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

1

BOOK NUMBERS

14

4152

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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. 19

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 17-2, relating to the "Trial Multiple
Dependent Claim Practice," and 19-1 relating to "Incorporation
by Reference" should be retained since the subject matter
has not been incorporated in the text of the Manual.

In the checklist on page vi of Revision 18, the Revision
Nos. for pages 45-46 and 48.1-48.2 were transposed. The
current page of 45-46 is Revision No. 16-16 and the current
page of 48.1-48.2 is Revision No. 18-18.

The notation "/R-197" 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 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. Maassel, Editor
Manual of Patent Examining Procedure

Particular attention is called to the following alterations:

Section

602
The last sentence on page 34.1 has been added.

706.03 (s) The first sentence under (3) has been revised.

717.01 (a) The last three paragraphs include the subject
matter of the Notice of November 21, 1968, entitled
"Post Card Receipt Reminder."

1101.02
The second paragraph on page 172 has been revised.

(over)

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-2-

1105.01

The first full paragraph on page 182 has been
revised.

1603

The subject matter of the Notice of November 21,
1968 entitled "Plant Patent Applications -
Filing Date has been included.

Appendix II - The List of Decisions Cited has been completely
revised .

Index
The Index has been completely revised.

List of replacement pages for Revision 19:

Page

Rev. No.

Page

Rev . No

Title page

19-19

263-264

19-19

(2 sides )

265-266

19-19

34.1-blank

19

267-268

19-19

72.1-72.2

19-16

269-270

19-19

111-112

19-1

271-272

19-19

113-114

19-19

273-274

19-19

171-172

19-19

275-276

19-19

172.1-blank

19

277-278

19-19

181-182

19-19

279-280

19-19

183-184

19-8

281-282

19-19

185-186

19-19

283-284

19-19

239-240

19-19

285-286

19-19

253-254

19-19

287-288

19-19

255-blank

19

289-290*

19-19

257-258

19-19

291-292*

19-19

259-260

19-19

261-262

19-19

*Added page

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

### MANUAL OF PATENT EXAMINING PROCEDURE, 3rd. Ed. Change Notice SERIES NO. 19 - 1 (Follows Change 18 - 7)

Reference: MPEP 608.01(p)

December 30, 1968

#### INCORPORATION BY REFERENCE

€

An application for a patent may incorporate essential material by reference to a United
States patent, or an allowed U. S. application, subject to the conditions set out below. * Essential
material is defined as that which is necessary (1) to support the claims, or (2) for adequate
disclosure of the invention (35 USC 112). Material which is essential to the referencing application
may not be incorporated by reference to patents issued by foreign countries or to non-patent publica-
tions. Essential material may not be incorporated by reference to a patent or application which
itself incorporates essential material by reference.

The referencing application must include (1) an abstract, (2) a brief summary of the
invention, (3) an identification of the referenced patent or application, (4) at least one view in the
drawing in those applications admitting of a drawing, and (5) one or more claims. Where appro-
priate it would be advisable to direct particular attention to specific portions of the referenced
patent or application.

If an application is filed with a complete disclosure, essential material may be cancelled
by amendment and the same material substituted by reference to a patent or a pending and commonly
owned allowed application in which the issue fee has been paid. The amendment must be accompanied
by an affidavit executed by the applicant or his attorney or agent of record stating that the material
cancelled from the application is the same material that has been incorporated by reference.

If an application incorporates essential material by reference to a U. S. patent or a pending
and commonly owned allowed U. S. application for which the issue fee has been paid, applicant will
be required prior to examination to furnish the Patent Office with a copy of the referenced material
together with an affidavit executed by the applicant or his attorney or agent of record stating that
the copy consists of the same material incorporated by reference in the referencing application.

If an application incorporates essential material by reference to a pending and commonly
owned application other than one in issue with the fee paid, applicant will be required prior to
examination to amend the disclosure of the referencing application to include the material incorporated
by reference. The amendment must be accompanied by an affidavit executed by the applicant or his
attorney or agent of record stating that the amendatory material consists of the same material
incorporated by reference in the referencing application.

*Non-essential subject matter may be incorporated by reference to patents issued by the United
States or foreign countries, prior filed commonly owned patent applications filed in the United States,
and non-patent publications for purposes of indicating the background of the invention or illustrating
the state of the art.

Richard A. Wahl
Assistant Commissioner

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

0

<!-- PageHeader="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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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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#### MANUAL OF PATENT EXAMINING PROCEDURE

Third Edition, November 1961

DEPARTMENT OF COMMERCE
OF
UNITED STATES OF AMERICA

U.S. DEPARTMENT OF COMMERCE . PATENT OFFICE

<!-- PageFooter="Rev. 19, Jan. 1960" -->
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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 1533
Washington, D.C. 20013

"

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

The cost per page will be 30c (sec 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, notices, and revisions to the Scientific Library.

First Edition, November 1949

Revision 1, November 1050

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
Revision 12, April 1967

Revision 13, July 1967

Revision 14. October 1967

Revision 15, January 1968

Revision 16. April 1968

Revision 17, July 1968

Revision 18, October 1968

Revision 19, Jannary 1969

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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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#### Contents

Page

Checklist of Pages

vi

Introduction

1

Chapter 100

Secrecy and Access

3

200

Types, Cross-Voting, 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 and

159.

Group Directors

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

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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 18 DATES OF REVISIONS 1-18

Re. No.

Date

Rev. No.

Date

1

Jan. 1964

10

Oct. 1966

2

Nov. 1964

11

Jan. 1967

3

Jan. 1965

12

Apr. 1967

4

Apr. 1965

13

July 1967

5

July 1965

14

Oct. 1967

6

Oct. 1965

15

Jan. 1968

٦

Jan. 1966

16

Apr. 1968

S

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

61-62

17-17

V-VI

18-18

63-64

14-13

VII

18

65-66

16-16

66.1

16

Introduction

67-68

18-18

1-2

Unrevised

69-70

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

S.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

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

17-16

15-15

95-96

17-17

19-20

13-13

96.1-96.2

17-17

97-98

11-11

Chapter 300

98.1

11

99-100

15-16

21-22

13-12

101-102

16-16

Chapter 400

102.1-102.2

18-18

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

27-26

Unrevised

108.1

15

29-30

Unrevised

109-110 111-112

Unrevised 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

45-46

18-18

131

1×

46.1

18

133-134

18-18

17-4%

15-18

135-136

17-17

4%. 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

7-58

4-7

141-142

1-1

50-60

12-12

143-144

17-17

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Page

Revision No.

Page

Revision No.

145-146

4-4

Chapter 1600

147-148

9-9

239-240

Unrevised

149-150 (one page) 151-152

1 6-6

241-242

Unrevised

153-154

9-9

Chapter 1700

155-156

16-16

243-244

11-11

157

13

245-246

14-14

Chapter 1000

Chapter 1100

(governs interferences declared prior to

July 1, 1965)

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

5-5

177-178

1-1

169-170

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

16-16

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

11-5

201-202

5-5

Appendix I

203-204

5-5

247-248

2-7

205

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

1 (Revision number not on

217-218

12-12

255. 3-255. 4

these pages-distributed

219

12

255. 5-255. 6

Î with Revision 3)

Index

Chapter 1300

257-258

S-Unrevised

221-222

18-18

259-260

Unrevised-8

222.1

16

261-262

7-Unrevised

223-224

17-18

263-264

Unrevised

225-226

18-18

265-266

Unrevised

227-228

18-18

267-268

Unrevised

269-270

Unrevised-7

Chapter 1400

271-272

8-7

229 230

U'nrevised-1

273-274

5-8

231 232

1-unrevised

275-276

2 *- unrevised

238 234

13-13

277-278

Unrevised

279-280

Unrevised

Chapter

1500

281-282

Unrevised

283-284

8-8

235 236

2-2

285-286

S-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".

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#### Introduction

#### Constitutional Basis

The Constitution of the United States pro-
vides :

"ART. 1, SEC. S. 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.

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