Intro

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# MANUAL OF

# PATENT

# EXAMINING PROCEDURE

ORIGINAL EDITION

DEPARTMENT OF COMMERCE
UNITED STATES OF AMERICA

U.S. DEPARTMENT OF COMMERCE
Patent and Trademark Office

REEL NUMBER

2

BOOK NUMBERS

15

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## UNITED STATES DEPARTMENT OF COMMERCE * PATENT OFFICE & WAS ......

### MANUAL OF PATENT EXAMINING PROCEDURE, 3rd. Ed. Change Notice

Kel rence: MPEP 201.11

#### SERIES NO. 12 - 8

March 7, 1967

#### CHAINS OF CONTINUING APPLICATIONS

In view of a recent decision of an enlarged panel of the Board of Appeals the
p. a.tice involving applications which claim the benefit of earlier filing dates, under
3. U. S. C. 120, shall be as follows:

When an applicant has filed a plurality of applications disclosing common
subject matter, a later filed application can only obtain the benefit of the filing date
of an earlier filed copending application or of one copending with the earlier filed
application. For example, in a chain of four successively file applications wherein
no more than two were copending at any one time, the last filed application is not
entitled to the benefit of the date of the first filed application.

The Group Manager should be informed and keep a record of situations
wherein an applicant is refused the benefit of an earlier filing date in accordance
with this notice.

Richard A. Wahl
Assistant Commissioner

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#### MANUAL OF

## PATENT EXAMINING PROCEDURE

Third Edition, November 1961

DEPARTMENT OF COMMERCE
FNITED STATES OF AMERICA

U.S. DEPARTMENT OF COMMERCE
PATENT OFFICE

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The Patent Office does not handle the sale of the Manual, distribution of notices and
revisions or change of address of those on the subscription list.

Correspondence relating to any of the above items should be sent to the Superin-
tendent of Documents at the following address:
Superintendent of Documents
Mail List Section
P.O. Box 1583
Washington, D.C. 20018

Employees of the Patent Office should direct their orders for the Manual, replacement
pages, notices, and revisions to the Scientific Library.

First Edition, November 1949

Revision 1, November 1950

Revision 2, December 1951

Revision 3, May 1952

Second Edition, November 1959

Revision 1, April 1955

Revision 2, June 1956

Revision 3, June 1957

Revision 4, July 1858

Third Edition, November 1961

Revision 1, January 1964

Revision 2, November 1964

Revision 3, January 1965

Revision 4, April 1065

Revision 5, July 1965

Revision 6, October 1965

Revision 7, January 1966

Revision 8, April 1986

Revision 9, July 1966

Revision 10, October 1966

Revision 11, January 1967

Revision 12, April 1967

Revision 13, July 1967

Revision 14, October 1887

Revision 15, January 1968

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## Foreword

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

Examiners will continue to be governed as in the past by the, applicable
statutes, the Rules of Practice, decisions, and orders and instructions issued
by the Commissioner, the 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

Checklist of Pages

vi

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

Matters Submitted to Commissioner, Directors

and 159

Group Managers

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 J

Table of Orders and Notices

247

Appendix II

List of Decisions Cited.

253

Appendix III

Form Paragraphs

255.1

Index

257

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## Checklist of Pages Needed To Form a Complete Set of the Third Edition of the M.P.E.P. Through Revision 14 DATES OF REVISIONS 1-14

Rw. No.

Dale

Bw. No.

Date

1 2 3 8

Jan. 1964 Nov. 1984 Jan. 1965 Apr. 1965 July 1965 Oct. 1965

8 9 10 11 12 13

Apr. 1966 July 1986 Oct. 1988 Jan. 1967 Apr. 1967 July 1967

7

Jan. 1966

14

Oct. 1967

Page

Revision No.

Page

Revision No.

Title Page (2 sides)

14-14

III-IV

Unrevised

Chapter 700

V-VI

14-14

VII

61-62

13-13

Introduction

Unrevised

63-64 65-66

14-13 7-7

1-2

67-68 69-70

12-7 5-5

12-11

Chapter 100

71-72 72.1

12

3-4

11-13

73-74

12-12

5-6

5-5

75-76

12-12

77-78

14-14

Chapter 200

80.1-80.2

13-13

7-8

13-14

81-82

14-14

8.1

14

83-84

13-13

9-10

14-14

85-86

13-13

10.1-10.2

14-14

87-88

12-12

11-12

14-10

89-90

12-13

12.1

10

90.1-90.2

13-14

13-14

1-1

91-92

13-18

14.1

1

93-94

13-13

15-16

2-unrevised

95-96

13-13

17-18

1-13

97-98

11-11

19-20

13-13

98.1

11

Chapter 300

99-100 101-102

8-8 11-11

21-22

13-12

102.1-102.2 102.3

14-14 14

Chapter 400

103-104

13-13

105-106

14-14

23-24

Unrevised

107-108

4-12

25-26

Unrevised-2

108.1

12

26.1

11

109-110

Unrevised

27-28

Unrevised

111-112

1-1

29-30

Unrevised

113-114

13-13

Chapter 500

115-116

12-12

31-32

11-11

Chapter 800

Chapter 600

117-118 119-120

12-2 12-12

33-34

11-11

120.1

12

34.1

10

121-122

12-12

35-36

14-13

123-124

12-12

37-38

12-12

125-126

12-12

39-40

13-13

127-128

14-14

41-42

11-13

129-130

12-12

42.1

13

131

12

43-44

11-11

133-134

12-unrevised

45-46

14-14

135-136

11-11

47-48

14-14

48.1-48.2

14-14

Chapter 900

49-50

14-14

51-52

14-14

137-138

13-13

53-54

14-14

138.1-138.2

13-13

54.1

12

139-140

13-13

55-56

12-12

141-142

1-1

57-58

4-7

143-144

1-unrevised

59-60

12-12

145-146

4-4

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Page

Revision No.

Page

Revision No.

147-148

9-9

Chapter 1700

149-150 (one page) 151-152

1 6-6

243-244

11-11

153-154

9-9

245-246

14-14

155-156

10-10

157

13

Chapter 1100 (old)

Chapter 1000

163-164 165-166

Unrevised 2-2

159-160

8-12

167-168

Unrevised 2-2

161

14

169-170 171-172

2-3

Chapter 1100 (new)

172.1 173-174

3 Unrevised-1

163-164

12-12

175-176

2-2

165-166

9-9

176. 1

2

166.1

9

177-178

1-1

167-168

5-5

179-180

Unrevised

169-170

5-8

181-182

Unrevised

171-172

8-8

183-184

Unrevised

172.1

5

185-186

2-2

173-174

8-9

187-188

Unrevised

175-176

8-8

183-190

2-4

176.1

8

191-192

2-2

177-178

9-9

192. 1

2

179-180

9-8

193-194

3-Unrevised

181-182

8-9

195-196

1-1

183-184

8-8

196. 1

1

185-186

5-5

197-198

Unrevised

187-188

12-12

199-200

3-3

189-190

5-blank page

201-202

Unrevised

193-194

7-7

203-204

1-1

194. 1

7

204.1

1

195-196

5-5

205-206

Unrevised

197-198

5-8

207-208

Unrevised

199-200

11-5

201-202

5-5

Appendix I

203-204

5-5

205

5

247-248 249-250

2-7 7-3

Chapter 1200

251-252

10-10

209-210

12-12

Appendix II

211-212

14-14

213

11

253-254

11-11

213. 1-214

8-1

255

11

215-216

Unrevised

217-218

12-12

Appendix III

219

12

255.1-255.2 255.3-255.4 255. 5-255.6

l (Revision number not on

Chapter 1300

these pages-distributed

Ì with Revision 3)

221-222

12-12

222.1

14

Index

223-224

13-13

257-258

&amp;-Unrevised

225-226

13-13

259-260

Unrevised-8

227-228

6-6

261-262

7-Unrevised

Chapter 1400

263-264 265-266

Unrevised Unrevised

229-230

Unrevised-1

267-268

Unrevised

231-232

1-unrevised

269-270

Unrevised-7

233-234

13-13

271-272

8-7

273-274

5-8

Chapter 1500

275-276

2 -* Unrevised

235-236

2-2

277-278

Unrevised

236. 1

2

279-280

Unrevised

237-238

6-10

281-282 283-284

Unrevised 8-8

Chapter 1600

285-286 287-288

8-8 8-8

239-240

Unrevised

Change Sheet

12-8

241-242

Unrevised

Change Sheet

15-1

*Revision number does not appear on this page-distributed with Revision 2.

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# Introduction

## Constitutional Basis

The Constitution of the United States pro-
vides :

"ART. 1, BEC. 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".

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.