligence in the completion of his
invention from a time just prior to the date of
the reference continuously up to the date of an
actual reduction to practice or up to the date
of filing of his application, which constitutes a
constructive reduction to practice. Rule 131.
In this connection, note the following:

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

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

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

#### 715.07 (a) Diligence

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

What is meant by diligence is brought out in
Christie v. Seybold, 1893 C. D. 515; 64 O. G.
1650. In patent law, an inventor is either dili-

(

(35
C

gent at a given time or he is not diligent; there
are no degrees of diligence. A man may be
diligent within the meaning of the patent law
when he is doing nothing, if his lack of activity
is excused.

#### 715.07 (b) Interference Testimony Sometimes Used

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

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

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

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

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

Exhibits filed as part of an affidavit under
Rule 131 that are too bulky to be placed in the
application file are retained in the Examining
Division until the case is finally disposed of.
When the case goes to issue (or abandonment)
the exhibits are sent to the Model Room, nota-
tion to this effect being made on the margin of
the affidavit. See 608.03 (a).

#### 715.08 Passed Upon by Primary Ex- aminer

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

#### 715.09 Seasonable Presentation

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

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

#### 716 Affidavits Traversing Rejections, Rule 132

Rule 132. Affidavits traversing grounds of rejec-
tion. When any claim of an application is rejected

on reference to a domestic patent which substantially
shows or describes but does not claim the invention, or
on reference to a foreign patent, or to a printed publi-
cation, or to facts within the personal knowledge of
an employee of the Office, or when rejected upon a
mode or capability of operation attributed to a ref-
erence, or because the alleged invention is held to be
inoperative or lacking in utility, or frivolous or in-
jurious to public health or morals, affidavits traversing
these references or objections may be received.

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

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

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

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

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

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

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

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

(

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

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

##### 717 File Wrapper

##### 717.01 Papers in File Wrapper

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

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

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

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

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

After the notation of the character of the
papers, the mailing date is entered in regard
to Office correspondence and the filing date in
regard to correspondence from the applicant.

# 717.01 (a) Arrangement of Papers in File Wrapper

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

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

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

All insertions and substitutions should be marked
on the original application, if practicable. For in-
stance, if Amendment A provides that claims 1 to 5
should be canceled and new claims substituted, a
red line should be drawn diagonally across claims 1
to 5 and in the margin should be written "Sub. A'".

717.04

If at a later date the claims contained in Amend-
ment A' are canceled and a series of claims con-
tained in Amendment B' are submitted, the claims
in Amendment A' should be canceled and the proper
notation made in the margin, and in addition the
notation "Sub A'" on the original paper should be
canceled and in its place should be written "Sub B'".
The last requirement is very important, as the work
of the printer is needlessly delayed and complicated
if he is compelled to search from paper to paper for
the proper insertion.

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

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

## 717.01 (b) Prints

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

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

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

## 717.02 Data Entered on File Wrapper See also 707.10, 717.01 and 1302.08.

If the Examiner notices an error in any of
the data originally entered on the file wrapper,
he should have it corrected by the Application
Branch.

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

All of the above entries are either typed or
made in black ink. Such changes by amend-
ment as change of address or of attorney are

entered in red ink by the clerk of the division,
the original entry being canceled but not erased.

717.02 (a)
Statutory Period Ends on
Saturday, Sunday or Holi-
day

See 710.05.

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

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

Sec. 605.04 (c) explains the procedure to be
followed concerning sending the application to
the Assignment Branch and the Application
Branch when Applicant changes name.

### 717.03 Classification During Examina- tion

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

### 717.04 Index of Claims

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

A column has been designated on the new file
wrapper (Form PO-436) for the entry of the
final numbering of allowed claims. The pre-
printed series of claim numbers appearing on
the old jacket (Form PO-136) has been re-
tained and continues to refer to claim numbers
as originally filed.

A line in ink should be drawn below the num-
ber corresponding to the number of claims or-
iginally presented. Thereafter, a line in ink
should be drawn below the number correspond-
ing to the highest numbered claim added by each
amendment. Just outside the Index of Claims
form opposite the number corresponding to
the first claim of each amendment there should
be placed the letter designating the amendment.

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

#### 717.05 Field of Search

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

In the above order "initialed indorsement"
means the Examiner's initials should be noted.

Also, the date of search in the Scientific Li-
brary for foreign patents issued to the appli-
cant when sending an application (filed before
Jan. 1, 1953) to issue which was not filed within
12 months of applicant's earliest foreign appli-
cation should be noted in the file wrapper.

## 717.06 Foreign Filing Dates See 1302.06.

717.07 Related Applications

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

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