1300

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1300 Allowance and Issue

1301
Substantially Allowable Case, Special

1302
Final Review and Preparation for Issue

1302.01
General Review of Disclosure

1302.01 (a)
Fee Exempt Application

1302.02
Requirement for a Rewritten Specification

1302.03
Erasure of Notations

1302.04
Examiner's Amendments and Changes

1302.04 (a)
Title of Invention

1302.04 (b)
Cancelation of Non-Statutory Claim

1302.04 (c)
Cancellation of Claims to Non-Elected
Invention

1302.04 (d)
Cancellation of Claims Lost in Interfer-
ence

1302.04 (e)
Cancellation of Rejected Claims Follow-
ing Appeal

1302.04 (f)
Data of Copending Application Referred
to-Brought up to Date

1302.04 (g)
Identification of Claims

1302.05
Correction of Drawing

1802.06
Prior Foreign Application

1302.07
Use of Retention Label to Preserve Aban-
doned Companion Applications

1302.08
Interference Search

1302.09
Notations on File Wrapper

1302.10
Notations on Drawings and on Classification
(Issue) Slip

1302.11
Reference to Assignment Branch

1302.12
Listing of References

1802.13

Signing

1303
Notice of Allowance

1303.01
Amendment Received after Allowance

1303.02
Undelivered

1803.03

Not Withheld Due to Death of Inventor

1304
Withholding From Issue of "Secrecy Order"

Cases

1304.01
Amendments After D-10 Notice

1805
Jurisdiction

1306

Public Law 690 Cases

1307
Change in Classification of Cases Which are in
Issue

1308
Withdrawal From Issue

1808.01
Rejection After Allowance

1308.02
For Interference Purposes

1809
Issue of Patent

1809.01
"Printer Waiting" Cases

1309.02
Protest Against Issue

## 1301 Substantially Allowable Case, Special

When an application is in condition for al-
lowance, except as to matters of form, the case

will be considered special and prompt action
taken to require correction of formal matters.
See 710.02(b) paragraph (a).

## 1302 Final Review and Preparation for Issue

### 1302.01 General Review

When an application is apparently ready for
allowance, it should be reviewed by the Ex-
aminer to make certain that the whole case
meets all formal requirements and particularly
that the brief summary of the invention and
the descriptive matter are confined to the in-
vention to which the allowed claims are di-
rected and that the language of the claims
finds clear support or antecedent basis in the
specification. Neglect to give due attention to
these matters may lead to confusion as to the
scope of the patent.

Frequently the invention as originally de-
scribed and claimed was of much greater scope
than that defined in the claims as allowed.
Some or much of the subject matter disclosed
may be entirely outside the bounds of the
claims accepted by the applicant. In such case
the Examiner should require the applicant to
modify his brief summary of the invention
and restrict his descriptive matter so as to be
in harmony with the claims. However valu-
able for reference purposes the Examiner may
consider the matter which is extraneous to the
claimed invention, patents should be confined
in their disclosures to the respective inventions
patented. (Rule 71.) Of course enough back-
ground should be included to make the inven-
tion clearly understandable. See 608.01(d)
and 608.01 (e).

There should be clear support or antecedent
basis in the specification for the terminology
used in the claims. Usually the original claims
follow the nomenclature of the specification;
but sometimes in amending the claims or in
adding new claims, applicant employs terms
that do not appear in the specification. This
may result in uncertainty as to the interpreta-
tion to be given such terms. See 608.01(o).

Where a copending application is referred to
in the specification, the Examiner should as-
certain whether it has matured into a patent
or become abandoned and that fact or the pat-
ent number added to the specification.

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### 1302.01 (a)

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The claims should be renumbered as required
by Rule 126, and particular attention should
be given to claims dependent on previous
claims to see that the numbering is consistent.
See 608.01 (j) and 608.01 (n).

The title should also be checked. It should
be as short and specific as possible. If a satis-
factory title is not supplied by the applicant,
the Examiner may change the title on or after
allowance. See 606 and 606.01.

### 1302.01(a) Fee Exempt Application

See 607.01 for checking specification to
assure presence of proper stipulation by
applicant.

## 1302.02 Specification To Be Rewritten if Confused by Erasures and Amendments

Whenever interlineations or cancellations
have been made in the specification or amend-
ments which would lead to confusion and mis-
take, the Examiners should require the entire
portion of specification affected to be rewritten
before passing the case to issue. (Basis: Order
525.) See Rule 125 in 608.01 (q).

## 1302.03 Erasure of Notations Re- quired

All pencil notes made by the Examiners
must be erased when the case is passed to issue.
(Basis: Order 560.)

## 1302.04 Examiner's Amendments and Changes

Except by formal amendment duly signed or
as hereinafter provided, no corrections, era-
sures, or interlineations may be made in the
body of written portions of the specification
or any other paper filed in the application for
patent. (See Rule 121.)

Correction of the following obvious errors
and omissions only may be made with pen by
the Examiner of the case who will then initial
the sheet margin and assume full responsibility
for the change. When correcting originally
filed papers, clean red ink must be used (not
blue or black ink).

1\. Misspelled words.

2\. Disagreement of a noun with its verb.

3\. Inconsistent "case" of a pronoun.

4\. Disagreement between a reference charac-
ter as used in the description and on the draw-
ing. The character may be corrected in the
description but only when the Examiner is
certain of the propriety of the change.

5\. Entry of "now Patent No. ____ " to iden-
tify a patent which has been granted on a
U.S. application referred to by Serial No. in
the specification.

6\. Other obvious minor grammatical errors
such as misplaced or omitted commas, improper
parentheses, quotation marks, etc.

7\. Obvious informalities in the application,
other than the ones noted above, or of purely
grammatical nature.

The fact that applicant is entitled under 35
U.S.C. 120 to an earlier U.S. effective filing
date is sometimes overlooked. To minimize
this possibility, the statement that, "This is a
division (continuation, continuation-in-part)
of Application Serial No. ____. , filed
"
should appear as the first sentence of the specifi-
cation except in the case of design applications
where it should appear as set forth in Sec.
1503.01. Any such statements appearing else-
where in the specification should be relocated.
(The clerk indicates the change for the printer
in the appropriate margin and applicant is
notified of the change by an Examiner's
Amendment.) (Basis: Notice of August 18,
1964.)

Other obvious informalities in the applica-
tion may be corrected by the Examiner, but
such corrections must be in the form of an
amendment, approved and signed by the Pri-
mary Examiner, placed in the file, and made
a part of the record. A copy of the amend-
ment is sent to the applicant. The changes
specified in the amendment are entered by the
clerk in the regular way.

The amendment or cancellation of claims by
Examiner's Amendment is permitted when
passing an application to issue where these
changes have been authorized by applicant (or
his representative) in a telephone or personal
interview. The Examiner's Amendment should
include a statement indicating that the changes
were authorized, the date and type (personal
or telephone) of interview, and with whom it
was had. (Basis: Notice of May 11, 1966.)

No other changes may be made by any per-
son in any record of this office without the
written approval of the Commissioner of Pat-
ents. (Basis: Order 3141 as modified by No-
tices of April 18, 1952, May 19, 1952 and Au-
gust 18, 1964.)

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When an Examiner finds that a case is in
condition for allowance and he desires to cite
or add references to the record as being of in-
terest, an Examiner's amendment (POL-37, re-
vised) should be used. (Basis: Notice of
February 24, 1966.)

Where an application is ready for issue ex-
cept for a slight defect in the drawing not

involving change in structure, the Examiner
will note in pencil on the drawing the addition
or alteration to be made. He will also prepare
an Examiner's Amendment indicating the
changes made and send the drawing to the
Draftsman for the required correction. (Ba-
sis : Order 4009.)

See also 608.02 (w).

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In reviewing the application all errors
should be carefully noted. It is not a matter
of importance whether the language is the best
that could be chosen: it is, however, essential
that it be clear in meaning, and free from
errors in syntax. An Examiner's Amendment
is usually made at the time a case is being pre-
pared for issue by the Examiner. However,
such amendment may also be necessary after the
proof of the patent is read and the case is sent
up to the Examiner with a "printer waiting"
slip (Form PO-97). A copy of the amendment
is sent to applicant even if the application is
already in the printer's hands. Applicant can-
not "authorize" an Examiner's Amendment to
cancel certain claims in the event that others are
allowed.

## 1302.04(a) Title of Invention

Where the title of the invention is not spe-
cific to the invention as claimed, see 606.01.

## 1302.04(b) Cancellation of Non-Stat- utory Claim

When a case is otherwise in condition for
allowance the Examiner may cancel an obvi-
ously non-statutory claim such as one to "A
device substantially as shown and described."
Applicant should be notified of the cancella-
tion of the claim by an Examiner's Amend-
ment. See 706.03 (h).

## 1302.04(c) Cancellation of Claims to Non-Elected Invention

See 821.01 and 821.02.

## 1302.04(d) Cancellation of Claim Lost in Interference

See 1109.02.

## 1302.04(e) Cancellation of Rejected Claims Following Appeal

See 1214.06, 1215.03, and 1215.04.

1302.04(f) Data of Copending Ap-
plication Referred to
Should Be Brought Up to
Date

Where a patent application which is ready
for issue refers by serial number to a U.S.

application which has matured into a patent,
the Examiner is authorized to enter the patent
number without an Examiner's Amendment.
This entry should be in the following form:
"now Patent No. ____. " This entry is to be
initialed in the margin by the Examiner to fix
responsibility for the same. The entry and
the initials should be in red ink. (Basis: No-
tice of May 19, 1952.)

If the application referred to has become
abandoned, the entry "and now abandoned"
should be made by a formal Examiner's
Amendment. See 1309.01.

## 1302.04(g) Identification of Claims

In entering an Examiner's Amendment in a
claim, the original number, as well as the num-
ber of the claim as it appears in the allowed
application, should be referred to. (Basis:
Notice of August 26, 1929.)

## 1302.05 Correction of Drawing

Where a case otherwise ready for issue re-
quires correction of the drawing, the Exam-
iner, before sending the file to the Draftsman,
should attach thereto a slip indicating that the
case is ready for allowance. Slight defects
may be corrected on the Examiner's initiative
as set forth in 608.02(w) and an Examiner's
Amendment prepared as set forth in 1302.04.

In view of the relaxed requirements for cer-
tain fine details, the need to correct some slight
defects may be obviated. See 608.02-"Waiving
of Corrections."

## 1302.06 Prior Foreign Application

On passing to issue any application in which
the requirements of 35 U.S.C. 119 are ap-
parently complied with, the Examiner should
check that the identification of the foreign case
has been entered on the file wrapper. See
201.14(c).

If no foreign data is to be entered, "None"
should be written in the spaces provided. This
will be crossed out, if papers are subsequently
filed. (Notice of January 23, 1964.)

## 1302.07 Use of Retention Labels To Preserve Abandoned Com- panion Applications

Rule 14(b). Abandoned applications are likewise
not open to public inspection, except that if an appli-

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cation referred to in a United States patent is aban-
doned and is available, it may be inspected or copies
obtained by any person on written request, without
notice to the applicant. Abandoned applications may
be destroyed after twenty years from their filing date,
except those to which particular attention has been
called and which have been marked for preservation.
Abandoned applications will not be returned.

Related applications referred to in patent
specifications are preserved from destruction
by a retention label (Form PO-150) which is
attached to the outside of the file jacket. The
Docket Clerk of the Division prepares such a
label for use as indicated below on each appli-
cation (which has not become a patent) which
is referred to in the specification or oath of
the application ready for allowance (or in any
Office letter therein).

If the case referred to is

Still pending:

Fill in and paste label on the face of the
pending file jacket so that no entry is ob-
scured, preferably in the unused portion of
the space provided for name and address of
inventor. Make no change in specification
of the allowable application.

Forfeited:

If file has been forwarded fill in label and
send it to Abandoned Files for attachment
to the jacket. If not forwarded treat the
same as pending case. Make no change in
specification of the allowable application.

Abandoned :

If file has been forwarded fill in label and
send it to Abandoned Files for attachment to
the jacket. If not forwarded treat the same
as pending case. Make Examiner's Amend-
ment, adding "now abandoned" in the allow-
able application.

Already patented :

No label is required. Insert patent num-
ber in specification if not already present.
Examiner's Amendment not necessary if this
is only change.

In issue:

No label is required.

(See Commissioner's Notice of May 19, 1952.)

Examiners are reminded that only one re-
tention label is necessary. Thus, if a retention
label is already present, it is sufficient to merely
add "et al." to the Serial Number cited thereon.
(Basis: Notice of August 1, 1952.)

### 1302.08 Interference Search

Assuming that the case is found ready for
issue, the Examiner makes an "interference
search" and notes the date and class and sub-

classes searched in the file wrapper. To do this,
he inspects all the pending prints and drawings
(or all the digests if the invention is not suscep-
tible of illustration) in the relevant subclasses
of the class in which the application is classified,
and all other pertinent classes, whether in his
division or elsewhere, in order to ascertain
whether any other applicant is claiming sub-
stantially the same subject matter as is being
allowed in the case in hand. When any of the
drawings or digests shows such a condition to be
likely, he examines the corresponding file.
See 1101.01 (c).

If the search does not disclose any interfer-
ing application, the Examiner should prepare
the case for issue.

### 1302.09 Notations on File Wrapper

The Examiner fills out in ink the form on
the face of the file wrapper.

In order to avoid misunderstanding on the
part of the Printing Office or the Issue and
Gazette Branch, examiners are urged to be
especially careful to write the class and sub-
class on the outside of the file wrapper as
legibly as possible. Each numeral should be
carefully written to indicate its precise nature.
The decimal point should be shown clearly and
in its proper position. (Basis: Memorandum
of July 6, 1952.)

Examiners will ordinarily designate but one
claim on each invention to be published in the
Official Gazette in connection with each orig-
inal or reissued patent. The broadest claim
should be selected. When a plurality of in-
ventions are claimed in an application, addi-
tional claims to a maximum of five may be
designated for publication. (Basis: Order
2422.)

Space is provided on the file wrapper for
identifying data of the parent application. If
the parent case of a division has issued as a
patent, the patent number and date should be
inserted. The notation "now abandoned"
should not be entered on the file wrapper.
Nor should the patent number and date of the
parent case of a continuation-in-part.
See 202.02.

If the case is not a substitute or continuing
case (of any kind), "None" should be written
in ink by the Examiner in the spaces where
data for the parent case would otherwise be
entered. (Notice of January 23, 1964.)

### 1302.10 Notations on Drawings and on Classification (Issue) Slips

The class and subclass and the name of the
Assistant Examiner which have been written
in pencil in the upper lefthand corner of the
drawing should not be erased. See 717.03.

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On the margin of the first sheet of drawing,
the Examiner indicates the figure which he se-
lects for printing in the Official Gazette and
also the final official classification of the case.
Ordinarily a single figure is selected for print-
ing. This figure should be consistent with the
claim selected for the Official Gazette.

If the selected figure is not on the first sheet,
the Examiner should indicate it also on the
sheet where it does appear. If there is no
figure illustrative of or helpful in understand-
ing the claimed invention, no figure need be
selected. "None" may be written after "O.G.
Fig." If, through inadvertence, the stamped
legend for O.G. Fig. and class and subclass
appears within the margin of the drawing, the
Examiner, should make the notations outside
of the margins.

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 Division does NOT
enter any date when the case is "sent to issue".
See 903.07 and 903.07(b) for notation to be
applied to the Classification Slip (Form PO-
270).

### 1302.11 Reference to Assignment Branch

Applications filed by an executor or adminis-
trator, or the equivalent, or a guardian of an
insane person, or in which an executor or ad-
ministrator or guardian has intervened; or in
which the death of the inventor has been sug-
gested, and also all divisional, continuation,
continuation-in-part, substitute and reissue ap-
plications must be referred to the Assignment
Branch before passing them to issue. All
applications showing an endorsement of an
assignment to the Government or which are
prosecuted by attorneys known to be employed
by the Government must be submitted to the
Assignment Branch with Form PO-410 at-
tached unless the file wrapper indicates under
"Issue (final) Fee" that none is required. Com-
pletion of this form by the Assignment Branch
will indicate which Notice of Allowance form
is to be used by the Issue Branch. (See also
409.01 (a) and 306.)

#### 1302.12 Listing of References

All references which have been cited during
the prosecution, including those appearing in
Board of Appeals decisions, and those submitted
by applicant if they conform to the require-
ments set forth in 805 O.G. 294, will be printed

in the patent. At the time of preparing the ap-
plication for allowance these references are ap-
propriately listed.

At time of allowance, the Examiner may cite
pertinent art in a separate letter. Such citation
of art is important in the case of continuing ap-
plications where significant prior art is often
of record in the parent case.

In the first action after termination of an in-
terference, the Examiner should make of record
in each application all references not already of
record which were pertinent to any motions to
dissolve and which were discussed in the deci-
sion on motion.

Foreign patents are listed by the actual name
of the country, as for example, "Great Brit-
ain" rather than "British" and "France" rather
than "French". (Basis: Notice of April 2,
1947.)

German allowed applications (captioned “Pa-
tentanmeldung" or "Auslegeschrift") referred
to in 901.05(b) should be listed under "OTHER
REFERENCES" rather than "FOREIGN
PATENTS". Care should be taken to include
the letter or letters immediately preceding the
number.

U.S. patents are listed in numerical order.
Foreign patents are listed alphabetically by
country and where there is more than one for-
eign patent from the same country these should
be listed in numeral order. (Basis: Memoran-
dum of August 5, 1947.) See 707.05 (e) for cita-
tion of references.

In order to avoid possible errors in the listing
of references, the following procedure should
always be followed:

Whenever a reference has been incorrectly
cited in any official paper forming part of an
application file, and such citation has been cor-
rectly given in an ensuing Office action, the
Examiner is directed to correct the error, in
ink, in the paper in which the error appears,
and place his initials on the margin of such
paper, together with a notation of the paper
number of the action in which the citation has
been correctly given.

In any case, otherwise ready for issue, in
which the erroneous citation has not been for-
mally corrected in an official paper, the Exam-
iner is directed to correct the citation in a sep-
arate letter on manifold POL-90. (Basis:
Notice of May 13, 1948.)

Where an applicant in an amendatory paper
or in a separate paper refers to a reference
which is subsequently relied on by the Exam-
iner, such reference shall be cited by the Exam-
iner in the usual manner. (Basis: Notice of
December 20, 1946.)

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Any new reference cited when the case is in
issue, under the practice of 1308.01, should be
added to the list.

Applicants, attorneys and agents are hereby
advised that it is considered to be not only
proper but highly desirable that they inform
the Patent Office, in a separate paper either at
the time of filing of an application or as soon as
practicable thereafter, of any prior patent or
printed publication which, in their opinion, may
be helpful to the Office in its examination of the
application. It is not the intention of the Pat-
ent Office to rely on such citations as a substi-
tute for all or any part of the official search, nor
as an admission by the applicant or attorney
that the cited art is anticipatory of any claim or
should form a basis for a rejection thereof. The
object in requesting a citation by the applicant
or attorney of prior art known to him is to pro-
vide a check on the official search and also to
facilitate such search in that an examiner who
is advised of prior art of a given degree of perti-
nence before beginning his search does not need
to spend time in considering art which is ob-
viously less pertinent, but which he would have
been required to consider if he were starting
from scratch. The results of a preliminary
search may be filed. The submission of art cita-
tions hereunder may be accompanied by any
desired statement of reasons or qualifications,
or by none at all. The Patent Office, if it uses
such art, will not rely in any way on the fact
that it was cited by the applicant or attorney,
but will treat it in exactly the same manner as
art discovered in the official search.

It is definitely to the applicant's advantage to
have all pertinent art of record. Any citation
should be selective and should avoid unnecessary
duplication or the inclusion of art of compara-
tively little relevance. The publication of cita-
tions from applicant will be limited to cases in
which not more than ten references have been
cited. The citation need not be accompanied
by any particular form of statement. It is nec-
essary only to identify the application and to list
the prior art to which it is desired to draw atten-
tion. It will be sufficient to state that the art
is cited in accordance with the Notice of Decem-
ber 10, 1963, or that it is thought that the art
cited may be of interest to the examiner, or that
it represents the result of a preliminary search.
On the other hand, the person citing the art may,
if he so desires, include a specific statement as to
how it was located, what its pertinence is con-
sidered to be, how the claims distinguish over
it, or any other matter which he considers rele-
vant. Such art will be listed in the patent as
printed, whether or not it is relied on by the
Examiner in his actions on the application un-

less the art cited is so extensive as to render such
listing impracticable.

The submitted list of prior art will be printed
under a separate category from the listing
of references cited by the Examiner. Only
citations submitted prior to the closing of prose-
cution of the application before the Examiner
will be considered for listing in the printed
patent. No reference citation will be printed
unless the supplied information includes the
name, number, and date for domestic patents;
the country, number, and date for foreign pat-
ents; and the title, date and page numbers for
publications. However, in the event that an
applicant or attorney desires that the record
shall not disclose what art was cited by him, the
citation will, if he so requests, be removed from
the file prior to the issuance of the patent and
the cited art will be listed only to the extent
that it is relied on by the Examiner. The sub-
mitted list will not be removed from the file
when applicant so requests unless the citations
have been filed in a separate paper. (Basis:
Notices of December 10, 1963, April 24, 1964,
June 22, 1964 and July 24, 1964; 805 O.G. 294.)

In implementing these Notices the following
procedure will be followed :

The Examiners will attach a reminder tag to
the page of submitted prior art citations at the
earliest opportunity. This tag will extend be-
yond the top edge of the file wrapper. Any
reference cited in an Office action and appearing
on the list of submitted citations should be
struck from the list, dated, and initialed by the
Examiner. A reference cited by an examiner
which appears in applicant's submitted list will
be printed solely in the list of examiner's cita-
tions. In those cases where removal from the
file is requested, the submitted paper with
the request for removal attached thereto will be
sent from the Examining Group to the Docket
Branch for retention in the Miscellaneous Files.

#### 1302.13 Signing

After revision, the face of the file jacket is
signed in the space designated "Primary Ex-
aminer" by the Primary Examiner or by the
Examiner with full signatory authority who
acted on the application. The signature should
not appear in any other space on the file jacket.

The names of all examiners appearing in the
Office actions are printed in the issued patent.

#### 1303 Notice of Allowance

The appropriate form of notice of allowance
is used and the mailing date appearing thereon

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is stamped on the file wrapper by the Issue and
Gazette Branch.

## 1303.01 Amendment Received After Allowance

If the amendment is filed under Rule 312,
see 714.15 to 714.16(e). If the amendment
contains claims copied from a patent, see
1101.02(g).

### 1303.02 Undelivered

In case a notice of allowance is returned, and
a new notice is sent, as set forth in 707.13, the
file is obtained from the Issue and Gazette
Branch, and the date of sending the no-
tice changed to agree with the date of such
remailing,

## 1303.03 Not Withheld Due to Death of Inventor

The notice of allowance will not be withheld
due to death of the inventor even though the
executor or administrator has not intervened.
See 409.01 (f).

## 1304 Withholding From Issue of "Se- crecy Order" Cases

"Secrecy Order" cases are not sent to issue
even when all of the claims have been allowed.
Instead of mailing an ordinary notice of allow-
ance a D-10 Notice is sent. See 107.02.

If the "Secrecy Order" in a case is with-
drawn after the D-10 notice is mailed, the case
should then be treated like an ordinary appli-
cation in condition for allowance.

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## 1304.01 Amendments After D-10 No- tice

For amendments received after D-10 Notice,
see 107.02.

### 1305 Jurisdiction

Jurisdiction of the application remains with
the Primary Examiner until the notice of allow-
ance is mailed by the Issue and Gazette Branch.
However, the Examiner may make Examiner's
amendments correcting obvious errors, as,
when brought to the attention of the Examiner
by the printer, and also may admit amend-
ments under Rule 312 which are confined to
matters of form in specification or claims, or
to the cancellation of a claim or claims. The
Examiner's action on other amendments under
Rule 312 consists of a recommendation to the
Commissioner.

To regain jurisdiction over the case, the Ex-
aminer must write a letter to the Commissioner
requesting it. See 1308 and 1308.02.

Once the patent has been granted, the Patent
Office can take no action concerning it except
as provided in 35 U.S.C. 135 and 35 U.S.C. 231
through 256. See chapter 14.

### 1306 Public Law 690 Cases

See 201.16.

#### 1307 7 Change in Classification of Cases Which Are in Issue

See 903.07

### 1308 Withdrawal From Issue

Rule 313. Withdrawal from issue. After the notice
of allowance of an application is sent, the case will
not be withdrawn from issue except by approval of
the Commissioner, and if withdrawn for further action
on the part of the Office, a new notice of allowance will
be sent if the application is again allowed.

When the issue fee or that portion thereof specified
in the notice of allowance has been paid, and the
patent to be issued has received its date and number,
the application will not be withdrawn from issue on
account of any mistake or change of purpose of the
applicant, his attorney or his agent, nor for the purpose
of enabling the inventor to procure a foreign patent,
nor for any other reasons except mistake on the part
of the Office, or because of fraud or illegality in the
application, or for interference. Express abandon-
ment of the application (rule 138) may not be recog-
nized by the Office unless it is actually received by
appropriate officials in time to act thereon before the
date of issue.

If the applicant wishes to have the case
withdrawn from issue, he must petition the
Commissioner. Withdrawal is permitted only
for the reasons stated in the rule. For with-
drawal procedure by Examiner see 1308.02.

When the Examiner removes the drawing
from the drawing cabinet to prepare an appli-
cation for issue, the print of the drawing must
be taken from the application file and placed
in the drawing cabinet to take the place of the
original drawing. The print should remain in
the drawing cabinet during the period the appli-
cation is being revised for issue and until the
hard copy of the patent is received in the group
or the application becomes forfeited. The
docket clerk should, of course, add any neces-
sary notations on the print at the time the appli-
cation is forwarded to the Issue and Gazette
Branch.

This practice will insure that the drawing or
a print of the drawing is available at all times
in the drawing cabinet for interference searches.
This is of particular importance in groups
where there may be a backlog of applications
awaiting revision for issue. (Basis: Notice of
March 28, 1962.)

### 1308.01 Rejection After Allowance

A claim noted as allowable shall thereafter
be rejected only with the approval of the Pri-
mary Examiner. Great care should be exer-
cised in authorizing such rejection. (Basis:
Order 3157.)

When a new reference is discovered, which
obviously is applicable to one or more of the
allowed claims in an application in issue, and
where a sufficient portion of the statutory pe-
riod for payment of final fee remains, the
Examiner is authorized to enter a letter in-
forming applicant of the proposal of request-
ing withdrawal from issue for the purpose of
rejecting the claim or claims as fully met by,
or obviously unpatentable over, the new ref-
erence. The letter should apply the reference
in detail and should also set a time limit
(within such statutory period), within which
applicant may respond by way of argument
or amendment under Rule 312 to overcome the
reference and avoid the necessity for with-
drawal from issue. Such a letter, with the
reference and file, should be submitted to the
Group Supervisor before mailing. (Basis:
Notice of March 15, 1950.)

If insufficient time remains to carry out the
above, or if no response is received, or if a
response is filed and it fails to overcome the
reference, or if the above appears fruitless, a
letter is addressed to the appropriate Director,
requesting that the application be withdrawn

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from issue for the purpose of applying the new
reference. This letter should cite the refer-
ence, and, if need be, briefly state its applica-
tion. This letter, with the reference and file,
should be submitted to the Group Manager
before it is transmitted. Upon approval of this
request, the letter is taken to the Issue and
Gazette Branch and the application is stamped
"Withdrawn" over the allowance signature of
the Primary Examiner. It is then returned to
the group from which it came; the withdrawal
from the issue is entered on the register, and
the application is thus restored to its former
status as a pending application awaiting action
by the Examiner. The Examiner at once writes
a letter in the case stating that the application .
has been withdrawn from issue, citing the new
reference, and rejecting the claims met thereby.

The letter is given a paper number and
placed in the file.

If the Examiner's proposed action is not ap-
proved, the letter requesting withdrawal from
issue should not be placed in the file.

### 1308.02 For Interference Purposes

It may be necessary to withdraw a case from
issue for reasons connected with an interfer-
ence. For the procedure to be followed see
1101.01(o) and 1112.04.

### 1309 Issue of Patent

The files of allowed cases (not patented files)
are kept in the Issue and Gazette Branch, ar-
ranged in the serial number order. When the
final fee is paid within the time allowed by
law, the file is given a patent number and date.
The file then goes to the Assignment Branch
for examination as to assignments after which
it is sent to the Government Printing Office
for printing of the specification. A bond
paper copy of the drawing and specification is
ribboned and sealed in the Issue and Gazette
Branch and finally signed.

35 U.S.C. 158. How issued. Patents shall be issued
in the name of the United States of America, under the
seal of the Patent Office, and shall be signed by the
Commissioner or have his signature placed thereon
and attested by an officer of the Patent Office desig-
nated by the Commissioner, and shall be recorded in
the Patent Office.

In accordance with the Commissioner's No-
tice of July 2, 1952 (661 O.G. 13) various
officials including the head of the Issue and

Gazette Branch have been designated as attest-
ing officer to attest to the name of the Commis-
sioner. The assistant head of the Issue and
Gazette Branch acts as attesting officer in the
absence or unavailability of the head of the
branch.

## 1309.01 "Printer Waiting" Cases

After printing of the specification the proof
is read by employees of the Government Print-
ing Office. Where apparent error is found, the
file with the proof is transmitted to the Exam-
iner, attention being called on an attached
"printer waiting" slip (Form PO-97) to the
supposed errors.

All "printer waiting" cases must receive im-
mediate attention and be returned to the Issue
and Gazette Branch as soon as possible (pref-
erably within three hours). (Basis: Notice of
December 6, 1920.)

If the Examiner concurs in the criticisms,
the errors should, if possible, be corrected in
clean red ink and initialed or be corrected by
Examiners' amendment. See 1302.04.

If the required correction cannot be cured
by Examiner's amendment, the application
may have to be withdrawn from issue. This
may sometimes be avoided if the attorney or
his representative is in Washington. In such
cases, he should be called in immediately, and
the error may perhaps be corrected by amend-
ment under Rule 312.

If the Examiner finds the specification cor-
rect as it stands, he endorses the slip to that
effect.

After correction or checking, the application
file and proof should be promptly returned to
the Issue and Gazette Branch.

## 1309.02 Protest Against Issue

Rule 291. Protests to the grant of a patent. The
patent statutes do not provide for opposition to the
grant of a patent on the part of the public. Protests
to the grant of a patent are ordinarily merely ac-
knowledged, and filed after being referred to the ex-
aminer having charge of the subject matter involved
for his information.

When a protest is filed against the issuance
of a patent the same shall, after consideration
by the Examiner, be forwarded to the Super-
visory Examiner and shall not be entered in
the file of the application to which it refers.
(Basis: Order 1805.)

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