1000

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1000 Matters Submitted to Commis- sioner, Directors and Group Managers

1001
Statutory Authority of Commissioner

1001.01
Modes of Exercising Authority

1002
Petitions

1002.01
Procedure

1002.02
Petitionable Subjects

1003
Matters Submitted to Commissioner Through
the Directors

1004

Matters Submitted to Directors of Patent
Examining Operations

1005
Matters Submitted to Group Managers

## 1001 Statutory Authority of Commis- sioner

35 U.S.C. 6. Duties of Commissioner. The Commis-
sioner, under the direction of the Secretary of Com-
merce, shall superintend or perform all duties required
by law respecting the granting and issuing of patents
and the registration of trademarks; and he shall have
charge of property belonging to the Patent Office. He
may, subject to the approval of the Secretary of Com-
merce, establish regulations, not inconsistent with law,
for the conduct of proceedings in the Patent Office.

## 1001.01 Modes of Exercising Author- ity

The Commissioner's authority to review and
supervise the work of the Office is exercised by
the promulgation of the Rules of Practice; is-
suance of Orders, Notices and Memoranda stat-
ing Office policies and modes for effectuating
these policies; decisions on petitions by appli-
cants, and by the designation of particular
cases which must be submitted to the Commis-
sioner or other officials authorized by the Com-
missioner. The present chapter deals with the
latter two items.

The Commissioner's authority relating to de-
cisions on petitions and to the supervision of
the work of the examining corps has, in in-
stances not requiring the personal decision of
the Commissioner, heen delegated to the Super-
intendent, to the Directors, to the Group
Managers, to the Solicitor and to the Law
Examiners.

## 1002 Petitions

Rule 181. Petition to the Commissioner. (a) Peti-
tion may be taken to the Commissioner (1) from any
action or requirement of any examiner in the ex parte
prosecution of an application which is not subject to
appeal to the Board of Appeals or to the court; (2)
incases in which a statute or the rules specify that
the matter is to be determined directly by or reviewed
by the Commissioner; and (3) to invoke the super-
visory authority of the Commissioner in appropriate
circumstances.

(b) Any such petition must contain a statement of
the facts involved and the point or points to be re-
viewed and the action requested. Briefs or memo-
randa, if any, in support thereof should accompany or
be embodied in the petition ; and where facts are to
be proven, the proof in the form of affidavits (and
exhibits, if any) must accompany the petition.

(c) When a petition is taken from an action or
requirement of an examiner in the ex parte prosecution
of an application, it may be required that there have
been a proper request for reconsideration (rule 111)
and a repeated action by the examiner. The examiner
may be directed by the Commissioner to furnish a
written statement, within a specified time, setting forth
the reasons for his decision upon the matters avered
in the petition, supplying a copy thereof to the peti-
tioner.

(d) No fee is required for a petition to the Commis-
sioner except in the case of a petition to revive an
abandoned application (rule 137) or for the delayed
payment of a final fee (rule 317).

(e) Oral hearings will not be granted except when
considered necessary by the Commissioner.

(f) Except as otherwise provided in these rules,
any such petition not filed within 60 days from the
action complained of, may be dismissed as untimely.
The mere filing of a petition will not stay the period
for reply to an examiner's action which may be run-
ning against an application, nor act as a stay of other
proceedings.

(g) Determination of petitions of various kinds may
be delegated by the Commissioner to the Supervisory
Examiners or to the Solicitor and Law Examiners.

Rule 183. Suspension of rules. In an extraordinary
situation, when justice requires, any requirement of
these rules which is not a requirement of the statutes
may be suspended or waived by the Commissioner In

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person on petition of the Interested party, subject to
such other requirements as may be Imposed.

Petitions on appealable matters ordinarily
are not entertained.

The mere filing of a petition will not stay the
period for replying to an Examiner's action
which may be running against an application,
nor act as a stay of other proceedings (Rule
181 (f)). For example, if a petition to vacate
a final rejection as premature is filed near the
end of the statutory period, the statutory pe-
riod for response to the final rejection is not
extended even if the petition is not reached for
decision within that period. However, if the
petition is granted and the applicant has filed
an otherwise full response to the rejection
within the statutory period, the case is not
abandoned.

Rule 181(f) now provides that any petition
under that rule which is not filed "within 60 days
from the action complained of" may be dis-
missed as untimely. Often, the "action com-
plained of", for example, a requirement for a
new drawing. is included in the same letter as
an action on the merits of the claims, the latter
having a four months period for response.
Under such circumstances, if applicant requests
reconsideration, under Rule 111(b), of the re-
quirement for a new drawing, the Examiner's
action on this request, if adverse, establishes the
beginning of the 60 day period for filing the
petition. The petition must be filed within this
period even though the statutory period for re-
sponse to the rejection of the claims may ex-
tend beyond the 60 day period.

### 1002.01 Procedure

Petitions, together with the respective appli-
cation files, are sent by the Docket Branch to
the Office of the Commissioner or other official
having the delegated authority to decide the
petition. The petition may be referred to the
Examiner for a formal statement under Rule
181(c) or for an informal memorandum.

Where a formal statement under Rule 181 (c)
is made, a copy thereof is mailed to the peti-
tioner by the Examiner unless the latter is
otherwise directed, and the file and petition.
accompanied by the original copy of his state-
ment, are returned to the official handling the
petition. If the informal memorandum is re-
quested, no copy thereof is mailed to the peti-
tioner by the Examiner. After the decision
has been rendered, the file with the petition
and decision is sent to the Docket Branch,
where the decision is entered on the "Con-
tents" of the file wrapper which is then re-

turned to the Primary Examiner, who will act
in accordance with the decision.

## 1002.02 Petitionable Subjects

The following is a list of the most common
petitions, together with a reference to the sec-
tions of this Manual where they are more
fully treated :

1\. To make an application special on the
ground of prospective manufacture or infringe-
ment or where applicant, for lack of a patent
or an Office action indicating patentable sub-
ject matter, is unable to interest capital. See
708.02.

2\. To revive an abandoned application. See
711.03 (c) and 711.03(d).

3\. For filing date. See 409.03 and 506.

4\. To accept late final fee. See 712.

5\. To convert from fee-exempt status. See
607.01 and 607.01 (b).

6\. Second or subsequent extensions of time
for filing an appeal brief. See 1206.

### A. Referred to Directors of Patent Examining Operations

7\. From any ex parte action or requirement
by the Examiner which is not subject to ap-
peal, as, for example,

(a) Prematureness of final rejection. See
706.07 (c).

(b) Refusal to enter an amendment. See
Rule 127.

(c) Holding of abandonment. See 711.03 (c)
and 711.03 (d).

8\. To make an application special on the
ground of applicant's age or state of health or
to make special a division, continuation or con-
tinuation-in-part of an earlier application. See
708.02.

9\. To amend after decision by Board of Ap-
peals. See Rule 198 and 1214.07.

10\. From a final decision of the Examiner
requiring restriction of an application. See
Rule 144 and 818.03 (c).

B. Referred to Solicitor and Law Examiners

11\. For access to an application. See 103 and
104\.

12\. For certificate of correction. See 1402
to 1402.02.

#### 1003 Matters Submitted to Commis- sioner Through the Directors

The following matters require the approval
of the Commissioner. For this purpose, they

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should be transmitted by the Examiner to the
appropriate Director.

1\. Where a patent claim is copied outside
the time limit set, its entry requires the ap-
proval of the Commissioner. See 1101.02(f).

2\. Amendment copying patent claims with-
out identifying patent. Rule 205, 1101.02(d).

3\. Return of papers containing discourteous
remarks. See 714.25.

4\. Return of papers other than priority pa-
pers entered on Contents of File Wrapper.
See 717.01 and 1004.

5\. Requests for authorization to reopen prose-
cution of an application after a Court decision.
Rule 198, 1214.07.

## 1004 Matters Submitted to Directors of Patent Examining Operations

The following is a list of matters which re-
quire the approval of the appropriate Director.
For this purpose, they should be transmitted
by the Examiner to the Group Manager.

1\. Request for withdrawal of an allowed ap-
plication from issue. See 1308 to 1308.02.

2\. Requests for authorization to reopen prose-
cution of an application after decision by the
Board of Appeals. Rule 198. See 1214.07.

3\. Return of certain priority papers. See
201.14 (c).

4\. Request for return of original oath. See
604.04 (a).

5\. Actions which hold unpatentable claims
copied from a patent for interference purposes
where the grounds relied upon are equally ap-
plicable to the patentee. See 1101.02(f).

6\. Divisional reissue applications filed. See
Rule 177.

7\. Interferences between applications neither
of which is in condition for allowance. See
1101.01 (c).

8\. Public Law 619 and Public Law 690 cases
in which the priority request is granted or pre-
viously allowed priority benefits are withdrawn.
See 201.16.

9\. Second or subsequent attempts at conver-
sion of an application (addition or removal of
an inventor under Rule 45), or simultaneous
addition and removal of inventors. See 201.03.

10\. Applications filed without drawings
where there is a doubt as to the need for draw-
ings. See 608.02.

11\. Providing applicants with copies of refer-
ences in excess of 30 pages. See 1005, No. 15.

## 1005 Matters Submitted to Group Managers

In addition to the submission of the proposed
actions listed in this section, all unusual ques-

tions of practice may be referred to the Group
Managers. In the following specific cases, the
proposed action must be submitted to the Group
Managers for review :

1\. Fourth or subsequent complete actions on
the merits which do not close the prosecution.

2\. Actions on amendments after allowance
(Rule 312) except the correction of mere formal
matters under Order No. 3311. See 714.16 to
714.16(e), and 1101.02(g).

3\. Second or subsequent extensions of a set
shortened statutory period under Rule 136(b).
See 710.02 (e).

4\. Second or subsequent suspensions of action
under Rule 103. See 709.

5\. Certain rejections on double patenting of
divisional (or parent) case when restriction
or election of species has previously been re-
quired. 804.04.

6\. Letters to an applicant of an allowed ap-
plication informing him of a proposal to
request withdrawal of said application from
issue for the purpose of rejecting a claim or
claims as fully met by, or obviously unpatent-
able over a new reference. See 1308.01.

7\. Amendments described in 1214.07 pre-
sented after decision by the Board of Appeals
as to which the Primary Examiner recommends
entry as placing the application in condition for
allowance.

8\. Letters requesting jurisdiction of appli-
cations involved in interference, see 1101.01 (0).

9\. Petitions under Rule 212 for concurrent
ex parte and inter partes prosecution. See 1103.
10\. Interferences under 681 O.G. 864. See
1101.02 (Item CII).

11\. Request for patentability report. See
705.01(e).

12\. Petitions under special examining pro-
cedure for certain new applications-accelerated
examination. See 708.02.

13\. New ground of rejection or objection or
new reference cited in Examiner's Answer on
appeal. Prior approval of the Group Manager
must be obtained before the Answer is written
and the file copy of the Answer must be stamped
"approved" by the Manager if it meets with his
approval.

14\. Letters to an applicant suggesting claims
for purposes of interference, the adoption of
which by the applicant would result in the
withdrawal of an application from issue. See
1101.01 (o).

15\. Providing applicants with copies of ref-
erences comprising 15 to 30 pages. See 1004,
No. 11.

16\. Request for Interview after the applica-
tion has been sent to issue. See 713.10.

The Group Manager should also be consulted
in situations such as the one spelled out in 1208 .-
01\. where it must be decided whether to fully

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# MANUAL OF PATENT EXAMINING PROCEDURE

reopen the ex parte prosecution after appeal
or to proceed by introducing a new ground of
rejection in the Examiner's Answer. Such
consultation would ordinarily be confined to

questions of policy as to whether the best in-
terests of the applicant as well as the office
would be served by reopening the prosecution
or extending the term to reply to the Answer.

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