Intro

OCR transcription for search; preserved printed pages are authoritative

# 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

17

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C

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

## MANUAL OF PATENT EXAMINING PROCEDURE Third Edition

### Instructions Regarding Revision No. 15

The attached revised pages are replacements for those
in the Manual having corresponding numbers, or additional pages
to be placed in appropriate numerical sequence.

C

Change Notices 12-8 and those subsequent to 15-3 are
the only ones which should be retained.

All MPEP holders, whether employees of the Patent Office
or members of the general public, are referred to the back of
the MPEP title page for information on how to obtain manuals,
replacement pages, notices and revisions.

F. Barry Shay
Acting Editor, MPEP

Particular attention is called to the following:

103

New Rule 15 added.

202.02

Change 15-3 ("Patent Headings") added in full. The other sections involved were not changed, since all of them refer the reader to 202.02.

408

First paragraph rewritten to reflect current practice on initiation of telephone interviews by the Examiner.

608.01(j)

Amended Rule 126 inserted.

707.05(a)

Change 15-2 ( "Reference Citations in Contin- uation Applications") added in full.

714.02

Amended Rule 119 inserted.

714.12

Last few sentences canceled as unnecessary.

714.22

Amended Rule 121 inserted.

1208.01

First part amended to state that addition of a new rejection, objection or reference to the Examiner's Answer on Appeal must be first approved by the Group Manager. Last paragraph canceled as not reflecting current practice.

1212

First portion amended to reflect current practice on treatment by the Examiner of affidavits filed after final and/or after appeal.

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(over)

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pp. 79 and 80
These replace the old pages bearing numbers
80.1 and 80.2. The new page 80.1 is an

pp. 214 and 21/ 111 These replace the old pages bearing numbers
LESOS: 0. 213.10114 2144

LIST TO DETERMINE WHETHER REVISION 15 PAGES ARE COMPLETE
(Note: The complete @beakist, on pages VI-VIII of MPEP
is only revised annually. Those who wish to keep their check.
list current shouldaretain this sheet, or use it to bring the
complete checklist up-to-date).

Page

Page

Rev. No.

Title Page

15-15

101-102

15-15

(2 sides)

102.1-102.2

15-14

3-4

15-15

107-108

15-15

4.1*

15

17-18

15-15

108.1

15

25-26

15-15

138.1-138.2

15-15

26.1

15

161-162

15-15

213-214 **

15-15

47-48

15-14

214.1 **

15

77-78

15-15

225-226

15-15

79-80

15-15

80.1*

15

99-100

15-15

*added page
** 214 replaces old 213.1
214.1
98
214

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(o)To. TUY mot

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

## MANUAL OF PATENT EXAMINING PROCEDURE Third Edition

### Instructions Regarding Revision No. 16

The attached revised pages are replacements for those
in the Manual having corresponding numbers, or additional
pages to be placed in appropriate numerical sequence.

Change Notices 12-8 and those subsequent to 16-6 are
the only ones which need be retained.

All MPEP holders, whether employees of the Patent
Office or members of the general public, are referred to the
back of the MPEP title page for information on how to obtain
manuals, replacement pages, notices and revisions.

F. Barry Shay
Harry Shay-
Acting Editor, MPEP

In the attached pages the notation "(R-16)" appears
either at the title or at the end of sections that have been
in any way altered. (Except the instances where neither the
beginning nor the end of the amended section appears in the
revised pages. In these instances the customary notation at
the bottom of the page is the only notation of revision).
Particular attention is called to the following alterations:

201.07

\- Second paragraph rewritten (change 16-6)

201.11

\- Last two sentences canceled (change 16-6)

608.01 (b)

\- Fourth and fifth paragraphs new;
item 3 expanded (changes 16-2, 3)

608.01(g)

\- Third paragraph new ( change 16-2)

608.01(0)

608.01(v)

\- Sentence preceding TM list broadened

706.02

\- Second paragraph new; third rewritten

706.03 (j)

\- Second and last two paragraphs new

706.03 (q)

\- Second paragraph new

\- Whole section new

(

706.03 (r)

\- Last paragraph new ( change 16-2)

706

\- Fourth paragraph new

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706.03 (w)

- Section rewritten (change 16-6)

707.07(a)

- Section rewritten - now includes matter from 707.07(c)

707.07(c)

- All matter placed in 707.07(a)

707.07(d)

- Last paragraph canceled - matter placed in 706.02

707.07(g)

· Rewritten; last six paragraphs new

708.01

- Item (e) added (change 16-5)

708.02

- Second and third paragraphs rewritten to correct

711

- Item 1(b) amplified

711.01

- Third sentence canceled and replaced by two new paragraphs at end (to correct)

711.05

- All after first sentence rewritten to correct

714.01 (a)

- Second and third paragraphs new - matter from 714.01(b) incorporated

714.01(b)

- Canceled-part placed in 714.01(a)

714.01 (c)

- Rewritten to reflect changes

714.02

- Fourth, fifth and ninth paragraphs new ( change 16-1)

714.22

- Last paragraph new ( change 16-1)

804

- Last paragraph canceled (matter covered in 804.02)

804.02

- Second paragraph new ( change 16-4)

804.03

- First sentence amended and third new (stems from change 12-1)

903.08(g)

- Second paragraph new ( change 16-5)

1101.02(g)

- Second paragraph new

1103

- Third paragraph new

1111.05

- Third paragraph new

1205

- Last paragraph canceled and replaced by two new paragraphs

1208.02

- Last paragraph new

1210

- Section rewritten to correct and amplify

1302.04

- First paragraph of page 222.1 new ( change 16-2)

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LIST TO DETERMINE WHETHER REVISION 16 PAGES ARE COMPLETE
(Note: The complete checklist, on pages VI-VIII of MPEP,
is only revised annually) .

Pages replaced or added:

Title Page (2 sides) 9-10

71-72 72.1-72.2 **

119-120 120.1-120.2 **

81-82

155-156

11-12

45-46 46.1*

83-84

177-178

85-86

179-180

48.1-48.2

87-88

195-196

49-50

91-92

209-210

65-66

93-94

213-214

66.1*

99-100

214.1

69-70

101-102

215-216

70.1*

107-108

216.1*

*added page
** added page on reverse side of old page

222.1

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## UNITED STATES DEPARTMENT OF COMMERCE * PATENT OFFICE * WASHING

Reference: MPEP 608.01(n)

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

SERIES NO. 17-2
(Follows Change 17-1)

June 4, 1968

#### TRIAL MULTIPLE DEPENDENT CLAIM PRACTICE

For the trial period running from July 1, 1968 through December 31, 1968, all applications
and amendments to applications filed in the Patent Office will be permitted to include multiple
dependent claims which refer back to any of the preceding claims in the alternative whether
independent or dependent. In this manner a claim may have a single number but would effectively
be considered and treated as a plurality of claims. Entry into this program will require (1) the
filing of a written request in which the applicant agrees to abide by the conditions of the program,
and (2) the filing of appropriate fees and a showing of the fee calculation. Although the trial period
terminates December 31, 1968, the prosecution of all applications placed in this program will con-
tinue under the program guidelines.

A claim dependent upon any of a plurality of preceding claims will be considered in accept-
able form and entered provided it is otherwise acceptable and does not (1) cross statutory classes
with any of its parent claims, or (2) depend from any other multiple dependent claim, or (3) refer
back to preceding claims in the conjunctive rather than the disjunctive form (e.g., "The tool as
defined in any one of claims 1, 2, and 4. . . ".is acceptable, but "The tool as defined in claims 1
and 2 . . . " is not acceptable. Likewise, "The tool as defined in claims 1, 2, or 4 . . . " is
acceptable, whereas "The tool as defined in claims 1, 2 and/or 4 . . . " is not acceptable). Should
any dependent claim include a claim association that violates any of the above prohibitions the claim
will be rejected as indefinite for failure to comply with 35 U. S. C. 112 and will not be further treated
with regard to any other claim association. Also, multiple dependent claims will not be considered
for entry after final rejection. Further, during this trial period, for the applications involved in
this program the total numbered claims may not exceed ten. Non-compliance with this condition
will result in applicant being given one month to reduce the total numbered claims to ten. In newly
filed cases, the failure to comply within the one month period will result in loss of filing date. In
all other cases the entire amendment will not be entered in the absence of compliance with this
requirement.

It is suggested that the claims be arranged in order of narrowing scope whereby the first
claim presented is the broadest. Claims dependent upon the broad claim should come next,
followed by claims which are dependent upon any of the plurality of preceding claims.

#### Practice and Rejections

When acting on a multiple dependent claim, the examiner will consider the patentability of
the various claim associations encompassed by said claim and apply any pertinent prior art in the
usual manner. Each of these associations should be compared with the prior art, exactly as if it
were presented as an independent claim. If a claim having multiple dependency should include both
patentable and unpatentable claim associations, the Examiner will identify each of the patentable
claim associations and identify and specifically reject each of the unpatentable claim associations.
However, mere failure to reject a claim association does not give rise to a presumption of
allowability.

For fee purposes every claim which refers to any of the preceding claims will be considered
effectively as a dependent claim for each association of claims that it represents, thereby effectively
increasing the number of claims in the case. Therefore, in these cases the additional fees required
for claims in excess of ten will be two dollars($2. 00) times the total effective number of claims in
excess of ten. This fee is based on the fact that such a claim is, in substance and so far as the work
of examination is concerned, equivalent to a number of dependent claims each based on a single
preceding claim.

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ONIHZAW * BORRO THETA9 * 3093MMOD 10 THEMTHAT30 ESTAIC USUNU

12\. If 300020099 OMIMIMAX3 DATA9 30 JAUMAM

In applications not under this program but having multiple dependent claims, it will be
assumed that applicant intends these claims as effectively only a single claim. Accordingly,
such claims will be considered alternative and therefore indefinite under 35 U. S. C. 112.

Rule 75(c) is hereby suspended for the duration of the trial period in those cases pre-
senting multiple dependent claims under this program insofar as conflict exists between the
requisites of the rule and the proposed practice.

Richard A. Wahl
Assistant Commissioner

Published 851 O. G.
6/25/68

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#### UNITED STATES DEPARTMENT OF COMMERCE * PATENT OFFICE * WASHINGTON

References: MPEP

809.03

814

806.05(b) 808.02

809.04

816

806.05(c) 809

813

817

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

### SERIES NO. 17 - 5 (Follows Change 17 - 4)

June 20, 1968

### RESTRICTION BETWEEN INVENTIONS

Combination claims (other than genus claims linking species claims), whether allowable,
allowed, or not, will no longer automatically be permitted to serve as a basis for joining
claimed inventions which otherwise would be properly the subject of a restriction requirement.
In other words, applicant will be required to elect one of the claimed inventions which are the
subject of a proper restriction requirement. Combination claims, formerly considered linking
claims, should be grouped as a separate invention. Rejoinder of the divided inventions, should
any combination claim be allowed, however, also will no longer automatically be permitted.
The statutory criteria for distinctness will be satisfied if the subcombinations and/or com-
binations involved are shown to be separately classified, or to have acquired a separate status
in the art, or to involve different fields of search.

Richard A. Wahl
Assistant Commissioner

Published 852 O.G.
July 16, 1968

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Ther attactund revised pages are iros segmento for those
has best revoked mod the peters op prith orssongs police .es

Practice: 17-5, RastrLotion Between Inventlesszend all those
subsequent bo 37-5 should be retained inos this subject matter
Qfcthe respective Change Nobiges hss not been Jahrporsteerdirty

All MPER holders, whether employees of the Patent gtpies
or members of the general public, are referred to the back of
the MPEP title page for instructions concerning correspondence
and orders relating to the Manual, and distribution of notices.
revisions and replacement pages .

The listing of Page 216.Afecthe instructions regarding

Third Edition, was in error, since there is no 24ce 215.1. 5w
error \segretoed. có; sbiwong of bebdens (d)ff Ald 5.50 300

Samuel W. Engle
Acting Editor, MPEP

The notation "/ R-17 /" in the attached pages appears
either at the title or at the end of a section that has been
altered in any way. Where neither the beginning nor the end of
an amended section appears in the revised page the customers
notation at the bottom of the page is the only indication of
revision.

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美

10kg
201.03

\-

provide for Fullt!
First perea tphy onersion for Bide lt (b) addad.

608.02

MAGE PREMA SEHANG Lage Ho ded a) -3 Prego of
inventores
ElJustration En sequent by Required, mended .. to
gros Standby memuero brakston or permanent print
parede dosantosszoroskowownego faut matter.

706503(y)

Second paragraphs new coitation ofpriorit.

709 tem

Route 103, row paragraph (d) Atorprovide for -Rule: 139.

711.06(a)

821.01

Abstracts and Abbreviatures rewriten'y Defensivo de
Publications, now.

901.02 noc- le 108-amended to provide for Mals 199, 0

903/03 90 - Section rewritten to provide for Rudes .21(B)
and 139.

901.05(b)- Last two paragraphe, new, to provide for pertinent
Incomention of French and Swiss parents.

901.06(*)> Section rowritten to include Defensive Publicationa.
11:1.12

1302.07 - Rule Ih(b) amended to provide for Rate 1(0)

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(Note:, The cuspiete crisezlise pages VE Vit casas»
is only ravisad anhuny37.)

Pages replaced or added:

Mole rare
(2 aides)
III-IV

70-70
85-06

07-88

89-50

,

3++
78

95-96

06.1-06.22

-Ja

\# 126

51+52

LADALŠÍ

De136

138.1-138.2

73-74

139-140

added page

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### MANUAL OF

### PATENT EXAMINING PROCEDURE

Third Edition, November 1961

\# DEPARTMENT OF COMMENCE
UNITED STATES OF AMERICA

U.S. DEPARTMENT OF COMMERCE . PATENT OFFICE

<!-- PageFooter="Bev. 17, July 1968" -->
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The Patent Office does not haudie the sale of the Manuel, distribution of notions and
revisions er change of address of these on the subscription Mlat.
Correspondence relating to any of the above itezes abski be sent to the Superin-
tendent of Documents at the following address:
Superintendent of Documents
Well List Section
P.O. Box 1589
Washington, D.C. 23013

Orders for individual replacement pages not amending te a complete revision of the
Manual should be sent to the following address:
Commissioner of Patents
Washington, D.C. 20231
AttR .: Document Services Branch

The cost per page will be 30€ (see rules 13(a), 21(b), and 21(t) Rules of Practice).

Charges may be made to deposit accounts if the requestor is an account holder in good
standing at the time the request is received. Checks or money orders should be made pay-
able to the Commissioner of Patents. Requests must Identify the specific pages required
and the number of copies of each page.

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

First Edition, November 1949

Revision 1, November 1960

Revision 2, December 1951

Revision 3, May 1952

Second Edition, November 1053

Revision 1, April 1965

Revision 2, June 1956

Revision 8, 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 1985

Revision 6, October 1965

Revision 7, January 1906

Revision 8, April 1906

Revision 9. July 1906

Revision 10, October 1966

Revision 11, January 1967

Revision 12, April 1967

Revision 13, July 1967

Revision 14, October 1967

Revision 15, January 1968

Revision 16. April 1968

Revision 17, July 1968

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### Foreword

This Manual is published to provide Patent Office patent examiners,
patent applicants, and representatives of patent applicants with a reference
work on the practices and procedures relative to the prosecution of applica-
tions before the Patent Office. It contains instructions to examiners, as well
as other material in the nature of information and interpretation, and out-
lines the current procedures which the examiners are required or authorized
to follow in appropriate cases in the normal examination of applications.

Examiners will be governed by the applicable statutes, the Rules of Prac-
tice, decisions, and orders and instructions issued by the Commissioner and
the Assistant Commissioners. Orders and Notices still in force which relate
to the subject matter included in this Manual are incorporated in the text.
Orders and Notices, or portions thereof, relating to the examiners' duties
and functions which have been omitted or not incorporated in the text may
be considered obsolete. Interference procedure not directly involving the Pri-
mary 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.

EDWARD J. BRENNER,
Commissioner.

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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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ší nulsival dypoisť

NA AMORIVEX 10 BETAG

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100

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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 HI

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

Group Manager's

159

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

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

Rev. No.

Date

Rev. No.

Date

Jan. 1964

8

Apr. 1966

Nov. 1964

9

July 1966

Jan. 1965

10

Oct. 1966

Apr. 1965

11

Jan. 1967

July 1965

12

Apr. 1967

Oct. 1985

13

July 1967

7

Jan. 1906

14

Oot. 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

63-64

14-13

Introduction

Unrevised

65-66

7-7

67-68

12-7

1-2

69-70

5-5

Chapter 100

71-72

12-11

3-4

11-13

72.1 73-74

12 12-12

5-6

5-5

75-76

12-12

Chapter 200

77-78 80.1-80.2

14-14 13-13

7-8

13-14

81-82

14-14

8.1

14

83-84

13-18

9-10

14-14

85-88

13-13

10.1-10.2

14-14

&amp;T-88

12-12

11-12

14-10

89-90

12-18

12.1

10

90.1-90.2

13-14

13-14

1-1

91-02

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

99-100

8-8

Chapter 300

101-102

11-11

21-22

13-12

102.1-102.2

14-14

102.3

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

115-116

12-12

Chapter 500

31-32

11-11

Chapter 800

Chapter 600

117-118

12-2

119-120

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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Pago

Revision No.

Fage

Revision No.

147-148 149-150 (one page)

0-0 1

Chapter 1700

151-152

6-8

243-244

11-11

159-154

8-9

245-248

14-14

155-156

10-10

157

18

Chapter 1100 (old)

Unrevised

Chapter 1000

163-164 165-166

2-2

159-160

8-12

167-168

Unrevised

101

14

169-170 171-172

2-2 2-3

172.

3

Chapter 1100 (new)

1 173-174

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

189-190

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

I

195-196

5-5

205-208

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

(Revision number not on

Chapter 1300

255.3-255. 4 255. 5-255.6

these pages-distributed with Revision 3)

221-222

12-12

222. 1

14

Index

223-224

13-13

257-258

8-Unrevised

225-226

13-13

259-260

Unrevised-8

227-228

6-6

261-262

7- Unrevised

Chapter 1400

263-264

Unrevised

265-266

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, 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".

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.