Intro

OCR transcription for search; preserved printed pages are authoritative

# MANUAL OF

# PATENT EXAMINING PROCEDURE

ORIGINAL EDITION

DEPARTMENT OF COMMERCE
ITED STATES OF AMERICA

U.S. DEPARTMENT OF COMMERCE
Patent and Trademark Office

REEL NUMBER

2

BOOK NUMBERS

18

<!-- PageBreak -->

## Washington, D.poate )

## MANUAL. OF PATENT EXANTNING PROCKDURE Third Edition

## Instructions Regarding Revision No. 18

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 Notice 17-2, relating to the Trial Multiple
Dependent Claim Practice should be retained since the subject
matter has not been incorporated in the text of the Menual
All Change Notices of the 18 serles have been incorporated
into the Manual.

The notation -18," In the attached pages appears
either at the title or at the end of a section that hae
been altered in any way, Where neither the beginning non
the end of a revised section appears on the revised page,
the customary notation at the bottom of the page is the only
indication of revision.

Louis 0. Maamsel, Editor
Manual of Patent Examining Procedure

Particular attention is called to the following alterations:
Section

107
Last paragraph was added to indicate licensing
notation practice.

107.01
Rewritten to include screening procedure of all
& 108
new applications by Group 220.

201.11
Revised to indicate there is no limit to the number
of successively filed continuing cases (Change
Notice 18-2).

201.13
Revised to include current treaty and list of
foreign countries.

201.14(b) Last paragraph added (Change Notice 18-5).

<!-- PageFooter="---" -->
<!-- PageBreak -->

708.02

Rewritten to indiades Change Jott. 18-1.

Revised to include new application security

Paragraph numbered "4" amended to allow use of
forms in "Accelerated Examination" applicationa,

/18-13

Miended to indicate that the additionel month wosk ody itt
granted arter a first response to # final rejection
is an extension of the shortened statutory period
(Chanie, Not tee 18.5)"

6.05(a)-inincorporeres Change, Notide 17-5.

wsonded to allow election of species requirement
wichoutra search on the merits Chango Notice 18-3)

901.01
Revised to indicate that canceled matter in a patent
file may be used as prior public knowledge as of
the patent date.

List to determine whether Revision 18 pages are complete.
(Note that a complete checklist of all pages of the Manual,
ineluding Revision 18 appears on page's vi and vil of this revision) .

Title Page

117-118

v-v1

119-120

v11

120.1-120.2

5-6

121-122

11-12

TOI 123-124

12,1

125-126

15-16

127-128

16.1 *

129-130

46.1

131

47-48

133-134

48.1-48.2

137-138

67-68

221-222

87-88

223-224

90.1-90.2

225-226

102:1-102.2

227-228

102.3

115-116

<!-- PageFooter=""Added page" -->
<!-- PageBreak -->

ban motion le wouldhlub Isimli sil lo ster edt stored for Bob sind to !? ??
MANUAL OF

## PATENT EXAMINING PROCEDURE

Third Edition, November 1961

UNITED STATES OF A

U.S. DEPARTMENT OF COMMERCE . PATENT OFFICE

<!-- PageFooter="Rev. 18, Oct. 1988" -->
<!-- PageBreak -->

The Patent Office does not handle the sale of the Manual, distribution of notices and
revisions or change of address of those of the wabetription list.
Correspondence relating to any of the store hems should be sent to the Superin-
tendent of Documents at the following address:
Superintendent of Documents
Mail List Section
P.O. Box 1593
Washington, D.C. 13

Orders for individual replacement pages not amounting to a complete revision of the
Manual should be sent to the following address :

Commissioner of Patents
Washington, D.C. 20231
Attn .: Document Services Branch

5

The cost per page will be jte (see rules 13(a), 21(b), and #1(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.

E

20032094

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

180г admorph patib] bal

First Edition, November 1040

Revision 1. November 1950

Revision 2, December 1951

Revision 3, May 1902

Second Edition, November 1953

Revision 1. April 1965

Revision 2, June 1956

Revision 3, June 1957

Revision 4, July 1958

Third Edition. November 1961

Revision 1. January 1904

Revision 2. November 1904

Revision 3. January 1905

Revision 4. April 1965

Revision 5. July 1965

Revision 6. October 1965

Revision 7, January 1006

Itevision 8, April 1906

Revision 9. July 1906

Itevision 10. October 1000

Revision 11. January 1967

Revision 12. April 1907
Revision 13. July 1907

Revision 14. October 1987

Revision 15, January 1908

Revision 16. April 1968

Revision 17, July 1968

Revision 18, October 1968

<!-- PageFooter="Rev. 18, Oct. 1968" -->
<!-- PageBreak -->

## ForewordA

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.

<!-- PageFooter="Bev. 17, July 1968" -->
<!-- PageBreak -->

## 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. Frechof,
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

<!-- PageFooter="Bev. 17, July 1968" -->
<!-- PageBreak -->

.9.3.9.1/ sdi lo woitiba bifT adt to tal ofalguno)'s miol of fobss/[ sogs'! lo talblood")
81 noiaivail dywordT
81-I EVOIBIYAH HO BITAO

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

Parta, 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 and Group Directors

159

1100

Interference

163

1200

Appeal

209

1300

Allowance and Issue

221

1400

Correction of Patents

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

<!-- PageFooter="Rev. 18. Oct. 1968" -->
<!-- PageBreak -->

### Checklist of Pages Needed To Form a Complete Set of the Third Edition of the M.P.E.P. Through Revision 18 DATES OF REVISIONS 1-18

Rev. No.

Date

R&amp;v. No.

Dats

1 2 3

Jan. 1964

10

Oct. 1966

Nov. 1964

11

Jan. 1967

Jan. 1905

12

Apr. 1967

4

Apr. 1965

13

July 1967

5 # 7

July 1965

14

Oct. 1967

Oct. 1965

15

Jan. 1968

Jan. 1966

16

Apr. 1968

8

Apr. 1966

17

July 1968

9

July 1966

18

Oct. 1968

Page

Revision No.

Page

Revision No.

Title Page (2 sides)

18-18

Chapter 700

III-IV

17-17

V-VI

18-18

63-64

17-17 14-13

VII

18

65-66

16-16

16

Introduction

66.1

1-2

Unrevised

67-68 69-70

18-18 16-16

70.1

16

Chapter 100

71-72

16-16

3-4

17-17

72.1-72.2

16-16

4.1

15

73-74

17-17

5-6

18-18

74.1

17

75-76

12-12

Chapter 200

77-78

17-17

7-8

17-17

79-80

15-15

8.1

17

80.1

15

9-10

16-14

81-82

16-16

10.1-10.2

14-14

83-84

16-16

11-12

18-18

85-86

16-17

12.1

18

87-88

18-18 H

13-14

1-1

89-90

17-17

14.1

1

90.1-90.2

18-18

15-16

18-18

91-92

16-16

16.1

18

93-94

16-16

17-18

15-15

95-96

17-17

19-20

13-13

96.1-96.2 97-98

17-17 11-11

Chapter 300

98.1

11

99-100

15-16

21-22

13-12

101-102

16-16

102.1-102.2

18-18

Chapter 400

102.3

18

23-24

Unrevised

103-104

13-13

25-26

15-15

105-106

14-14

26.1

15

107-108

16-16

27-28

Unrevised

108.1

15

29-30

Unrevised

109-110

Unrevised

111-112

1-1

Chapter 500

113-114

13-13

31-32

11-11

115-116

18-18

Chapter 600

Chapter 800

33-34

11-11

117-118

18-18

34.1

10

119-120

18-18

35-36

14-13

120.1-120.2

18-16

37-38

12-12

121-122

18-18

39-40

13-13

123-124

18-18

41-42

11-13

125-126

18-18

42.1

13

127-128

18-18

43-44

11-11

129-130

18-18

43-46

18-18

131

18

46,1

18

133-134

18-18

47-48

15-18

135-136

17-17

48.1-48.2

16-16

49-50

16-14

Chapter 900

51-52

14-17

137-138

18-17

53-54

14-14

138.1-138.2

17-17

54.1

12

139-140

17-17

55-56

12-12

140.1

17

57-58

4-7

141-142

1-1

59-60

12-12

143-144

17-17

<!-- PageFooter="Rev. 18, Oct. 1908" -->

<!-- PageBreak -->

Page

Revision No.

Page

Revision No.

145-146

4-4

Chapter 1600

147-148

9-9

239-240

Unrevised

149-150 (one page)

1

241-242

Unrevised

151-152

6-6

153-154

9-9

Chapter 1700

155-156

16-16

243-244

11-11

157

13

245-246

14-14 2

Chapter 1000

Chapter 1100 (governs July 1, 1965)

interferences declared prior to

159-160

8-12

163-164

Unrevised

161-162

15-15

165-166

2-2

167-168

Unrevised

Chapter 1100 (governs

interferences declared after July 1

169-170

2-2

1965)

171-172

2-3

172.1

3

163-164

12-12

173-174

Unrevised-1

165-166

9-9

175-176

2-2

166.1

9

176. 1

2

167-168

5-3

177-178

1-1

160-170

5-8

179-180

Unrevised

171-172

8-8

181-182

Unrevised

172.1

5

183-184

Unrevised

173-174

8-9

185-186

2-2

175-176

8-8

187-188

Unrevised

176.1

8

189-190

2-4

177-178

18-16

191-192

2-2

179-180

16-16

192.1

2

181-182

8-9

193-194

3-Unrevised

183-184

8-8

195-196

1-1

185-186

5-5

196. 1

1

187-188

12-12

197-198

Unrevised

189-190

5-blank page

199-200

3-3

191-192

omitted

201-202

Unrevised

193-194

7-7

203-204

1-1

194.1

7

204. 1

1

195-196

16-16

205-206

Unrevised

197-198

17-17

207-208

Unrevised

199-200

11-$

201-202

5-3

Appendix 1

203-204

5-5

247-248

2-7

206

5

249-250

7-3

207-208

omitted

251-252

10-10

Chapter 1200

Appendix II

209-210

16-16

253-254

11-11

211-212

14-14

255

11

213-214

15-16

Appendix III

214.1

16

215-216

16-16

255. 1-255.2

(Revision number not on

217-218

12-12

255.3-255.4

these pages-distributed

219

12

255.5-255.6

1 with Revision 3)

Chapter 1300

Index

221-222

18-18

257-258 259-260

8-Unrevised Unrevised-8

222.1

16

261-262

7-Unrevised

223-224

17-18

263-264

Unrevised

221-226

18-18

265-266

Unrevised

227-228

18-18

267-288

Unrevised

269-270

Unrevised-7

Chapter 1400

271-272

8-7

229-230

Unrevised-1

273-274

5-8

231-232

I-unrevised

275-276

2 *- unrevised

233-234

13-13

277-278 279-280

Unrevised Unrevised

Chapter 1500

281-282 283-284

Unrevised 8-8

235-236

2-2

285-286

8-8

236.1

2

287-288

8~8

237-238

6-10

Change Sheet

17-2

\* No revision number appears on this page. Only the revised copy includes as the first listing under "N" the
word "Name".

<!-- PageFooter="Rev. 18, Oct. 1968" -->

<!-- PageBreak -->

edt no antaly to seriteter sitt of gaininteg

## 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, 1958, 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 cifation 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
he found in new title 35.

## Rules of Practice

One of the sections of the patent statute,
namely, 35 UJ.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

<!-- PageBreak -->

## MANUAL OF PATENT EXAMINING PROCEDURE

from that portion of the Examiner's action
pertaining to the rejection of claims on the
merita, 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.