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# MANUAL OF

# PATENT EXAMINING PROCEDURE

PROPERTY OF THE UNITED STATES GOVERNMENT

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## DEPARTMENT OF COMMERCE UNITED STATES PATENT OFFICE WASHINGTON November 1, 1950

### MANUAL OF PATENT EXAMINING PROCEDURE

Supplemental Instruction to Patent Office Personnel
Regarding Revision No. 1

Information and instructions published in Manual Change Notices
1-1 through 1-17 and 2-1 and 2-2 have been included in the attached re-
vised pages. Consequently these change notices should be removed
from your Manual.

Additional changes in procedure incorporated in this revision
which have not been previously published as change notices appear
in the following sections:

804.02

Double patenting rejection after election of species or division requirement.

903.03

Classifying foreign patents.

1004

List of Cases submitted to Supervisory Examiners.

1101.01(o)

Suggestion of claims to an applicant in issue.

1207

New reference found after appeal but before brief .

1208

New form for Appeal Statement.

1704) 1705)

Records kept in Examining Division (cards) .

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November 1, 1950

### MANUAL OF PATENT EXAMINING PROCEDURE

Revision Notice No. 1

Transmitted herewith is one set of revised pages for the Manual of Patent Examining Procedure
incorporating changes prescribed in examining procedure through November 1, 1950. Substitute these
pages for those now in your Manual having corresponding page numbers. In a few instances where re -
visions were extensive, an additional page was required. Each of these new pages has a compound
page number to indicate its proper location in the Manual, (e.g., page 62-1 which will be inserted after
page 62) .

The following list of these replacement pages may be used as a check list for determining that
your set is complete. The parallel listing, which is provided to facilitate identification of new matter
on these pages, includes only those sections in which significant subject matter changes have been made.

Page No.

Section(s) Revised

Page No.

Section(s) Revised

3

103

122

-

4

106.01,107

123

-

5

109

124

-

19

-

124 -1

-

20

402.04,402.05 ,402.05(a)

131

-

21

132

-

22

406,409

133

-

23

-

143

1101.01(o)

33

-

144

-

34

605.04(c) , 605.04(i)

145

-

35

606.01

146

1101.02(f)

36

607.01

146-1

36 -1

-

149

1102.01 (a)

45

-

150

-

46

-

151

1102.02

47

608.02(z)

152

-

48

152-1

-

49

-

157

1105.05

50

158

-

59

706.03(w),706.03(y)

169

-

(New Section)

170

-

60

706.07

175

1204

61

-

176

1204,1207

62

-

177

1208

62-1

-

178

-

67

-

179

-

68

708.01 item(b)

180

-

75

181

1215.04

76

-

182

1216.01

99

804.02

182-1

-

100

-

187

1308.01

101

-

188

1308.01

102

806.04(g)

189

-

102-1

-

193

-

109

817

194

1401.11

110

-

194-1

-

121

901.06(b), 901. 06 (d)

205

-

206

-

#### Appendices and Index

Revised pages 209, 210, and 211 for Appendix I and pages 213 and 214 for Appendix 2 and re-
vised pages for the entire index (pages 217-248) have been provided to reflect changes in the main
body of the Manual.

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Distribution:

All Manual Holders

Date:

January 10, 1950

## INSTRUCTIONS TO HOLDERS OF THE MANUAL OF PATENT EXAMINING PROCEDURE

The Manual of Patent Examining Procedure was printed in loose-leaf style and issued in
a carefully selected binder in order to facilitate the incorporation of changes in examining prac-
tice that are prescribed from time to time. Since the Manual must be maintained current at all
times to be of maximum usefulness, provision has been made for printing all documents affect-
ing patent examining procedure in a form suitable for insertion in the Manual. Each such change
notice will be identified by a number indicating, first, the series of the change and, second, the
succession of each change in such series. For example, the first change issued will be number-
ed 1-1 and will be followed by 1-2 and so on with series 1 continuing until a sufficient number of
changes accumulate to warrant a revision of the Manual. As soon as replacement pages for the
Manual are ordered which incorporate the changes in the current series, a new series of change
notices will be started (e.g. 2-1, 2-2, etc.). These revisions will be scheduled so that ordi-
narily not more than two series of change notices will be in your binder at any one time.

Each of the change notices will carry a reference to the Manual section or sections, if any,
to which it appertains. Immediately upon receipt of a change notice you should enter the number
of the change (e.g. 1-4) in the margin beside each section referenced and then file the notice in
the back of your Manual binder. A tab separator will be provided in a few weeks for insertion
between the Manual and the change notices. The change notices will be retained in your Manual
binder until the revised Manual pages incorporating that series of changes have been issued.

The copy of the Manual which you now have was issued on a personal custody basis and
you are responsible for observing such requirements as may prevail concerning it. Retain this
same copy as long as you remain an employee of the Patent Office in a capacity which requires
its use. Upon separation from the Office, the copy assigned you should be turned in to the
Administrative Management Division, Room 3086. Persons leaving the employ of the Patent
Office desiring to have a copy of the Manual may purchase same from the Superintendent of
Documents, Government Printing Office. These copies are punched to fit a three-ring binder
and the sale price of $2.00 includes revision service for a limited period.

It is suggested that this instruction sheet be filed in the back of your Manual immediately
preceding the change notices.

C. E. Haglund
Executive Officer

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59.60

## MANUAL OF PATENT EXAMINING PROCEDURE

LED SYAVLS GR

Superações

U. S. PATENT OFFICE
DEPARTMENT OF COMMERCE

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November 15, 1949

U. S. GOVERNMENT PRINTING OFFICE

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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 generally outlines the current procedure which
the examiners are required or authorized to follow in; appropriate
cases in the normal examination of applications. Substantive aspects
of patent law are only referred to briefly.

Examiners will continue to be governed as in the past by the statutes,
the rules of practice, applicable decisions, and orders and instructions
issued by the Commissioner or by the Supervisory Examiners under
his authority. Existing Orders and Notices relating to the subject
matter included in this manual are incorporated and identified as
such. Many Orders and Notices have been revised to coordinate them
with the new rules of practice or to make other changes and are in-
cluded in their revised form; these supersede the previous versions
of the same Orders and Notices.

It is expected that subsequent changes in practice and other revisions
will be incorporated in the form of substitute or additional pages for
the manual. Each examiner will be provided with a copy of the man-
ual for his official use and will be expected to maintain it in current
condition.

Lawrence b. Kingslank
Commissioner.

JUNE 9, 1949

V

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### Acknowledgments

This work is the result of the combined efforts of a large number
of contributing editors including :

D. D. Andrews, C. G. Angel, D. Arnold, M. F. Bailey, W. Berlowitz,
G. L. Brehm, J. L. Brewrink, W. W. Cochran, E. A. Faller, A. J. Gold-
berg, G. A. Gorecki, M. Hertz, A. M. Horton, W. J. Kanof, R. Leibo-
witz, L. J. Lenny, C. Levy, I. Lisann, J. C. MacNab, H. Magil, A.
Margolis, N. Marmelstein, S. M. Newman, R. A. O'Leary, E. Paul,
E. O. Retter, M. C. Rosa, J. Schimmel, A. Shapiro, and R. M. Wood.

In the preparation of this work, use was made of much of the
material in the "Manual of Patent Office Procedure" published by
the Patent Office Society, the last three editions of which were prepared
by C. L. Wolcott. Permission to use this material has been given
by the Patent Office Society. Many helpful suggestions by the mem-
bers of the Patent Office personnel for improving the first draft have
been incorporated in the present text.

Programing and organizing of the project was done by R. D. Lam-
bert, of Wallace Clark & Co., consultants.

(

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### Numbering System

The system of numbering used in this Manual was selected to indi-
cate to the reader topical indentations in the tables of contents. It
may be understood by considering specific examples. Thus, the sym-
bol "1100" refers to Chapter 1100 as a whole; the symbol "1101" refers
to a subdivision indented under 1100; the symbol "1101.01" refers to a
further subdivision indented under 1101; and "1101.01 (a)" refers to
a still further indentation under 1101.01. Thus Chapter 1100 is num-
bered as follows:

### Chapter 1100 Interference

1101
Preliminaries to an Interference

1101.01
Between Applications

1101.01 (a)
In Different Divisions

1101.01 (b)
Common Ownership

1101.01 (c)
The Interference Search

1101.01 (d)
Correspondence Under Rule 202

1101.01 (e)
How Conducted

Indentations beyond the third indentation are ignored in the as-
signment of a symbol. Fourth and further indentations are given
the same type of symbol as a third indentation. Thus in the above
example the section entitled "How Conducted" has the same type
of symbol as the section entitled "Correspondence Under Rule 202."
Because a fourth indent in the table of contents does not show up
in the numbering system, those sections which are a fourth indent
in the table of contents are given a title in the text which includes
the title of the section under which they are indented. Thus, in
the text, the heading for Sec. 1101.01 (e) reads: "Correspondence
Under Rule 202, How Conducted."

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## Contents

Page

Introduction

1

Chapter 100

Secrecy and Access

3

200

Types, Cross-noting and Status of Applica-

tions

7

300

Ownership and Assignment

17

400

Representative of Inventor or Owner

19

500

Receipt and Handling of Mail and Papers

25

600

Parts, Form and Content of Application

27

700

Examination of Applications

49

800

Division; Double Patenting

97

900

Prior Art, Classification, Search

117

1000

Petitions; Cases Submitted to Commissioner

and Supervisory Examiners

131

1100

Interference

135

1200

Appeal

175

1300

Allowance and Issue

183

1400

Correction of Patent

191

1500

Design Patents

197

1600

Plant Patents

201

1700

Miscellaneous

205

Appendix I

Table of Orders and Notices

207

Appendix II

List of Decisions Cited

213

Index

217

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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 organ-
ized and our patent system is established. The
provisions of the statutes can in no way be
changed or waived by the Patent Office. The
present laws relating to patents are various
sections of the Revised Statutes of 1874, de-
rived from the Patent Act of 1870, and numer-
ous amendatory and additional acts which
have been passed since that time. These have
been compiled as Title 35 of the United States
Code and are reprinted by the Patent Office
in a pamphlet entitled "Patent Laws." In
referring to a particular section of Patent Laws
there should ordinarily be given both the Re-
vised Statutes section number and the United
States Code citation, thus "R. S. 4886; 35
U. S. C. 31".

### Rules of Practice

One of the sections of the patent statutes,
namely, R. S. 483; 35 U. S. C. 6, authorizes the
Commissioner of Patents, subject to the ap-
proval of the Secretary of Commerce, to estab-
lish from time to time regulations, not incon-
sistent with law, for the conduct 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 gen-
eral information to the public, first issued in
1836. The content has been determined by his-
tory, tradition and other factors. Primarily
the function 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 always
additionally included, as numbered rules, infor-
mational 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 cir-
culars 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
instructions, information, interpretations and
the like. Some may be for the information 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 Examiner's
action pertaining to objections on formal mat-
ters, a petition for review may be taken to the
Commissioner of Patents (1002) and 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 for-
mal 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.