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OCR transcription for search; preserved printed pages are authoritative

# Chapter 600 Parts, Form and Content of Application

601

Petition

608 Disclosure

601.01

Amendment of

608.01

Specification

601.02

Power of Attorney or Authorization of Agent

608.01 (a)

Parts

602

Original Oath

608.01 (b)

Preamble

602.01

Cannot Be Amended

608.01 (c)

May Be Omitted

602.02

New Oath or Substitute for Original

608.01 (d)

Brief Summary of Invention

602.03

Defective Oath Must Not Be Waived by the

608.01 (e)

Reservation Clauses Not Permitted

Examiner

608.01 (f)

Brief Description of Drawings

602.04

Foreign Oath

608.01 (g)

Detailed Description of Invention

602.04(a)

Ribboned to Other Application Papers

608.01 (h)

Mode of Operation

602.05

Date of Execution

608.01 (1)

Claims

602.05(a)

In Division and Continuation Cases

608.01 (j)

Numbering

603

Supplemental Oath

608.01 (k)

Statutory Requirement

603.01

After Allowance

608.01 (1)

Original

604

Administration or Execution of Oath

608.01 (m)

Form

604.01

Seal

608.01 (n)

Dependent Claims

604.02

Venue

608.01 (0)

Basis for Terminology in Description

604.03

Notaries and Extent of Jurisdiction

608.01 (p)

Completeness

604.03

(a) Notarial Powers of Some Military Officers

608.01 (q)

Substitute or Rewritten

604.04

Consul

608.01 (r)

Derogatory Remarks About Prior Art

604.04

(a) Omission of Certificate

608.01 (s)

Restoration of Canceled Matter

604.05

Consular Fee Stamp

608.01(t)

Use in Subsequent Application

604.05(a)

Omission

608.01 (u)

Of Formerly Filed Incomplete Application

604.06

By Attorney in Case

608.01 (v) Trademarks and Trade Names

605

Applicant

608.02 Drawing

605.01

Citizenship

608.02 (a)

When New Drawing Is Required

605.02

Residence

608.02 (b)

Informal

605.03

Post Office Address

608.02(c)

Or Print Always Kept in Examining Divi-

605.04

Signature and Name

sion

605.04

(a) Single Signature Form

608.02 (d)

Complete Illustration

605.04

(b) Full First Name Required

608.02 (e)

Examiner Determines

605.04

608.02 (f)

Modification

605.04

(d) Unable To Write

608.02 (g)

Illustration of Prior Art

605.04(e)

Use of Title

608.02 (h)

Additional, Duplicate, or Substitute

605.04

(f) Joint-Order of Names

608.02 (i)

Transfer From Prior Application

605.04

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

608.02 (j)

Canceled Sheets to Divisional

tion Branch

608.02 (k)

Patented, to Reissue

605.04

(h) To Drawing

608.02 (1)

To Continuation or Substitute

605.05

Administrator, Executor or Other Legal Rep-

608.02 (m) Prints

resentative

608.02 (n)

Patentability Report Cases

605.05

(a) Signature

608.02 (0)

Dates Entered on

605.06

Filling by Other Than Inventor

608.02 (p)

Correction of

606

Title of Invention

608.02 (q)

Conditions Precedent to Amendment of

606.01

Examiner May Require Change in Title

Drawings

607

Filing Fee

608.02 (r)

Separate Letter to Draftsman

607.01

Fee Exempt

608.02 (s)

Estimating Cost of Correcting Drawings

607.01

(a) Inventor Leaves Service of United States

608.02 (t)

Cancelation of Figures

607.01

(b) Fee Exempt Changed to Fee Filed

608.02 (u)

Changing Name of Attorney on Drawing

607.01

Forbidden

607.02

Returnability

608.02 (v)

Changes Which Require Sketches

608.02(w) Changes Which May be Made by Exam-
iner's Amendment Without a Sketch

608.02 (x) Disposition of Orders for Amendments of
Drawing

608.02 (y) Return of Drawing

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

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

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

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

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

## THE APPLICATION

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

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

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

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

## NOTE

Reissue patents, 1401.

Design patents, Chapter 1500.

Plant patents, Chapter 1600.

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

€

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

See, however, 604.04 (a)

### 601 Petition

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

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

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

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

The petition need not be dated.

### 601.01 Amendment of Petition

Those portions of the petition other than the
post office address (see 605.03) may be
amended by the attorney. (Basis: Order No.
1994.)

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

The attorney's or agent's full post office ad-
dress should be given in every power of attor-
ney or authority of agent. The prompt de-
livery of communications will thereby be
facilitated. (Basis : Notice of Oct. 8, 1946.)

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

### 602 Original Oath

Rule 65. Oath of applicant. (a) The applicant, if
the inventor, must make oath or affirmation that he
does verily believe himself to be the original and first
inventor or discoverer of the process, machine, manu-
facture, composition 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
under oath that to the best of his knowledge and belief
the invention has not been in public use or on sale in
the United States for 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 application filed by himself or his legal repre-
sentatives or assigns more than twelve months prior
to his application in this country. The oath shall state
whether or not any application for patent on the same
invention has been filed in any foreign country, either
by the applicant 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 application filed more than twelve months
before the filing of the application in this country.
This oath must be subscribed to by the affiant.

See rule 153 for oath in design cases and rule 162 for
oath in plant patent applications.

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

(c) An additional oath may be required if the ap-
plication has not been filed in the Patent Office within
a reasonable time after the execution of the original
oath.

Rule 65 has been amended with respect to
the recitation of prior foreign applications.
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. It should be noted
that an oath in the form proper before Janu-
ary 1, 1953, is still acceptable.

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

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

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

When joint inventors execute separate oaths,
each oath should make reference to the fact
that the 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 inventor together with
"A or A & B, etc." as the facts may be.

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

If a claim is presented for matter not orig-
inally claimed or embraced in the original state-
ment of invention in the specification a supple-
mental oath is required. Rule 67, 603.

### 602.01 Oath Cannot Be Amended

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

For example, if the oath does not set forth
evidence that the notary was acting within his
jurisdiction at the time he administered the
oath a certificate of the notary that the oath
was taken within his jurisdiction will correct
the deficiency. See 604.02.

### 602.02 New Oath or Substitute for Original

In requiring a new oath, the Examiner
should always give the reason for the require-
ment and call attention to the fact that the
application of which it is to form a part must
be properly identified in the body of the new
oath, preferably by giving the serial number
and the date of filing.

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

### 602.03 Defective Oath Must Not Be Waived by the Examiner

The fact that the courts would probably not
invalidate a patent because of a defective oath,
does not relieve the Examiner of the duty of
requiring the appropriate remedy for any such
defect.

### 602.04 Foreign Oath

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

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

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

with the official seal of the officer before whom the
oath is taken. If the papers as filed 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 filed.

### 602.05 Oath-Date of Execution

The time elapsed between the date of execu-
tion of oath and the filing date of the applica-
tion should be checked for compliance with
Rule 65(c). If an unreasonable time has
elapsed, the Examiner should call for a new
oath. What constitutes a reasonable time is a
question of judgment to be determined by all
the circumstances in the particular case. (Five
weeks plus time of transmission in the mails
was considered reasonable under the circum-
stances of ex parte Heinze, 1919 C.D. 67; 265
O.G. 145). Note 602.05 (a).

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

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

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

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

### 603 Supplemental Oath

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

on an application filed by himself or his legal repre-
sentatives or assigns more than twelve months prior
to his application in the United States, and has not
been abandoned. Such supplemental oath should ac-
company and properly identify the proposed amend-
ment, otherwise the proposed amendment may be re-
fused consideration.

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

Rule 67 requires in the supplemental oath
substantially all the data called for in Rule 65
for the original oath. As to the purpose to be
served by the supplemental oath, the Examiner
should bear in mind that it cannot be availed
of to introduce new matter into an application.
It applies only to matter originally shown or
described but not embraced in the statement
of invention or claims as originally presented.

### 603.01 Supplemental Oath Filed After Allowance

Since the decision in Cutter Co. v. Metro-
politan Electric Mfg. Co., 275 Fed. 158, many
supplemental oaths covering the claims in the
case have been filed after the case is allowed.
Such oaths may be filed as a matter of right
and when received they will be placed in the
file by the Issue Branch, but their receipt will
not be acknowledged to the party filing them.
They should not be filed or considered as
amendments under Rule 312, since they make
no change in the wording of the papers on
file. (Basis: Order No. 2798.) See 714.16.

### 604 Administration or Execution of Oath

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

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

NOTE : Seals, 604.01.

When unnecessary, 604.01.

In foreign case, 602.04 (a).

#### 604.01 Seal

When the person before whom the oath or
affirmation is made in this country is not pro-
vided with a seal, his official character shall be
established by competent evidence, as by a cer-
tificate from a clerk of a court of record or
other proper officer having a seal, except as
noted in 604.03 (a), in which situations no seal
is necessary. When the issue concerns the au-
thority of the person administering the oath,
the Examiner should require proof of Author-
ity. 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.

The seal must be a physical impression such
as produced with a die upon the paper or upon
a substance adherent to the paper. See also
602.04 (a) on foreign executed oath and seal.

#### 604.02 Venue

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

#### 604.03 Notaries and Extent of Juris- diction

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

STATEWIDE

Alabama
Alaska

Arkansas
California

Canal Zone

New Hampshire

Colorado

New Jersey

Connecticut

New Mexico

Delaware

New York

District of Columbia

North Carolina

Florida

North Dakota

Georgia

Oklahoma

Idaho

Oregon

Illinois

Pennsylvania

Indiana

Puerto Rico

Louisiana

Rhode Island

Maine

South Carolina

Maryland

South Dakota

Massachusetts

Utah

Michigan

Vermont

Minnesota

Washington

Montana

Wisconsin

Nevada

Wyoming

COUNTY ONLY

Arizona
Kansas
Mississippi

Tennessee
Texas
West Virginia

VARIABLE JURISDICTION

(See explanatory paragraphs (a-f) below)

Hawaii (e)

Nebraska (b)

Iowa (a)

Ohio(f)

Kentucky (a)

Virginia (d)

Missouri (a)

(a) In Iowa, Kentucky, and Missouri a
notary, by filing a proper certificate in counties
adjoining that for which he is appointed, may
have authority to administer oaths in such
counties also.

(b) In Nebraska a notary with a county com-
mission can act only in that county; but he
may have a general commission and may then
act in any county on filing proper papers.

(d) In Virginia, a notary may be appointed
for one or more counties and cities, or for the
commonwealth at large.

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

(f) In Ohio the law, as amended in 1941,
gives notaries who are attorneys-at-law state-
wide jurisdiction and other notaries jurisdic-
tion in the county of appointment. The extent
of jurisdiction is stated on the seal or near the
notary's signature. The title "Attorney-at-
Law" should appear near the signature to in-
dicate that a notary public who is also an at-
torney administered the oath.

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)

# MANUAL OF PATENT EXAMINING PROCEDURE

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

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

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

(2) All law specialists;

3\) All summary courts-martial;

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

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

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

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

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

### 604.04 Consul

When the oath is made in a foreign country,
the authority of any officer other than a diplo-
matic or consular officer of the United States
authorized to administer oaths must be proved
by certificate of a diplomatic or consular officer
of the United States. Rule 66, 604.

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

Where the oath is taken before an officer in
a foreign country other than a diplomatic or
consular officer of the United States and whose
authority is not authenicated, the application
is nevertheless given a filing date for purposes
of examination. The examiner, in his first
Office action, should note this informality and
require authentication of the oath by an ap-
propriate diplomatic or consular officer. The
following language is suggested in requiring
authentication of an oath:

"The oath is informal in that it lacks au-
thentication by a diplomatic or consular officer
of the United States; Rule 66(a). This in-
formality can be overcome only by forwarding
the original oath to the appropriate officer
for authentication if applicant wishes to pre-

serve his original filing date. Applicant
should therefore request return of the oath for
this purpose. Such request must be accompa-
nied by an order for a copy of the oath to be
retained in the file until the properly authenti-
cated oath is returned. See section 604.04(a),
MPEP. After the oath has been authenti-
cated, it should be returned promptly to the
Patent Office."

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

### 604.05 Consular Fee Stamp

Up to June 28, 1955, the statute (22 U.S.C.
1196) required consular officers to affix a fee
stamp to papers in connection with which they
had performed consular or notarial acts. The
act performed was not legally valid in the
United States unless this stamp had been af-
fixed. Such stamps were not required of em-
bassies and legations under the Notice of
Aug. 4, 1914.

The above mentioned statute was repealed
by an Act of Congress effective June 28, 1955,
and the use of consular fee stamps has been
discontinued. Hence all papers executed on
or after that date that formerly required the
consular fee stamp, are acceptable without such
stamp. (Basis: Notice of Jan. 25, 1956.)

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

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

#### 604.06 By Attorney in Case

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

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 604.

#### 605 Applicant

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

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

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

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

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

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

### NOTE

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

Nationals of Germany or Japan may not ap-
ply for or obtain patents for any invention
made, or upon which an application was filed
by any such national, before January 1, 1946,
in Germany or Japan or in the territory of any
other of the Axis Powers or in any territory

occupied by the Axis forces. Public Law 380,
Sec. 3, 602 O.G. 675-6.

#### 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

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
717.02(b).

#### 605.03 Applicant's Post Office Address

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

The object of requiring applicant's post of-
fice address is to enable the Office to communi-
cate directly with the applicant if desired;
hence, the address of the attorney with in-
structions to send communications to applicant
in care of the attorney is not sufficient. (Ba-
sis: Order No. 1994.)

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

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

#### 605.04 Applicant's Signature and Name

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

Rule 76. Signature to the specification. When the
oath is attached to and refers to the petition, specifica-

tion and claim to which it applies, the specification
need not be signed. Otherwise it must be signed by the
applicant in person.

The signing and execution by the applicant
of certain Divisional applications may be
omitted. Rule 147, Section 201.06.

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

##### 605.04(a) Single Signature Form

The single signature form should be exe-
cuted only when attached to 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. (Basis: Order No. 3140.)

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

În 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

In cases where an applicant's name has been
changed after his application has been filed
and the applicant desires that the patent when
issued carry an endorsement as to the change
in his name, he must submit a recording fee
accompanied by either an affidavit signed with
both names and setting forth the procedure
whereby the change of name was effected, or 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. (Basis: Order No. 5106.)

No change is made on the face of the file
by the Division Clerk of the examining divi-
sion. A suitable endorsement being made by
the Assignment Branch. When ready for al-
lowance, the case should be sent to the Draft-
ing 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.

##### 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.
(Basis: Notice of Aug. 30, 1956.)

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

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

##### 605.04(h) Signature to Drawing

Rule 82. Signature to drawing. Signatures are not
required on the drawing if it accompanies and is re-

ferred to in the other papers of the application, other-
wise the drawing must be signed. The drawing may
be signed by the applicant in person or have the name
of the applicant placed thereon followed by the sig-
nature of the attorney or agent as such.

Extract from Rule 84, 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 Rules now permit (a) the drawing to
be signed as in the past, (b) to be signed as
in the past but below the lower marginal line,
or (c) no signature on the drawing provided
it accompanies and is referred to in the other
papers of a new application.

The signature when placed on the drawing
should never cross the marginal line. The full
first name of the inventor is not required on
the drawing. Drawings filed without the in-
ventor's name thereon, will have the name
applied in pencil by the Mail Branch.

The drawing is not signed by both applicant
and attorney. When the drawing is signed by
the inventor in person the name of the attor-
ney is not permitted 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 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)

# MANUAL OF PATENT EXAMINING PROCEDURE

## 605.05(a) Signature of Legal Repre- sentative

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

John A. Jones, deceased,
by Mary A. Jones, Administratrix.
The other signatures must either be in the
above form or:
Mary A. Jones
Administratrix of Estate of
John A. Jones, deceased.

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

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

## 605.06 Filing by Other Than Inventor

See 409.03.

## -606 Title of Invention

Rule 72. Title of the invention. The title of the in-
vention, which should be as short and specific as pos-
sible, should appear as a heading on the first page of
the specification, if it does not otherwise appear at the
beginning of the application.

Despite the statement in the Rule, the Ex-
aminer should not require that the title be
placed at this particular location.

## 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. (Basis: Notice of July 1,
1946.)

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. (Basis:
Notice of May 23, 1950.)

## /607 Filing Fee

While a filing fee, except in certain applica-
tions in which the Government has an interest,
is a sine qua non part of the complete applica-
tion, it seldom presents any question requiring
the attention of the Examiner. The requisite
fee must be paid before the application is
given a filing date, and hence before it is sent
to the examining division, Rule 22. Fees are
listed in Rule 21.

No additional filing fee is receivable after
the filing date. If claims in excess of the num-
ber corresponding to the filing fee are pre-
sented before the first official action, see 714.10.

## 607.01 Fee Exempt

There are two types of Fee Exempt appli-
cations: (a) those filed under 35 U.S.C. 266
and (b) those filed under a ruling of the
Comptroller General's Opinion B-111,648:

### FILED UNDER 35 U.S.C. 266

35 U.S.C. 266. Issue of patents without fees to Gov-
ernment employees. The Commissioner may grant,
subject to the provisions of this title, to any officer,
enlisted man, or employee of the Government, except
officers and employees of the Patent Office, a patent
without the payment of fees, when the head of a de-
partment or agency certifies the invention is used or
likely to be used in the public interest and the appli-
cant in his application states that the invention de-
scribed therein, if patented, may be manufactured and
used by or for the Government for governmental pur-
poses without the payment to him of any royalty
thereon, which stipulation shall be included in the
patent. (Based on Act Mar. 3, 1883, amended Apr. 30,
1928.)

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

"The invention described herein may be
manufactured and used by or for the Gov-
ernment for governmental purposes without

the payment of any royalty thereon."

If the substance of such a statement does
not appear in the specification, but is present
elsewhere in the record, the same should be
entered, by Examiner's Amendment, as the
first paragraph of the specification.

If the substance of this statement is not
present at any point in the record of the ap-
plication, an action should be made requiring
such statement, signed by the applicant, and an
amendment directing insertion of same as the
first paragraph of the specification. A short-
ened statutory period for response should be
set and the application withheld from issue
until such response has been made. (Basis:
Notice of June 6, 1949.)

## FILED UNDER COMPTROLLER GENERAL'S OPINION

The Comptroller General has ruled (Comp-
troller General's Opinions B-111,648 and
B-117,353) that fees need not be paid in ap-
plications filed by one not a Government em-
ployee.

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

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

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

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

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

Where an application is filed under 35 U.S.C.
266, the regular filing fee can be subsequently
paid and proper amendment made by the in-
ventor, concurred in by the Head of the De-
partment concerned, cancelling the offer of

dedication, the fee being entered on the file
and the original date of the application re-
tained.

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

An application for which a filing fee has
been paid may issue under 35 U.S.C. 266 if the
applicant qualifies under this section, and files
the required dedication by amendment signed
by the inventor and certified by the Head of
the Department. In such case the docket clerk
of the division will forward the application to
the Application Branch for appropriate
amendment of the file wrapper and of the
record in the Application Branch. (Basis:
Notice of August 10, 1938.)

## 607.02 Returnability of Fees

All questions pertaining to the return of fees
will be referred to the Financial Division. Ex-
aminers and Chiefs of other divisions will
express no opinion to attorneys or applicants
as to whether or not fees are returnable in par-
ticular cases. (Basis: Notice of Oct. 11, 1937.)

## 608 Disclosure

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

## 608.01 Specification

Rule 71. Detailed description and specification of the
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. Rule 78, 202.01.

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

(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 81% by 121% 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, erasure or cancellation or
other alteration made before the application was
signed and sworn to should be clearly referred to in a
marginal note or footnote on the same sheet of paper,
and initialed or signed and dated by the applicant to
indicate such fact. (See Rule 56.)

In order that specifications may be expedi-
tiously handled by the Office, page numbers
should be placed at the center of the bottom
of each page. It is a common practice and
a commendable one, to consecutively number all
the lines of each page (and the lines of each
claim). A top margin of at least 11/2 inches
should be reserved on each page to prevent
possible mutilation of text when the papers are
punched for insertion in a file jacket. (Basis:
Notice of March 8, 1950.)

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. (Basis:
Notice of July 21, 1961.)

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

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

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

The requirement that the specification must
be in the English language is not satisfied by
the filing of a signed specification in a foreign
language together with 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 U.S.P.Q. 364.

### 608.01(a) Parts of Specification

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

(a) Title of the invention ; or a preamble stating the
name, citizenship and residence of the applicant and
the title of the invention may be used.

(b) Brief summary of the invention.

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

(d) Detailed description.

(e) Claim or claims.

(f) Signature (see rule 76).

The term specification as used herein in-
cludes the descriptive portion of the applica-
tion and the claims. "Specification" is some-
times used to denote the descriptive portion
without the claims.

NOTE

Design patent specification, 1503.01.
Plant patent specification, 1601.5.
Reissue patent specification, 1401.06.

## 608.01(b) Preamble

The preamble of the specification is simply
the introductory portion stating applicant's
name, citizenship, residence, and the title of
the invention.

## 608.01 (c) Preamble May Be Omitted

Since the preamble is not printed in the pat-
ent, its omission by applicant from the specifi-
cation is permissible. The oath or single
signature form supplies the data as to name,
citizenship, etc., of which a specification pre-
amble is composed.

## 608.01(d) Brief Summary of Inven- tion

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 should, 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 905.04. The brief
summary should be more than a mere state-
ment of the objects of the invention, which
statement is also permissible under Rule 73.

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

## 608.01(e) Reservation Clauses Not Permitted

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
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
numerals (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

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

The reference characters must be properly
applied, no single reference character being
used for two different parts or for a given part
and a modification of such part. In the latter
case, the reference character, applied to the
"given part," with a prime 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 in 608.01(i), 608.01(o), and 1302.01.

NOTE .- Completeness 608.01 (p).

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

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

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

Norp .- Completeness 608.01 (p).

#### 608.01(i) Claims

Rule 75. Claim. (a) The specification must conclude
with a claim particularly pointing out and distinctly
claiming the subject matter which the applicant re-
gards as his invention or discovery.

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

(c) When more than one claim is presented, they
may be placed in dependent form in which a claim may
refer back to and further restrict a single preceding
claim.

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

See rules 141 to 147 as to claiming different inven-
tions in one application.

## NOTE

Numbering of Claims, 608.01 (j).

Form of Claims, 608.01 (m).

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 num-
bering of the claims must be preserved throughout the
prosecution. When claims are canceled, the remain-
ing claims must not be renumbered. When claims are
added by amendment or substituted for canceled claims,
they must be numbered by the applicant consecutively
beginning with the number next following the highest
numbered claim previously presented (whether en-
tered or not). When the application is ready for
allowance, the examiner, if necessary, will renumber

the claims consecutively in the order in which they
appear or in such order as may have been requested
by applicant.

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

## 608.01(k) Statutory Requirement of Claims

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

## 608.01(1) Original Claims

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

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

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

## 608.01(m) Form of Claims

While there is no set statutory form for
claims, the present Office practice is to insist
that each claim must be the object of a sen-
tence starting with "I (or we) claim" whether
or not the words "I (or we) claim" are stated.
The claim begins with a capital letter and ends
with a period. Periods may not be used else-
where in the claim except for abbreviations.
Reference numerals may appear in a claim.
See 706.03(d). A claim may be typed with
the various elements subdivided in paragraph
form.

See Rejections not based on Prior Art
706.03.

## 608.01(n) Dependent Claims

Rule 75 (c), reads as follows:

When more than one claim in presented, they may
be placed in dependent form in which a claim may refer
back to and further restrict a single preceeding claim.

For example, claim 2, a dependent claim,
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 exam-
ple, 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 dependent claim may refer to a
preceding claim, which in turn refers to
another preceding claim, thus a series of de-
pendent claims as follows :

2\. The machine of claim 1 in which .. .

3\. The machine of claim 2 in which . . .
etc.

is permitted.

There may be several series of dependent
claims in a single application. All the claims
in each series of dependent claims (i.e., those
in addition to the base or independent claim)
must either be in immediate consecutive order
or as close thereto as is physically possible. In
other words, it is permissible to have depend-
ent claims which are dependent on the same
dependent claim and are separated therefrom
only by each other. (Basis: Notice of Decem-
ber 9, 1946, and Memorandum of July 16,
1951.)

The requirements of this Notice may be re-
stated as follows. A claim which depends
from a dependent claim should not be sepa-
rated 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 gen-
eral, applicant's sequence should not be
changed. See 608.01 (j). Note that, under
Rule 75 (c), the dependent claim must "further
restrict" the preceding claim.

Rule 75(c) is not applicable to product-by-
process claims; e.g., "2. The product prepared
by the process of claim 1."

A dependent claim, which is otherwise al-
lowable, should not be rejected merely because
the basic claim is rejected. See 707.07(j).

When renumbering of the claims is neces-
sary, in compliance with Rule 126, particular
attention should be given to dependent claims

to see that each dependent claim correctly iden-
tifies the claim upon which it is built.

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

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

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

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

### 608.01 (p) Completeness

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

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

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

Specific operative embodiments or examples
of the invention must be set forth. Examples
and description should be of sufficient scope as
to justify the scope of the claims. Markush

claims must be provided with support in the
disclosure for each member of the Markush
group. Where the constitution and formula of
a chemical compound is stated only as a proba-
bility or speculation, the disclosure is not suffi-
cient to support claims identifying the com-
pound by such composition or formula.

A complete disclosure should include a state-
ment of utility. This usually presents no prob-
lem in mechanical cases. In chemical 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. If the starting material is old
but difficult to locate in the literature, the liter-
ature citation should be incorporated into the
specification. This may be done by amend-
ment. In the application as filed, preparation
of a new chemical starting material may be
described generally along with reference to a
concurrently or previously filed application by
the same inventor wherein the detailed prepa-
ration is given. If a concurrently or previously
filed application of the same inventor ade-
quately discloses the preparation of the start-
ing material, amendments to include reference
to such application by serial number and a gen-
eral method of preparation are proper.

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

All essential claimed features of an invention
must be fully disclosed in the application with-
out depending upon a reference to a copending
application nor to a foreign patent for com-
pleting the disclosure.

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

NOTE .- Trade-marks and trade names
608.01 (v).

## 608.01(q) Substitute or Rewritten Specification

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

New matter in amendment, see 608.04.

Application prepared for issue, see 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

Canceled text in the specification or a can-
celed claim can be restored only by filing a
duplicate thereof. See Rule 124, 714.24.

### 608.01(t) Use in Subsequent Applica- tion

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

While a specification cannot be transferred
to another application, drawings may be trans-
ferred from a prior application to a later case
by the same inventor, note 608.02(i) to
608.02 (1).

### 608.01 (u) Use of Formerly Filed In- complete Application

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

### 608.01(v) Trademarks and Names Used in Trade

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

(

(
)

(

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 a 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
descriptive nouns by capitalization. If the
trademark has a fixed and definite meaning, it
constitutes 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 trade-
mark has no fixed and definite meaning, identi-
fication by scientific or other explanatory
language is necessary.

Where the identification of a trade mark 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. (Basis: Notice of
November 18, 1947 and Notice of January 23,
1964.)

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 iden-
tification of the product merely by trademark
or by the name used in trade. If the product
cannot be otherwise defined, an amendment de-
fining the process of its manufacture may be
permitted. Such amendments must be sup-
ported by satisfactory showings establishing
that the specific nature or process of manufac-
ture of the product as set forth in the amend-
ment was known at the time of filing of the
application.

Although the use of trademarks having defi-
nite meanings is permissible in patent appli-
cations, 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 descriptive
name) commonly known as Y (trademark)"
since such language does not bring out the fact
that the latter is a trademark. Language such
as "the product X (a descriptive name) sold
under the trademark Y" is permissible.

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

### PARTIAL LIST OF TRADEMARKS

NOTE: Any question as to whether or not an
apparent trademark is in fact a registered
trademark or not should be referred to the
Trademark Classification and Search Division
(Ext. 5165) for determination. If a registered
mark, it should be capitalized.

Acoustical Labyrinth

Adrenalin
Aerosol
Alemite

Alpha (Protein)

Al Si Mag
Alumel
Alundum
Ameripol
Anchor (fence)

Aquadag
Areskap
Aresket
Aresklene
Atraumatic

Bactratycin
Bakelite
Band-Aid

Benzedrine
Bitumastic
Black Leaf 40
Blue Rock (clay target)

Bobbie (bobby pin)

# 608.01 (v)

MANUAL OF PATENT EXAMINING PROCEDURE

Calgon

Helanca

Calrod

Hercolyn

Camoquin

Hipersil

Carbitol

Humatin

Carbofrax

Hydrafrac

Carborundum

Hydroseal

Catalin

Hyex

Caterpillar (tread)

Celanese

Igepon

Celastic

Invar

Cellosolve

Intertype (typesetting)

Cellucotton (surgical dressing)

Iron-Clad (Batteries)

Celluloid (plastics)

Ironclad (Batteries)

Celotex

Jeep

Chevron (machinery packing) Chlorex

Jet Line

Chloromycetin

Kodak

Chromax

Kodapak

Chromel (alloy)

Koroseal

Coca-Cola

Kovar

Coke (beverage)

Corex

Laminac

Cumar

Lastex

Cyclone (fence)

Lavite Leatherette

Dacron

Lexide

Danforth (anchor)

Link (trainer)

Decalin

Linotype

Deepfreeze (home freezer)

Liquid Lead (ink)

De-Ion

Lucite

Diastat

Lux

Di-Phenolic Acid

Masonite

Dry Ice

Methocel

Dual-Seal

Micarta

Dulux

Modutrol

Duraloy

Monel

Duraplex

Monotype Mycalex

Eidophor

Mylar

Electro-Silicon

Elon

N.D.G.A.

Emulphor

Nekal

Erector

Neon (signs) Nichrome

Fascinator

Nico-fume

Fathometer

Ni-Resist

Fiberglas

Nitralloy

Fiberglass

Nonex

Filtrol

Flexowriter

Oilgear

Foamite

Orlon

Formica

Freon

Paraplex Perbunan

Gantrisin

Perf-a-tape

Geon

Permutit

Glyptal

Phosphor bronze

Go Kart

Photostat

Gyropilot

Photronic

Gyrosyn

Phytin (pharmaceutical product)

Rev. 1, Jan. 1964

Ping-pong

Uformite

Pitocin

Urotropin

Plastacele

Vacumatic

Plexiglas

Pliofilm

Varsol

Pliolite

Vaseline

Pliowax

Verichrome

Polane

Victrola

Polaroid

Vinylite

Polyfoam

Viscoloid

Polymerin

Vistac

Porocel

Vistanex (-Medium)

Priscoline

Vultex

Push-Back (theatre chairs)

Pyralin

Zip

Pyrex

Zipper (heels)

Refinite

608.02 Drawing

Resinox

Revertex

Rule 81. Drawings required. The applicant for pat-

Ripple (sole)

ent is required by statute to furnish a drawing of his

Rocklath (plaster-board)

invention whenever the nature of the case admits of

Rockwell (tester)

it; this drawing must be filed with the application.

Roquefort

Illustrations facilitating an understanding of the in- vention (for example, flow sheets in cases of processes,

Santomerse

and diagrammatic views) may also be furnished in

Scintillometer

the same manner as drawings and may be required by

Scotch (pressure sensitive tape, etc.)

the Office when considered necessary or desirable. Rule 86. Draftsman to make drawings. (a) Appli-

Shakeproof

Sheetrock

cants are advised to employ competent draftsmen to

Snap-on

make their drawings.

Solvesso

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

Sonar

plicant's expense as promptly as its draftsmen can

Speed-Nut (fastener)

make them, for applicants who cannot otherwise con-

Steel-Flex

veniently procure them. (See rule 21.)

Stellite

Steri-Pad (surgical dressing)

NOTE

Stiflex

Standards for drawings, Rule 84.

Storm Choke

A booklet "Guide for Patent Drafts-

Straddle Truck

men" is available from the Superintendent

Sylphon

of Documents, U.S. Government Printing

Sylphrap

Office, Washington, D.C. 20402, price 15

Synchrotester

cents.

Synpor

Design patent drawings, Rule 152, 1503.02.

Syntron

Plant patent drawings, Rule 165.

Tagalong

Reissue application drawings, 608.02(k).

Talon (fastener)

Each sheet of drawing must bear the "Ap-

Technicolor

proved" stamp of the Draftsman before the

Teflon

application is allowed.

Teletype

The Patent Copy Sales Branch, Reproduc-

Teletypesetter

tion Section has charge of the drawings in

Tenderay

Patented cases. Canceled sheets, however, are

Textolite

not retained with the patented drawings but

Thenfadil

are filed with the abandoned files and draw-

Thermit

ings in the Abandoned Files Unit.

Thermos (vacuum bottle)

See: Correction of drawings, 608.02(p).

Thiokol

Prints, preparation and distribution, 508,

Transite

608.02(m). "Prints, Return of drawing,

Triton

608.02(y). Signature to the drawing is treated

Trombone (sprayer)

in 605.04(h).

608.02 (a)

# MANUAL OF PATENT EXAMINING PROCEDURE

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

## APPLICATIONS FILED WITHOUT DRAWINGS

Applications filed without drawing are ini-
tially inspected to determine whether or not
a drawing, under the statute, is necessary be-
fore the applicant can be given a filing date.
Doubtful cases are referred to the Office of the
Solicitor for decision as to the need for such
a drawing. It has long been the practice to ac-
cept a process case (that is, a case having only
process or method claims) which is filed without
a drawing. The same practice has been fol-
lowed in composition cases. Other situations
where drawings are usually not considered es-
sential 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 material
or composition. Where the invention consists
in making an article of a particular material
or composition, unless significant details of
structure or arrangement are involved in the
article claims.

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

IV. Articles, apparatus or systems where
sole distinguishing feature is presence of a par-
ticular material. Where the invention resides
solely in the use of a particular material in an
otherwise old article, apparatus or system re-
cited broadly in the claims, for example

a. Hydraulic system distinguished solely by
the use therein of a particular hydraulic fluid.
b. 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. Such a requirement
should ordinarily not be made unless pat-
entable subject matter has been found. (Basis:
Notice of April 22, 1957.)

## 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 Notice referred to 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-
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 can be done by India ink drawings and
otherwise comply with the Rules concerning
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. (Basis : Notice of October
13,1959.)

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

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."

(

If the drawings are informal, but may be
admitted for examination purposes the Drafts-
man writes in the margin of the drawing "Inf.
A. F. E." (admit for examination) together
with his criticism. If the drawings can be
corrected, he adds the words "can be corrected."
On all informal drawings that cannot be freed
from objection, he adds "New drawings re-
quired." The drawings, after being micro-
filmed, are then returned to the Application
Branch.

If the drawing is endorsed "Inf. A. F. E."
it is accepted as satisfying the requirement of
Rule 51.

# NOTIFYING APPLICANT

The Examiners are directed to advise the
applicants in the first Office action of the con-
ditions which render the drawing informal,
and when indicated, that such drawings can be
corrected so as to be acceptable, but will not,
in any case, require new drawings because of
their execution unless the necessity therefor
shall have been indicated by the Head of the
Drafting Branch. (Basis: Order No. 1764.)
See 707.07 (c).

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:

"You are advised to employ the services
of a competent patent draftsman outside
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. (Basis: Notice of April 23, 1962)

# 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 (Basis: Order No. 1862).

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

# 608.02(b) Informal Drawings

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

If the drawing is such that the prosecution
of the application can be properly carried on
without the corrections being made, the Exam-
iner should inform the applicant that the cor-
rections need not be made until patentable sub-
ject matter is found in the application. Even
where appeal is taken, if no claim has been
allowed, correction of the drawing will not be
insisted on.

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

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

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

## AFTER PATENT ISSUES

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

No application should be sent to issue or to
abandoned files unless the original drawing, if
any, accompanies it. (Basis: Order No. 3104,
Revised, Memorandum of Sept. 23, 1952, and
Notice of December 18, 1956.)

# 608.02 (d)

# 608.02(d) Complete Illustration in Drawings

Rule 83. Content of drawing. The drawing must
show every feature of the invention specified in the
claims. When the invention consists of an improve-
ment on an old machine the drawing must when pos-
sible exhibit, in one or more views, the improved por-
tion itself, disconnected from the old structure, and
also in another view, so much only of the old struc-
ture as will suffice to show the connection of the in-
vention 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.

## 608.08(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. 186; 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

When an amendment is filed stating that at
the same time substitute or additional sheets
of drawings are filed and such drawings have
not been transmitted to the examining division,
the docket clerk in the examining division

should call the Application Branch before en-
tering the amendment to ascertain if the draw-
ing was not received. In the next communica-
tion of the Examiner the applicant is notified
if the drawings have not been received. (Basis:
Notice of March 24, 1919.)

Additional or substitute drawings are not
admitted (entered) unless the necessities of the
case so require. Obviously, there is no neces-
sity to cancel an unentered drawing. It is
merely placed in back of all other drawings in
the case. If the Examiner considers an addi-
tional or substitute sheet of drawing necessary
it must be submitted to the Chief Draftsman
before entering it in the case.

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

For return of drawing, see 608.02(y).

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

Rule 88. Use of old drawings. If the drawings of a
new application are to be identical with the drawings
of a previous application of the applicant on 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 from one appli-
cation to another is made only by the Applica-
tion Branch. The name of the attorney on the
drawing being transferred is not changed,
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.

## 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 by the Ap-
plication Branch, notation thereof being en-
tered on the file wrapper of the original
application.

# 608.02(1) Transfer of Drawings

FROM PENDING APPLICATIONS INTENDED TO BE
ABANDONED TO NEWLY SUBMITTED APPLICATIONS

A request for transfer of all the drawings
from an earlier pending application to another
application or to a new application being filed
will be presumed to be under Rule 88, and the
transfer is effected by the Application Branch
if the new application is otherwise entitled to
receive a filing date. The filing of a written
declaration of abandonment under Rule 138 is
not necessary at that time. The mere transfer
of the drawings does not operate to abandon
the application, and it is assumed that the ap-
plicant will carry out at a later date the in-
dicated intention of abandoning the applica-
tion.

The Application Branch will place the letter
requesting transfer of drawings in the file of
the application in which it is captioned and
place a photocopy thereof in the other applica-
tion. This Branch will note on the face of the

earlier file the serial number of the new appli-
cation to which the drawings are transferred.
This Branch will also endorse on the face of
the file of the new application the source of the
transferred drawings.

It is not necessary for a letter of abandon-
ment to be filed at the time of filing the new
application, but the express abandonment may
be made at a later date, or the earlier applica-
tion may be permitted to become abandoned by
failure to prosecute. Since the drawings will
be transferred from the earlier application to
the new application as of the filing date of the
new application, it is not necessary to submit or
order photoprints either for the new applica-
tion or for the earlier application. While the
transfer of the drawings from the earlier ap-
plication will leave it without the presence of
drawings (photoprints of the drawings are, of
course, in the case), this is immaterial in view
of the impending abandonment of this applica-
tion.

If the earlier application is under amend-
ment at the time the drawings are transferred
and has 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 "

(date-60 days)

If the earlier application is under rejection
at the time the drawings are transferred and
an amendment is submitted therein after the
transfer, the amendment should be refused en-
try and the following letter written 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, the amendment submitted on _ has
(date)

not been entered as its presentation is incon-
sistent with the intention to abandon."

This practice applies to transfers of drawings
from applications already on file and transfers
of drawings from forfeited applications. In
other words, this practice applies to the trans-
fer of drawings from any application except
where the final fee has been paid, in which case
an express abandonment (Rule 138) must be

# 608.02(m)

filed, together with a showing why the proposed
action was not taken earlier. (See Rule 313.)

# APPLICATIONS IN DIFFERENT DIVISIONS

Where the applications involved are in differ-
ent divisions, the division receiving the request
for transfer should immediately call it to the
attention of the Application Branch for
processing.

The Notices of May 16, 1955 (694 O.G. 417)
and July 28, 1959 (745 O.G. 309) are hereby
superseded. (Basis: Notice of Oct. 21, 1960.)

## 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) Duplicate Prints in Patent- ability Report Cases

In Patentability Report cases having draw-
ings, the Examiner to whom the case is as-
signed will obtain a duplicate set of prints of
the drawing for filing in the division 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 division having jurisdiction of
the case to each division that submitted a P. R.
The Examiner of each such reporting division
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 division, they may be destroyed. (Basis:
Notice of November 10, 1948.)

#### 608.02(o) Dates Entered on Drawing

The following dates are stamped on the back
of the drawings:

(1) Mail Branch stamp.

(2) Examining Division receipt stamp.

(3) "Corrected" stamp applied by the Draft-
ing Branch.

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".

The Drafting Branch no longer stamps the
date of approval on drawings. Approval is
indicated by a legend associated with the "O.G.
Fig. CI. ... Sub .... " stamp on the front of
each uncancelled 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.

##### 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. (Basis: Order No. 1958.)

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

(
1

(

##### 608.02(r) Separate Letter to Drafts- man

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 Division 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 Division 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(t) Cancelation of Figures

Cancelation of one or more figures which do
not occupy entire sheets of the drawings is
done by the docket clerk of the examining di-
vision 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. Can-
celation of an entire sheet of drawings 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.

608.02(w)

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

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

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

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

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

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

4\. Adding or reversing directional arrows.

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

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

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

8\. Changing lead lines.

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

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

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

Where the ordered correction of the drawing
in a case up for action by the Examiner is ap-
proved, the application and drawing are for-
warded to the draftsman provided there is an
allowable claim or there has been a specific
request by applicant that the drawing be cor-
rected regardless of whether or not a claim has
been allowed (608.02(s). Applicant's letter
to the draftsman is attached to the outside of
the file and the Examiner writes on said let-
ter "approved", with the date of approval and
his initials, attaching, if appropriate, a "Spe-
cial" tag (PO-364). 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 are required in pending
applications and such drawings are made by
the Office Draftsman, the practice is to send
the drawing to the applicant for his approval
and signature. No letter accompanies this
tranmittal and there is therefore no time limit
for filing the drawing in the Patent Office.
Sometimes the application is otherwise ready
for allowance and its issuance might be held
up indefinitely unless action is taken by the
Examiner. In such instances, to avoid undue
delay in filing the drawing, the Examiner
should send a letter to the applicant as soon
as possible after the drawing is mailed, setting
a shortened statutory period for filing the
signed drawing. The date of mailing the
drawing by the Draftsman will appear in the
"Drawing Ordered" stamp on the letter to the
Draftsman.

SUGGESTED FORM OF LETTER

On (date), the Office Draftsman mailed a
new drawing for approval and signature.

A SHORTENED STATUTORY PERIOD
FOR FILING THIS DRAWING IS SET TO
EXPIRE (DATE). (Basis: Notice of Sep-
tember 29, 1958.)

The approved drawing is forwarded directly
to the examiner when it is returned to the office
after the necessary office print has been made
by the Application Branch.

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.

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 Di-
vision.

Drawings will not be returned until prints
have been made and put in the application file.
(Basis: Orders 1783 and 4009.)

# 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. (Basis:
Notice of Nov. 26, 1921.)

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 interview
and taken away by the attorney at the end of
the interview. See 713.08.

NOTE .- Plant specimens, 1607, Rule 166.

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

## 608.04 New Matter

Rule 118. Amendment of disclosure. In original ap-
plications, all amendments of the drawings or specifi-
cations, and all additions thereto, must conform to at
least one of them as it was at the time of the filing of
the application. Matter not found in either, involving
a departure from or an addition to the original 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.

### 608.04 (a)

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 not entered.

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.
New uses or additional limitations not imposed
by the initial disclosure may be new matter.
The addition of inherent characteristics such as
chemical or physical properties, a new struc-
tural formula or a new use has been regarded as
new matter. See Ex parte Vander Wal et al.,
1956 C.D. 11; 705 O.G. 5 (physical properties),
Ex parte Fox, 1960 C.D. 28; 761 O.G. 906 (new
formula) and Ex parte Ayers et al., 108
U.S.P.Q. 444 (new use). For rejection of claim
involving new matter see 706.03(o).

NOTE .- 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 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. 366, 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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