600

OCR transcription for search; preserved printed pages are authoritative

# Chapter 600 Parts, Form and Content of Application

601
Petition

601.01
Amendment of

601.02
Power of Attorney or Authorization of Agent

602
Original Oath (or Declaration)

602.01 Cannot Be Amended

802.02
New Oath or Substitute for Original

802.08
Defective Oath

602.04 . Foreign Oath

602.04(a) Ribboned to Other Application Papers
602.05 Date of Execution

602.05 (a) In Division and Continuation Cases

603
Supplemental Oath

603.01
After Allowance

604
Administration or Execution of Oath

604.01
Seal

604.02
Venue
604.03
Notaries and Extent of Jurisdiction

604.03(a) Notarial Powers of Some Military Officers

004.04
Consul

604.04(a) Omission of Certificate

604.05
Consular Fee Stamp

604.05 (a) Omission

604.06 By Attorney in Case

605
Applicant

005.01
Citizenship

605.02
Residence®

605.03
Post Office Address

605.04
Signature and Name

605.04(a) Single Signature Form

605.04 (b) Full First Name Required

605.04(c) Change of Name

605.04 (d) Unable To Write

605.04 (e) Use of Title

605.04(f) Joint-Order of Names

605.04 (g) Correction of Name, Send File to Applica-
tion Branch

605.04 (h) To Drawing

605.05 Administrator, Executor or Other Legal Rep-
resentative

605.05(a) Signature

605.06 Filing by Other Than Inventor

608
Title of Invention

06.01 Examiner May Require Change in Title

607
Filing Fee

607.01 Fee Exempt

607.01 (a) Inventor Leaves Service of United States

607.01 (b) Fee Exempt Changed to Fee Filed

607.02 Returnability of Fees

608
Disclosure

608.01
Specification

608.01 (a) Arrangement of Application

008.01 (b)
Abstract of the Disclosure

608.01 (c)
Background of the Invention

608.01 (@)
Brief Summary of Invention

608.01 (e)
Reservation Clauses Not Permitted

608.01 (f)
Brief Description of Drawings

608.01 (g)
Detailed Description of Invention

608.01 (h)

608.01(1)

Mode of Operation
Claims

608.01 (1)
Numbering

608.01(k)
Statutory Requirement

608.01 (1)

Original

608.01 (m)

Form

608.01 (n)
Dependent Olnims

608.01(0)
Basis for Terminology in Description

608.01 (p)
Completeness

608.01 (a)
Substitute or Rewritten

8.01(r) Derogatory Remarks About Prior Art

608.01 (s)
Restoration of Canceled Matter

608.01 (t)
Use in Subsequent Application

608.01 (a)
Of Formerly Filed Incomplete Application

608.01(v) Trademarks and Trade Names

608.02
Drawing

608.02(a) When New Drawing Is Required

608.02 (b) Informal

608.02(c) Or Print Always Kept in Examining Divi-
sion

608.02 (d) Complete Illustration

608.02 (e)
Examiner Determines

608.02 (f)
Modification

608.02(g)
Illustration of Prior Art

608.02 (h)
Additional, Duplicate, or Substitute

608.02 (1)
Transfer From Prior Application

608.02 (1)
Canceled Sheets to Divisional

608.02(k)
Patented, to Reissue

608.02(1)
To Continuation or Substitute

608.02 (m) Prints

608.02 (D)
Patentability Report Cases

608.02 (0)

Dates Entered on

608.02 (p)
Correction of

608.02 (q)
Conditions Precedent to Amendment of
Drawings

608.02 (r)
Separate Letter to Draftsman

608.02(s)
Estimating Cost of Correcting Drawings

608.02(t)
Cancelation of Figures

008.02 (u)
Changing Name of Attorney on Drawing
Forbidden

608.02 (v)
Changes Which Require Sketches

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001
608.02 (w)
Changes Which May be Made by Bzare-
Iner's Amendment Without a Sketch

808.02 (=)
Disposition of Orders for Amendments of
Drawing

608.02 (y)
Return of Drawing
608.08 Models, Paníbiòs, Bpectinchá
608.08 (a) Handling of

608.04 New Matter

608.04(a) Matter Not In Original Specification, Claims
or Drawings

608.04(b) By Preliminary Amendment

608.04(c) Review of Examiner's Holding

Rule 51. General requisites of an application. Ap-
plications for patents must be made to the Commis-
sioner of Patents. A complete application comprises :

(a) A petition or request for a patent, see rule 61.

(b) A specification, Including a claim or claims, see
rules 71 to 77.

(c) An oath or declaration, see rule 65.

(d) Drawings, when necessary, see rules 81 to 88.

(e) The prescribed filing fee. (See rule 21 for filing
fees.)

## THE APPLICATION

The petition, specification, and oath must be
in the English language and must be legibly
typewritten, written or printed in permanent
ink. See Rule 52 and 608.01.

The parts of the application may be included
in a single document, and an approved single-
signature form may be used.

Determination of completeness of an appli-
cation is covered in 506.

The petition, specification and oath are se-
cured together in a file wrapper, bearing ap-
propriate identifying data including the serial
number and filing date (717).

## NOTE

Reissue patents, 1401.
Design patents, Chapter 1500.

Plant patents, Chapter 1600.

A model, exhibit or specimen is not required
as part of the application as filed, although it
may be required in the prosecution of the ap-
plication (Rules 91-93, 608.03).

Rule 59. Papers of complete application not to be
returned. The papers in a complete application will
not be returned for any purpose whatever. If appli-
cants have not preserved copies of the papers, the
Office will furnish copies at the usual cost. See rule
87 for return of drawing.

See, however, 604.04 (a).

### 601 Petition

Rule 61, Petition. The petition must be addressed to
the Commissioner of Patents and request the grant of a
patent. The residence, and post office address of the
petitioner must appear in the petition if not stated else-

where in the application. The petition need not be
separately signed when part of and attached to the
specification and oath, otherwise it must be signed by
the petitioner.

The power of attorney or authorization of
agent may be incorporated in the petition.

Petitiener's or applicant's post office address
is discussed in 605.03.

The petition need not be dated.

### 601.01 Amendment of Petition

Those portions of the petition other than the
post office address (see 605.03) may be
amended by the attorney.

### 601.02 Power of Attorney or Author- ization of Agent

The attorney's or agent's full post office ad-
dress should be given in every power of attor-
ney or authority of agent. The prompt de-
livery of communications will thereby be
facilitated.

Usually a power of attorney or authorization
of agent is incorporated in either the petition
or single signature form. See 402 and
605.04(a).

### 602 Original Oath (or Declaration)

Rule 65. Statement of Applicant. (a) (1) The ap-
plicant, if the inventor, must state that he verily be-
lieves himself to be the original and first inventor or
discoverer of the process, machine, manufacture, com-
position of matter, or improvement thereof, for which
he solicits & patent; that he does not know and does
not believe that the same was ever known or used
before his invention or discovery thereof, and shall
state of what country he is a citizen and where he
resides, and whether he is a sole or joint inventor of
the invention claimed in his application. In every
original application the applicant must distinctly state
that to the best of his knowledge and belief the inven-
tion has not been in public use or on sale in the United
States more than one year prior to his application, or
patented or described in any printed publication in any
country before his invention or more than one year
prior to his application, or patented in any foreign
country prior to the date of his application on an appli-
cation filed by himself or his legal representatives or
assigns more than twelve months prior to his appli-
cation in this country. He shall state whether or not
any application for patent on the same invention has
been filed in any foreign country, either by the appli-
cant or by his legal representatives or assigns. If any
such application has been filed, the applicant shall
name the country in which the earliest such application
was filed, and shall give the day, month, and year of

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fling; he shall also identity by country and by day,
month, and year of filing, every such foreign applica-
tion dled more than twelve months before the filing of
the application in this country.

(2) This statement (1) must be subscribed to by the
applicant, and ( !! ) must either (a) be sworn to (or
affirmed) as provided in Rule 66, or (b) Include the
personal declaration of the applicant as prescribed in
Rule 68. See Rule 158 for design cases and Rule 162
for plant cases.

(b) If the application is made as provided in Rules
42, 43, or 47, the applicant shall state his relationship
to the inventor and, upon information and belief, the
facts which the inventor is required by this rule to
state.

(c) An additional statement may be required if the
application has not been filed in the Patent Office within
a reasonable time after execution of the original state-
ment.

Rule 68. Declaration in Lieu of Application Oath.

(a) The applicant may, in lieu of making an oath or
affirmation in the manner provided by Rule 66, set
forth in the body of the statement required from him
by Rule 65 his written declaration that all statements
made of his own knowledge are true and that all state-
ments made on information and belief are believed to
be true, if, and only if, the applicant is, on the same
paper, warned that willful false statements and the like
are punishable by fine or imprisonment, or both (18
U.S.C. 1001) and may jeopardize the validity of the
application or any patent issuing thereon.

(b) A written declaration by the applicant satisfying
the foregoing conditions may also be used in llen of
an oath when presenting a claim for matter not orig-
inally claimed (rule 67), when applying for a reissue
patent (rules 171 and 172), when applying for a patent
for a design (rules 151 and 153), when applying for a
patent for a plant (rules 161 and 162), and when filing
a statement concerning the making or conception of the
invention as required by 42 U.S.C. 2182, or by 42 U.S.C.
2457 (c).

Note that a Rule 68 Declaration need not be
ribboned to the other papers, even if signed in a
country foreign to the United States. When a
Declaration is used, it is unnecessary to appear
before any official in connection with the mak-
ing of the Declaration. It must, however, since
it is an integral part of the application, be main-
tained together therewith. Further details are
given in 29 F.R. 18502; 811 O.G. 2. (Basis:
Notice of March 4, 1965.)

By statute, 35 U.S.C. 25, the Commissioner
has been empowered to prescribe instances when
a written declaration may be accepted in lieu
of the oath for "any document to be filed in the
Patent Office".

The filing of a written declaration is not ac-
ceptable in lieu of the authentication of an
original application oath that is informal in
that it lacks authentication by a diplomatic or
consular officer of the United States. See
604.04 (a).

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602:04(9)

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Bale -65. has been amended with respect to
theorecitation . od . prior: foreign applications
The applicant mums state that no foreign ap.
pliceticos have been diled, if auch is the cams.
Lallu foreign applications . have - been · filed
within twelve months of the U.S. filing date,
he is (required only to, recite the first such
foreign application, and it should be clear that
the foreign application referred to is the first
filed foreign application. "> The applicant is
required to recite all foreign applications filed
more than twelve months prior to the U.S.
filing. It is desirable to give the foreign serial
number as well as the filing date of the first
filed foreign application, especially if the inven-
tor's name will not appear in a certified copy of
said foreign application. It should be noted
that an oath in the form proper before Janu-
ary 1, 1953 is still acceptable.

The single signature form mentioned in
605.04 (a) includes the oath.

An oath which refers to applicant as "the
petitioner" need not contain applicant's name
in the body thereof.

In the oath, the jurat must be filled out, and
the word "sole" or "only" must appear if there
is but one inventor and "joint" if two or more
inventors

When joint inventors execute separate oaths,
each oath should make reference to the fact
that the afiant is a joint inventor together
with each of the other inventors indicating
them by name. This may be done by stating
that he does verily believe himself to be the
original, first and joint inventor together with
"A or A & B, etc." as the facts may be.

A seal is usually impressed. See 604 and
Rule 66. However oaths executed in many
states including Alabama, Louisiana, Mary-
land, Massachusetts, New Jersey, New York,
Rhode Island, South Carolina and Virginia
need not be impressed with a seal.

If a claim is presented for matter not orig-
inally claimed or embraced in the original
statement of invention in the specification a
supplemental oath is required. Rule 67, 608.

602.01 Oath Cannot Be Amended

The wording of an oath cannot be amended.
If the wording is not correct or if all of the
required affirmations have not been made or if
it has not been properly subscribed to, a new
oath must be required. However, in some
cases a deficiency in the oath can be corrected
by a supplemental paper and a new oath is
not necessary.

For example, if the oath does not set forth
evidence that the notary was acting within his
jurisdiction at the time he administered the

oath e/certificate of the notary that the oath
was taken within his jurisdiction will correct
the deficiency # See 604.02. enda dass ho hohoddle

602.03 New.Oath or Substitute for
Original onions anlogsmi od dalw

Inrequiring a new oath, the Examiner
should always give the reason for the require-
ment and call attention to the fact that the
application of which it is to form a part
must be properly identified in the body of the
new oath, preferably by giving the serial num-
ber and the date of filing. This is done in the
first action by means of attachment Form PO-
152 (rev. 6/67) (ses 707.07(@)).

Where neither the original cath, nor the sub-
stitute oath is complete in itself, but the two
taken together give all the required data, no
further oath is needed.

### 602.02 New Oath or Substitute for When Waived

In the first Office action the Examiner must
point out, making use of attachment Form PO-
152 (rev. 6/67) (see 707,07 (s) ), every deficiency
in a declaration or oath and require that the
same be remedied. However, when an appli-
cation is otherwise ready for issue, an Examiner
with full signatory authority may waive the
following minor deficiencies:

1\. A delay of somewhat more than five weeks
plus mailing time in filing after the time
of making the declaration, or the time of
execution in the case of an oath.

2\. Residence of an applicant if a post office
address is given.

3\. Minor deficiencies in the execution of an
oath.

If any of the above are waived, the Examiner
should write in the margin of the declaration or
oath a notation such as "Date of declaration
waived; application ready for issue" and initial.

### 602.04 Foreign Oath

An oath executed in a foreign country must
be properly authenticated. See 604 and Rule 66.

#### 602.04(a) Foreign Oath Is Ribboned to Other Application Papers

Extract from Rule 66. (b) When the oath is taken
before an officer in a country foreign to the United
States, all the application papers, except the drawings,
must be attached together and a ribbon passed one or
more times through all the sheets of the application,
except the drawings, and the ends of said ribbon
brought together under the seal before the latter is
affixed and impressed, or cach sheet must be impressed

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608.05:00

with the official seul of the: officer bofurs - hachi the
cath is takes. If the papers aa filet are not properly
ribboned or each sheet droguesved with the owl, the
casa will be accepted for examination but before it
Is allowed, duplicate papers ckeparod in completee
with the foregoing sentence, miuss he flod.

Note that a Declaration in Lieu of Applics-
tion Oath ( Rule 68) need not be ribboned to the
other papers. It must, however, be maintained
together therewith.

### 602.05 Oath- - Date of Execution

The time elapsed between the date of execu-
tion of oath and the filing date of the applica-
tion should be checked for compliance with
Rule 65(c). If an unreasonable time has
elapsed, the Examiner should call for a new
oath. What constitutes a reasonable time is a
question of judgment to be determined by all
the circumstances in the particular case. (Five
weeks plus time of transmission in the mails
was considered reasonable underthe circum-
stances of Ex parte Heinze, 1919 C.D. 67; 285
O.G. 145). Note 602.05(a).

If no date of execution appears, applicant is
required to file either a new oath or a certifi-
cate from the notary giving the actual date
when the oath was taken.

### 602.05(a) Oath in Division and Con- tinuation Cases

Where the date of filing the application is
not the date that determines the statutory
twelve months' period, as in divisional and
continuation cases, it is immaterial, so far as
concerns the acceptability of the oath, how
long a time intervenes between the execution
of the oath and the filing of the application.

When a divisional application is identical
with the original application as filed, signing
and execution of the oath in the divisional case
may be omitted. (See Rule 147, 201.06.)

In a streamlined continuation application, the
oath or declaration of the parent application
can be used. Therefore, signing and execution of
& new oath or declaration in the streamlined
continuation is not required. See 201.07.

### 603 Supplemental Oath

Rule 67. Supplemental oath for matter not originally
claimed. (a) When an applicant presents a claim for
matter originally shown or described but not substan-
tially embraced in the statement of Invention or claim
originally presented, he shall file a supplemental oath
to the effect that the subject matter of the proposed
amendment was part of his invention ; that he does not
know and does not believe that the same was ever
known or used before his invention or discovery thereof,
or patented or described in any printed publication In

Any ceeatry before bis Invention or dinebvary theflor,
orimore than one year before; his application,"or in
public use or on sale in the United States for more than
one year besoni the inte of this application, that anid
Invention has not been patented in any foreign! codu-
try prior to the date of his application in this couhiery
on an application filed by himesit or his jegal repre
sentatives or assigns more than twelve months prior
to his application in the United States, and has not
been abandoned. Such supplemental oath should ac-
company and properly identify the proposed amend-
ment, otherwise the proposed amendment may be re-
fused consideration.

(b) In proper cases the oath here required may be
made on information and bellet by an applicant other
than inventor.

Rule 67 requires in the supplemental oath
substantially all the data called for in Rule 65
for the original oath. As to the purpose to be
served by the supplemental oath, the Examiner
should bear in mind that it cannot be availed
of to introduce new matter into an application.

### 603.01 Supplemental Oath Filed After Allowance

Since the decision in Cutter Co. v. Metro-
politan Electric Mfg. Co., 275 Fed. 158, many
supplemental oaths covering the claims in the
case have been filed after the case is allowed.
Such oaths may be filed as a matter of right
and when received they will be placed in the
file by the Issue Branch, but their receipt will
not be acknowledged to the party filing them.
They should not be filed or considered as
amendments under Rule 312, since they make
no change in the wording of the papers on
file. See 714.16.

### 604 Administration or Execution of Oath

Extract From Rule 66. Officers authorized to ad-
minister oaths. (a). The oath or affirmation may be
made before any person within the United States au-
thorized by law to administer oaths, or, when made in
a foreign country, before any diplomatie or consular
officer of the United States authorized to administer
oaths, or before any officer having an official seal and
authorized to administer oaths in the foreign country
in which the applicant may be, whose authority shall
be proved by a certificate of a diplomatic or consular
officer of the United States, the oath being attested
in all cases in this and other countries, by the proper
official seal of the officer before whom the oath or
affirmation is made. Such oath or affirmation shall be
valid as to execution if it complies with the laws of
the state or country where made. When the person
before whom the oath or affirmation is made in this
country is not provided with a seal, his official charac-
ter shall be established by competent evidence, as by

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(6) 084.63

a cortidenta from e clerk of a court of record or other
proper officer having a seal.

Nors: Seals, 604.01.

When unnecessary, 604.01.

In foreign case, 602.04 (a).

## 604.01 Seal

When the person before whom the oath or
affirmation is made in this country is not pro-
vided with a seal, his official character shall be
established by competent evidence, as by a cer-
tificate from a clerk of a court of record or
other proper oficer having a seal, except as
noted in 604.03(a), in which situations no seal
is necessary. When the issue concerns the au-
thority of the person administering the oath,
the Examiner should require proof of Author-
ity. Depending on the jurisdiction, the "seal"
may be either embossed or rubber stamped. The
latter should not be confused with a stamped
legend indicating only the date of expiration of
the notary's commission.

See also 602.04(a) on foreign executed oath
and seal. In some jurisdictions, the seal of the
notary is not required but the official title of
the officer must be on the oath. This applies to
Alabama, California (certain notaries), Lou-
isiana, Maryland, Massachusetts, New Jersey,
New York, Ohio, Puerto Rico, Rhode Island,
South Carolina and Virginia.

## 604.02 Venue

That portion of an oath or affidavit indicat-
ing where the oath is taken is known as the
venue. Where the county and state in the
venue agree with the county and state in the
seal, no problem arises. If the venue and seal
do not correspond in county and state, the
jurisdiction of the notary must be determined
from statements by the notary appearing on the
oath, or from the listing at 604.03. Venue and
notary jurisdiction must correspond or the
oath is improper. The oath should show on
its face that it was taken within the jurisdic-
tion of the certifying officer or notary. This
may be given either in the venue or in the
body of the jurat. Otherwise, a new oath, or
a certificate of the notary that the oath was
taken within his jurisdiction, must be required.
Ex parte Delavoye, 1906 C.D. 320; 124 O.G.
626; Ex parte Irwin, 1928 C.D. 13; 367 O.G.
701.

## 604.03 Notaries and Extent of Juris- diction

The extent of the jurisdiction of the notaries
in the various states is given below.

COUNTY;ONLY

Louisiana
Mississippi

Texas

# VARIABLE JURISDICTION

(See explanatory paragraphs below)

Alabama (a)

Missouri (e)

Florida (b)

Nebraska (a)

Hawaii (c)
Ohio (1)

Iowa (d)
Tennessee (g)

Kansas (e)
Virginia (h)

Kentucky (d)
West Virginia (d)

STATEWIDE

All other states

(a) Alabama and Nebraska notaries are ap-
pointed for counties and for state at large.

(b) Florida notary commissions are cus-
tomarily for state at large but may be restricted
by commission to less than the state at large.

(c) In Hawaii it is generally limited to the
judicial circuit.

(d) In Iowa, Kentucky and West Virginia it
is limited to county for which appointed, but
notary in any county may qualify and act as
notary in any other county.

(e) The jurisdiction of Kansas and Missouri
notaries is coextensive with county of appoint-
ment and adjoining counties.

(f) In Ohio, notaries other than attorneys are
appointed by the Governor for a term of 5 years
and have power to act only in county for which
appointed. An attorney or any person certified
by a judge of the court of common pleas of the
county in which he resides as qualified for the
duties of official stenographic reporter of such
state, may, however be commissioned for the
entire state. The extent of jurisdiction is stated
near the notary's signature.

(g) Tennessee notary publics commissioned
in one county may file in county court of any
other county and thereupon may exercise the
function of his office in such other county. In
such cases, however, notary must attach to his
certificate a statement that he is qualified in the
county in which he acts. Notaries at large are
commissioned by the Secretary of the State.
Notary's signature must indicate that he is so
qualified. Special seal is prescribed by the Sec-
retary of State.

(h) In Virginia, notaries are limited to city
or county for which appointed except that
notary for city may act in county or city con-
tiguous thereto, and a notary for a county may
act in city contiguous thereto. Notaries may be
appointed for two or more counties and cities or
for the state at large.

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## 63403 (a)

# MANUAL OF PATENT EXAMINING PROCEDURA

The notary does not have to state when his
commission expires but if he does so state, the
oath should be inspected to determine whether
or not the notary's commission had expired at
the date of execution of the oath.

## 604.03(a) Notarial Powers of Some Military Officers

Public Law 506 (81st Congress, Second Ses-
sion) Article 136: (a) The following persons
on active duty in the armed forces . . . shall
have the general powers of a notary public and
of a consul of the United States, in the per-
formance of all notarial acts to be executed by
members of any of the armed forces, wherever
they may be, and by other persons subject to
this code [Uniform Code of Military Justice]
outside the continental limits of the United
States:

(1) All judge advocates of the Army and
Air Force;

(2) All law specialists;

(3) All summary courts-martial;

(4) All adjutants, assistant adjutants, act-
ing adjutants, and personnel adjutants;

(5) All commanding officers of the Navy
and Coast Guard;

(6) All staff judge advocates and legal offi-
cers, and acting or assistant staff judge advo-
cates and legal officers; and

(7) All other persons designated by regula-
tions of the armed forces or by statute.

(d) The signature without seal of any such
person acting as notary, together with the title
of his office, shall be prima facie evidence of
his authority.

### 604.04 Consul

When the oath is made in a foreign country,
the authority of any officer other than a diplo-
matic or consular officer of the United States
authorized to administer oaths must be proved
by certificate of a diplomatic or consular officer
of the United States. Rule 66, 604. This proof
may be through an intermediary ; e.g., the con-
sul may certify as to the authority and jurisdic-
tion of another official who, in turn, may cer-
tify as to the authority and jurisdiction of the
officer before whom the oath is taken.

### 604.04(a) Consul-Omission of Cer- tificate

Where the oath is taken before an officer in
a foreign country other than a diplomatic or
consular officer of the United States and whose
authority is not authenicated. the application
is nevertheless given a filing date for purposes
of examination. The examiner, in his first

Office action; should note this informality and
require authentication of the cath by an ap-
propriate diplomatic or consular officer, The
following language is suggested in requiring
authentication of an oath :

"The oath is informal in that it lacks au-
thentication by a diplomatic or consular officer
of the United States; Rule 65(a). This in-
formality can be overcome only by forwarding
the original oath to the appropriate officer
for authentication if applicant wishes to pre-
serve his original filing date. Applicant
should therefore request return of the oath for
this purpose. Such request must be accompa-
nied by an order for a copy of the oath to be
retained in the file until the properly authenti-
cated oath is returned. See section 604.04(a),
MPEP. After the oath has been authenti-
cated, it should be returned promptly to the
Patent Office."

At the time of the next Ofice action the
request for return of the oath, together with
the application file and the copy of the oath,
is submitted through the Group Manager to the
Director of the Patent Examining Operation.
If the request is approved by him, the oath will
be returned by the examining division.

The filing of a declaration by the applicant
in lieu of an authentication of the original oath
cannot be accepted since the authentication is
essential to preserve the original filing date.

#### 604.05 Consular Fee Stamp

All papers executed on or after June 28, 1955,
that formerly required the consular fee stamp,
are acceptable without such stamp.

#### 604.05(a) Omission of Consular Fee Stamp

In applications executed abroad prior to June
28, 1955 before a counsular officer and in which
a consular fee stamp is required but from
which the required stamp is lacking, the Ex-
aminer should not require a consular fee stamp
to be furnished. The applicant should be in-
formed that the oath or authentication, as the
case may be, does not carry the required con-
sular fee stamp and that the applicant should
obtain a statement from the consular officer
that a fee stamp had been affixed when the
paper was executed.

#### 604.06 By Attorney in Case

The language of Rule 66 and 35 U.S.C.
115 is such that an attorney in the case is no
longer barred from administering the oath as
notary. The Office presumes that an attorney
acting as notary is cognizant of the extent of his
authority and jurisdiction and will not know-

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ingly jeopardize his client's rights by perform-
ing an illegal act. If such practice is permis-
sible under the law of thejurisdiction where
the oath is administered, then the oath is a valid
orth.

The law of the District of Columbia pro
hibits the administering of oaths by the attor-
ney in the case and hence the old bar still ap-
plies in the case of oaths administered in the
District of Columbia. If the oath is known to
be void because of being administered by the
attorney in a jurisdiction where the law holds
this to be invalid, the proper action for the
Office to take is to strike the application since
there is in effect no proper application before
the Office and the Examiner will refer the file
to the Solicitor's Office to initiate such action.
(Riegger v. Beierl, 1910 C.D. 12; 150 O.G.
826.) See Rule 66 and 604.

#### 605 Applicant

Rule 41. Applicant for patent. A patent must be
applied for and the application papers must be signed
and the necessary oath executed by the actual inventor
in all cases, except as provided by rules 42, 43, and
47. See rule 147.

Unless the contrary is indicated, the word "appli-
cant": when used in these rules refers to the Inventor,
joint inventors who have applied for a patent, or to
the person mentioned in rules 42, 43, or 47 who has
applied for a patent in place of the inventor.

Extract from Rule 45. Joint inventors. (a) Joint
inventors must apply for a patent jointly and each
must sign the application papers and make the re-
quired oath ; neither of them alone, nor less than the
entire number, can apply for a patent for an Inven-
tion invented by them jointly, except as provided in
rule 47.

For convertibility from a joint to sole or sole
to joint application, see 201.03.

Rule 46. Assigned inventions and patents. In case
the whole or a part interest in the Invention or in the
patent to be issued is assigned, the application must
still be made by the inventor or one of the persons
mentioned in rules 42, 43, or 47. However, the patent
may be issued to the assignee or jointly to the inventor
and the assignee as provided in rule 334.

This section concerns filing by the actual in-
ventor. If filed by other, see 409.03.

### NOTE

Streamlined continuation application, 201.07.
Disposition of application by inventor, 301.
Inventor dead or insane, 409.

#### 605.01 Applicant's Citizenship

The statute (35 U.S.C. 115) requires an ap-
plicant to state his citizenship. Where an

applicant is not acitizen of any country, a
statement to this effect is accepted as satis-
fying the statutory requirement; but a state-
ment as to citizenship applied for or first
papers taken out looking to future citizenship
in this (or any other) country does not meet
the requirement.

#### 605.02 Applicant's Residence

Applicant's place of residence (not to be con-
fused with his Post Ofice address) can be fur-
nished by the attorney. In the case of an ap-
plicant who is in the U.S. Army or U.S. Navy,
a statement to that effect is sufficient as to
residence. For change of residence see
717.02(b).

#### 605.03 Applicant's Post Office Address

Applicant's post office address means under
Rule 61 that address at which he customarily
receives his mail.

The object of requiring applicant's post of-
fice address is to enable the Office to communi-
cate directly with the applicant if desired;
hence, the address of the attorney with in-
structions to send communications to applicant
in care of the attorney is not sufficient.

If the post office address is entirely omitted
it must be supplied by a letter over the appli-
cant's own signature. Where, however, having
given complete data as to his residence, the
applicant identifies his post office address only
by street and number, it is assumed and so
accepted, that the city and state of his resi-
dence are the city and state of his post office
address.

Any amendment of the post office address re-
quires the signature of the applicant himself.

#### 605.04 Applicant's Signature and Name

Rule 57. Signature. The application must be signed
by the applicant in person. The signature of the oath
will be accepted as the signature to the application
provided the oath is attached to and refers to the
petition, specification and claim to which it applies.
Full names must be given, Including the full first
name without abbreviation, and the middle initial or
name if any.

Ruis 76. Signature to the specification. When the
oath is attached to and refers to the petition, specifica-
tion and claim to which it applies, the specification
need not be signed. Otherwise it must be signed by the
applicant in person.

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casei (a)

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The signing and execution by the applicant
of certein Divisional and Streamlined Contin-
uation applications may be omitted. Bule 147,
Sections 201.00, and 201.07.

Nome : Signature to response 714.01 (a) to (e).

605.04(a) Single Signature Form

The single signature form should be exe-
cuted only when attached to d complete appli-
cation as the last page thereof. Such a form
is shown as No. 16 in the List of Forms in
the Rules of Practice booklet.

### 605.04(b) Full First Name Required

All applications which disclose the full first
and last names with middle initial or name,
if any, of the applicant at any place in the
application papers will be received and con-
sidered as a sufficient compliance with Rules
57 and 76 of the Rules of Practice.

When the full first name of the applicant
does not appear either in the signature or else-
where in the papers the Examiner will, in
the first official action, require an amendment
over applicant's signature supplying the omis-
sion, and he will not pass the application to
issue until the omission has been supplied
unless a statement be filed over the applicant's
own signature setting forth that his full first
name is as signed or what is in fact his full
first name.

No affidavit should be required.

The requirement should be made only when
for the first name in the signature a mere ini-
tial appears or what can be only an abbrevia-
tion of a name.

Rule 57 requires "full names". The full first
name must appear somewhere in the papers as
filed. Otherwise, appropriate amendment is
required.

In an application where the name is type-
written with a middle name or initial, but the
signature is without such middle name or ini-
tial, action should be taken as follows:

In the first Office letter, call attention to the
lack of uniformity and request information
over the applicant's signature as to the correct
form of his name, together with any necessary
amendment.

If applicant, in reply, gives the name with-
out the middle name or initial unaccompanied
by any instructions to amend the typewritten
name, the reply may be interpreted as a direc-
tion to cancel the middle name or initial from
the preamble; though such amendment is not
material. since the preamble is no longer
printed in the patent. It is necessary how-

ever, i that such surplus portion of the atmo,
if it appears printed on the drawing, should
be zomoved therefrom. | This can be done by
the Office dra fisman.

If applicant gives the nams with the middle
name or initiel, interpret tha reply es a direc-
tion that the middle name or initial is to be
used in the name on the printed patent, As
the printer takes the name from the face of
the file wrapper, the middle name or initial
should be added thereto in red ink.

If applicant fails to answer the request and
the case is otherwise ready for issue, prepare
an Examiner's Amendment indicating that the
name on the drawing has been corrected to
correspond with the signature or signatures,
have the Draftsman correct the drawing, and
pass the case to issue. This cannot be done if
there are inconsistencies in the signatures.

There should be uniformity notwithstanding
that lack of it is not sufficient to affect the
validity of the patent.

When the name on the file is corrected, the
file should be sent to the Application Branch
for correction of its records.

### 605.04(c) Applicant Changes Name

In cases where an applicant's name has been
changed after his application has been filed
and the applicant desires that the patent when
issued carry an endorsement as to the change
in his name, he must submit a recording fee
accompanied by either an affidavit signed with
both names and setting forth the procedure
whereby the change of name was effected, or &
certified copy of the Court order. Such papers
are recorded by the Assignment Branch where
the new name is added on the file wrapper.
The Assignment Branch forwards the file to
the Application Branch for a change in their
records.

No change is made on the face of the file
by the Clerk of the examining group. A suit-
able endorsement being made by the Assignment
Branch. When ready for allowance, the case
should be sent to the Drafting Branch for the
addition of the new name to the drawing.

Where the change of name is merely by
amendment, such as the addition of a full first
name or a middle initial and no affidavit is
required, the file is sent to the Application
Branch for a change in their records and if
the application is assigned it will be forwarded
by the Application Branch to the Assignment
Branch for a change in assignment record.

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605.05(a)

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605.04(d) Applicant UsaMiaito Wine

If the applicant is unable to write, his mark
as afixed to the application must be attested
to by a witness. in the case of the ooth, the
notary's signature to the jurat is sufficient to
authenticate the mark.

605.04(e) May Use Title With Signa-
ture

It is permissible for an applicant to use a
title of nobility or other title, such as "Dr.",
in connection with his signature. The title
will not appear in the printed patent.

605.04(f) Signature on Joint Appli-
cations- Order of Names

It is not essential that the names appear in
the same order in the signatures to the petition,
specification, oath, and drawing.

The order of names of joint patentees in the
heading of the patent is taken from the order
in which the typewritten names appear in the
original oath accompanying the application
papers. Care should therefore be exercised in
selecting the preferred order of the typewrit-
ten names of the joint inventors, before filing,
as requests for subsequent shifting of the
names would entail changing numerous rec-
ords in the Office. Since the particular order
in which the names appear is of no conse-
quence insofar as the legal rights of the joint
applicants are concerned, no changes will be
made except for good reasons and by permis-
sion of the Commissioner. It is suggested that
all typewritten and signed names appearing
in the application papers should be in the same
order as the typewritten names in the oath.

In those instances where the joint applicants
file separate oaths, the order of names is taken
from the order in which the several oaths ap-
pear in the application papers unless a differ-
ent order is requested at the time of filing.

605.04(g) When Name Is Corrected,
Send to Application
Branch

When the name is corrected by amendment,
the file should be sent to the Application
Branch for correction of the name in its rec-
· ord. When the name is changed, see 605.04 (c).

605.04(h) Signature to Drawing

Rule 82. Signature to drawing. Signatures are not
required on the drawing if it accompanies and is re-
ferred to in the other papers of the application, other.
wise the drawing must be signed. The drawing may
be signed by the applicant in person or have the name

of the applicant placed theroon followed by the als.
nature of the attorney or agent as such, friol pvnda

Ertract from Rule 84, Drawings. (1) Location of
signature and menteel The signature of the applicant,
or the name of the applicant and signature of the
attorney or agent, may be placed in the lower right-
hand corner of each sheet within the marginal line,
or may be placed below the lower marginal line.

The signature when placed on the drawing
should never eross the marginal line. The sig-
nature on the drawing must not be inconsistent
with the other signatures and typed names in
the application. Moreover, it cannot include a
middle name if the other signatures include
only a middle initial consistent therewith. It
can, however, include initials for the first and
middle names. Drawings filed without the in-
ventor's name thereon, will have the name
applied in pencil by the Mail Branch.

When the drawing is signed by the inventor
in person the name of the attorney is not per-
mitted to appear thereon.

The drawing may be signed by the appli-
cant, attorney, or agent in person after the
drawing has been filed. The signature need
not be dated. Prohibition against changing
name of the attorney on drawing is discussed
at 608.02(u). For return of drawing to appli-
cant for signature see 608.02(y).

The name or signature of the inventor must
be identified as such by an appropriate legend.
Each sheet must be signed when the signature
is necessary. The printed name of the in-
ventor without a signature is also acceptable
and may appear, if desired, only on the first
sheet.

605.05 Administrator, Executor, or
Other Legal Representative

In an application filed by a legal representa-
tive of the inventor, the specification should
not be written in the first person. Instead of
the usual "I have found," the wording should
be "it was found."

For prosecution by administrator or execu-
tor, see 409.01 (a).

For prosecution by heirs, see 409.01(a) and
409.01 (d).

For prosecution by representative of legally
incapacitated inventor, see 409.02.

For prosecution by other than inventor, see
409.03.

605.05(a) Signature of Legal Repre-
sentative

If the drawing is signed by the legal repre-
sentative it must follow this form:

John A. Jones, deceased,
by Mary A. Jones, Administratrix.

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(5)10.800

The other signatures must either be in the

above form orte an Cres: to youinthe art in ososen
Mary A. Jones
Administratrix of Estate of
John A. Jones, deceased.

If the drawing is signed by the attorney, this
form must be used :

John A. Jones, deceased,
by Mary A. Jones, Administratrix,
by William A. Smith, Atty.
If the specification bears the signature of the
administrator or executor but omits the matter,
"administrator of the Estate of John Jones,
deceased," the matter can be added by amend-
ment. The Examiner may make the amend-
ment if the case is otherwise ready for issue.

# 605.06 Filing by Other Than Inventor See 409.03.

## 606 Title of Invention

Rule 78(a). The title of the invention, which should
be as short and specific as possible, should appear as a
heading on the first page of the specification, if it does
not otherwise appear at the beginning of the applica-
Clon.

## 606.01 Examiner May Require Change in Title

Where the title is not descriptive of the in-
vention claimed, the Examiner should require
the substitution of a new title that is clearly
indicative of the invention to which the claims
are directed. This may result in slightly
longer titles, but the loss in brevity of title
will be more than offset by the gain in its
informative value in indexing, classifying.
searching, etc. If a satisfactory title is not
supplied by the applicant, the Examiner may
change the title by Examiner's Amendment on
or after allowance.

If a change in title is the only change being
made by the Examiner at the time of allow-
ance a separate Examiner's Amendment need
not be prepared. The change in title will be
incorporated in the Notice of Allowance. This
will be accomplished by adding the typewrit-
ten notation in capital letters "AS AMENDED
BY EXAMINER" following the heading
"Title of Invention or Improvement" and en-
tering thereunder the title as changed by the
Examiner who should initial the face of the
file wrapper.

However, if an Examiner's Amendment must
be prepared for other reasons any change in
title will be incorporated therein.

Applications filed before October 25, 1965,
required only s basic filing fee. That part of
the new Fee Act, effective October 95, 1965, per-
taining to claims presented after an application
is filed, does not apply to these applications.
See 714.10,

Applications filed on or after October 25,
1965, are subject to the following fees and prac-
tice:

When filing an application, a basic fee of $65
entitles applicant to present (10) claims includ-
ing not more than (1) in independent form. If
claims in excess of the above are included at
the time of filing, an additional fee of $10 is
required for each independent claim in excess
of one, and a $2 fee for each claim in excess of
ten (10) claims (whether independent or de-
pendent).

Upon submission of an amendment (whether
entered or not) affecting the claims, payment
of the following additional fees is required in
a pending application :

$10.Lfor each independent claim pending in
excess of the number of independent
claims already paid for.

$2 __ for each claim pending in excess of the
total number already paid for. (It
should be recognized that the basic
$65 fee pays for ten (10) claims, one
of which may be independent, re-
gardless of the number actually
filed.)

Amendments before the first action, or not
filed in response to an Office action, presenting
additional claims in excess of the number al-
ready paid for, not accompanied by the full ad-
ditional fee due, will not be entered in whole or
in part and applicant will be so advised. Such
amendments filed in reply to an Office action
will be regarded as not responsive thereto and
the practice set forth in section 714.08 will be
followed.

The additional fees, if any, due with an
amendment are calculated on the basis of the
claims (total and independent) which would be
present, if the amendment were entered. The
amendment of a claim, unless it changes a de-
dendent claim to an independent claim, and the
replacement of a claim by a claim of the same
type do not require any additional fees.

For purposes of determining the fee due the
Patent Office, a claim will be treated as depen-
dent if it contains reference to one other claim
in the application. A claim determined to be
dependent by this test will be entered if the
fee paid reflects this determination.

Any claim which is in dependent form but
which is so worded that it, in fact is not, as for

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607.01

example it does not include every limitation of
the claim on which it depends, will be required
to be canceled as not being a proper dependent
claim; and cancellation of any further claim
depending on such a dependent claim will be
similarly required. The applicant may there-
upon amend the claims to place them in proper
dependent form, or may redraft them as inde-
pendent claims, upon payment of any neces-
sary additional fee.

After a requirement for restriction, non-
elected claims will be included in determining
the fees due in connection with a subsequent
amendment, unless such claims are canceled.

The additional fees, if any, due with an
amendment are required prior to any consider-
ation of the amendment by the Examiner.

Money paid in connection with the filing of
a proposed amendment will not be refunded
by reason of the nonentry of the amendment.

## 607.01 Fee Exempt

There were two types of Fee Exempt appli-
cations: (a) those filed under 35 U.S.C. 266.
repealed as of October 25, 1965 and (b) those
filed under a ruling of the Comptroller Gen-
eral's Opinion B-111,648 also abrogated as of
the same date:

FILED UNDER 35 U.S.C. 266
35 U.S.C. 266. Issue of patents without fees to Gor-
ernment employees. The Commissioner may grant,

subject to the provisions of this titio, to zny officer,
enlisted man, or employee of the Government, except
officers and employees of the Patent Office, a patent
without the payment of fees, when the head of a de-
partment or agency certifies the invention is used or
likely to be used in the public interest and the sppll-
cant in his application states that the invention de-
scribed therein, if patented, may be manufactured and
used by or for the Government for governmental pur-
poses without the payment to him of any royalty
thereon, which stipulation shall be included in the
patent. (Based on Act Mar. 3, 1888, amended Apr. 30,
1928. Repealed October 25, 1965.)

In revising such applications for issue, the
specification should be checked to assure the
presence of the substance of the following
statement therein :

"The invention described herein may be
manufactured and used by or for the Gov-
ernment for governmental purposes without
the payment of any royalty thereon."

If the substance of such a statement does
not appear as the first paragraph of the specifi-
cation "after" the abstract but is present else-
where in the specification or record, the same
should be entered, by Examiner's Amendment,
as the first paragraph of the specification after
the abstract.

If the substance of this statement is not
present at any point in the record of the ap-
plication, an action should be made requiring
such statement, signed by the applicant, and an
amendment directing insertion of same as the

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(s) 99880

fizet paragraph of the specification. A short-
ened statutory /period for response should be
set and the application withheld from issue
until such response has been made.

FILED UNDER COMPTROLLER GENERAL'S OPINION

The Comptroller General ruled (Comptroller
General's Opinions B-111,618 and B-117,353)
that fees need not be paid in applications filed
by one not a Government employee.

(1) Where there is an assignment of all
right, title and interest in the invention and
application to the Government or a Govern-
ment agency; or

(2) Where the invention and application
are the result of research sponsored and fi-
nanced by the Government under contract or
agreement requiring that the results thereof
be made available to the public, and the appli-
cation contains a clause dedicating the inven-
tion and patent to be granted to the free use
of the people in the territory of the United
States.

Beginning October 25, 1965, there are no
longer any applications which are exempt from
the filing fee or the issue fee. Applications filed
before this date without the filing fee under the
provisions previously in effect are subject to
payment of the issue fee if the notice of allow-
ance is dated on or after October 25, 1965.

The following two sections (607.01a, 607.01b)
are applicable only to old cases.

## 607.01(a) Inventor Leaves Service of United States

An opinion of the Attorney General, dated
January 14, 1936, rules that an application
filed under the Act of 1883, as amended, now
35 U.S.C. 266, which meets the requirements of
this statute as to the status of the inventor at
the time of filing, is sufficient warrant for the
issuance of a patent to the inventor if the in-
vention claimed therein is found patentable,
whether or not he is in the service of the
United States at the time the patent issues.

## 607.01(b) Fee Exempt Changed to Fee Filed

Where an application was filed under 35
U.S.C. 266, the regular filing fee can be subse-
quently paid and proper amendment made by
the inventor, concurred in by the Head of the
Department concerned, cancelling the offer of
dedication, the fee being entered on the file
and the original date of the application re-
tained.

## 607.02 . Returanbility of Fees

Ail questions pertaining to the return of fees
are referred to the Refund Unit of the Finance
Branch of the Budget and Finance Division.
No opinions should be expressed to attorneys or
applicants as to whether or not fees are return-
able in particular cases.

608 Disclosure

In return for a patent, the inventor gives as
consideration a complete revelation or dis-
closure of the invention for which he seeks
protection. All amendments or claims must
find basis in the original disclosure, or they
involve new matter. Applicant may rely for
disclosure upon the specification with original
claims and drawings, all as filed complete. See
Rule 118, 608.04.

## 608.01 Specification

Rule 71. Detailed description and specification of the
tuvention. (a) The specification must include a writ-
ten description of the Invention or discovery and of
the manner and process of making and using the
same, and is required to be in such full, clear, con-
cise, and exact terms as to enable any person skilled
in the art or science to which the invention or dis-
covery appertains, or with which it is most nearly
connected, to make and use the same.

(b) The specification must set forth the precise in-
vention for which a patent is solleited, in such manner
as to distinguish it from other inventions and from
what is old. It must describe completely a specific
embodiment of the process, machine, manufacture,
composition of matter or Improvement invented, and
must explain the mode of operation or principle when-
ever applicable. The best mode contemplated by the in-
ventor of carrying out his invention must be set forth.

(c) In the case of an improvement, the specification
must particularly point out the part or parts of the
process, machine, manufacture, or composition of mat-
ter to which the improvement relates, and the descrip-
tion should be confined to the specific improvement and
to such parts as necessarily cooperate with it or as may
be necessary to a complete understanding or descrip-
tion of it.

Certain cross notes to other related applica-
tions may be made. References to foreign ap-
plications or to applications identified only by
the attorney's docket number should be re-
quired to be cancelled. Rule 78, 202.01.

Rule 52. Language, paper, writing margins. (a)
The petition, specification, and oath must be in the
English language. All papers which are to become a
part of the permanent records of the Patent Office must
be legibly written or printed in permanent ink.

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608.91 (a)

<!-- PageHeader="MARULESOF FATEAF -EXAMINING PROCEDURE" -->

(b) The specjsemion ### [claims, oud ales)puisses
subsequently filed, must be plainly written on but one
side of the paper. i A wide margia must be reversed on
the left-hand ride and on the top of each page and the
lines must not be crowded too closely together. Legui
paper, 8 to 816 by 12% to 18 inches, typewritten and
double spaced with margins of one and one half inches
on the left-hand side and top is deemed preferable.
Typewritten or printed papers suitable for use by the
Office may be required if the papers originally filed are
not correctly, legibly and clearly written.

(c) Any interlineation, erasure or cancellation or
other alteration made before the application was
signed and sworn to should be clearly referred to in a
marginal note or footnote on the same sheet of paper,
and initialed or signed and dated by the applicant to
indicate such fact. .. (See Rule 56.)

In order that specifications may be expedi-
tiously handled by the Office, page numbers
should be placed at the center of the bottom
of each page. It is a common practice and
a commendable one, to consecutively number all
the lines of each page (and the lines of each
claim).A top margin of at least 11% inches
should be reserved on each page to prevent
possible mutilation of text when the papers are
punched for insertion in a file jacket.

Typed, mimeographed, xeroprinted, multi-
graphed or good carbon copy forms of repro-
duction are acceptable provided the paper used
has a surface such that amendments may be
written thereon in ink. So-called "Easily
Erasable" paper having a special coating so
that erasures can be made more easily may not
provide a "permanent" copy. Rule 52(a). If
& light pressure of an ordinary (pencil) eraser
removes the imprint, the examiner should, as
soon as this becomes evident, notify applicant
that it will be necessary for him to order a copy
of the specification and claims to be made by
the Patent Office at his expense for incorpora-
tion in the file. It is not necessary to return
this copy to applicant for signature.

See in re Benson, 1959 C.D. 5; 744 O.G. 353.
Reproductions prepared by heat-sensitive, hec-
tographic or spirit duplication processes are
also not satisfactory.

As stated in Rule 52 the specification as well
as petition and oath must be in the English
language.

The specification is sometimes in such faulty
English that a new specification is necessary,
but new specifications encumber the record and
require additional reading, and hence should
not be required or accepted except in extreme
cases.

The requirement that the specification must
be in the English language is not satisfied by
the filing of a signed specification in a foreign

language together with # sworn translation
thereof. In are Incomplets Application 5. 859

O.G. 917. biaddtiw noitexigor odi hne Joa

The specification does not require a data.

If a newly filed application obviously fails to
disclose an invention with the clarity required
by 35 U.S.C. 112, revision of the application
should be required. See 702.01.

As the specification is never returned to ab-
plicant under any circumstance, he should re-
tain a line for line copy thereof, each line, pref-
erably, having been consecutively numbered on
each page. In amending, the attorney or the
applicant requests insertions, cancellations, or
alterations, giving the page and the line.

Rule 52(c) relating to interlineations and
other alterations is strictly enforced. See in
re Swanberg, 129 U.S.P.Q. 364.

## 608.01 (a) Arrangement of Applica- tion

Rule 77. Arrangement of application. The follow.
ing order of arrangement should be observed in fram-
ing the application :

(a) Title of the invention ; or an introductory por-
tion stating the name, citizenship, and residence of the
applicant, and the title of the invention may be used.

(b) Abstract of the disclosure.

(c) Cross-references to related applications, if any.

(d) Brief summary of the invention.

(e) Brief description of the several views of the
drawing, if there are drawings.

(f) Detailed description.

(g) Claim or claims.

(h) Signature. (See rule 76.)

NOTE

Design patent specification, 1503.01.
Plant patent specification, 1601.5.

Reissue patent specification, 1401.06.

The following order of arrangement is pref-
erable in framing the specification and, except
for the title of the invention, each of the lettered
items should be preceded by the headings
indicated.

(a) Title of the Invention.

(b) Abstract of the Disclosure.

(c) Cross-References to Related Applica-
tions (if any).

(d) Background of the Invention.

1\. Field of the Invention.

2\. Description of the Prior Art.

(e) Summary of the Invention.

(f) Brief Description of the Drawing.

(g) Description of the Preferred Embodi-
ment (s).

(h) Claim(s).

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608.01(€)

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608.01 (b)
Abstract of the Disclosure

[R-16]

Rule 78 (3). A bries abstract of the technical dis-
closure in the specification must be set forth serhedi-
ately following the title and preceding the didelcoure
In a separate paragraph under the holding "Abstract
of the Discideare". The purpose of the abstract ie to
enable the Patent Office and the public generally to
determine quickly from a cursory inspection the nature
end gist of the techelon! disclosure, and the abstract
shall not be used for interpreting the scope of the
claima.

The submission of an "Abstract of the Dis-
closure" as part of the application is required
for each patent application received in the
Patent Office on or after January 1, 1967. An
abstract is also required in all patent applica-
tions previously on file which have not received
a first Office action of any kind from the Exam-
iner by November 1, 1966, except those passed
to issue on the first action.

In all such cases which lack an abstract, the
Examiner in the first Office action should re-
quire the submission of a brief abstract of the
technical disclosure in the specification, the ab-
stract to appear immediately after the title of
the invention and preceding the disclosure in a
separate paragraph under the heading "Ab-
stract of the Disclosure." Responses to such
actions should be treated under Rule 111(b)
practice like any other formal matter.

Applications sometimes include statements
attempting to restrict the use of the abstract in
interpreting the scope of the claims. Because
Rule 72(b) expressly prohibits this use of the
abstract, statements of this type are uncalled
for and should not appear in the printed patent.
Whenever any such restricting statement con-
cerning the claims appears in the portion of an
application that would appear in a printed pat-
ent, cancellation will be required, or the cancel-
lation shall be effected by Examiner's Amend-
ment if the application is otherwise ready for
allowance.

Under current practice, in all instances where
the application contains an abstract when sent
to issue, the abstract will be published in the
Official Gazette instead of a claim.

Upon passing the case to issue, the Examiner
should see that the abstract is an adequate and
clear statement of the contents of the disclosure
and generally in line with the guidelines in the
following numbered paragraphs; the abstract
shall be changed by the Examiner's Amend-
ment in those instances where deemed necessary.

1\. The purpose of the abstract is to provide &
nonlegal technical statement of the contents of

the disclosure. The abstract should be any ob
jective condensation (rather than a description)
of the disclosure, in clear and concise language.
Statemanta as to the relative meritu er value, or
speculative applications of the invention should
be omitted.

2\. The abstract should be especially designed
to serve as a searching-scanning tool for the
scientist, engineer or researcher in the particu-
ler art, and therefore should serve to indicate
whether there is a need for consulting the full
specification for details.

3\. The abstract should be as brief as the sub-
ject permits. A single paragraph of 50-100
words should be sufficient. "In unusual circum-
stances a plural paragraph abstract may be ac-
ceptable. An example of these rare situations
would be an application having claims to differ-
ent statutory classes, it being recognized that
the abstract of the disclosure should include all
the advancements in the art. Where a plural
paragraph abstract is deemed necessary, the
complete abstract must be set off by suitable
headings to indicate where it begins and ends.
For headings usable between the abstract and
the subsequent description, see 608.01(a), or see
"Guidelines for Drafting a Model Patent Ap-
plication Under the Revised Rules" 832 O.G. 5.

4\. Especially in the chemical field, the ab-
stract should include a statement of the utility
of the subject matter of the disclosure, particu-
larly that which is related to the invention.

5\. The abstract should be separate and inde-
pendent of the "Summary of the Invention."
One of the purposes of the abstract is to deter-
mine quickly the nature and gist of the technical
disclosure.

## 608.01(c) Background of the Inven- tion

The Background of the Invention ordinarily
comprises two parts:

(1) Field of the Invention: A statement of
the field of art to which the invention pertains.
This statement may include a paraphrasing of
the applicable U.S. patent classification defini-
tions. The statement should be directed to the
subject matter of the claimed invention.

(2) Description of the Prior Art: A para-
graph(s) describing to the extent practical the
state of the prior art known to the applicant,
including references to specific prior art where
appropriate. Where applicable, the problems
involved in the prior art, which are solved by
the applicant's invention, should be indicated.
See also 608.01 (a).

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608.01(S)

### 608.01(d) Brief Sammaary of Inves-

Bald 78. Summary of the forestlon. A brief sam-
masy of the Inventice Sadionting Ita satere and enb.
stance, which may incinde a statement of the object of
thơ taveation, shunid precede the detailed description.
Buch maiamary should, when set forth, be commensurate
with the invention as cinimed and any object recited
should be that of the favention aa claimeti.

Since the purpose of the brief summary of
invention is to apprise the public, and more
especially those interested in the particular art
to which the invention relates, of the nature of
the invention, the summary should be directed
to the specific invention being claimed, in con-
tradistinction to mere generalities which would
be equally applicable to numerous preceding
patents. That is, the subject matter of the in-
vention should be described in one or more
clear, concise sentences or paragraphs. Stereo-
typed general statements that would fit one
case as well as another serve no useful purpose
and may well be required to be canceled as
surplusage, and, in the absence of any illumi-
nating statement, replaced by statements that
are directly in point as applicable exclusively
to the case in hand.

The brief summary, if properly written to
set out the exact nature, operation and purpose
of the invention will be of material assistance
in aiding ready understanding of the patent
in future searches. See 905.04. The brief
summary should be more than a mere state-
ment of the objects of the invention, which
statement is also permissible under Rule 73.

The brief summary of invention should be
consistent with the subject matter of the
claims. Note final review of application and
preparation for issue, 1302.

## 608.01(e) Reservation Clauses Not Permitted

Rules 19. Reservation classes not permitted. A res-
ervation for a future application of subject matter dis-
closed but not claimed in a pending application will
not be permitted in the pending application, but an
application disclosing unclaimed subject matter may
contain a reference to a later filed application of the
same applicant or owned by a common assignee dis-
closing and claiming that subject matter.

# 608.01(f) Brief Description of Draw- ings

Rule 74. Reference to drawings. When there are
drawings, there shall be a brief description of the
several views of the drawings and the detailed do-

ceristion of the jayention aboli refer to the dust
views by specifying the numbers of the Algures, and
to the different parts hy pes of reference letters of
mumsartis (preferably the latter).

The Examiner should see to it thet the fs-
ures ars correctly described in the brief de-
scription of the drawing, that all section lines
used are referred to, and that all needed geo-
tion lines are used.

608.01 (g)
Detailed Description of In-
vention
[R-16]

A detailed description of the invention and
drawings follows the general statement of in-
vention and brief description of the drawings.
This detailed description, required by Rule 71,
608.01, must be in such particularity as to en-
able any person skilled in the pertinent art or
science to make and use the invention without
involving extensive experimentation. An ap-
plicant is ordinarily permitted to use his own
terminology, as long as it can be understood.
Necessary grammatical corrections, however,
should be required by the Examiner, but it
must be remembered that an examination is
not made for the purpose of securing gram-
matical perfection.

The reference characters must be properly
applied, no single reference character being
used for two different parts or for a given part
and a modification of such part. In the latter
case, the reference character, applied to the
"given part," with a prime afixed may advan-
tageously be applied to the modification.
Every feature specified in the claims must be
illustrated, but there should be no superfluous
illustrations.

Restrictive statements or express limitations
relating to the scope of the invention claimed
should be omitted from the application. If the
limitations are only intended as statements de-
signed to have no effect in the interpretation of
the claims, the language is wholly unnecessary
and should be canceled as surplusage. On the
other hand, if the statements are to be used in
the interpretation of claims, said statements are
clearly improper and should be deleted. Title
35 U.S.C. 112 requires that an applicant shall
particularly point out and distinctly claim the
subject matter or combination which he claims
as his invention or discovery (see 608.01(k)).
Whenever any such restricting statement con-
cerning the claims appears in the portion of an
application that would appear in a printed
patent, cancellation will be required, or the can-
collation shall be effected by Examiner's
Amendment if the application is otherwise
ready for allowance.

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The description is a dictionary for the claims
and should provide clear support or antecedent
basis for all terms used in the claims. See
Rule 75 in 608.01(1), 608.01(o), and 1802.01.

Nozz .- Completeness 608.01 (p).

# 608.01(h) Mode of Operation of In- vention

The best mode devised by the inventor of
carrying out his invention must be set forth
in the description. Current practice is to ac-
cept an operative example as sufficient to meet
this requirement.

In chemical cases, complete data necessary
for the preparation and use of at least one ex-
ample of the invention should be presented.

Norz .- Completeness 608.01 (p).

## 608.01 (i) Claims [R-18]

Rule 75. Olaim(s). (a) The specification must con-
clude with a claim particularly pointing out and dis-
tinctly claiming the subject matter which the applicant
regards as his invention or discovery.

(b) More than one claim may be presented provided
they differ substantially from each other and are not
unduly multiplied.

(c) When more than one claim is presented, they
may be placed in dependent form in which a claim
may refer back to and further restrict a single preced-
ing Claim. Claims in dependent form shall be con-
strued to include all the limitations of the claim
incorporated by reference into the dependent claim.

(d) (1) The claim or claims must conform to the
invention as set forth in the remainder of the specifica-
tion and the terms and phrases used in the claims must
find clear support or antecedent basis in the descrip-
tion so that the meaning of the terms in the claims may
be ascertainable by reference to the description.

(2) See rules 141 to 147 as to claiming different
inventions in one application.

(e) Where the nature of the case admits, as.in the
case of an improvement, any independent claim should
contain in the following order, (1) a preamble com-
prising a general description of all the elements or
steps of the claimed combination which are conven-
tional or known, (2) a phrase such as "wherein the
improvement comprises," and (3) those elements, steps
and/or relationships which constitute that portion of
the claimed combination which the applicant considers
as the new or improved portion.

NOTE
Numbering of Claims, 608.01(j).
Form of Claims, 608.01 (m).

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c00.1(0)

Dependent claims, 608.01(m). IL.JO
Examination of claims, 706.
Claims in excess of fee, 714.10.

608.01(j)*Numbering of Cininis

Rule 125. Numbering of olsinus, The urgival number-
ing of the clatins mast be preserved throughout the
prosecution. When claims are, canceled, the remaining
claims must not be rentimbered. When claims are
added, except when presented in accordance with Role
121(b), they must be numbered by the applicant con-
nechtively beginning with the number next following
the highest numbered claim previously presented
(whether entered or not). When the application is
ready for allowance, the examiner, if necessary, will re-
number the claims consecutively in the order in which
they appear or in such order as may have been re-
quested by applicant.

In a single claim case, the claim is not num-
bered.

# 608.01(k) Statutory Requirement of Claims

Sec. 35 U.S.C. 112 requires that the appli-
cant shall particularly point out and distinctly
claim the subject matter which he regards as
his invention. The portion of the application
in which he does this forms the claim or
claims. This is an important part of the ap-
plication, as it is the definition of that for
which protection is granted.

## 608.01(1) Original Claims

In establishing a disclosure, applicant may
rely not only on the specification and drawing
as filed but also on the original claims if their
content justifies it.

Where subject matter not shown in the draw-
ing or described in the specification is claimed
in the case as filed, and such original claim
itself constitutes a clear disclosure of this sub-
ject matter, then the claim should be treated on
its merits, and requirement made to amend the
drawing and specification to show this subject
matter. The claim should not be attacked
either by objection or rejection because this
subject matter is lacking in the drawing and
specification. It is the drawing and specifica-
tion that are defective; not the claim.

It is of course to be understood that this dis-
closure in the claim must be sufficiently specific
and detailed to support the necessary amend-
ment of the drawing and specification.

## 608.01(m) Form of Claims

While there is no set statutory form for
claims, the present Office practice is to insist

that each claim must be the object of acsen-
tenco starting with "In(or we) claim" (or she
equivalent ) { If at the time of allowance, the
quoted terminology is not precont, it is inserted
by the Clerk.b. Each claim begins with a capital
letter and ends with a period. ... Perioda may not
ba maed elsewhere in the claims except for ab
breviations, A claim may be typed with the
various elements subdivided in paragraph form.
There may be plural indentations to further
segregate subcombinations or related steps. In
general, the printed petent copies will follow
the format used but printing difficulties or ex-
pense may prevent the duplication of unduly
complex claim formats.

Reference characters corresponding to ele-
ments recited in the detailed description and the
drawings may be used in conjunction with the
recitation of the same element or group of ele-
ments in the claims. The reference characters,
however, should be enclosed within parentheses
so as to avoid confusion with other numbers or
characters which may appear in the claims.
The use of reference characters is to be consid-
ered as having no effect on the scope of the
claims.

Claims should preferably be arranged in or-
der of scope so that the first claim presented is
the broadest. Where separate species are
claimed, the claims of like species should be
grouped together where possible and physically
separated by drawing a line between claims or
groups of claims. (Both of these provisions
may not be practical or possible where several
species claims depend from the same generic
claim.) Similarly, product and process claims
should be separately grouped. Such arrange-
ments are for the purpose of facilitating classi-
fication and examination.

The form of claim required in Rule 75(e) is
particularly adapted for the description of im-
provement type inventions. It is to be con-
sidered a combination claim. The preamble of
this form of claim is considered to positively
and clearly include all the elements or steps re-
cited therein as a part of the claimed combina-
tion.

See Rejections not based on Prior Art
706.03.

## 608.01 (n) Dependent Claims

Rule 75(c), reads as follows:

When more than one claim is presented, they may
be placed in dependent form in which a ciaim may refer
back to and further restrict a single preceding claim.
Claims in dependent form shall be construed to include
all the limitations of the claim incorporated by refer-
ence into the dependent claim.

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For applications Gled on or after October 85,
1965, the initial determination, for fee purposes,
as to whether a claims is dependent must be made
by persons other than examiners ; it is necescary,
at that time, to accept as dependent virtuality
evary claim which refers to another cion, with-
ont determining whether there is actually's true
dependent relationship. Such acceptance does
not, however, preclude a subsequent holding by
the examiner that a claim is not a proper de-
pendent claim. Any claim which is in depend-
ent form but which is so worded that it, in fact is
not, as for example it does not include every
limitation of the claim on which it depends, will
be required to be canceled as not being a proper
dependent claim; and cancellation of any fur-
ther claim depending on such a dependent claim
will be similarly required. The applicant may
thereupon amend the claims to place them in
proper dependent form, or may redraft them as
independent claims, upon payment of any neces-
sary additional fee.

An essential characteristic of a proper de-
pendent claim is that it shall include every
limitation of the claim from which it depends
(35 U.S.C. 112) or in other words that it shall
not conceivably be infringed by anything which
would not also infringe the basic claim. Thus,
for example, if claim 1 recites the combination
of elements a, b, c and d, a claim reciting the
structure of claim 1 in which d was omitted or
replaced by e would not be a proper dependent
claim, even though it placed further limitations
on the remaining elements or added still other
elements.

The fact that a dependent claim which is oth-
erwise proper might require a separate search
or be separately classified from the claim on
which it depends would not render it an im-
proper dependent claim, although it might
result in a requirement for restriction.

The fact that the independent and dependent
claims are in different statutory classes does not,
in itself, render the latter improper. Thus, if
claim 1 recites a specific product, a claim for the
method of making the product of claim 1 in a
particular manner would be a proper dependent
claim since it could not be infringed without in-
fringing claim 1. Similarly, if claim 1 recites a
method of making a product, a claim for a prod-
uct made by the method of claim 1 could be a
proper dependent claim. On the other hand,
if claim 1 recites a method of making a specified
product, a claim to the product set forth in claim
1 would not be a proper dependent claim if the
product might be made in other ways. Note,
that since Rule 75(c) requires the dependent
claim to "further restrict" the preceding claim,
this Rule does not apply to product-by-process
claims.

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### CLAIM FORMTAND ARRANGEMENT

A dependent claim 2 could reed as follows;

2\. The product of claim 1 in which

Å dependent claim cannot directly refer book
to two or more preceding clauns. For example,
a claim reading as follows: roda? A MAR )

7.A machine as specified in claims 5 or 6 (or,
5 and 6) in which

is not permitted. Such a claim disguises the
true number of claims, since it is in reality two
claims. It is also alternative.

However, a series of dependent claims is per-
missible in which a dependent claim refers to a
preceding claim which, in turn, refers to an-
other preceding claim.

A claim which depends from a dependent
claim should not be separated therefrom by any
claim which does not also depend from said
"dependent" claim. It should be kept in mind
that a dependent claim may refer back to any
preceding independent claim. These are the
only restrictions with respect to the sequence of
claims and, in general, applicant's sequence
should not be changed. See 608.01(j).

### REJECTION AND OBJECTION

If the base claim has been cancelled, a claim
which is directly or indirectly dependent thereon
should be rejected as incomplete. If the base
claim is rejected, the dependent claim should be
objected to rather than rejected, if it is otherwise
allowable.

Examiners are reminded that a dependent
claim is directed to a combination including
everything recited in the base claim and what is
recited in the dependent claim. It is this com-
bination that must be compared with the prior
art, exactly as if it were presented as one inde-
pendent claim.

Dependent claims should be carefully checked
when claims are renumbered (Rule 126).
[R-18]

#### 608.01(c) Basis for Claim Terminol- ogy in Description

The meaning of every term used in any of
the claims should be apparent from the de-
scriptive portion of the specification with clear
disclosure as to its import, and in mechanical
cases it should be identified in the descriptive
portion of the specification by reference to the
drawing, designating the part or parts therein
to which the term applies. A term used in the
claims may be given a special meaning in the
description. No term may be given a meaning
repugnant to the usual meaning of the term.

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608.01(4)

<!-- PageHeader="PARIS, FORM AND CONTENT OD APPLICATION" -->

Usually the terminology of the original
claims follows the nomenclature of the specifi.
cation, but sometimes in amending the claims
or in adding new claims, new terms are intro-
duced that do not appear in the specification.
The use of a confusing variety of terms for
the same thing should not be permitted.

New claims and amendments to the claims
already in the case should be scrutinized not
only for new matter but also for new terminol-
ogy. While an applicant is not limited to the
nomenclature used in the application as filed,
yet whenever by amendment of his claims, he
departs therefrom, he should make appropriate
amendment of his specification so as to have
therein clear support or antecedent basis for
the new terms appearing in the claims. This is
necessary in order to insure certainty in con-
struing the claims in the light of the specifica-
tion. Ex parte Kotler 1901 C.D. 62; 95 O.G.
2684. See Rule 75, 608.01(i) and 1302.01.

Restrictive statements or express limitations
which relate to the coope of the invention
claimed, or which appear to restrict interpreta-
tion of the claims, should be omitted. If
present they will be cancelled. See 608.01(g).
[R-16]

#### 608.01(p) Completeness [R-16]

Newly filed applications obviously failing to
disclose an invention with the clarity required
are discussed in 702.01.

A disclosure in an application, to be com-
plete, must contain such description and details
as to enable any person skilled in the art or
science to which the invention pertains to make
and use the invention.

While the prior art setting may be men-
tioned in general terms, the essential novelty,
the essence of the invention, must be described
in such details, including proportions and tech-
niques where necessary, as to enable those per-
sons skilled in the art to make and utilize the
invention.

Specific operative embodiments or examples
of the invention must be set forth. Examples
and description should be of sufficient scope as
to justify the scope of the claims. Markush
claims must be provided with support in the
disclosure for each member of the Markush
group. Where the constitution and formula of
a chemical compound is stated only as a proba-
bility or speculation, the disclosure is not suffi-
cient to support claims identifying the com-
pound by such composition or formula.

A complete disclosure should include a state-
ment of utility. This usually presents no prob-

lem int mechanical comesIn chemical ,crimes,
varying degrees of specificity ere zeanired.

A disclosure involving a new chemical com-
pound "of composition must teach persons
skilled inithe art how to make the compound
or composition. Incomplete teachings may not
be completed by reference to subsequently filed
applications: If the starting material is old
but dinicult to locate in the literature, the liter-
sture citation should be incorporated into the
specification at least by reference at the time
the application is filed. In the application as
filed, preparation of a new chemical starting
material may be described generally along with
reference to a concurrently or previously filed
application by the same inventor wherein the
detailed preparation is given. If a concur-
rently or previously filed application of the
same inventor adequately discloses the prepara-
tion of the starting material, and reference is
made to such application by serial number at the
time of filing, further reference may be made by
amendment for a statement on a general method
of preparation of the starting material.

Reliance upon a copending application by a
different inventor may not ordinarily be made
for the purpose of completing the disclosure.

All essential claimed features of an invention
must be fully disclosed in the application with-
out depending upon a reference to a copending
application or to a foreign patent for com-
pleting the disclosure.

Since a disclosure must be complete as of the
filing date, subsequent publications or subse-
quently filed applications cannot be relied upon
to establish a constructive reduction to prac-
tice.

NOTE .- For problems arising from the desig-
nation of materials by trademarks and trade
names, see 608.01 (v).

608.01(q) Substitute or Rewritten
Specification

Rule 125. Substitute specification. If the number or
nature of the amendments shall render It dimcult to
consider the case, or to arrange the papers for printing
or copying, the examiner may require the entire speci-
fication or claims, or any part thereof, to be rewritten.
A substitute specification will ordinarily not be ac-
cepted unless it has been required by the examiner.

The specification is sometimes in such faulty
English that a new specification is necessary,
but new specifications cumber the record and
require additional reading, and hence should
not be required or accepted except in extreme
cases.

A substitute specification that has not been
required, and is not needed, is not entered. See
714.20.

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608.01 (9)

### MANUALI OF PATENT EXAMINING PROCEDURE

New matter in amendment, ses 008.04.
Appleation prepared for isme, see 1802.02.

608.01(s)
Derogatory Remarks
About Prior Art in Specie
fication

The applicant may refer to the general state
of the art and the advance thereover made by
his invention, but he is not permitted to make
derogatory remarks concerning the inventions
of others.

### 608.01(s) Restoration of Canceled Matter [R-16]

Canceled text in the specification or a can-
celed claim can be restored only by presenting
the cancelled matter as a new insertion. See
Rule 124, 714.24.

# 608.01(*) Use in Subsequent Applica- tion

A reservation for a future application of
subject matter disclosed but not claimed in a
pending application will not be permitted in
the pending application. Rule 79, 608.01 (e).

While a specification cannot be transferred
to another application, except to a streamlined

continuation application (901.07), drawings
may be transferred from a prior application to a
later case by the same inventor, note: 608.02(i)
to:008.02(1).

608.01 (u) Use of Formerly Filed In-
complete Application
[R-16]

Parts of an incomplete application which
have been retained by the Office may be used as
part of a complete application if the missing
parts are later supplied. See 506 and 506.01.

# 608.01(v) Trademarks and Names Used in Trade [R-16]

The expressions "trademarks" and "names
used in trade" as need below have the follow-
ing meanings:

Trademark: a word, letter, symbol or device
adopted by one manufacturer or merchant and
used to identify and distinguish his product
from those of others. It is a proprietary word
pointing distinctly to the product of one pro-
ducer.

Names Used in Trade: a nonproprietary
name by which an article or product is known

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and called among traders or workars in the art,
sithough it may not be so known by the public
generally. Names used in trade de wot point
to the product of one producer, but they iden-
tify a single article or product irrespective of
producer.

Names used in trade are permissible in pat-
ent applications if:

(1) Their meanings are established by an
accompanying definition which is guarciently
precise and definite to be made a part of a
claim, or

(2) In this country, their meanings are well
known and satisfactorily defined in the litera-
ture.

Condition (1) or (9) must be met at the
time of filing of the complete application.

## TRADEMARKS

The relationship between a trademark and
the product it identifies is sometimes indefinite,
uncertain and arbitrary. The formula or char-
soteristics of the product may change from
time to time and yet it may continue to be sold
under the same trademark. In patent specifi-
cations, every element or ingredient of the
product should be set forth in positive, exact,
intelligible language, so that there will be no
uncertainty as to what is meant. Arbitrary
trademarks which are liable to mean different
things at the pleasure of manufacturers do not
constitute such language.

However, if the product to which the trade-
mark refers is otherwise set forth in such lan-
guage that its identity is clear the Examiners
are authorized to permit the use of the trade-
mark if it is distinguished from common de-
scriptive nouns by capitalization. If the trade-
mark has a fixed and definite meaning it con-
stitutes suficient identification unless some
physical or chemical characteristic of the article
or material is involved in the invention. In that
event as also in those cases where the trademark
has no fixed and definite meaning, identification
by scientific or other explanatory language is
necessary.

Where the identification of a trademark is
introduced by amendment it must be restricted
to the characteristics of the product known at
the time the application was filed to avoid any
question of new matter.

If proper identification of the product sold
under & trademark, or a product referred to
only by a name used in trade, is omitted from
the specification and such identification is
deemed necessary under the principles set forth
above, the Examiner should hold the disclosure

insufficient and reject on the guiandofithaut-
ficient disclosure any claims ? bešedodal the
identification of the product. mately by/frade-
mark or by the name msed in eredaidolif the
product cannot be otherwise defined, an amend-
ment defining the process of its manufacture
may be permitted. "Such amendmerits must be
supported by satisfactory showings establish-
ing that the specific nature or process of monu-
facture of the product as set forth in the
amendment was known at the tinis of fling of
the application.

Although the use of trademarks having def-
nite meanings is permissible in patent ap-
plications, the proprietary nature of the marks
should be respected and every effort made to
prevent their use in any manner which might
adverasly affect their validity! es trademarks.
The Examiner should not permit the use of
language such as the product x (& descrip-
tive name) commonly known as Y (trads-
mark)" since such language" does not bring
out the fact that the latter is a trademark.
Language such as "the product X (u deskrip-
tive name) sold under the trademark Y" is
permissible.

The use of a trademark in the title of an
application should be avoided as well as the
use of a trademark coupled with the word
"type"; i.e., "Band-Aid type bandage."

PARTIAL LIST OF TRADEMARKS

Nora: Any question as to whether or net an
apparent trademark is in fact a trademark
should be referred to the Trademark Classifica-
tion and Search Division for determination. If
it is a trademark, the first letter, at least, should
be capitalized.

Acoustical Labyrinth

Adrenalin

Aerosol (wetting agents)

Alemito

Alpha (Protein)

Al Si Mag

Alumel
Alundum

Ameripol

Anchor (fence)

Aquadag

Areskap
Aresket

Aresklene

Atraumatic

Bactratycin
Bakelite
Band-Aid
Bathinette
Benzedrine

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Que Bituristicy ada no looier bas Aneboilini

abe Blue Rock (clay target); to goitsoliinanii
ar: Bobbie (bobby pin) man arnt vd 10 21801

Calgon
Calrod

Camoquin

Carbitol

Carbofrex

Carborundum

Catalin

Caterpillar (trend)

Celanese

Celactic

Cellosolve

Cellucotton (surgical dressing)

Celluloid (plastics)

Celotex

Chevron (machinery packing)

Chlorex

Chloromycetin

Chromas

Chromel (alloy)

Coca-Cola

Coke (beverage)

Corex

Cumar

Cyclone (fence)

Dacron

Danforth (anchor)

Decalin

Deepfreeze (home freezer)

De-Ion

Di-Phenolic Acid

Dry Ice

Dual-Seal

Dulux

Duraloy

Duraplex

Eidophor

Electro-Silicon

Elon

Emulphor

Erector

Fascinator

N.D.G.A.

Fathometer

Nekal

Fiberglas

Neon (signs)

Filtrol

Nichrome

Nico-fume

Ni-Resist

Nitralloy

Nonex

Oilgear

Orion

Paraplex
Perbunan

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Sss Go -Kart sow To arebati goods balles bos
silde@yabpiletrwocol os ed ton vant si dydodjia

Hervor'ya
Hipandl
Hovercraft

prod dod ,mouborq ono to soubory ed of

Humatin
Hydrafrac

Hydroseal

Hyex

Igepon

Instant On

Invar

Intertype (typesetting)

Iron-Clad (Gloves)

Ironclad (Batteries)

Jeop
Jet Line

Kaltron

Kodak

Kodapak

Koroseal

Kover

Laminac

Lastax

Lavite

Leatherette

Lexide

Link (trainer)

Linotype

Liquid Lead (ink)

Lucite

Lux

Masonite

Methocel

Micarta

Microballoon (s)

Modutrol

Monel

Monotype

Mycalex

Mylar

Flexowriter

Fluorophene

Foamite

Formica

Freon

Gantrisin
GD
Geon
Glyptal

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# PARTS, FORM AND CONTENT OF APPLICATION

608.02

Perf-a-tape

Tedon

Permutit

Teletype

Phosphor bronze

Teletypesetter

Photostat

Tenderay

Photronic

Textolits

Phytin (pharmaceutical product)

Thenfadil

Ping-pong

Thermit

Pitocin

Thermos (vacuum bottle)

Plasmatron

Thiokol

Plastacele

Transite

Plexiglas

Triton

Pliofilm

Trombone (sprayer)

Pliolite

Uformite

Pliowax

Urotropin

Pluronic

Polane

Vacumatic

Polaroid

Varsol

Poly foam

Vaseline

Polymerin

Verichrome

Polynosic

Victrola

Porocel

Vinylite

Primacord

Vistac

Priscoline

Vistanex (-Medium)

Push-Back (theatre chairs)

Votator

Pyralin

Vultex

Pyrex

Vycor

RAM (Random Access Memory)

Weather-Ometer

Refinite

Zip

Resinox Revertex

Zipper (heels)

Ripple (sole)

608.02 Drawing

Rocklath (plaster-board)

Rockwell (tester)

Rule 81. Drawings required. The applicant for pat-

ent Roquefort

is required by statute to furnish a drawing of his

Invention whenever the nature of the case admits of

Santomerse it;

this drawing must be filed with the application.

Scintillometer

Illustrations facilitating an understanding of the in-

Scotch (pressure sensitive tape, etc.)

vention (for example, flow sheets in cases of processes,

Shakeproof

and diagrammatic views) may also be furnished in

Sheetrock the

same manner as drawings and may be required by

Snap-on the

Office when considered necessary or desirable.

Solvesso

Rule 86. Draftsman to make drawings. (8) Appli-

Sonar

cants are advised to employ competent draftamen to

Speed-Nut (fastener)

make their drawings.

Steel-Flex

(b) The Office may furnish the drawings at the ap-

Stellite

plicant's expense as promptly as its draftsmen can

Steri-Pad (surgical dressing)

make them, for applicants who cannot otherwise con-

Stiflex

ventently procure them. (See rule 21.)

Storm Choke

NOTE

Straddle Truck

Styrofoam

Standards for drawings, Rule 84.

Sylphon

A booklet "Guide for Patent Drafts-

Sylphrap

men" is available from the Superintendent

Synchrotester

of Documents, U.S. Government Printing

Synpor

Office, Washington, D.C. 20402, price 20

Syntron

cents.

Tagalong

Design patent drawings, Rule 152, 1503.02.

Talon (fastener)

Plant patent drawings, Rule 165.

Technicolor

Reissue application drawings, 608.02 (k).

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608.42300

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Each sheet of drawing must bear the "Ap,
proved" stamp of the Draftsman before the
application is allowed.

The Record Section of the Patent Reference
Branch has charge of the drawings in patented
casos. Canceled sheets, however, are not"re-
tained with the patented drawings but are filled
with the abandoned files and drawings in the
Abandoned Files Unit.

See: Correction of drawings, 608.02(p).
Prints, preparation and distribution, 508,
608.02(m). Prints, Return of drawing,
608.02(y). Signature to the drawing is treated
in 605.04(h). For pencil notations of classifi-
cation and name or initials of assistant exam-
iner to be placed on drawings see 717.03.

The filing of a divisional case under the
provisions of the second sentence of Rule 147
(unexecuted case), does not obviate the need
for formal Bristol board drawings. Ordi-
narily, prints of the original formal drawings
will suffice for examination. See 608.02(b).

APPLICATIONS FILED WITHOUT DRAWINGS

Applications filed without drawing are ini-
tially inspected to determine whether or not
a drawing, under the statute, is necessary be-
fore the applicant can be given & filing date.
Doubtful cases are referred to the Office of the
Director for decision as to the need for such a
drawing. It has long been the practice to
accept a process case (that is, a case having
only process or method claims) which is filed
without a drawing. The same practice has been
followed in composition cases. Other situa-
tions where drawings are usually not consid-
ered essential for a filing date are :

I. Coated articles or products. Where the
invention resides solely in coating or impreg-
nating a conventional sheet, e.g., paper or
cloth, or an article of known and conventional
character with a particular composition, the
application containing claims to the coated or
impregnated sheet or article, unless significant
details of structure or arrangement are in-
volved in the article claims.

II. Articles made from a particular mate-
rial or composition. Where the invention con-
sists in making an article of a particular mate-
rial or composition, unless significant details
of structure or arrangement are involved in
the article claims.

III. Laminated structures. Where the
claimed invention involves only laminations of
sheets (and coatings) of specified material un-
less significant details of structure or arrange-
ment (other than the mere order of the layers)
are involved in the article claims.

IV. Articles, apparatus or systems where
sole distinguishing feature is presence of a par-
ticular material. Where the invention resides

solely in the use of a particular material in an
otherwise old article, apparatus or system re-
cited broadly in the claims; for example,

a. Hydraulic system distinguished solely by
the use therein of a particular hydraulic fuid:
b. Packaged sutures, wherein the structure
and arrangement of the package are conven.
tional and the only distinguishing feature is
the use of & particular fluid.

## ILLUSTRATION SUBSEQUENTLY REQUIRED

The acceptance of an application without a
drawing does not preclude the Examiner from
requiring an illustration in the form of a
drawing under the second sentence of Rule 81.
In requiring such a drawing, the Examiner
should clearly indicate that the requirement
is made under the second sentence of Rule 81,
and be careful not to state that he is doing
so "because the nature of the case admits" of
a drawing, as that might give rise to an erro-
neous impression as to the completeness of the
application when filed. Examiners making
such requirements are to specifically require, as
a part of the applicant's next response, at least
an ink sketch or permanent print of any draw-
ing proposed in response to the requirement,
even though no allowable subject matter is yet
indicated. This will afford the examiner an
early opportunity to determinee the sufficiency
of the illustration and the absence of new mat-
ter. See Rule 118. The description should of
course be amended to contain reference to the
new illustration. This may obviate further
correspondence where an amendment places the
case in condition for allowance, except for the
formal requirement relating to the drawing.
In the event of a final determination that there
is nothing patentable in the case, the sketch and
authorization for entry will not be forwarded to
the Drafting Branch.

## PHOTOGRAPHS

Clearly, photographs are not drawings.
Photographs are not acceptable for a filing
date nor for any purpose except as exhibits
unless they come within the special categories
set forth in the paragraph immediately below.
Photolithographs of photographs and photo-
graphs mounted on proper size Bristol board
are never acceptable. See In re Taggart et al.,
1957 C.D. 6; 725 O.G. 397 and In re Myers,
1959 C.D. 2; 738 O.G. 947.

## SPECIAL CATEGORIES

The Patent Office is willing to accept black
and white photographs or photomicrographs
(not photolithographs or other reproductions
of photographs) printed on sensitized paper in
lieu of India ink drawings, to illustrate inven-

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608:02(*)

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tions which are incapable of being docurately
or adequately depicted by India ink drawings,
restricted to the following categories: crystal-
line structures, metallurgical microstructures,
textile fabrics, grain structures and ornamen-
tal effects.1.The photographs or photomicro-
graphs must show the invention more clearly
than they can be done by India ink drawings
and otherwise comply with the Rules concern-
ing drawings.

Such photographs to be acceptable must be
made on photographic paper having the fol-
lowing characteristics which are generally ree-
ognized in the photographic trade: double
weight paper with a surface described as
smooth; tint, white.

If the drawings are informal, but may be
admitted for examination purposes the Drafts-
man indicates on 8-part form, PO-948, what the
informalities are and whether they can be cor-
rected or whether new drawings are required.
In either case the drawings are accepted as satis-
fying the requirements of Rule 51. The draw-
ings, after being microfilmed, are then returned
to the Application Branch to which Branch
form PO-948 is also sent for insertion in the
appropriate application.

## NOTIFYING APPLICANT

The Examiners are directed to advise the
applicants (see 707.07(a) ) in the first Office ac-
tion of the conditions which render the draw-
ing informal, and when indicated, that such
drawings can be corrected so as to be acceptable,
but will not, in any case, require new drawings
because of their execution unless the necessity
therefore shall have been indicated by the Head
of the Drafting Branch.

As soon as allowable subject matter is found,
the requirement for new drawings should be
insisted upon. Before writing the action, the
Drafting Branch should be consulted to ascer-
tain if, at that time, the new drawing could
be prepared by the Patent Ofice on request and,
if so, the estimate of cost should be included
in the action. Otherwise, the action should
state:

"Applicant is advised to employ the serv-
ices of a competent patent draftsman out-
side the Office, as the Drafting Branch of
the Patent Office does not have the facilities
at the present time, for preparing new
drawings".

This procedure, by avoiding a fruitless request
to have the Drafting Branch prepare the new
drawing, will promote earlier issuance of the
patent.

WAITING on Consadysoms ; 003

The Draftsman has relaxed certain of the line
detail requirements of the drawings.

In order to eliminate unnecessary require-
ments for drawing corrections, especially in
applications filed prior to January 1965, the
Examiner should inspect the drawing and, in
the event that any of the following objections.
made by the Draftsman appear in the examiner's
opinion to be of a waivable nature, should con-
sult the Draftsman to ascertain whether the
objection (s) can be waived instead of requiring
applicant to make correction :

(1) Lead lines too long.

(2) Heavy shade lines required.

(3) Hatching required.

(4) Lines rough and blurred.

(5) Pale lines (if the prints indicate the lines
reproduce sufficiently).

(6) Poor paper (if drawing is otherwise
acceptable).

The following objections if made by the
Draftsman must be corrected and cannot be
waived:

(1) Space for heading required.

(2) Ink drawings required.

(3) Paper undersize.

(4) Signature on wrong end of sheet.

(5) Insufficient margin.

(6) Borderline not in ink.

## ADDITIONAL ILLUSTRATION

If there is only one figure, it should not be
designated "Fig. 1." The Examiner may re-
quire additional drawings for the purpose of
illustrating the disclosure.

When a necessary additional illustration is
small and may be added to the drawings on
file, an additional sheet of drawing should not
be required, but the Examiner will ask that the
proposed illustration be shown in a sketch,
which showing will be transferred to one of the
sheets of the drawings.

For the handling of additional, duplicate, or
substitute drawings, see 608.02 (h).

## 608.02(a) New Drawing-When Re- quired

### PHOTOPRINTS AS DRAWINGS

If photoprints are submitted with a new case
in lieu of formal drawings and such prints are
not only readable but reproducible, the Appli-
cation Branch notifies applicant that the case is
accepted for filing only and that, to be entitled
to examination, formal drawings complying
with Rule 84 must be filed within 60 days from
the date of the letter of notification. The for-
mal drawings when received are compared with

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the prints for identity of disclosure/ The com-
parison charge is $10 per hour or fraction
thereof per soplication. The papers filed and
the responsibility for processing will remain
with the Application Branth until the correct
fling date has been finally established.

The Draftsman is the judge of drawings, as
to the execution of the same, and the arrange-
ment of the views thereon, while the Examiner
is the judge as to the sufficiency of the showing.
The drawings, upon receipt of an application,
are sent from the Application Branch to be in-
spected by the Draftsman. If satisfactory, he
stamps on each sheet "Approved by Drafts-
man."

### 608.02(b) Informal Drawings

Rule 85. Informal drawings. The requirements of
Rule 84 relating to drawings will be strictly enforced.
A drawing not executed in conformity thereto may be
admitted for purpose of examination, but in such case
the drawing must be corrected or a new one furnished,
as required. The necessary corrections will be made
by the Office upon applicant's request and at his ex-
pense. (See Rule 21.)

In instances where the drawing is such that
the prosecution can be carried on without the
corrections, applicant is informed of the reasons
why the drawing is objected to, and that the
drawing is admitted for examination purposes
only (see 707.07(a)). To be fully responsive,
an amendment must include a request for draw-
ing corrections when there is an indication of
allowable subject matter. See Rule 111 (b) and
832 O.G. 1785.

608.02(c) Drawings or Print Always
Kept in Examining Group

The photocopies of the drawings must always
be kept on top of the papers on the right of the
file wrapper so as to be visible upon opening
the wrapper and easily detached. This photo-
copy (or "print") is placed in the drawing
cabinet when the corresponding drawing is re-
moved. When the examiner removes the draw-
ing from the cabinet to prepare an application
for issue, the print of the drawing must be
taken from the application file and placed in
the drawing cabinet to take the place of the
original drawing. The print should remain in
the drawing cabinet during the period the ap-
plication is being revised for issue and until the
hard copy of the patent is received in the group
or the application becomes forfeited. The
clerk should, of course, add any necessary nota-
tions on the print at the time the application
is forwarded to the Issue and Gazette Branch.

This practice will insure that the drawing is
available at all times in the drawing cabinet

for interference searches. This is of pertiou-
lar importance in groups where there may be
a backlog of applications awaiting revision for

AFTER PATENT ISSUES in) oli1zet

Immediately upon the receipt of the hard
copies of patents issued by the examining group,
the docket clerk should have the corresponding
prints pulled, marked in the apper left hand
corner with the patent number and sent to the
Record Room.

No application should be sent to issue or to
abandoned files unless the original drawing, if
any, accompanies it.

### 608.02(d) Complete Illustration in Drawings

Rule 83. Content of drawing. (a) The drawing must
show every feature of the invention specified in the
claims. However, conventional features disclosed in the
description and claims, where their detailed lilustration
is not essential for a proper understanding of the inven-
tion, should be illustrated in the drawing in the form of
a graphical drawing symbol or a labeled representation
(e.g. a labeled rectangular box).

(b) When the Invention consists of an Improvement
on an old machine the drawing must when pousible
exhibit, in one or more views, the improved portion
itself, disconnected from the old structure, and also
in another view, so much only of the old structure as
will suffice to show the connection of the invention
therewith.

Likewise, any structural detail that is of
sufficient importance to be described should be
shown in the drawing. (Ex parte Good. 1911
C.D. 43: 164 O.G. 739.)

608.02(e) Examiner Determines
Completeness of Drawings

The Examiner should see to it that the fig-
ures are correctly described in the brief de-
scription of the specification and that the
reference characters are properly applied, no
single reference character being used for two
different parts or for a given part and a modi-
fication of such part. Every feature covered
by the claims must be illustrated, but there
should be no superfluous illustrations.

### 608.02(f) Modifications in Drawings

Modifications may not be shown in broken
lines on figures which show in solid lines
another form of the invention. Ex parte
Badger, 1901 C.D. 195; 97 O.G. 1596.

All modifications described must be illus-
trated, or the text canceled. (Ex parte Peck,
1901 C.D. 136; 96 O.G. 2409.) This require-

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008.02(1)

<!-- PageHeader="PARTS, FORM AND CONTENT OF APPLICATION" -->

ment does not apply to s mere reference to
minor variations nor to well-known and con-
ventional parts.

608.02(g) Illustration of Prior Art

Figures showing the prior art are usually un-
necessary and should be canceled. Ex parte
Elliott, 1904 C.D. 103; 109 O.G. 1837. How-
ever, where needed to understand applicant's
invention, they may be retained if designated
by a legend such as "Prior Art."

608.02(h) Additional, Duplicate or
Substitute Drawings

When an amendment is filed stating that at
the same time substitute or additional sheets
of drawings are filed and such drawings have
not been transmitted to the examining division,
the docket clerk in the examining division
should call the Application Branch before en-
tering the amendment to ascertain if the draw-
ing was not received. In the next communica-
tion of the Examiner the applicant is notified
if the drawings have not been received.

Additional and substitute drawings are routed
through the Drafting Branch where any defects
in execution will be noted. If there are none,
they will be stamped, "APPROVED BY
DRAFTSMAN". When such drawings are
considered by the Examiner, it should be kept
in mind that the "APPROVED" stamp applies
only to the size and quality of paper, lines rough
and blurred and other details of execution. The
Examiner should not overlook such factors as
new matter, the necessity for the additional
sheets and consistency with other sheets. Clerks
will routinely "enter" all additional and sub-
stitute sheets on the file wrapper. If the Exam-
iner decides that the sheets should not be
entered, applicant is so informed, giving the
reasons. The entries made by the Clerk will
be marked "(N.E.)".

If an additional sheet of drawing is con-
sidered unnecessary and the original drawing
requires alterations which are taken care of in
the proffered additional sheet, the latter may
be used in lieu of the usual sketch required in
making the correction of the original drawing.
For return of drawing, see 608.02(y).

### 608.02(i) Transfer of Drawings From Prior Applications

Rule 88. Use of old drawings. If the drawings of a
new application are to be identical with the drawings

of a previous application of the applicant on dle in
the Office, or with part of such drawings, the okd draw-
ings or any sheets thereof may be used I? the prior
application is, or is about to be, abandoned, or if the
sheets to be used are cancelled in the prior applica-
tion. The new application muet be accompanied by a
letter requesting the transfer of the drawings, which
should be completely identified.

Formal transfer of drawings between appli-
cations under Rule 88 are processed in the Ex-
amining Groups unless the later filed case is &
newly submitted application that has not been
forwarded to an Examining Group.

Transfer of all drawings from one pending
application to another will be made only after
the one application has been abandoned.

NEWLY SUBMITTED APPLICATION

The transfer of drawings to newly submitted
applications that have not been forwarded to
the Examining Group will be effected by the
Application Branch if the application is other-
wise entitled to receive a filing date. A new
application filed without drawings but having
a request for transfer of drawings from a pond-
ing application must be accompanied by a writ-
ten declaration of abandonment under Rule 138.
In order to insure copendency, such an abandon-
ment may be worded as to become effective only
after the transfer of the drawings has taken
place. Since the drawings will be transferred
from the earlier application to the new applica-
tion as of the filing date of the new application,
it is not necessary to submit or order photoprints
for the new application.

The above practice applies to transfer of
drawings from any application except where
the issue fee has been paid, in which case an
express abandonment (Rule 138) must be filed
together with a showing why the proposed ac-
tion was not taken earlier. See Rule 313.

The name of the attorney on the drawing
being transferred is not changed. See 608.02
(u).

When an application becomes a patent, any
canceled sheet of drawing then in the case is
sent to the abandoned files. Such canceled
sheet is available for applicant's use in another
application directed to its subject matter. It
follows that, except as provided in Rule 174,
drawings printed in a patent may not be trans-
ferred to a subsequent case.

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(608:03(1)

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608.02(j) Transfer of Canceled
Sheets of Drawings to Divi-
stonet Application

In the case of a divisionsi application, if the
drawing and descriptive matter pertaining
thereto have been canceled from the parent
case, the canceled sheet or sheets of drawing
may be withdrawn and used as the original
drawing of the divisional case. The sheets in-
volved should be taken to the Drafting Branch
for erasure of the "CANCEL per" stamp.

### 608.02(k) Transfer of Drawings to Reissne

Extract from Rule 174. The drawings upon which
the original patent was issued may be used in reissue
applications if no changes whatsoever are to be made
In the drawings. In such cases, when the reissue ap-
plication is filed, the applicant must submit & tempo-
rary drawing which may consist of a copy of the printed
drawings of the patent or a photoprint of the original
drawings securely mounted by pasting on sheets of
drawing board of the size required for original draw-
ing, or an order for the same.

In a reissue application, the prints of the
original or patented drawing may be used for
examination purposes, and the formal transfer
of the original drawing to the reissue applica-
tion made when the reissue application is ready
for issue, provided no change whatever, even so
much as the priming of a reference character,
or correction of an obvious error, is made in
the drawing. If there is to be any change

whatsoever in the drawing, a new drawing for
the reissue must be filed.

If there is more than one sheet of original
drawing, & required change on any sheet will
preclude the use of the original drawings which
must be kept in the condition existing at the
time of issue of the original patent. See
1401.05.

Transfer of the drawing is made as forth in
608.02(i), notation thereof being entered on the
file wrapper of the original application.

### 608.02(1) Transfer of Drawings Made But Abandonment Delayed

Under the old policy, transfer of drawings
was permitted with a letter of abandonment
being filed at a later time or allowing the earlier
filed application to become abandoned. In ap-
plications which have had their drawings trans-
ferred under this old policy and have not been
abandoned by the time it is normally taken up
for action, a latter limited to the following
statement should be written therein by the
examiner:

"In view of the transfer on . of the draw-
(date)
ings from this application to application Serial
No. _ , pursuant to applicant's request under
Rule 88 and the intention to abandon this ap-
plication, the filing of the express abandonment
of the instant application is required.

A SHORTENED STATUTORY PERIOD
FOR RESPONSE TO THIS ACTION IS
SET TO EXPIRE THIRTY DAYS FROM
THE DATE OF THIS LETTER.

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des:92(a)

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609.02(d) "Prints sab adi zi montado
Preparation and distribution of prints ie dis-
cuused in 508.

Photographic printe are made of the draw-
ings of an acceptable application. Prints of
the drawings as Gled are entered in the appli-
cation, given a paper number and kept on top
of the papers on the right side of the file
wrapper, see 717.01 (b).

All prints and inked sketches subsequently
filed to be part of the record are endorsed with
the data of their receipt in the office and given
their appropriate paper number.

The print being thus an official paper in the
record should not be marked or in any way
altered. The Bristol board drawing, of course,
should not be marked up by the Examiner.
Where, as in an electrical wiring case, it is
desirable, to identify the various circuits by
different colors, or in any more or less com-
plex case, it is advantageous to apply legends,
arrows or other indicia, an additional print for
such use should be ordered by the Examiner
and placed unofficially in the file.

Prints remain in the file at all times except
as provided in 608.02(c).

## 608.02(n) Duplicate Prints in Patent- ability Report Cases

In Patentability Report cases having draw-
ings, the Examiner to whom the case is as-
signed will obtain a duplicate set of prints of
the drawing for filing in the group to which
the case is referred.

When a case that has had Patentability Re-
port prosecution, is passed for issue or becomes
abandoned, notification of this fact will at once
be given by the group having jurisdiction of
the case to each group that submitted a P. R.
The Examiner of each such reporting group
will note the date of allowance or abandonment
on his duplicate set of prints. At such time as
these prints become of no value to the report-
ing group, they may be destroyed.

608.02(o) Dates Entered on Drawing

The Mail Branch stamp and the "Corrected"
stamp applied by the Drafting Branch are im-
pressed on the back of the drawings.

& The only date entered on the front of the
drawings is the date of mailing of the Notice
of Allowance, which is done by the Issue and
Gazette Branch. Under current practice, the
Clerk of the Examining Group does NOT
enter any date when the case is "sent to issue".
Approval of the Drafting Branch is indicated
by & legend associated with the "O.G. Fig.
Cl. ... Sub. . .. " stamp on the front of each un-
canceled sheet.

### 608.02(p) Correction of Drawings

Rule 125. Amendments to the drawing. (a) No
change in the drawing may be made except by permis-
sion of the Office. Permissible changes in the con-
struction shown in any drawing may be made only by
the Office. A sketch in permanent ink showing pro-
posed changes, to become part of the record, must be
filed. The paper requesting amendments to the draw-
ing should be separate from other papers. The draw-
ing may not be withdrawn from the Office except for
signature.

(b) Substitute drawings will not ordinarily be ad-
mitted in any case unless required by the Office.

NOTE .- Correction is deferrable, see 608.02
(b), correction at allowance and issue, see
608.02(w) and 1302.05.

A canceled figure may be reinstated. An
amendment should be made to the specification
adding the brief description.

## 608.02(q) Conditions Precedent to Amendment of Drawing

Correction and alterations in the disclosure
of the drawings of a pending application may
be made only under the supervision of, or by
the Chief Draftsman.

No alterations as above indicated will be
permitted unless required by an Examiner's
letter in each case, or proposed in writing by
applicant or his attorney. In either case the
alterations or corrections as indicated in the
sketches filed after the requirement by the
Examiner, or with the request of the applicant
or his attorney receive the written approval
of the Examiner before the case is sent to the
Chief Draftsman.

NOTE .- Disposition of Orders for Amend-
ment of Drawing, 608.02(x).

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808.02(9)

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608.02(r) brSeparate Letter to Drafts-

Amy request by the applicant for amendment
of the drawing to cure defects must be em-
bodied in a osparate letter for the Chief
Draftsman. Otherwise the case, unless in
other respects ready for issue, will not be for-
warded by the Examiner to the Drafting
Branch, snd applicant will be so advised in
the next action by the Examiner. (Basis:
Order No. 4009.)

Norz .- Changes which may require sketches,
608.02(v).

## 608.02(s) Estimating Cost of Correct- ing Drawings

Files and drawings sent from the Examin-
ing Group to the Draftsman for estimating
the cost of correcting the drawing or of mak-
ing new drawings will be retained by the
Draftsman only long enough to estimate the
cost of the work.

If the Examiner approves of & proposed
correction of a drawing for which an estimate
is requested he will note his approval on the
order for the estimate, attach the order to the
outside of the file and have the Docket Clerk
of the Group forward the file and drawing
to the Draftsman. The Draftsman will note
the estimate on the order and also on the
drawing. If the application is not up for ac-
tion the Draftsman sends the estimate to the
Applicant. If the application is up for action
the Draftsman does not send an estimate, but
the Examiner should include the estimate in
the next action. (Basis: Notice of July 13,
1906.)

When giving an estimate in a case where no
allowable subject matter has been found the
Examiner should inform the applicant that no
correction will be made until & claim is found
to be allowable. If specifically requested by
the applicant, the drawing will be corrected
whether or not a claim is allowable. (Basis:
Notice of February 1, 1932.)

If an application is ready for allowance ex-
cept for a correction required by the Official
Draftsman, such as in a case where the lines
are rough and blurred, the Examiner will ascer-
tain (by calling Ext. 2589 or 2887) whether
or not the attorney in the case has a De-
posit Account. If there is no such account,
the Examiner will obtain an estimate of the
cost of this work from the Draftsman even
though applicant has not requested such an
estimate. Including the estimate in the final
requirement for correction of the drawing may
avoid prolonging the prosecution.

608.02 (t)w CRncekniew bf Figurw.800

Cancelation of one or more figures which do
not occupy entire sheets of the drawings is
done by the clerk in the Examining Group who
encloses a figure and its legend with s rod ink
line., No portion of the figure itself should be
crossed by the red line. The words "CANCEL
per" and the date of the amendment directing
the cancelation or the date that substitute sheets
are filed should be written in red ink within the
red line. Cancelation of an entire sheet of draw-
ings is done by stamping the words "CANCEL
per" in the top right corner of the drawing
within the marginal line.

When the cancelation of some of the figures
from one sheet of drawings has left the re-
maining figures with an inartistic arrangement,
the Chief Draftsmen should be consulted as to
whether the remaining figures should be trans-
ferred to other sheets already in the case or
shown in additional drawings Cancelation of
a figure may necessitate renumbering of the
remaining figures. (Basis: Order No. 1862.)

## 608.02(u) Changing Name of Attor- ney on Drawing Forbidden

Writing upon the drawings the names of
attorneys subsequently appointed, so as to
make it appear that their names were present
when the drawings were originally filed, is
prohibited.

This prohibition applies also where a draw-
ing is transferred from one case to another
having a different attorney. (Order No. 480,
Revised.)

## 608.02(v) Drawing Changes Which Require Sketches

When changes are to be made in the drawing
itself, other than mere changes in reference
characters, designations of figures, or inking
over lines pale and rough, a print or pen-and-
ink sketch showing such changes in red ink
must be filed. Ordinarily, broken lines may
be changed to full without a sketch.

Sketches filed by an applicant and used by
the draftsman for correction of the drawing
will not be returned. All such sketches must
be in ink or permanent prints. (Basis: Or-
der No. 4009).

A pencil sketch that is otherwise acceptable
or a blueprint with the changes indicated in
pencil, may be inked in by the Office Drafts-
man at applicant's request and at his expense.

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008:02(9)

608.02(w):Drawing, Changes :Which
May Be Made by Examin-
er's Amendment Without
a Sketch

Where an application is ready for issue ex-
cept for a slight defect in the drawing not
involving change in structure, the Examiner
will prepare an Examiner's Amendment indi-
cating the change made and note in pencil on
the drawing the addition or alteration to be
made and send the drawing by the file clerk to
the Draftsman for the required correction.

As a guide to the Examiner the following
corrections are illustrative of those that may
thus be made:

1\. Adding two or three reference characters
or exponents.

2\. Changing one or two numerals or figure
ordinals (Quality of paper being a factor).

3\. Removing superfluous matter, e.g., Figure
and ordinal where all but one figure have been
canceled.

4\. Adding or reversing directional arrows.

5\. Changing Roman Numerals to Arabic Nu-
merals to agree with specification.

6\. Adding section lines or brackets, where
easily executed.

7\. Making simple changes in Inventor's
name (not his signature).

8\. Changing lead lines.

9\. Correcting misspelled legends. (Basis:
Order No. 4009.)

In the event that several different kinds of
changes are required or any of the listed
changes are time consuming, an Examiner's
Amendment should not be made.

## 608.02(x) Disposition of Orders for Amendment of Drawing

Where the ordered correction of the drawing
in a case up for action by the Examiner is ap-
proved, the application and drawing are for-
warded to the draftsman provided there is an
allowable claim or there has been a specific
request by applicant that the drawing be cor-
rected regardless of whether or not a claim has
been allowed (608.02(s). Applicant's letter
to the draftsman is attached to the outside of
the file and the Examiner writes on said let-
ter "approved", with the date of approval and
his initials, attaching, if appropriate, a "Spe-

cisliter (PO.004)) If rough and blurred lities
are to be corrected, the Examiner should at that
time indicate in the margin the figure to be
printed in the O.G.l (Basier Notice of Jan-
uary 14, 1965. It is not necessary to carry such
files to the Draftsman. Messenger envelopes
should be used. After the drawing has been
corrected, the Draftsman stamps the letter to
the Draftsman and the back of the drawing
CORRECTED and returns the case to the
examiner.

NEW DRAWINGS PREPARED BY PATENT OFFICE

When new drawings have been required in
pending applications and have been prepared by
the Office Draftsman, they are not sent to the
applicant for his signature but a copy (print)
is sent to him for his file. The name of the
inventor(s) will be printed on the drawings by
the Office Draftsman.

In the event that the application is in condi-
tion for allowance, the application can be sent
to issue immediately after the drawing is pre-
pared. (Basis: Notice of Jan. 6, 1966.)

CORRECTION NOT APPROVED

Where the correction is not approved, for
example, because the proposed changes are er-
roneous, or involve new matter or (although
otherwise proper) do not include all necessary
corrections, the case and request for corre tion
of drawing are not sent to the draftsman. The
Examiner's reasons for not approving the cor-
rections to the drawing should be set forth
in the Office action. (Basis: Notice of Febru-
ary 1, 1932, Revised.)

### 608.02(y) Return of Drawing

Rule 87. Return of drawings. (a) The drawings of
an accepted application will not be returned to the ap-
plicant except for signature.

A photographic print is made of the drawing of an
accepted application.

If there is an accepted drawing in the case,
other drawings (except those originally filed)
that have been finally denied admission will be
returned to the applicant only at his request.

Such a request must be filed within a reason-
able time; otherwise the drawing may be dis-
posed of at the discretion of the Commissioner.

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(s)808.04

When a drawing is to be returned, the file,
the Examiner's letter stating that the draw-
ing is being returned, and the drawing are
taken to the Drafting Branch where the letter
will be stamped and the drawing returned.
The letter is mailed by the Examining Group.

Before drawings are returned prints are made
and put in the application file.

608.03 Models, Exhibits, Specimens

Rule 91. Modele not generally required as part of
application or patent. Models were once required in
all cases admitting a model, as a part of the applica-
tion, and these models became a part of the record of
the patent. Such models are no longer generally re-
quired (the description of the invention in the specta-
cation, and the drawings, must be sufficiently full and
complete, and capable of being understood, to disclose
the invention without the ald of a model), and will
not be admitted unless specifically called for.

Rule #2. Model or exhibit may be required. A model,
working model, or other physical exhibit, may be re-
quired if deemed necessary for any purpose on exami-
nation of the application.

With the exception of cases involving per-
petual motion, a model is not ordinarily re-
quired by the Office to demonstrate the opera-
tiveness of a device. If operativeness of a
device is questioned, the applicant must estab-
lish it to the satisfaction of the Examiner, but
he may choose his own way of so doing.

A physical exhibit, not to be part of the case,
is generally not refused except when bulky or
dangerous. ?

Rule 93. Specimens. When the invention relates to
a composition of matter, the applicant may be required
to furnish specimens of the composition, or of its In-
gredients or intermediates, for the purpose of Inspec-
tion or experiment.

## 608.03(a) Handling of Models, Ex. hibits and Specimens

All models received in this Office, whether
forming part of an application, or filed upon
request from the Examiner, must be received
from the Model and Receiving Room and not
from the applicant or his agent. It is neces-
sary that all models should be taken to the
Model Room for proper recording in order
that they may be located under subsequent
inquiry and for final disposition. The Exam-
iners should, therefore, refuse to accept models
from inventors or attorneys. Models properly
received and entered in the records of the
Model Clerk will be delivered by a representa-

tive of the Property Clerk's Office or will be
picked up by the examining division.

When a model hus been received uur compli-
ance with the official requirement, the date of
its filing shall be entered on the file wrapper
of the application.

When an exhibit or model is received, it will
be forwarded from the Model Room to the
examining division. A label showing attor-
ney's name and address should be attached to
the model or exhibit so that it can be returned
after prosecution of case. If exhibit is too
large to be kept in the division during prosecu-
tion of case, it may be sent to the Model Room
with instructions to indicate whether exhibit is
to be held or returned to sender.

Rule 94. Return of models, exhibits or specimens.
Models, exhibits, or specimens in applications which
have become abandoned, and also in other applications
on conclusion of the prosecution, may be returned to
the applicant upon demand and at his expense, unless
it be deemed necessary that they be preserved in the
Office. Such physical exhibits in contested cases may
be returned to the parties at their expense. If not
claimed within a reasonable time, they may be disposed
of at the discretion of the Commissioner.

When a model is to be returned a letter
should be written to applicant by the Exam-
ining Division stating that it is being returned
under separate cover and the model room
should be properly notified to return the
model.

Norz .- Disposition of exhibits which are
part of the record, 715.07(d).

Models, exhibits and specimens may be pre-
sented to the Office for purposes of intervier
and taken away by the attorney at the end ...
the interview. See 713.08.

NOTE .- Plant specimens, 1607, Rule 166.

Rule 95. Copies of exhibits. Copies of models or
other physical exhibits will not ordinarily be furnished
by the Office, and any model or exhibit in an applica.
tion or patent shall not be taken from the Office except
In the custody of an employee of the Office specially
authorized by the Commissioner.

608.04 New Matter

Rule 118. Amendment of disclosure. In original ap-
plications, all amendments of the drawings or specifi.
cations, and all additions thereto, must conform to at
least one of them as it was at the time of the filing of
the application. Matter not found in either, involving
a departure from or an addition to the original discio-
sure, cannot be added to the application even though
supported by a supplemental oath, and can be shown
or claimed only in a separate application.

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Td: establishing-aindisclosure.applicant may
rely not only on the specification and dinwing
as filed but also on the original clairas if their
content justides it./ Notel 608.01 (1). die edi
While amendments to the specification and
claims involving new mattersare cordinarily
entered, such matter is required to be canosled
from the descriptive portion of the specifica-
tion, and the claims affected are rejected.

A "new matter" amendment of the drawing
is ordinarily not entered. Neither is an addi-
tional or substitute sheet containing "new mat-
ter" even though stamped APPROVED by the
Draftsman and provisionally entered by the
Clerk. See 608.02(h).

The Examiner's holding of new matter may
be petitionable or appealable, 608.04 (c).

NoTE .-- New matter in reissue application,
1401.07. New matter in substitute specifica-
tion, 714.20.

### 608.04(a) : Matter Not in Original Specification, Claims or Drawings

Matter not in the original specification,
claims or drawings is usually new matter.
Depending on circumstances such as the ade-
quacy of the original disclosure, the addition of
inherent characteristics such as chemical or
physical properties, a new structural formula
or a new use may be new matter. See Ex parte
Vander Wal et al., 1956 C.D. 11; 705 O.G. 5
(physical properties), Ex parte Fox, 1960 C.D.
28; 761 O.G. 906 (new formula) and Ex parte
Ayers et al., 108 U.S.P.Q. 444 (new use). For

réjection of claim involving new matter see

*Norm "Completeness of disclosure, 608.01
(p); Trademarks and trade names, 608.01(+).

608.04(*) New Matter by Prelimi-
nary Amendment

As an applicant has the right to amend be-
fore action on his case provided the number
of claims in cases filed before October 25, 1965,
is kept within the limit imposed by his
filing fee, an amendment is sometimes filed
along with the filing of the application. Such
amendment does not enjoy the status as part
of the original disclosure. Its test as to in-
volving new matter is the same as though
filed on a subsequent date. Ex parte Leish-
man, 137 Ms. 336, Pat. No. 1,581,937, and Ex
parte Adams, Pat. No. 1,789,921.

## 608.04(c) Review of Examiner's Holding of New Metter

Where the new matter is confned to amend-
ments to the specification, review of the Ex-
aminer's requirement for cancellation is by
way of petition. But where the alleged new
matter is introduced into or affects the claims,
thus necessitating their rejection on this
ground, the question becomes an appealable
one, and should not be considered on petition
even though that new matter has been intro-
duced into the specification also. Rules 181
and 191 afford the explanation of this seem-
ingly inconsistent practice as affecting new
matter in the specification.

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