Intro

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# MANUAL OF

# PATENT EXAMINING PROCEDURE

PATENT

PROPERTY OF THE UNITED STATES GOVERNMENT

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U. S. DEPARTMENT OF COMMERCE
Patent Office
Washington

## MANUAL OF PATENT EXAMINING PROCEDURE Third Edition

Supplemental Instructions Regarding Revision No. 1

The attached revised pages are to be substituted for those in the Manual having
corresponding page numbers. The list of the attached Revision Notice No. 1 is to be
checked to make certain that the set of pages received is complete.

Information and instructions published in Change Notices 1 - 1 through 1 - 19
have been included in these revised pages. Accordingly, these Change Notices should
be removed and discarded. However, those of the 2-1, and 2-2 series should be
retained.

Ernest A. Faller
Editor, MPEP

Important changes in procedure appear in the following sections:

604.01

States not requiring Notary's Seal

608.02(a)

New Drawing Requirements in Allowable Cases

608. 02(c)

Drawing (or Print) Available for Interference Search

707.05(e)

Citation of Publications

707.07

Specification Differs from Art Terminology

708.01

"Special" Cases

710.02(b)

Shortened Period Situations

711.04(b)

Ordering Abandoned Files

901.05(b)

Citation of Foreign Patents

901.05(d)

Translator's Services at Examiner's Desk

901.06(a)

Alternate Versions of Foreign Patent - Assistance by Library

903.03

Classification of Foreign Patents

903.07(b)

Issuing Patent in another Group - Prints Forwarded Promptly

903.08(a)

Transferring New Applications

1002.02

Handling of Petitions

1004

Actions Submitted to Directors

1005

Actions Submitted to Group Supervisory Examiners

1101.01

Defer Interference Until One Case Allowable

1101.01(b)

Applicants of Commonly Assigned Cases Notified of Interference Election

1101.02

Interference with Patent - Broadest Claim to be a Count

(over)

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1101.02(a)

Patent Claims Copied - More Complete Affidavit Required

1105.06

Decisions on Interference Motions - Use of Soft Copies

1112.08

Avoid Reference to Patent Claims in letter under Rule 237

1302.06

"None" entered on File Wrapper if No Foreign Priority

1302.09

"None" entered on File Wrapper if No Parent Case

1302.12

German Allowed Applications listed under "Other References"

1308.01

Action Following Quality Control Review

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U.S. DEPARTMENT OF COMMERCE
Patent Office
Washington

### MANUAL OF PATENT EXAMINING PROCEDURE

#### Third Edition

##### Instructions Regarding Revision No. 2

The attached revised pages are to be substituted for those in the Manual
having corresponding page numbers. The page numbers are listed on the
reverse of this page to provide a. means for determining that your set is
complete.

Information and instructions published in Change Notices 2-1 through
2-10 have been included in these revised pages. Accordingly, these Change
Notices should be removed and discarded.

ERNEST A. FALLER
Editor, MPEP

Your attention is especially directed to the changes referred to below:

107.01

Security Cases

201.11

Reference to Parent Case

201.14(b)

Reissue-Foreign Priority Claim

202.03.

Serial Number of Foreign Priority Appli- cation (and Patent)

408

Telephoning Attorney

602

Declaration in Lieu of Application Oath

604.01

Rubber Stamped "Seal"

608.02 (a)

Protoprint in Lieu of Formal Drawing- Comparison Charge

706.02

Reference Entitled to Foreign Filing Date

706.07 (a)

Final Rejection

706.07 (e)

Amendment after Final-Rule 116 (b)

707.05

References Cited by Applicant

707.07 (d)

Language Used in Rejections-Suggesting Amendments

708

Order of Examination

710.02(b)

Shortened Statutory Periods

710.05

Friday before Holiday a "Mail Date"

710.06

Incorrect Citation-Time for Response

713.01

Examiner Suggests Interview-Interview after Final

714.12

Extra Copy of Extensively Amended Claim

714.16

Trivial Rule 312 Amendments

714.20) 714.23|

Examiner writes "Do not enter" in ink

904

Extent of First Search

1002

Prompt (60 days) Filing of Rule 181 Peti- tions

1101.02

Interference with Patent-Documentary Evidence by Junior Applicant

1208

Appeal Conference

1302.12

Listing of References

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## List of Replacement Pages

Title page

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191

5

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209

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## U.S. DEPARTMENT OF COMMERCE PATENT OFFICE WASHINGTON, D.C. 20231

## MANUAL OF PATENT EXAMINING PROCEDURE Third Edition

## Instructions Regarding Revision No. 3

The attached revised pages are to be substituted for those in
the Manual having corresponding page numbers. A list is provided
on the reverse side and may be checked to make certain that the set
of pages received is complete.

Information and instructions published in Change Notices 2 - 11
through 2 - 18 have been included in these revised pages. Accordingly,
these Change Notices should be removed and discarded.

Ernest A. Faller
Editor, MPEP

Important changes in procedure appear in the following sections :

102

Status Information

707.03

Sample Office Action

707.05 (a)

Numerical Listing of References

707.05 (e)

Specify Portion of Foreign Patent which is Relied Upon.

707.08

Negotiation Authority Indicated in Office Action

711.06

Publication of Abbreviatures

901.05 (a)

Citation Date for U.S.S.R. patent

901.05 (b)

Netherlands Printed Applications

905.01

Orders for Photocopies

1101.02

Interference with Patent -- Rule 204 (c)

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1302.04
1302.12
}

Examiner's Amendment not to be Used to
Cite Reference not to Correct Citation

Appendix III contains selected form paragraphs.

List of Replacement Pages

Title Page

3

251

26.1

255-1

61

255-3

Comprise

77

255-5

Appendix III

79

81

85

95

96.1

99

135

137

139

155

171

193

199

221

225

249

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## U. S. DEPARTMENT OF COMMERCE Patent Office Washington MANUAL OF PATENT EXAMINING PROCEDURE Instructions Regarding Revision No. 4

The attached revised pages are to be substituted for those in the Manual
having corresponding page numbers. The page numbers listed on the reverse
of this page provide a means for determining that your set is complete.

Information and instructions published in Change Notice 2 - 19, 2 - 20,
2 - 21 and 2 - 23 through 2 - 31 have been included in these revised pages.
Accordingly, these Change Notices should be removed and discarded.

Ernest A. Faller
Editor, MPEP

Your attention is especially directed to:

602.04(a)

Declaration in Lieu of Oath -- Ribboning of Papers Unnecessary

608.02(x)

Drawing Correction -- OG Figure

702.01

"Foreign Type" Case

706.07(b)

Final Rejection on First Action

713.01

Federal Telecommunications System

714.01

Attorney's Telephone Number on Amendments

714.09

Rule 147 Application -- Preliminary

Amendment

714.10

Claims (Exceeding Filing Fee) Added Before First Action

903.07 } 903.08(a)

Resubmission for Classification

905.02

Automatic Furnishing of Soft Copies

1002

Effect of Rule 181 Petition on Period for Response

1208

Appeal to Board -- Leave All Soft Copies in

File

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List of Replacement Pages

Title Page

95

34.1

97

35

101

41

105

47

107

49

145

53

147

57

151

59

153

63

156.1

75

159

79

189

81

211

85

251

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## U. S. DEPARTMENT OF COMMERCE Patent Office Washington MANUAL OF PATENT EXAMINING PROCEDURE Instructions Regarding Revision No. 5

The attached revised pages are to be substituted for those in the Manual having
corresponding page numbers. Chapter 1100 has been replaced as a unit because of
the extensive changes in interference practice based on new Rules of Practice effec -
tive July 1, 1965.

Former Chapter 1100 should NOT be discarded. It should be transferred to
the back of the Manual and will continue to govern interferences declared prior to
July 1, 1965. Change Notice 2 - 22 dealing with hearings on motions should be
retained and will be in force with respect to such interferences.

Change Notices 5 - 1 and 5 - 2 should be discarded. In 1101. 03, the text
differs from 5 - 2 with respect to the sealing of affidavits.

Ernest A. Faller
Editor, MPEP

The page numbers listed on the reverse of this sheet provide a means for
determining that your set is complete.

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### List of Replacement Pages

Title Page

5

185

69

187

77

189*

101

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## U.S. DEPARTMENT OF COMMERCE PATENT OFFICE WASHINGTON, D.C. 20231

## MANUAL OF PATENT EXAMINING PROCEDURE

### Instructions Regarding Revision No. 6

Submitted herewith is Revision No. 6 of the Manual of Patent Examining Procedure, Third
Edition.

The revised pages are to be substituted for those in the Manual having corresponding page
numbers.

This revision incorporates certain revised practices embodied in Change Notices 5-3 and
6-1 through 6-5, as well as certain changes in the Rules of Practice and changes in the Statutes.
Note should be made of pages which reproduce or refer to the new Rules and Statutes, for the
pages superseded thereby may still be pertinent to applications filed before October 25, 1965.

For the guidance of all users of the Manual the changes are recapitulated as follows:

The term "final fee" has been changed to -- issue fee -- on those pages where other changes
have been made. See 203.04 (page 19) and 307 (page 22). These are exemplary only. A new
page has not been reproduced where this changed term would constitute the only change to be made.
The words "examining divisions, " "supervisory examiner" and "principal examiner" have been
changed to -- examining groups -- , -- Group Manager -- and -- Supervisory Primary Examiner
respectively, on those pages where other changes have been incorporated. See 203. 08 (page 20),
707.02 (page 77) and 707.02 (a) (page 77), for example. See also 1005. A new page has not been
reproduced where a single term or designation of this nature would constitute the only change to be
made.

203\. 07 has been rewritten in line with the new issue fee provisions affecting allowed appli-
cations which became effective October 25, 1965. 203. 08 has been revised to indicate the modi-
fied handling of "status letters" and to set forth in the last paragraph an additional type of inquiry
relating to pending applications. 304 has been corrected to remove an obvious typographical
error in the heading.

602\. 03 has been rewritten in its entirety to incorporate the substance of the Notice of July
22, 1965, (Series No. 6-1). 607 and 607. 01 have been modified in accordance with the new law
effective October 25, 1965. 608.02 (i), 608.02 (k) and 608.02 (1) have been modified to set forth
the procedure for transferring drawings between applications, in accordance with the Notice of
September 9, 1965. 706.03 (n) now includes a further instruction where "new matter" may be -...
involved, as contained in the Notice of August 13, 1965. 706. 07 (e) sets forth current practice
following final rejections as contained in the Notice of August 11, 1965. 707.02 now specifies
certain Examiner's Answers on appeal in the list of actions which require the attention of the
Primary Examiner. 710.02 (b) lists the shortened periods for response to be set in different
types of office actions in accordance with the current practice.

712 has been rewritten to set forth new Rules 316 and 317 and to explain further the status of
an application which has become abandoned for failure to pay the issue fee. 713.01, 713.05 and
713. 09 have been substantially expanded to reflect the present practice in the conduct of inter-
views in the general case, in special situations, after final rejection and after issue.

714\. 02 adds the substance of the Notice of August 13, 1965 and a further instruction in facili-
tating the prosecution. 714. 10 states the effect of the new fee law in submitting excess claims.
A new first paragraph has been added to 715. 01 relating to the effective date of a U. S. patent,
especially as applicable to a Rule 131 situation. 717. 03 explains the advantage in maintaining
certain pencil notes on the drawing and file wrapper. (Notice of July 22, 1965, Series No. 6-2).

903\. 07 adds the substance of the Notice of June 18, 1965, relating to the processing of
applications being passed to issue. 1005 has been revised by eliminating one of the categories
(old No. 2) and by adding a further explanatory paragraph. A revision has also been made in
1208\. 01 involving certain approval to be obtained in making a new rejection in the Examiner's
Answer on appeal. 1302.04 adds the substance of the Notice of August 18, 1964, and also in-
cludes a change in the Examiner's Amendment practice. See also 1302.12. 1302. 10 restates
the portion relating to certain notations on drawings referred to in 717.03. The short

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paragraph comprising 1302. 13 has been revised. 1308 substitutes new Rule 313. 1308.02 has
been eliminated and 1308. 03 has been renumbered as 1308.02. The last paragraph of 1309.02
has been eliminated and the provision of the new fee law regarding issue fees for reissue appli-
cations is set forth. 1505 has been revised in accordance with new fee law.

Certain changes have also been made in the index pages, as well as in the "table of contents"
pages at the beginning of certain chapters.

Within the size limitations of Revision No. 6, many pages have not been substituted which
would contain solely changes of a minor nature or errors in typography which have come to the
Editor's attention. It is anticipated that these will be embodied in subsequent revisions.

W. B. Penn, Editor
Manual of Patent Examining Procedure

List of Replacement Pages

Title Page

Revision List

19

102.1

21

107

35

113

41

151

43

161

53

213

55

213.1

61

221

71

223

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\>108.1

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E

## U.S. DEPARTMENT OF COMMERCE PATENT OFFICE WASHINGTON, D.C. 20231

## MANUAL OF PATENT EXAMINING PROCEDURE Errata Regarding Revision No. 6

(

A corrected page 78 is hereby submitted to replace the one erroneously
inserted in Revision No. 6.

New pages 108. 1 and 113 are hereby submitted to remove the obvious
printer's defect of carrying out the last three lines of former page 108 onto
page 113.

In 706. 07(a), line 14, "six" should be ---- four ----.

(

(

E

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## U.S. DEPARTMENT OF COMMERCE PATENT OFFICE WASHINGTON, D.C. 20231

## MANUAL OF PATENT EXAMINING PROCEDURE

### Instructions Regarding Revision No. 7

Submitted herewith is the group of pages constituting Revision No. 7 of the Manual of
Patent Examining Procedure, Third Edition. Proper substitution for those pages in the Manual
having corresponding page numbers may be made forthwith.

This revision incorporates certain changes embodied in Notices and memoranda as in-
dicated below.

For the guidance of all users of the Manual the changes may be recapitulated as follows:

In Chapter 200, the term "forfeited" has been superseded by the new terminology -- aban-
donment for failure to pay issue fee --- See the Chapter heading and 203. 04 and 203.07.

In 201.06, fifth paragraph, and 201.11, page 10, column 2, certain exceptions are noted
in the category of those applications which should be indicated as divisional and continuing
applications.

In 608. 01 (n) language has been clarified regarding dependent claims.

In 608.02 explanatory matter has been added to the paragraph "Illustration Subsequently
Required." Also, a new paragraph "Waiving of Corrections" (Change Notice 7-3) has been
added to this section. The text of 608.02 (b) has been rewritten. In 608. 02 (x) the paragraph
"New Drawings Prepared by Patent Office" has been rewritten to embody Change Notice 7-4.

Page 62, the heading 714. 13 has been modified.

Page 65, "Supervisory Examiner" has been changed to --- Group Manager --- , Other
changes of a similar nature have been made on appropriate pages where major revisions appear.

In 706. 01 language has been clarified. In 706.02 (page 67) reference has been made to
a pertinent decision of the U. S. Supreme Court.

In 706. 03 (c) a new sentence has been added to the second paragraph of 35 U. S. C. 112
as approved July 24, 1965.

Page 79, a slight revision has been made in the sample letter.

The text has been slightly revised in 707.05.

In 708. 02 the new Special Examining Procedure for Certain New Applications has been
added.

Language changes appear in 708.03.

710.01 (a), 710.02, 710.02 (b) and 710.02 (c) have been modified to delineate more
clearly the categories of time limit actions and actions in which Shortened Statutory Periods
are set.

In 711.02 (c) final fee has been changed to --- issue fee ---. 711.03 and 711.03 (d)
have been rewritten. Minor corrections have been made in 711. 06 and 712.

In 714. 13, reference is made to the new procedure to be followed in treating amend-
ments after final.

901.05 (b) now incorporates the statement of the use of German Utility Models as refer-
ences as noted in Change Notice 7-1.

Additional text material has been added to 1109 and 1109.01.

F

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1208 has been expanded to include the procedure to be followed in saving time in
preparing the Examiner's Answer on appeal. Change Notice 7-2.

1302\. 04 has been revised to explain the procedure in citing references on allowance
of an application (Change Notice 7-5).

1302.05 has been amplified by referring back to the new procedure 608. 02.

1302\. 12 has been revised to explain more clearly the procedure in listing references
at time of allowance. A sentence has been added to 1302. 13.

Several index pages have also been modified in line with changes in the text.

The last change notice in Series 7 is Change Notice 7-5.

The Editor is cognizant of numerous other changes still to be made in matters of a
minor nature and in matters involving perfecting language and improvement in typography,
indexing and the like. It is anticipated that these will be incorporated in future revisions.

The cooperation of numerous professionals both in and out of the Office in recom-
mending improvements on the Manual is noted with appreciation and is further solicited.

W. B. Penn, Editor
Manual of Patent Examining Procedure

List of Replacement Pages

Title Page Revision List

7

102.1

9

139

19

193

47

194. 1 (Added)

51

211

52.1 (Eliminated)

213 (Reverse side blank)

53

213.1

54.1 (Added)

221

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223

61 -

225

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67

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257

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271

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<!-- PageHeader="U.S. DEPARTMENT OF COMMERCE PATENT OFFICE WASHINGTON, D.C. 20231" -->

## MANUAL OF PATENT EXAMINING PROCEDURE

### Instructions Regarding Revision No. 8

Submitted herewith is Revision No. 8 of the Manual of Patent Examining Procedure,
Third Edition. The accompanying pages may be inserted in the Manual forthwith to re-
place those pages having corresponding page numbers and as further indicated below.

For the guidance of all users of the Manual the following brief explanations are
submitted:

201\. 07 headed "Continuation" now incorporates the Commissioner's Memorandum
relating to the filing of "Continuation" applications using the same drawings and speci-
fication of the pending application.

Some modifications have been made in 710.02 (b) relating to Shortened Statutory
Periods. Also, "One Month" has been changed to --- Thirty Days ---. 710. 02 (c) now
adds (f) and (g) time limit situations. 713.02 and 713.09 cross references are noted to
other sections. 714. 13 has been extensively revised to incorporate the new procedure
in treating amendments after final action.

Page 117, new index heading 812. 01 has been added to indicate the new paragraph
on page 128 setting forth the telephone practice in restriction and election of species
situations. 809 adds portions of the memorandum "Prosecution after Final Action" re-
lating to handling of linking claims. 809.03 refers to 809. 813 and 817 have been ex-
tensively revised. The sample restriction letter on pages 130 - 131 has been deleted.

Page 159 has been corrected to refer to --- Group Managers ---. 1004 and 1005
have additional listings in the matters to be submitted to the Directors and Group
Managers, respectively.

Chapter 1100 on Interference has been revised in several sections, e.g. 1101.01 (1)
where the correct Rules are now noted ; 1101. 01 (o) where the last portion of the final
portion has been rewritten; 1101.02 (a) where extensive additions have been made;
1101.02 (c) where paragraph (4) has been rewritten and also 1101.02 (f), 1101.01 (a),
1105. 03 and 1107 where significant changes in text have been made. "Docket Branch"
has been replaced by --- Interference Service Branch --- in several sections.

1207 has added thereto the current procedure in treating amendments after final
action during the appeal and post-appeal stages. 1208.01, 1208.02 and 1214. 07 have
added text material.

1302\. 04 is now revised to incorporate the procedure set forth in the Notice of
February 24, 1966 relating to Examiner's amendments to cite new references.

The Index has also been extensively revised in an attempt to bring it up to date.
Numerous other changes are still to be ma de.

With this Revision the contents of all Change Notices from Series 1 through Series
8, insofar as they reflect current practice, are now incorporated in the text of the
Manual. Accordingly, the Change Notice sheets Series 1 through 8 need no longer be
appended to the Manual.

W. B. Penn, Editor
Manual of Patent Examining Procedure

<!-- PageBreak -->

## List of Replacement Pages

Title Page
Revision List

9

176.1(Added)

10.1

177

89

179

90.1

181

91

183

97

187

99

197

102.1

211

102. 3 (Added)

213 (Reverse side blank)

117

213.1

125

217

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223

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257

132 (Blank)

259

159

271

161 (Reverse side blank)

273

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175

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U.S. DEPARTMENT OF COMMERCE
Patent Office
Washington

## MANUAL OF PATENT EXAMINING PROCEDURE Instructions Regarding Revision No. 9

Submitted herewith is the group of pages constituting
Revision No. 9 of the Manual of Patent Examining Procedure,
Third Edition. Proper substitution for those pages in the
Manualhaving corresponding page numbers may be made forth-
with. The page numbers listed on the reverse side of this
page provide a means for determining that your set is
complete.

Information and instructions published in Change
Notice 9-1 have been included in these revised pages.
Accordingly, this Change Notice needs no longer be appended
to the Manual.

Paul M. Coughlan, Jr.
Editor, MPEP

For the guidance of all users of the Manual attention
is especially directed to:

707.05 (e)

Indication of Unofficial Classification

711

Express Abandonment by Attorney or Agent

714.16 (b)

Rule 312 Amendment with Motion under Rule 231

714.16 (c)

Rule 312 Amendment - Additional Claims

714.16 (d)

Handling Rule 312 Amendments

1101.01

Interferences between Applications - Difference in Effective Filing Dates

1102.01 (a)

Interference Memorandum - Applications Listed and Indication of Count

1302.04

Examiner's Amendment to Amend or Cancel Claims

(over)

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### List of Replacement Pages

Title Page

117

19

119

51

133

54.1*

137

55

147

61

153

79

165

81

166.1* (Added)

89

173

90.1

177

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181

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222.1* (Added)

113

251

\* Reverse side blank

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## U. S. DEPARTMENT OF COMMERCE Patent Office Washington, D. C. 20231

## MANUAL OF PATENT EXAMINING PROCEDURE Instructions regarding Revision No. 10

Submitted herewith is the group of pages constituting
Revision No. 10 of the Manual of Patent Examining Procedure,
Third Edition. Proper substitution for those pages in the
Manual having corresponding page numbers may be made forth-
with. The page numbers listed on the reverse side of this
page provide a means for determining that your set is
complete.

Information and instructions published in Change
Notice 10-1 (Second Action Rejection, 829 0. G. 1755)
have not been included in these revised pages. Accordingly,
this Change Notice should be retained.

Paul M. Coughlan, Jr.
Editor, MPEP

For the guidance of all users of the Manual attention
is especially directed to:

201.07

Streamlined Continuation

201.13

Identity of Inventors

303

Endorsing Assignments on Pending Applications

306

Assignment of Division, Continuation, Substitute, and Continuation-in-Part Applications

602

Authentication of Original Application Oath

608.01(a)

Arrangement of Application

706.03(w)

Res Judicata

706.03(y)

Improper Markush Group

710.02(e)

Extension of Time

1402.01

Correction of Error in Joining Inventor

(over)

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## LIST OF REPLACEMENT PAGES

Title Page

59

9

73

10.1*

90.1

11

93

12.1*

113

17

155

21

33

233

34.1*

237

37

251

43

255*

49

156.1 (Eliminated)

\* Reverse side blank.

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## U. S. DEPARTMENT OF COMMERCE Patent Office Washington, D. C. 20231

## MANUAL OF PATENT EXAMINING PROCEDURE Instructions Regarding Revision No. 11

Submitted herewith is the group of pages constituting
Revision No. 11 of the Manual of Patent Examining Procedure,
Third Edition. Proper substitution for those pages in the
Manual having corresponding page numbers may be made forth-
with. The page numbers listed on the reverse side of this
page provide a means for determining that your set is
complete.

Information and instructions published in Change
Notices 11-1 through 11-7 have been included in these revised
pages. Accordingly, these Change Notices should be removed
and discarded.

Paul M. Coughlan, Jr.
Acting Editor, MPEP

For the guidance of all users of the Manual attention
is especially directed to:

502

Hand Delivery of Duplicate Copy of Papers

608.01(b)

Abstract of the Disclosure

608.01(c)

Background of the Invention

608.01 (m)

Form of the Claims

608.02(d)

Illustration in Drawings

706.03(1)

Telephone Practice in Multiplicity Rejections

707.07(d)

Language Used in Rejecting Claims

1111.14

Correction of Error in Joining Inventor

1208

Failure to Argue Rejection in Brief

(Over)

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### List of Replacement Pages

Title Page

90.1

3

97

26.1*

98.1* (added)

31

101

33 41

135

163

43

199

45

211

47

213*

48.1* (added)

221

53

225

71

243

72.1* (added)

245*

81

253

83

255*

\* Reverse side blank

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## MANUAL OF PATENT EXAMINING PROCEDURE Third Edition, November 1961

DEPARTMENT OF COMMERCE
UNITED STATES OF AMERICA

U.S. DEPARTMENT OF COMMERCE . PATENT OFFICE

Rev. 11, Jan. 1967

For sale by the Superintendent of Documents, U.S. Government Printing Office,
Washington, D.C. 20402. Catalog No. C 21.15:961, Subscription Price $4
per year; $1 additional for foreign mailing.

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First Edition, November 1949

Revision 1, November 1950

Revision 2, December 1951

Revision 3, May 1952

Second Edition, November 1953

Revision 1, April 1955

Revision 2, June 1956

Revision 3, June 1957

Revision 4, July 1958

Third Edition, November 1961

Revision 1, January 1964

Revision 2, November 1964

Revision 3, January 1965

Revision 4, April 1965

Revision 5, July 1965

Revision 6, October 1965

Revision 7, January 1966

Revision 8, April 1966

Revision 9, July 1966

Revision 10, October 1966

Revision 11, January 1967

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## Foreword

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

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Examiners will continue to be governed as in the past by the applicable
statutes, the Rules of Practice, decisions, and orders and instructions issued
by the Commissioner, the Director, Patent Examining Operation, or the Super-
visory Examiners. Orders and Notices still in force which relate to the subject
matter included in this Manual are incorporated and identified as such. Orders
and Notices, or portions thereof, relating to the examiners' duties and functions
included in this Manual which have been omitted or not incorporated in the
text may be considered obsolete. Interference procedure not directly involv-
ing the Primary Examiner is not included in this Manual and, therefore,
Orders and Notices relating thereto remain in force.

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

DAVID L. LADD
Commissioner.

NOVEMBER 15, 1961.

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## Acknowledgments

Preparation of the text of the Third Edition was directed by Ernest
A. Faller, Editor, under the supervision of Manuel C. Rosa, Director, Patent
Examining Operation.

The Supervisory Examiners, Isaac G. Stone, Norman H. Evans, Burn-
ham Yung Kwai, Sam Spintman, John S. Hull, Thomas F. Murphy, Harvey
E. Kauffman and George A. Gorecki took an active part in this work,
especially in rewriting Chapter 700.

Others who assisted were Pasquale J. Federico, Hyman B. Freehof,
Examiners-in-Chief; Joseph Schimmel, Deputy Solicitor; Samuel Levin,
La Verne L. Williams, Interference Examiners; and Florence A. Hoffman,
Division Clerk.

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

Commissioner of Patents,
Washington, D.C. 20231

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## Contents

Page

Introduction

1

Chapter 100

Secrecy and Access

3

200

Types, Cross-Noting, and Status of Applications

7

300

Ownership and Assignment

21

400

Representative of Inventor or Owner

23

500

Receipt and Handling of Mail and Papers

31

600

Parts, Form and Content of Application

33

700

Examination of Applications

61

800

Restriction; Double Patenting

117

900

Prior Art, Classification, Search

137

1000

Petitions; Cases Submitted to Commissioner and Super-

159

visory Examiners.

1100

Interference

163

1200

Appeal

209

1300

Allowance and Issue

221

1400

Correction of Patent

229

1500

Design Patents.

235

1600

Plant Patents

239

1700

Miscellaneous

243

Appendix I

Table of Orders and Notices

247

Appendix II

List of Decisions Cited

253

Index

257

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## Introduction

## Constitutional Basis

The Constitution of the United States pro-
vides :

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

## Statutes

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

1

By an Act of Congress approved July 19,
1952, which came into effect on January 1,
1953, the patent laws were revised and codi-
fied. With certain exceptions applying to
applications filed and patents issued before
January 1, 1953, this law governs all cases in
the Patent Office. The patent law is Title 35
of the United States Code, which contains 95
sections numbered from 1 to 293, with gaps
in the numbering between various chapters of
the title. In referring to a particular section
of the new patent code the citation is given,
for example, as, 35 U.S.C. 31. The current
edition of the pamphlet "Patent Laws" re-
prints the patent code and some additional
statutes. The pamphlet also contains tables
showing where subject matter comparable to
present title 35 may be found in prior statutes,
and where subject matter of prior statutes will
be found in new title 35.

## Rules of Practice

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

sioner of Patents, subject to the approval of
the Secretary of Commerce, to establish regula-
tions, not inconsistent with law, for the con-
duct of proceedings in the Patent Office.
These regulations are set forth in a Patent
Office booklet entitled "Rules of Practice of the
United States Patent Office in Patent Cases".
The Rules of Practice have a long history,
going back to pamphlets of general informa-
tion to the public first issued in 1836. The
content has been determined by history, tra-
dition and other factors. Primarily the func-
tion of the Rules of Practice is to advise the
public of the regulations which have been
established in accordance with the statutes and
which must be followed before the Office. But
the Patent Office Rules of Practice have al-
ways additionally included, as numbered rules,
informational material, copies of sections of
the patent statutes, purely internal procedure,
and the like. It goes without saying that the
Rules of Practice govern the Examiners, as
well as applicants and their attorneys.

## Commissioner's Orders and Notices

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

## Decisions

In addition to the statutory regulations, the
actions taken by the Examiner in the examina-
tion of applications for patents are to a great
extent governed by decisions on prior cases.
Those dissatisfied with an Examiner's action
may have it reviewed. In general, it may be
stated that from that portion of the Exam-
iner's action pertaining to objections on formal
matters, a petition for review may be taken
to the Commissioner of Patents (1002) and

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## MANUAL OF PATENT EXAMINING PROCEDURE

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

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

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