600

OCR transcription for search; preserved printed pages are authoritative

# Chapter 600 Parts, Form and Content of Application

601

Petition

608.01 (b)

Abstract of the Disclosure

601.01

Amendment of Petition

608.01 (c)

Background of the Invention

601.02

Power of Attorney or Authorization of Agent

608.01 (d)

Brief Summary of Invention

602

Original Oath or Declaration

608.01 (e)

Reservation Clauses Not Permitted

602.01

Oath Cannot Be Amended

608.01 (f)

Brief Description of Drawings

802.02

New Oath or Substitute for Original

608.01 (g)

Detalled Description of Invention

602.03

Defective Oath or Declaration

608.01 (h)

Mode of Operation of Invention

602.01

Foreign Executed Oath

608.01 (1)

Claims

602.04(a)

Foreign Executed Oath Is Ribboned to

608.01 (1)

Numbering of Claims

Other Application Papers

608.01 (k)

Statutory Requirement of Claims

602.05

Oath-Date of Execution

608.01 (1)

Orignal Claims

602.05(a)

Oath In Division and Continuation Cases

608.01 (m)

Form of Claims

603

Supplemental Oath or Declaration

608.01 (n)

Dependent Claims

603.01

Filed After Allowance

608.01(0)

Basis for Terminology in Description

604

Administration or Execution of Oath

608.01 (p)

Completeness

604.01

Seal

608.01 (q)

Substitute or Rewritten Specification

604.02

Venue

608.01 (r)

Derogatory Remarks About Prior Art

604.03

Notaries and Extent of Jurisdiction

608.01 (s)

Restoration of Canceled Matter

604.03

(a) Notarial Powers of Some Military Officers

008.01 (t)

Use in Subsequent Application

604.04

Consul

608.01 (u)

Of Formerly Filed Incomplete Application

604.04

(a) Omission of Certificate

608.01 (v)

Trademarks and Trade Names

604.05

Consular Fee Stamp

608.02 Drawing

604.06

By Attorney in Case

608.02(a)

New Drawing -- When Required

605

Applicant

608.02 (b)

Informal Drawings

605.01

Citizenship

608.02 (c)

Drawings or Print Kept in Examining Group

605.02

Residence®

608.02 (d)

Complete Illustration

605.03

Post Office Address

608.02 (e)

Examiner Determines

605.04

Signature and Name

608.02 (f)

Modification

605.04

(a) Single Signature Form

608.02 (g)

Illustration of Prior Art

605.04

(b) Full First Name Required

608.02 (h)

Additional, Duplicate, or Substitute

605.04(c)

Change of Name

608.02 (1)

Transfer From Prior Application

605.04

(d) Unable To Write

608.02(j)

Canceled Sheets to Divisional

605.04(e)

May Use Title With Signature

608.02 (k)

Patented, to Reissue

605.04

(f) Joint- Order of Names

608.02 (1)

To Continuation or Substitute

605.04(g)

When Name Is Corrected. Send to Applica-

608.02 (m) Prints

tion Branch

608.02 (n)

Patentability Report Cases

605.04(h)

Signature to Drawing

608.02(0)

Dates Entered on Drawing

605.05

Administrator, Executor or Other Legal Rep-

608.02 (p)

Correction of Drawings

resentative

608.02 (q)

Conditions Precedent to Amendment of

605.05 (a) Signature of Legal Representative

Drawing

605.06

Filing by Other Than Inventor

608.02(r)

Separate Letter to Draftsman

608.02 (s)

Estimating Cost of Correcting Drawings

606

Title of Invention

608.02 (t)

Cancelation of Figures

606.01

Examiner May Require Change in Title

608.02 (u)

Changing Name of Attorney on Drawing

607

Filing Fee

Forbidden

607.01

Fee Exempt

608.02(v)

Changes Which Require Sketches

607.02

Returnability of Fees

608.02 (w)

Changes Which May be Made by Exam-

608

Disclosure

iner's Amendment Without a Sketch

608.01

Specification

608.02 (x)

Disposition of Orders for Amendment of

608.01

(a) Arrangement of Application

Drawing

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## MANUAL OF PATENT EXAMINING PROCEDURE

608.02(y) Return of Drawing
008.03 Models, Exhibits, Specimens

608.03 (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 en 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 (a)
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. )

## GUIDELINES FOR DRAFTING A MODEL PATENT APPLICATION

The following guidelines illustrate the pre-
ferred layout and content for patent applica-
tions. These guidelines are suggested for the
applicant's use.

Arrangement and Contents of the Specification

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.

(c) Summary of the Invention.

(f) Brief Description of the Drawing.

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

(h) Claim (s).

(a) Title of the Invention: (See Rule
72(a).) The title of the invention should be
placed at the top of the first page of the specifi-
cation. It should be brief but technically
accurato and descriptive.

(b) Abstract of the Disclosure: (See Rule
72(b), and section 608.01 (b).)

(c) Cross-References to Related Applica-
tions: (See Rule 78 and section 201.11).

(d) Background of the Invention: The
specification should set forth the Background
of the Invention in 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 definitions. The
statement should be directed to the sub-
ject matter of the claimed invention.

(2) Description of the Prior Art: A para-
graph (s) describing to the extent practi-
cal 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 indi-
cated.

(e) Summary: A brief summary or general
statement of the invention as set forth in Rule
73. The summary is separate and distinct from
the abstract and is directed toward the inven-
tion rather than the disclosure as a whole. The
summary may point out the advantages of the
invention or how it solves problems previously
existent in the prior art (and preferably indi-
cated in the Background of the Invention). In
chemical cases it should point out in general
terms the utility of the invention. If possible,
the nature and gist of the invention or the
inventive concept should be set forth. Objects
of the invention should be treated briefly and
only to the extent that they contribute to an
understanding of the invention.

(f) Brief Description of the Drawing: A
reference to and brief description of the draw-
ing(s) as set forth in Rule 74.

(g) Description of the Preferred Embodi-
ment (s) : A description of the preferred em-
bodiment (s) of the invention as required in
Rule 71. The description should be as short and
specific as is necessary to adequately and
accurately describe the invention.

Where elements or groups of elements, com-
pounds, and processes, which are conventional
and generally widely known in the field to
which the invention pertains, form a part of
the invention described and their exact nature
or type is not necessary for an understanding
and use of the invention by a person skilled in
the art, they should not be described in detail.
However, where particularly complicated sub-
ject matter is involved or where the elements,
compounds, or processes may not be commonly
or widely known in the field, the specification
should refer to another patent or readily avail-
able publication which adequately describes
the subject matter.

(h) Claim(s) : (See Rule 75.) A claim may
be typed with the various elements subdivided
in paragraph form. There may be plural inden-
tations to further segregate subcombinations
or related steps.

Reference characters corresponding to ele-
ments recited in the detailed description and

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the drawings may be used in conjunction with
the recitation of the same element or group of
elements in the claims. The reference charac-
ters, however, should be enclosed within paren-
theses so as to avoid confusion with other num-
bers or characters which may appear in the
claims. The use of reference characters is to be
considered as having no effect on the scope of
the claims.

Claims should preferably be arranged in
order 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 arrangements are
for the purpose of facilitating classification
and examination.

The form of claim required in Rule 75 (e) is
particularly adapted for the description of
improvement type inventions. It is to be con-
sidered a combination claim and should be
drafted with this thought in mind.

In drafting claims in accordance with Rule
75 (e), the preamble is to be considered to posi-
tively and clearly include all the elements or
steps recited therein as a part of the claimed
combination.

Oath

(See Rule 65.) Where one or more previously
filed foreign applications are cited or mentioned
in the oath, complete identifying data, includ-
ing the application or serial number as well as
the country and date of filing, should be
provided.

### 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

Rule 147 Division applications § 201.06.
Streamlined Continuation applications
$ 201.07.

Reissue applications § 1401.

Design applications, Chapter 1500.

Plant applications, 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 [R-22]

Rulc 61. Petition. (a) 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 or declaration, otherwise it must
be signed by the petitioner.

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

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

The petition need not be dated.

#### 601.01 Amendment of Petition [R-22]

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 [R-22]

The attorney's or agent's full post office ad-
dress (including ZIP code number) should be
given in every power of attorney or authority
of agent. The telephone number of the attorney
or agent may also be included in the petition.
The prompt delivery 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).

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## 602 602 Original Oath or Declaration [R-22]

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 a 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 himself
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 its
filing; he shall also identify by country and by day,
month, and year of filing, every such foreign applica-
tion filed more than twelve months before the filing of
the application in this country.

(2) This statement (i) must be subscribed to by the
applicant, and (li) 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 153 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.

Rate 08. Declaration in Lieu of Oath, Any docu-
ment to be filed in the Patent Office and which is re-
quired by any law, rule, or other regulation to be under
oath may be subscribed to by a written declaration with
the exception of testimony relating to interferences and
other contested cases covered by rules 271 to 286. Such
declaration may be used in lieu of the oath otherwise
required, it, and only if, the declarant is on the same
document, 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. The declarant
must set forth in the body of the declaration that all
statements made of his own knowledge are true and
that all statements made on information and bellef are
believed to be true.

18 U.S.C. 1001. Statements or entries generally

Whoerer, in any matter within the jurisdiction of
any department or agency of the United States know-
ingly and willfully falsifies, conceals or covers up by
any trick, scheme, or device a material fact, or makes
any false, fictitious or fraudulent statements or repre-
sentations, or makes or uses any false writing or docu-
ment knowing the same to contain any false, fictitious
or fraudulent statement or entry, shall be fined not
more than $10,000 or imprisoned not more than five
years, or both.

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 Declara-
tion is used, it is unnecessary to appear before
any official in connection with the making of the
Declaration. It must, however, since it is an
integral part of the application, be maintained
together therewith. Suggested forms for dec-
larations are located in the back portion of the
"Rules of Practice" booklet.

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). However, if the informality in the
original oath is not a requirement of the Statute,
the defective oath may be replaced by a declara-
tion.

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602.04(*)

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The applicant must state that no foreign ap-
plications have been filed, if such is the case.
If all 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.

The single signature forms mentioned in sec-
tion 605.04 (a) includes the oath or declaration.

An oath or declaration which refers to appli-
cant 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
or declarations, each oath or declaration should
make reference to the fact that the affiant 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 inven-
tor together with "A or A & B, etc." as the facts
may be.

A seal is usually impressed. See sections 604
and 604.01 and Rule 66. However oaths exe-
cuted in many states including Alabama, Louisi-
ana, Maryland, Massachusetts, New Jersey, New
York, Rhode Island, South Carolina and Vir-
ginia 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. sec-
tion 603. [R-21]

### 602.01 Oath Cannot Be Amended [R-21]

The wording of an oath or declaration 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 or declaration must be required.
However, in some cases a defiiency in the oath
or declaration can be corrected by a supple-
mental paper and a new oath or declaration 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 a certificate of the notary that the oath
was taken within his jurisdiction will correct
the deficiency. See sections 602 and 604.02.

## 602.02 New Oath or Substitute for Original [R-21]

In requiring a new oath or declaration, the
Examiner should always give the reason for the
requirement 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 or declaration, preferably by giving
the serial number and the date of filing. This
is done in the first action by means of attach-
ment Form PO-152 (see section 707.07(a) ).

Where neither the original oath or declara-
tion, nor the substitute oath or declaration is
complete in itself, but the two taken together
give all the required data, no further oath or
declaration is needed.

## 602.03 Defective Oath or Declaration [R-21]

In the first Office action the Examiner must
point out, making use of attachment Form PO-
152 (see section 707.07(a) ), 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.

## 6020.4 Foreign Executed Oath [R-21]

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

602.04 (a)
Foreign Executed Oath Is
Ribboned to Other Appli-
cation Papers [R-21]

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,

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must be attached together and a ribbon pested one er
joore 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
with the official seal of the oficer before whom the
oath la taken, If the papers as dled are not properly
ribboned or each sheet impressed with the seal, the
case will be accepted for examination but before it
is allowed, duplicate papers, prepared in compliance
with the foregoing sentence, must be filled.

Note that a Declaration in Lieu of Applica-
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 [R-21]

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 under the circum-
stances of Ex parte Heinze, 1919 C.D. 67; 265
O.G. 145). The "Notice of informal Patent Ap-
plication" attachment form PO-152 is used to
notify applicant that his oath is stale.

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 [R-21]

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, section 201.06.)

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

## 603 Supplemental Oath [R-21]

Rule 67. Supplementel oath er decleration for mat-
ter not originally cisimed. (a) When an applicant pre-
cests a cinim for matter originally showa or described
bat not substantially embraced in the statement of
invention or clatin originally presented, he shall file
a supplemental oath or declaration 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 de-
scribed in any printed publication in any country before
his invention or discovery thereof, or more than one
year before his application, or in public use or on sale
in the United States for more than one year before the
date of his application, that said invention has not
been patented in any foreign country prior to the date
of his application in this country on an application filed
by himself or his legal representatives or assigns more
than twelve months prior to his application in the
United States, and has not been abandoned. Such sup-
plemental oath or declaration should accompany and
properly identify the proposed amendment, otherwise
the proposed amendment may be refused consideration.

(b) In proper cases the oath or declaration here re-
quired may be made on information and belief by an
applicant other than inventor.

Rule 67 requires in the supplemental oath
or declaration substantially all the data called
for in Rule 65 for the original oath or declara-
tion. As to the purpose to be served by the sup-
plemental oath or declaration, 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 [R-21]

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 section 714.16.

## 604 Administration or Execution of Oath [R-21]

Extract From Rule 66. Officers authorized to ad-
minister ouths. (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

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a foreign country, before any diplomatic or consular
officer of the United States authorized to administer
oaths, or before any officer having an official mal and
authorized to administer osths in the foreign coantry
in which the applicant may be, whose authority shall
be proved by a certificate of a diplomatic or cutarular
officer of the United States, the oath being attested
in all cases in this and other countries, by the proper
official seal of the omcer before whom the oath or
affirmation is made. Such oath or affirmation shall be
valld 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 real, his official charac-
ter shall be established by competent evidence, as by
a certificate from a clerk of a court of record or other
proper officer having a seal.

See section 602.04(a) for foreign executed
oath.

### 604.01 Seal [R-21]

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 officer having a seal, except as
noted in section 604.03(a), in which situations
no seal is necessary. When the issue concerns the
authority 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 section 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 [R-2]]

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 section 604.03.
Venne 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.

The following language may be used in an
Office action where the venue is not shown :

[1] The oath in this application lacks the
statement of venue. To correct this defect, ap-
plicant is required to furnish either a new
oath in proper form, identifying the applica-
tion by serial number and date of filing, or a
certificate by the officer before whom the
original oath was taken stating that he was
within his jurisdiction when he administered
that oath.

Where the seal and venue differ the appro-
priate statement on the "Notice of Informal
Patent Application" form PO-152 should be
checked.

### 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

Texas

Mississippi

#### VARIABLE JURISDICTION (See explanatory paragraphs below)

Alabama (a)

Missouri (e)

Florida (b)
Nebraska (a)

Hawaii (c)
Ohio (f)

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.

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(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.

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 [R-21]

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, section 604. This
proof may be through an intermediary ; e.g., the
consul may certify as to the authority and juris-
diction 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 [R-21]

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 oath by an ap-
propriate diplomatic or consular officer. The
following language is suggested in requiring
authentication of an oath :

[1] "The oath is objected to as being informal
in that it lacks authentication by a diplomatic
or consular officer of the United States; Rule
66 (a). This informality can be overcome only
by forwarding the original oath to the appro-
priate officer for authentication if applicant
wishes to preserve his original filing date. Ap-
plicant should therefore request return of the
oath for this purpose. Such request must be
accompanied by an order for a copy of the
oath to be retained in the file until the prop-
erly authenticated oath is returned. After the
oath has been authenticated, it should be re-
turned promptly to the Patent Office."

At the time of the next Office action the
request for return of the oath, together with
the application file and the copy of the oath,
is submitted to the Group Director. If the
request is approved by him, the oath will be
returned to the applicant by the Examining
Group.

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604.06

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.

## 604.06 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 the jurisdiction where
the oath is administered, then the oath is a valid
oath.

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 section 604. [R-20]

## 605 Applicant [R-20]

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

(b) Unless the contrary is indicated. the word "ap-
plicant" 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 or declaration; neither of them alone, nor
less than the entire number, can apply for a patent
for an invention invented by them jointly, except as
provided in rule 47.

For convertibility from a joint to sole or sole
to joint application, see section 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 section 409.03.

### NOTE

Streamlined continuation application, sec-
tion 201.07. Disposition of application by
inventor, section 301. Inventor dead or in-
sane, section 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 a citizen 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 [R-20]

Applicant's place of residence (not to be con-
fused with his Post Office 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
section 717.02 (b).

When the post office address is supplied but
the residence is omitted, the post office address
is presumed to be the city and state of his resi-
dence. Applicant should be so notified by us-
ing language similar to that suggested on work
sheet form PO-1002, which states:

[1] "Applicant's residence has been omitted
from the papers. The city and state of his
post office address will be presumed to be the
city and state of his residence. If the above
is incorrect, applicant should submit a state-
ment of his place of residence no later than at
the time of payment of the issue fee."

If both the post office address and residence
are incomplete, not uniform or omitted, the
"Notice of Informal Patent Application" form
PO-152 should be used.

## 605.03 Applicant's Post Office Address [R-20]

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.

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The "Notice of Informal Patent Application"
attachment form PO-152 is used to notify appli-
cant that the post office address is incomplete or
omitted.

## 605.04 Applicant's Signature a n d Name [R-20]

Rule 57. Signature. The application must be signed
by the applicant in person. The signature of the oath
or declaration will be accepted as the signature to the
application provided the oath or declaration 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 mid-
dle initial or name if any.

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

The signing and execution by the applicant
of certain Divisional and Streamlined Contin-
uation applications may be omitted. Rule 147,
sections 201.06 and 201.07.

NOTE: Signature to response see sections
714.01 (a) to (e).

### 605.04(a) Single Signature Form

The single signature form should be exe-
cuted only when attached to a 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, that such surplus portion of the name,
if it appears printed on the drawing, should
be removed therefrom. This can be done by
the Office draftsman.

If applicant gives the name with the middle
name or initial, interpret the reply as 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 [R-20]

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

Itev. 20. Apr. 1909

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both names and setting forth the procedure
whereby the change of name was effected, or a
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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### 605.04(d) Applicant Unable to Write

If the applicant is unable to write, his mark
as affixed to the application must be attested
to by a witness. In the case of the oath, 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 he signed. The drawing may
be signed by the applicant in person or have the name

of the applicant placed thereon followed by the alg-
nature of the attorney or agent as such,

Extract from Rule 85. Drawings, (h) Location of
signature and names. 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 cross 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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The other signatures must either he ir the
above form or:

Mary A. Jones
Administratriz of Estate of
John A. Jones, deceased.

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

John A. Jonas, 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 72(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-
tion.

# 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.

607 Filing Fee

Applications filed before October 25, 1965,
required only a basic filing fee. That part of
the new Fee Act, effective October 25, 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 __ for 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 714.03 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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608.01

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.

An amendment accompanying the papers con-
stituting the separate application under Rule
147 canceling claims from the certified copy will
be effective to diminish the number of claims to
be considered in calculating the filing fees to
be paid.

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.
Amendments affecting the claims cannot serve
as the basis for granting any refund. [R-22]

## 607.01 Fee Exempt [R-22]

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:

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.

## 607.02 Returnability of Fees

All 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 [R-22]

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 and $ 608.04.

## 608.01 Specification [R-22]

Rule 71. Detailed description and specification of the
invention. (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 solicited, 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. See Rule 78 and $ 202.01.

Rule 52. Language, paper, writing margins. (a)
The petition, specification, and oath or declaration 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.

(b) The specification and claims, and also papers
subsequently filed, must be plainly written on but one
side of the paper. A wide margin must be reserved on
the left-hand side and on the top of each page and the
lines must not be crowded too closely together. Legal
paper, 8 to 814 by 1216 to 13 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, crasure or cancellation or
other alteration made before the application was
signed and sworn to, or declaration made, should be
clearly referred to in a marginal note or footnote on

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608.01 (a)

# MANUAL OF PATENT EXAMINING PROCEDURE

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 wrapper.

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
a 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 or declaration 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 a sworn translation
thereof. In re Incomplete Application 659
O.G. 917.

The specification does not require a date.

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 ap-
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 USPQ 364.

608.01(a) Arrangement of Applica-
tion [R-22]

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, § 1605.

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).

## 608.01 (b) Abstract of the Disclosure [R-22]

Ruic 72(b). A brief abstract of the technical dis.
closure in the specification must be set forth immedi-
ately following the title and preceding the disclosure
In a separate paragraph under the heading "Abstract
of the Disclosure". The purpose of the abstract is to
enable the Patent Office and the public generally to
determine quickly from a cursory inspection the nature
and gist of the technical disclosure, and the abstract
shall not be used for interpreting the scope of the
claims.

In all cases which lack an abstract, the
Examiner in the first Office action should re-

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608.01 (b)

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

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.

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. The
abstract shall be changed by the Examiner's
Amendment in those instances where' deemed
necessary.

## GUIDELINES FOR THE PREPARATION OF PATENT ABSTRACTS

### Background

The Rules of Practice in Patent Cases re-
quire that each application for patent include
an Abstract of the Disclosure, Rule 72 (b).

The content of a patent abstract should be
such as to enable the reader thereof, regardless
of his degree of familiarity with patent docu-
ments, to ascertain quickly the character of the
subject matter covered by the technical dis-
closure and should include that which is new
in the art to which the invention pertains.

The abstract is not intended nor designed for
use in interpreting the scope or meaning of the
claims, Rule 72(b).

### Content

A patent abstract is a concise statement of the
technical disclosure of the patent and should
include that which is new in the art to which the
invention pertains.

If the patent is of a basic nature, the entire
technical disclosure may be new in the art, and
the abstract should be directed to the entire
disclosure.

If the patent is in the nature of an improve-
ment in an old apparatus, process, product, or
composition, the abstract should include the
technical disclosure of the improvement.

In certain patents, particularly those for com-
pounds and compositions, wherein the process
for making and/or the use thereof are not
obvious, the abstract should set forth a process
for making and/or a use thereof.

If the new technical disclosure involves modi-
fications or alternatives, the abstract should

mention by way of example the preferred modi-
fication or alternative.

The abstract should not refer to purported
merits or speculative applications of the inven-
tion and should not compare the invention with
the prior art.

Where applicable, the abstract should include
the following: (1) if a machine or apparatus,
its organization and operation ; (2) if an article,
its method of making; (3) if a chemical com-
pound, its identity and use; (4) if a mixture,
its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of
apparatus should not be given.

With regard particularly to chemical patents,
for compounds or compositions, the general
nature of the compound or composition should
be given as well as the use thereof, e.g., "The
compounds are of the class of alkyl benzene sul-
fonyl ureas, useful as oral anti-diabetics."
Exemplification of a species could be illustra-
tive of members of the class. For processes, the
type reaction, reagents and process conditions
should be stated, generally illustrated by a
single example unless variations are necessary.

#### Language and Format

The abstract should be in narrative form and
generally limited to a single paragraph within
the range of 50 to 250 words. The form and
legal phraseology often used in patent claims,
such as "means" and "said," should be avoided.
The abstract should sufficiently describe the dis-
closure to assist readers in deciding whether
there is a need for consulting the full patent
text for details.

The language should be clear and concise and
should not repeat information given in the
title. It should avoid using phrases which can
be implied, such as, "This disclosure concerns,"
"The disclosure defined by this invention,"
"This disclosure describes," etc.

##### Responsibility

Preparation of the abstract is the responsibil-
ity of the applicant. Background knowledge of
the art and an appreciation of the applicant's
contribution to the art are most important in
the preparation of the abstract. The review of
the abstract, for compliance with these guide-
lines, with any necessary editing and revision
on allowance of the application is the responsi-
bility of the Examiner.

##### Sample Abstracts

A heart valve with an annular valve body de-
fining an orifice and having a plurality of struts
forming a pair of cages on opposite sides of the
orifice. A spherical closure member is captively

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608.01(c)

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held within the cages and is moved by blood flow
between open and closed positions in check valve
fashion. A slight leak or backflow is provided
in the closed position by making the orifice
slightly larger than the closure member. Blood
flow is maximized in the open position of the
valve by providing an inwardly convex contour
on the orifice-defining surfaces of the body. An
annular rib is formed in a channel around the
periphery of the valve body to anchor a suture
ring used to secure the valve within a heart.

A method for sealing, by application of heat,
overlapping closure panels of a folding box
made from paperboard having an extremely
thin coating of moisture-proofing thermoplastic
material on opposite surfaces. Heated air is di-
rected at the surfaces to be bonded, the tempera-
ture of the air at the point of impact on the sur-
faces being above the char point of the board.
The duration of application of heat is made so
brief, by a corresponding high rate of advance
of the boxes through the air stream, that the
coating on the reverse side of the panels remains
substantially non-tacky. The bond is formed
immediately after heating within a period of
time for any one surface point less than the
total time of exposure to heated air of that
point. Under such conditions the heat applied
to soften the thermoplastic coating is dissipated
after completion of the bond by absorption into
the board acting as a heat sink without the need
for cooling devices.

Amides are produced by reacting an ester of
a carboxylic acid with an amine, using as cata-
lyst an alkoxide of an alkali metal. The ester
is first heated to at least 75° C. under a pressure
of no more than 500 mm. of mercury to remove
moisture and acid gases which would prevent
the reaction, and then converted to an amide
without heating to initiate the reaction.

# 608.01(c) Background of the Inven- tion [R-21]

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 section 608.01 (a).

# 608.01(d) Brief Summary of Inven- tion [R-21]

Rule 73. Summary of the invention. A brief sum-
mary of the invention indicating its nature and sub-
stance, which may include a statement of the object of
the invention, should precede the detailed description.
Such summary sbould, when set forth, be commensurate
with the invention as claimed and any object recited
should be that of the invention as claimed.

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 section 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, section 1302.

# 608.01(e) Reservation Clauses Not Permitted

Rule 79. Reservation clauses 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

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several views of the drawings and the detailed de-
scription of the invention shall refer to the different
views by specifying the numbers of the figures, and
to the different parts by use of reference letters or
numerais (preferably the latter).

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

## 608.01(g) Detailed Description of In- vention [R-22]

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,
section 608.01, must be in such particularity as
to enable 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 affixed may advan-
tageously be applied to the modification.
Every feature specified in the claims must be
illustrated, but there should be no superfluous
illustrations.

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, sections 608.01(i), 608.01(o), and
1302.01.

Norr .- Completeness, section 608.01 (p).

## 608.01(h) Mode of Operation of In- vention [R-21]

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.

NOTE .- Completeness, section 608.01 (p).

## 608.01(i) Claims [R-22]

Rule 75. Claim(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
undoly 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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Dependent claims, § 608.01(n).
Examination of claims, § 706.
Claims in excess of fee, § 714.10.

## 608.01(j) Numbering of Claims

Rule 126. Numbering of claims. The original number-
ing of the claims must be preserved throughout the
prosecution. When claims are canceled, the remaining
claims must not be renumbered. When claims are
added, except when presented in accordance with Rule
121 (b), they must be numbered by the applicant con-
secutively 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 [R-22]

35 U.S.C. 112 requires that the applicant
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 [R-22]

While there is no set statutory form for
claims. the present Office practice is to insist
that each claim must be the object of a sen-

tence starting with "I (or we) claim" (or the
equivalent). If, at the time of allowance, the
quoted terminology is not present, it is inserted
by the Clerk. Each claim begins with a capital
letter and ends with a period. Periods may not
be used 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 patent 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.

Many of the difficulties encountered in the
prosecution of patent applications after final
rejection may be alleviated if each applicant
includes, at the time of filing or no later than the
first response, claims varying from the broadest
to which he believes he is entitled to the most
detailed that he is willing to accept.

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 [R-22] Rule 75(c). reads as follows:

When more than one claim is presented, they may
be placed in dependent form in which a claim may refer

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608.01 (o)

back to and further restrict a single preceding cinim.
Claims in dependent for shall be construed to include
all the limitations of the claim incorporated by refer-
ence into the dependent claim.

For applications filed on or after October 25,
1965, the initial determination, for fee purposes,
as to whether a claim is dependent must be made
by persons other than Examiners; it is neces-
sary, at that time, to accept as dependent virtu-
ally every claim which refers to another claim,
without determining whether there is actually a
true dependent relationship. Such acceptance
does not, however, preclude a subsequent hold-
ing by the Examiner that a claim is not a proper
dependent 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
I 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.

# CLAIM FORM AND ARRANGEMENT

A dependent claim 2 could read as follows:

2\. The product of claim 1 in which

A dependent claim cannot directly refer back
to two or more preceding claims. For example,
a claim reading as follows:

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).

# 608.01(o) Basis for Claim Terminol- ogy in Description [R-22]

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

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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.

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, sections 608.01 (i) and
1302.01.

# 608.01 (p) Completeness [R-22]

Newly filed applications obviously failing to
disclose an invention with the clarity required
are discussed in section 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 in mechanical cases. In chemienl cases.
varying degrees of specificity are required.

A disclosure involving a new chemical com-
pound or composition must teach persons
skilled in the art how to make the compound
or composition. Incomplete teachings may not
be completed by reference to subsequently filed
applications.

# GUIDELINES FOR CONSIDERING DISCLOSURES OF UTILITY IN DRUG CASES

## General

These guidelines are set down to provide
uniform handling of applications disclosing
drug or pharmaceutical utility. They are in-
tended to guide patent Examiners and patent
applicants as to criteria for utility statements.
They deal with fundamental questions and are
subject to revision and amendment if future
case law indicates this to be necessary.

The following two basic principles shall be
followed in considering matters relating to the
adequacy of disclosure of utility in drug cases :

(1) The same basic principles of patent law
which apply in the field of chemical arts shall
be applicable to drugs, and

(2) The Patent Office shall confine its exam-
ination of disclosure of utility to the applica-
tion of patent law principles, recognizing that
other agencies of the Government have been
assigned the responsibility of assuring con-
formance to the standards established by statute
for the advertisement, use, sale or distribution
of drugs.1

A drug is defined by 21 U.S.C. 321 (g)

The term "drug" means (A) articles
recognized in the official United States
Pharmacopeia, official Homeopathic Phar-
macopeia of the United States, or official
National Formulary, or any supplement
to any of them; and (B) articles intended
for use in the diagnosis, cure, mitigation,
treatment, or prevention of disease in man
or other animals; and (C) articles (other
than food) intended to affect the structure
or any function of the body of man or other
animals; and (D) articles intended for use
as a component of any articles specified in
clause (A), (B), or (C); but does not
include devices or their components, parts.
or accessories.

In addition, compositions adapted to be applied
to or used by human beings, e.g., cosmetics,
dentifrices, mouthwashes, etc., may be treated
in the same manner as drugs subject to the con-
ditions stated.

Any proof of a stated utility or safety re-
quired pursuant to these guidelines may be

In re Krimmel, 48 CCPA 1116, 202 F.2d 948. 130 USPQ
215; In re Hartop et al., 50 CCPA 780, 311 F.2d 249, 135
USPQ 419.

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# MANUAL OF PATENT EXAMINING PROCEDURE

608.01 (p)

incorporated in the application as filed, or may
be subsequently submitted by affidavit if and
when required. The Patent Office, in reaching
its own independent decisions on questions of
utility and how to use under 35 U.S.C. 101 and
112, will continue to avail itself of assistance
and information from the Secretary of Health,
Education, and Welfare as authorized by 21
U.S.C. 372(b), when necessary.

In accordance with the basic principles set
forth above, the following procedures shall be
followed in examining patent applications in
the drug field with regard to disclosures relat-
ing to utility.

35 U.S.C. 101

Utility must be definite and in currently
available form,2 not merely for further investi-
gation or research but commercial availability
is not necessary. Mere assertions such as "thera-
peutic agents,"" "for pharmaceutical pur-
poses,"+ "biological activity,"$ "intermedi-
ates," " and for making further unspecified
preparations are regarded as insufficient.

If the asserted utility of a compound is
believable on its face to persons skilled in the
art in view of the contemporary knowledge in
the art, then the burden is upon the Examiner
to give adequate support for rejections for lack
of utility under this section." On the other hand,
incredible statements & or statements deemed
unlikely to be correct by one skilled in the
art" in view of the contemporary knowledge
in the art will require adequate proof on the
part of applicants for patents.

Proof of utility under this section may be
established by clinical or in vivo or in vitro
data, or combinations of these, which would be
convincing to those skilled in the art.1º More
particularly, if the utility relied on is directed
solely to the treatment of humans, evidence of
utility, if required, must generally be clinical
evidence.11 although animal tests may be ade-
quate where the art would accept these as
appropriately correlated with human utility.12

If there is no assertion of human utility,13 or
if there is an assertion of animal utility,"" oper-
ativeness for use on standard test animals is
adequate for patent purposes.

Exceptions exist with respect to the general
rule relating to the treatment of humans. For
example, compositions whose properties are
generally predictable from a knowledge of their
components, such as laxatives, antacids and
certain topical preparations, require little or no
clinical proof.15

Although absolute safety is not necessary to
meet the utility requirement under this section,
a drug which is not sufficiently safe under the
conditions of use for which it is said be be
effective will not satisfy the utility require-
ment.16 Proof of safety shall be required only
in those cases where adequate reasons can be
advanced by the Examiner for believing that
the drug is unsafe, and shall be accepted if it
establishes a reasonable probability of safety.

## 35 U.S.C. 112

A mere statement of utility for pharmaco-
logical or chemotherapeutic purposes may raise
a question of compliance with Section 112, par-
ticularly ". . . as to enable any person skilled
in the art to which it pertains . . . to use the
same." If the statement of utility contains
within it a connotation of how to use, and/or
the art recognizes that standard modes of
administration are contemplated, Section 112 is
satisfied." If the use disclosed is of such nature
that the art is unaware of successful treatments
with chemically analogous compounds, a more
complete statement of how to use must be sup-
plied than if such analogy were not present.18
It is not necessary to specify the dosage or
method of use if it is obvious to one skilled in
the art that such information could be obtained
without undue experimentation.17

With respect to the adequacy of disclosure
that a claimed genus possesses an asserted
utility representative examples together with
a statement applicable to the genus as a whole
will ordinarily be sufficient if it would be
deemed likely by one skilled in the art, in view
of contemporary knowledge in the art, that the
claimed genus would possess the asserted

" Brenner v. Manson. 383 U.S. 519. 148 USPQ 689.

3 Cf. In re Lorene et al., 49 CCPA 1227. 305 F.2d 875, 134
USPQ 312 : cf. Ez parte Brockmann et al., 127 USPQ 57.
\* In re Diedrich, 50 CCPA 1355, 318 F.2d 946. 138 USPQ
128\.

$ In re Kirk et al .. 54 CCPA 1119, 153 CSPQ 48 : Ez parte
Lanham, 135 USPQ 106.

6 In re Joly et al., 54 CCPA 1159, 153 USPQ 45 : In re Kirk
rf al., 54 CCPA 1119 : 153 USPO 48.

" In re Gozare, 54 CCPA 1524, 154 USPQ 92.

*In re Citron, 51 CCPA 852. 325 F.2d 248. 139 USPQ 516 :
In ve Oberweger, 28 CCPA 749. 115 F.2d 826. 47 USPQ 455 :
Er parte Moore et al., 128 USPQ 8.

"In re Ruskin. 53 CCPA 872, 854 F.2d 205, 145 USPQ 221 :
In re Pottier, 54 CCPA 1293. 153 USPQ 407: In re Novak
et al., 49 CCPA 1283. 306 F.2d 924. 134 USPQ 335. See also.
In re Irons, 52 CCPA 938. 340 F.2d 974. 144 USPQ 351.

1º In re Trons, 52 CCPA 938. 340 F.2d 924. 144 USPQ 351 :
E's parte Paschall, 98 USPQ 131 : Ex parte Pennell et al .. 99
USPQ 56 : Ex parte Ferguson, 117 USDQ 229 ; Er parte Tim-
mis, 123 USPO 351.

11 Er parte Timmis. 123 USPQ 581.

12 Im re Hartop et al., 50 CCPA 780. 311 F.24 240. 135
USPQ 419 : Ex parte Murphy, 134 USPQ 134.

JA Cf. Blicke v. Treves, 44 CCPA 753. 241 F.2d 718. 112
USPO 472 ; In re Krimmel, 48 CCPA 1116. 292 F.24 948. 130
USPO 215: In re Dodaon, 48 CCPA 1125, 202 F.2d 943, 130
USPQ 224 : In re Hitchings, 52 CCPA 1141, 342 F.24 80. 144
USPQ 687.

11 In re Berget et al., 48 CCPA 1102. 292, F.2d 955, 130
USPO 206 : Er parte Melvin, 155 USPQ 47.
15 Er parte Harriann et al., 129 USPQ 172 ; Er parte Lewin,
140 USPQ 70.

1 In pe Hartop et al., 50 CCPA 780. 311 F.2 249, 135
USPO 419.

1; Cf. In ve Johnson, 48 CCPA 733. 282 F.24 870. 127
I'SPQ 216 : In re Hitchings et al., 52 CCPA 1141. 342 F.2d SO,
144 CSPQ 437.

#*In ve Mouree et al., 52 CCPA 1363, 345 F.2d 595, 145
T:SPQ 452 : In ve Schmidt et al., 54 CCPA 1577. 153 USPO
640.

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608.01(p)

utility.1º Proof of utility will be required for
other members of the claimed genus only in
those cases where adequate reasons can be ad-
vanced by the Examiner for believing that the
genus as a whole does not possess the asserted
utility. Conversely, a sufficient number of repre-
sentative examples, if disclosed in the prior art
will constitute a disclosure of the genus to which
they belong.

In the case of mixtures including a drug as
an ingredient, or mixtures which are drugs, or
methods of treating a specific condition with a
drug, whether old or new, a specific example
should ordinarily be set forth, which should
include the organism treated. In appropriate
cases, such an example may be inferred from
the disclosure taken as a whole and/or the
knowledge in the art (e.g., gargle).

Where the claimed compounds are capable
of several different utilities and one use is ade-
quately described in accordance with these
guidelines, additional utilities will be investi-
gated for compliance with Sections 101 and 112
only if not believable on their face to those of
ordinary skill in the art in view of the con-
temporary knowledge of the art. Failure to
meet these standards may result in a require-
ment to cancel such additional utilities.2º

## INCORPORATION BY REFERENCE

An application for a patent may incorporate
"essential material" by reference to (1) a United
States patent, or (2) an allowed U.S. applica-
tion, subject to the conditions set forth below.
"Essential material" is defined as that which is
necessary to (1) support the claims, or (2) for
adequate disclosure of the invention (35 U.S.C.
112). "Essential material" may not be incorpo-
rated by reference to (1) patents issued by for-
eign countries, to (2) nonpatent publications, or
to (3) a patent or application which itself in-
corporates "essential material" by reference.

Nonessential subject matter may be incor-
porated by reference to (1) patents issued by
the United States or foreign countries, (2) prior
filed, commonly owned U.S. applications or (3)
nonpatent publications, for purposes of indicat-
ing the background of the invention or illustrat-
ing the state of the art.

The referencing application must include (1)
an abstract, (2) a brief summary of the inven-
tion, (3) an identification of the referenced
patent or application, (4) at least one view in

the drawing in those applications admitting of
a drawing, and (5) one or more claims. Where
appropriate it would be advisable to direct par-
ticular attention to specific portions of the
referenced patent or application.

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

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

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

The filing date of any application wherein
essential material is incorporated by reference
to a foreign patent or to a publication will not
be affected because of the presence of such refer-
ence. In such a case, as well as any other case
which improperly incorporates essential ma-
terial by reference, the applicant will be re-
quired to amend the disclosure to include the
material incorporated by reference. The amend-
ment must be accompanied by an affidavit or
declaration executed by the applicant, or his
attorney or agent of record, stating that the
amendatory material consists of the same ma-
terial incorporated by reference in the referenc-
ing application.

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

Since a disclosure must be complete as of the
filing date, subsequent publications or subse-

19 In re Oppenauer, 31 CCPA 1248. 143 F.2d 974. 62 USPQ
297 : In re Cavallito et al., 48 CCPA 711. 282 F.2d 357, 127
USPO 202 : In re Cavallito et al., 48 CCPA 720. 282 F.2d 363.
127 USPQ 206 : In re Schmidt, 48 CCPA 1140. 293 F.2d 274.
130 USPQ 404 : In re Cavallito, 49 CCPA 1335. 306 F.2d 505.
134 USPQ 370 : In re Surrey, 54 CCPA 855. 370 F.2d 349. 151
USPQ 724 : In re Lund et al .. 54 CCPA 1361. 153 USPQ 625.
" Ex parte Lanham, 121 USPO 223 : Ex parte Moore et al.,
128 USPQ 8: In re Citron, 51 CCPA 852. 325 F.24 248. 139
USPQ 516 ; In re Gottlieb et al., 51 CCPA 1114. 328 F.2d 1016.
140 USPQ 665.

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608.01 (q)

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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 section 608.01 (v).

# 608.01(q) Substitute or Rewritten Specification [R-20]

Rule 125. Substitute specification. If the number or
nature of the amendments shall render it difficult 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
section 714.20.

New matter in amendment, see section 608.04.
Application prepared for issue, see section
1302.02.

# 608.01(r) Derogatory Remarks About Prior Art in Speci- 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-20]

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, section 714.24.

# 608.01 (t) Use in Subsequent Applica- tion [R-20]

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, section
608.01 (e).

While a specification cannot be transferred
to another application, except to a streamlined
continuation application (see section 201.07),
drawings may be transferred from a prior ap-
plication to a later case by the same inventor,
note sections 608.02(i) to 608.02(1).

# 608.01 (u) Use of Formerly Filed In- complete Application [R-20]

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 sections 506 and
506.01.

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

The expressions "trademarks" and "names
used in trade" as used 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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608.02

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

and called among traders or workers in the art,
although it may not be so known by the public
generally. Names used in trade do not 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 sufficiently
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 (2) must be met at the
time of filing of the complete application.

## TRADEMARKS

The relationship between & trademark and
the product it identifies is sometimes indefinite,
uncertain and arbitrary. The formula or char-
acteristics 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 sufficient 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 a 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 ground of insuf-
ficient disclosure any claims based on the

identification of the product merely by trade-
mark or by the name used in trade. If the
product cannot be otherwise defined, an amend-
ment defining the process of its manufacture
may be permitted. Such amendments must be
supported by satisfactory showings establish-
ing that the specific nature or process of manu-
facture of the product as set forth in the
amendment was known at the time of filing of
the application.

Although the use of trademarks having defi-
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
adversely affect their validity as trademarks.
The Examiner should not permit the use of
language such as "the product X (a descrip-
tive name) commonly known as Y (trade-
mark)" since such language does not bring
out the fact that the latter is a trademark.
Language such as "the product X (a descrip-
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."

Examiners should send a copy of all trade-
mark misuse complaint letters to the editor of
this manual.

See appendix I for a partial listing of trade-
marks and the particular goods to which they
apply [R-21]

608.02 Drawing [R-21]

35 U.S.C. 115. Drawings. When the nature of the case
admits, the applicant shall furnish a drawing.

Rule 81. Drawings required. The applicant for pat-
ent is required by statute to furnish a drawing of his
invention whenever the nature of the case admits of
it; this drawing must be filled with the application.
Illustrations facilitating an understanding of the in-
vention (for example, flow sheets in cases of processes,
and diagrammatic views) may also be furnished in
the same manner as drawings and may be required by
the Office when considered necessary or desirable.

Rule 84. Standards for drawings. The complete draw-
ing is printed and published when the patent issues,
and a copy is attached to the patent. This work is done
by the photolithographie process, the sheets of draw-
ings being reduced about one-third in size. In addition,
a reduction of a selected portion of the drawings of
each application is published in the Official Gazette.
It is therefore necessary for these and other reasons

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that the character of each drawing be brought ae noerly
as possible to a uniform standard of execution and
excellence, suited to the requirements of the reproduc-
tion process and of the use of the drawings to give the
best results in the interests of Inventors, of the Office.
and of the public. The following regulations with re-
spect to drawings are accordingly prescribed :

(a) Paper and ink. Drawings must be made upon
pure white paper of a thickness corresponding to two-
ply or three-ply bristol board. The surface of the paper
must be calendered and smooth and of a quality which
will permit erasure and correction. India ink alone
must be used for pen drawings to secure perfectly black
solid lines. The use of white pigment to cover lines
is not acceptable.

(b) Size of sheet and margins. The size of a sheet
on which a drawing is made must be exactly 10 by 15
inches. One inch from its edges a single marginal line is
to be drawn, leaving the "sight" precisely 8 by 13
inches. Within this margin all work must be included.
One of the shorter sides of the sheet is regarded as its
top, and, measuring down from the marginal line, a
space of not less than 11/4 inches is to be left blank for
the heading of title, name, number, and date, which
will be applied subsequently by the Office in a uniform
style.

(c) Character of lines. All drawings must be made
with drafting instruments or by photolithographic
process which will give them satisfactory reproduction
characteristics. Every line and letter ( signatures in-
cluded) must be absolutely black. This direction applies
to all lines however fine, to shading, and to lines rep-
resenting cut surfaces in sectional views. All lines
must be clean, sharp, and solid, and fine or crowded
lines should be avoided. Solid black should not be used
for sectional or surface shading. Freehand work should
be avoided wherever it is possible to do so.

(d) Hatching and shading. (1) Hatching should be
made by oblique parallel lines, which may be not less
than about one-twentieth inch apart.

(2) Heavy lines on the shade side of objects should
be used except where they tend to thicken the work
and obscure reference characters. The light should
come from the upper left hand corner at an angle of
45°. Surface delineations should be shown by proper
shading, which should be open.

(c) Scale. The scale to which a drawing is made
ought to be large enough to show the mechanism with-
cut crowding when the drawing is reduced in repro-
duction, and views of portions of the mechanism on a
larger scale should be used when necessary to show
details clearly ; two or more sheets should be used if
one does not give sufficient room to accomplish this end.
but the number of sheets should not be more than is
necessary.

(f) Reference characters. The different views should
be consecutively numbered figures. Reference numerals
(and letters, but numerals are preferred) must be
plain, legible and carefully formed, and not be encir-
cled. They should, if possible, measure at least one-

alabth of an inch in height so that they may bear
reduction to one twenty-fourth of an inch; and they
may be slightly larger when there is sufficient room.
They must not be so placed in the close and complex
parts of the drawing as to interfere with a thorough
comprehension of the same, and therefore should rarely
cross or mingle with the lines. When necessarily
grouped around a certain part. they should be placed
at a little distance, at the closest point where there is
available space, and connected by lines with the parts
to which they refer. They should not be placed upon
hatched or shaded surfaces but when necessary, a blank
space may be left in the batching or shading where the
character occurs so that it shall appear perfectly dis-
tinct and separate from the work. The same part of an
invention appearing in more than one view of the
drawing must always be designated by the same char-
acter, and the same character must never be used to
designate different parts.

(g) Symbols, legends. Graphical drawing symbols
and other labeled representations may be used for con-
ventional elements when appropriate, subject to ap-
proval by the Office. The elements for which such
symbols and labeled representations are used must be
adequately identified in the specification. While descrip-
tive matter on drawings is not permitted, suitable
legends may be used, or may be required, in proper
cases, as in diagrammatic views and flowsheets or to
show materials or where labeled representations are
employed to illustrate conventional elements. Arrows
may be required, in proper cases, to show direction of
movement. The lettering should be as large as, or
larger than, the reference characters.

(h) Location of signature and names. The signature
of the applicant or the name of the applicant and signa-
ture of the attorney or agent, may be placed in the
lower right-hand corner of each sheet within the mar-
ginal line, or may be placed below the lower marginal
line.

(i) Views. The drawing must contain as many fig-
ures as may be necessary to show the invention; the
figures should be consecutively numbered if possible
In the order in which they appear. The figures i ay be
plan. elevation, section, or perspective views, and de-
tail views of portions or elements, on a larger scale if
necessary, may also be used. Exploded views, with the
separated parts of the same figure embraced by a
bracket, to show the relationship or order of assembly
of various parts are permissible. When necessary, a
view of a large machine or device in its entirety may
be broken and extended over several sheets if there
is no loss in facility of understanding the view (the
different parts should be identified by the same figure
number but followed by the letters. a. b. c. etc., for each
part). The plane upon which a sectional view is taken
should be indicated on the general view by a broken
line, the ends of which should be designated by numer-
als corresponding to the figure number of the sectional
view and have arrows applied to indicate the direction
in which the view is taken. A moved position may be

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shown by a broken line superimposed upon a suitable
figure if this can be done without crowding. otherwise
a separate figure must be used for this purpose. Modi-
fied forms of construction can only be shown in sep-
arate figures. Views should not be connected by projec-
tion lines nor should centerlines be used.

(j) Arrangement of views, All views on the same
sheet must stand in the same direction and should, if
possible, stand so that they can be read with the sheet
held in an upright position. If views longer than the
width of the sheet are necessary for the clearest illus-
tration of the invention, the sheet may be turned on its
side. The space for a heading must then be reserved
at the right and the signatures placed at the left, occu-
pying the same space and position on the sheet as in
the upright views and being horizontal when the sheet
is held in an upright position. One figure must not be
placed upon another or within the outline of another.

(k) Figure for Official Gazette. The drawing should,
as far as possible, be so planned that one of the views
will be suitable for publication in the Official Gazette
as the illustration of the invention.

(1) Ertrancous matter. An agent's or attorney's
stamp, or address, or other extraneous matter, will not
be permitted upon the face of a drawing, within or
without the marginal line, except that the title of the
invention and identifying indicia, to distinguish from
other drawings filed at the same time, may be placed
below the lower margin.

(m) Transmission of drawings. Drawings transmit-
ted to the Office should be sent flat, protected by a
sheet of heavy binder's board, or may be rolled for
transmisison in a suitable mailing tube : but must never
be folded. If received creased or mutilated, new draw-
ings will be required. (See rule 152 for design draw-
ings, 165 for plant drawings, and 174 for reissue
drawings.)

Rule 86. Draftsman to make drawings. (a) Appli-
cants are advised to employ competent draftsmen to
make their drawings.

(b) The Office may furnish the drawings at the ap-
plicant's expense as promptly as its draftsmen can
make them, for applicants who cannot otherwise con-
veniently procure them. (See rule 21.)

A booklet "Guide for Patent Draftsmen" is
available from the Superintendent of Docu-
ments, U.S. Government Printing Office, Wash-
ington, D.C. 20402, price 30 cents.

Design patent drawings, Rule 152, section
1503.02.

Plant patent drawings, Rule 165, section 1606.
Reissue application drawings, sections
608.02(k) and 1401.05.

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
cases, Canceled sheets, however, are not re-

tained with the patented drawings but are filed
with the abandoned files and drawings in the
Abandoned Files Unit.

See: Correction of drawings, section
608.02(p). Prints, preparation and distribution,
sections 508 and 608.02(m). Prints, Return of
drawing, section 608.02(y). Signature to the
drawing is treated in section 605.04(h). For
pencil notations of classification and name or
initials of assistant Examiner to be placed on
drawings see section 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 section
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 a filing date.
Doubtful cases are referred to the Group
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

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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 fluid;
8. Packaged sutures wherein the structure
and arrangement of the package are conven-
tional and the only distinguishing feature is
the use of a 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(a)

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tions which are incapable of being accurately
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. 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 rec-
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 3-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 section 707.07(a) ) in the first
Office action of the conditions which render the
drawing informal, and when indicated, that
such drawings can be corrected so as to be ac-
ceptable, 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 Office 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.

# WAIVING OF CORRECTIONS

The Draftsman has relaxed certain of the fine
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 Exam-
iner's opinion to be of a waivable nature, should
consult 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 section 608.02(h).
[R-20]

# 608.02(a) New Drawing -- When Re- quired [R-20]

## 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-

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# MANUAL OF PATENT EXAMINING PROCEDURE

608.02(b)

mal drawings when received are compared with
the prints for identity of disclosure. The com-
parison charge is $10 per hour or fraction
thereof per application. The papers filed and
the responsibility for processing will remain
with the Application Branch until the correct
filing 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." See also section 608.02.

# 608.02 (b) Informal Drawings [R- 20]

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 section 707.07 (a) ). To be fully re-
sponsive, an amendment must include a request
for drawing corrections when there is an indica-
tion of allowable subject matter. See Rule
111 (b).

# 608.02 (c) Drawings or Print Kept in Examining Group [R-20]

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 during prosecution.

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 illustration

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 possible
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-
ment does not apply to a 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. 1337. 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 [R- 20]

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 Group.
the docket clerk in the Examining Group

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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 section 608.02 (y).

## 608.02(i) Transfer of Drawings From Prior Applications [R- 20]

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 file in
the Office, or with part of such drawings, the old draw-
ings or any sheets thereof may be used if 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 must 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 a
newly submitted application that has not been
forwarded to an Examining Group.

Transfer of all drawings from a first pending
application to another will be made only after
the first 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 pend-
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 section
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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608.02(1)

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

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

In the case of a divisional 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 Reissue

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 a 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, a 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 letter 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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608.02(m)

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

## 608.02(m) Prints

Preparation and distribution of prints is dis-
cussed in 508.

Photographic prints are made of the draw-
ings of an acceptable application. Prints of
the drawings as filed 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 date 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) Duplickie 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 a legend associated with the "O.G. Fig.
CI. ... Sub .... " stamp on the front of each un-
canceled sheet.

### 608.02(p) Correction of Drawings

Rule 123. 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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### 608.02(r) Separate Letter to Drafts-

Any request by the applicant for amendment
of the drawing to cure defects must be em-
bodied in a separate 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, and applicant will be so advised in
the next action by the Examiner. (Basis:
Order No. 4009.)

NOTE .- 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 a 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 a 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(1) Cancelation of Figures

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 a red 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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# MANUAL OF PATENT EXAMINING PROCEDURE

608.02(w)

608.02(*)
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-

cial" tag (PO-364). If rough and blurred lines
are to be corrected, the Ezaminer should at that
time indicate in the margin the figure to be
printed in the O.G. (Basis: Notice of Jan-
nary 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 correction
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.

A

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608.04

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. Models 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 specifi-
cation, and the drawings, must be sufficiently full and
complete, and capable of being understood, to disclose
the invention without the aid of a model), and will
not be admitted unless specifically called for.

Rule 92. 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 has been received in 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.

NOTE .- 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 163.

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 disclo-
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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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. Note 608.01 (1).

While amendments to the specification and
claims involving new matter are ordinarily
entered, such matter is required to be canceled
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
Avers et al., 108 U.S.P.Q. 444 (new use). For

rejection of claim involving new matter see
706.03(0).

Norz .-- Completeness of disclosure, 608.01
(p); Trademarks and trade names, 608.01 (v).

608.04(b) 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 Matter

Where the new matter is confined 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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