700

OCR transcription for search; preserved printed pages are authoritative

# Chapter 700 Examination of Applications

701
Statutory Authority for Examination

702
Requisites of the Application
702.01
Obviously Informal Cases

703
"General Information Concerning Patents" Sent
Instead of "Rules of Practice"

704
Search

705
Patentability Reports

705.01
Instructions re Patentability Reports

705.01 (a)
Nature of P. R., Its Use and Disposal

705.01 (b)
Sequence of Examination

705.01 (c)
Counting and Recording P. R.'s

705.01 (d)
Duplicate Prints of Drawings

705.01 (e)
Limitation as to Use

705.01 (f)
Interviews With Applicants

706
Rejection of Claims

706.01
Contrasted With Objections

706.02
On Prior Art

706.02 (a)

Establishing "Well Known" Prior Art

706.03
Not Based on Prior Art

706.03 (a)
Nonstatutory Subject Matter

706.03 (b)

706.03 (c)
Barred by Atomic Energy Act

706.03 (d)

Vague and Indefinite

Product by Process

707.07 (b)
Requiring New Oath

706.03 (g)

Prolix

707.07 (đ)

Language To Be Used in Rejections

707.07 (e)
Note All Outstanding Requirements

707.07 (f)
Answer All Material Traversed

707.07 (g)
Piecemeal Examination

707.07 (h)
Notify of Inaccuracies in Amendment

707.07 (i)
Each Claim To Be Mentioned in Each
Letter

707.07 (j)
State When Claims Are Allowable

707.07 (k)
Numbering Paragraphs

707.08
Review by Assistant Examiner

707.09
Signing by Primary or Acting Primary

707.10
Entry

707.11
Date

706.03 (v)
After Interference or Public Use Proceed-
ing

706.03 (w)
Res Judicata

706.03 (x)
Reissue

708.03 (y)
Improper Markush

706.03 (z)
Undue Breadth

706.04
Previously Allowed Claim

706.05
After Allowance of Application

706.06

Claims Copied from Patent

706.07

Final Rejection

706.07 (a)
When Proper

706.07 (b)
When Proper on First Action

706.07 (c)
Premature

706.07 (d)
Withdrawal of Premature

706.07 (e)
Withdrawal, General

707
Examiner's Letter or Action

707.01
Primary Examiner Indicates Action for New
Assistant

707.02
Actions which Require the Personal Attention
of the Primary Examiner

707.02 (a)
Cases Up for Third Action and Five-Year
Cases

707.03
Sample of Conventional "First Action" Letter

707.04
Initial Sentence

707.05
Citation of References

707.05 (a)
Grouped at Beginning of Letter

707.05 (b)
"References Applied"

707.05 (c)
References Pertinent

707.05 (d)
Reference Cited in Subsequent Actions

707.05 (e)
Data Used in Citing References

707.05(f)
Effective Dates of Declassified Printed
Matter

707.05 (g)
Incorrect Citation of References

707.06
Citation of Decisions, Orders and Notices

707.07
Completeness and Clarity

707.07 (a)
Action on Formal Matters

706.03 (f)
Incomplete

707.07 (c)
Draftsman's Requirement

706.03 (h)

Nonstatutory Claim

706.03 (i)

Aggregation

706.03 (j)

Old Combination

706.03 (k)

Duplicate Claims; Double Patenting
Mutiplicity

706.03 (1)

706.03 (m)
Nonelected Inventions

706.03 (n)

Correspondence of Claim and Disclosure
New Matter

706.03 (p)
No Utility

706.03 (q)
Obvious Method

706.03 (s)
Statutory Bar

706.03 (t)
Other Assigned Application

706.03.(u)
Disclaimer

707.12
Mailing

707.13
Returned Office Action

708
Order of Examination

708.01
List of Special Cases

708.02
Petition to Make Special

708.03
Examiner Tenders His Resignation

709
Suspension of Action

709.01
Overlapping Applications by Same Applicant
or owned by Same Assignee

709.02
Actions Following Correspondence under Rule
202

710
Period for Response
710.01
Statutory

706.03 (0)

Functional

706.03 (e)

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# MANUAL OF PATENT EXAMINING PROCEDURE

710.01 (a)
How Computed

710.02
Shortened Statutory Period and Time Limit
Actions

710.02 (a)
Approval of Time Set in Case of Short-
ened Statutory Period

710.02 (b)
Situations in Which Used : Shortened Stat-
utory Period

710.02 (c)
Situations in Which Used: Nonstatutory
Time Limit

710.02 (d)
Differences Between Shortened Statutory
and Time Limit Periods

710.02 (e)
Extension of Time

710.03
Three Year Period, Government-owned Cases

710.04
Two Periods Running

710.04 (a)
Copying Patent Claims

710.05
Period Ending on Saturday, Sunday or Holi-

day

710.06
Miscellaneous Factors Determining Date

711
Abandonment

711.01
Express or Formal Abandonment

711.02
Failure to Take Required Action During Time
Period

711.02 (a)
Insufficiency of Response

711.02 (b)
Special Situations Involving Abandonment

711.02 (c)
Termination of Proceedings

711.03
Reconsideration of Holding of Abandonment :
Revival

711.03 (a)
Holding Based on Insufficiency of Response
711.03 (b)
Holding Based on Failure to Respond With-
in Period

711.03 (c)
Petitions Relating to Holding of Abandon-
ment

711.03 (d) Examiner's Statement on Petition

711.04
Disposition of Abandoned Applications

711.04 (a)
Pulling and Forwarding

711.04 (b)
Ordering Abandoned Files

711.05
Letter of Abandonment Received After Appli-
cation is Allowed

711.06
Publication of Abstracts

711.06 (a)
Use of Abstract as Reference

712
Forfeiture

713
Interviews

713.01
General Policy, How Conducted

713.02
Interviews Prior to First Official Action

713.03
Interviews for "Sounding Out" Examiner Not
Permitted

713.04
Substance of Interview Must Be Made of
Record

713.05

Interviews Prohibited or Granted, Special
Situations

718.06
No Inter Partes Questions Discussed Ex Parte

713.07
Exposure of Other Cases

713.08
Demonstration, Exhibits, Models

713.09
Finally Rejected Application

713.10
Interview Preceding Filing Amendment Under
Rule 312

714
Amendments, Applicant's Actions

714.01
Signatures to Amendments

714.01 (a)
Unsigned or Improperly Signed Amend-
ment

714.01(b)
Disposal of

714.01 (c)
Signed by Attorney Not of Record

714.01 (d)
Amendment Signed by Applicant But Not
by Attorney of Record

714.01(e)
Power of Attorney to a Firm
714.02
Must Be Fully Responsive

714.03
Amendments Not Fully Responsive, Action to
Be Taken

714.04
Claims Presented in Amendment with No At-
tempt to Point Out Patentable Novelty

714.05
Examiner Should Immediately Inspect

714.06

Amendments Sent to Wrong Division

714.07

Amendments Not in Permanent Ink

714.08
Telegraphic Amendment

714.09
Amendments Before First Office Action

714.10
Claims Added in Excess of Filing Fee

714.11
Amendment Filed During Interference Pro-
ceedings

714.12
Amendments After Final Rejection or Action

714.13

Amendments After Final Rejection or Action,
Letter Written

714.14
Amendments After Allowance of All Claims

714.15
Amendment Mailed Before, but Received in
Examining Division After Allowance

714.16
Amendment After Notice of Allowance, Rule
312

714.16 (a)
Copied Patent Claims

714.16 (b)
Filed with a Motion Under Rule 234

714.16 (c)
Excess Number of Claims

714.16 (d)
Handling

714.16(e)
Entry in Part

714.17
Amendment Filed After the Period for Re-
sponse Has Expired

714.18
Entry of Amendments

714.19
List of Amendments, Entry Denied

714.20
List of Amendments Entered in Part

714.21
Amendments Inadvertently Entered, No Legal
Effect

714.22
Entry of Amendments, Directions for

714.23
Entry of Amendments, Directions for, Defec-
tive

714.24
Amendment of Amendment

714.25
Discourtesy of Applicant or Attorney

715
Swearing Back of Reference-Affidavit Under
Rule 131

715.01
Reference Claims Foreign Filing Date

715.01 (a)
Reference a Joint Patent to Applicant and
Another

715.01 (b)
Reference and Application have Common
Assignee

715.01 (c)
Reference is Publication of Applicant's
Own Invention

715.02
General Rule as to Generic Claims

715.03
Exceptions and Practice Relative to Chemical
Cases

715.04
Who May Make Affidavit

715.05
Patent Claiming Same Invention

715.06
Affidavit Under Rule 131 Must Be Removed
Before Interference

715.07
Facts and Documentary Evidence

☒

☒

☒

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715.07 (a)
Diligence

715.07 (b)
Interference Testimony Sometimes Used

715.07 (c)
Acts Relied Upon Must Have Been Car-

ried Out in This Country

715.07 (d)
Disposition of Exhibits

715.08
Passed Upon By Primary Examiner

715.09
Seasonable Presentation

716
Affidavits Traversing Rejections

717
File Wrapper

717.01
Papers in File Wrapper

717.01 (a)
Arrangement

717.01 (b)
Prints

717.02
Date Entered on

717.02 (a)
Statutory Period Ends On Sunday or Holi-
đây
Name or Residence of Inventor or Title
Changed

717.02 (b)

717.03
Classification During Examination

717.04
Index of Claims

717.05
Field of Search

717.06
Foreign Filing Dates

717.07
Related Applications

## 701 Statutory Authority for Examina- tion

The authority for the examination of appli-
cations for patents is set forth in 35 U.S.C.
131.

The Commissioner shall cause an examination to be
made of the application and the alleged new invention ;
and if on such examination it appears that the appli-
cant is entitled to a patent under the law, the Com-
missioner shall issue a patent therefor.

The main conditions precedent to the grant
of a patent to an applicant are set forth in
35 U.S.C. 101, 102, 103.

## 702 Requisites of the Application

The Examiner should be careful to see that
the application meets all the requisites set
forth in Chapter 600 both as to formal matters
and as to the completeness and clarity of the
disclosure. If all of the requisites are not
met, applicant may be called upon for neces-
sary amendments. Such amendments, how-
ever, must not include new matter.

## 702.01 Obviously Informal Cases

When an application is reached for its first
action and it is then discovered to be imprac-
tical to give a complete action on the merits
because of the paucity of disclosure, the fol-
lowing procedure may be followed: (1) A
reasonable search should be made of the in-
vention so far as it can be understood from the

disclosure, objects of invention and claims and
any apparently pertinent art cited; (2) De-
ficiencies in the drawing should be pointed out;
(3) A requirement should be made that the
specification be revised to conform to idio-
matic English and United States practice; (4)
The claims should be rejected as failing to
define the invention in the manner required by
35 U.S.C. 112 if they are informal. A blanket
rejection is usually sufficient.

The Examiner should not attempt to point
out the specific points of informality in the
specification and claims. The burden is on the
applicant to revise the application to render
it in proper form for a complete examination.

For the procedure to be followed when only
the drawing is informal, see 608.02(a) and
608.02 (b).

## 703 "General Information Concerning Patents" Sent Instead of "Rules of Practice"

The pamphlet "General Information Con-
cerning Patents" may be sent to an applicant
handling his own case when the Examiner
deems it advisable. (Basis: Notice of January
15, 1924, Revised.)

## 704 Search

After reading the specification and claims,
the Examiner searches the prior art.

The subject of searching is more fully
treated in Chapter 900. See 904 through
904.02. The invention should be thoroughly
understood before a search is undertaken.
However, informal cases, or those which can
only be imperfectly understood when they
come up for action in their regular turn are
also given a search, in order to avoid piece-
meal prosecution.

### PREVIOUS EXAMINER'S SEARCH

When an examiner is assigned to act on an
application which has received one or more ac-
tions by some other examiner, full faith and
credit should be given to the search and action
of the previous examiner unless there is a clear
error in the previous action or knowledge of
other prior art. In general the second Exam-
iner should not take an entirely new ap-
proach to the case or attempt to reorient the
point of view of the previous Examiner, or
make a new search in the mere hope of finding
something.

See 717.05.

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## 705 Patentability Reports

Where an application, properly assigned to
one examining division, is found to contain
one or more claims per se classifiable in one
or more other divisions, which claims are
not divisible inter se or from the claims which
govern classification of the application in the
first division, the application may be referred
to the other division or divisions concerned
for a report as to the patentability of certain
designated claims. This report will be known
as a Patentability Report (P.R.) and will be
signed by the Primary Examiner of the report-
ing division. (Basis: Notice of November 10,
1948.)

The report, if legibly written, need not be
typed.

Note that the Patentability Report practice
is suspended, except in extraordinary circum-
stances. See 705.01 (e).

## 705.01 Instructions re Patentability Reports

705.01 to 705.01(f) are based on the Notices
of November 12, 1948, and April 12, 1951.

In the prosecution of an application under
conditions authorized in the Notice of Novem-
ber 10, 1948, relating to Patentability Reports,
the following procedure should be observed.

When an application comes up for any ac-
tion and the Primary Examiners involved
agree that a Patentability Report is necessary,
the application will be forwarded to the proper
division with a memorandum attached, for in-
stance, For Patentability Report from Divi-
sion
as to Claims

## 705.01 (a) Nature of P.R., Its Use and Disposal

E;

The Primary Examiner of the division from
which the Patentability Report is requested, if
he approves the request, will direct the prepa-
ration of the Patentability Report. This Pat-
entability Report will be written or typed on a
memorandum form and will include the cita-
tion of all pertinent references and a complete
action on all claims involved. The field of
search covered should be endorsed on the file
wrapper by the examiner making the report.
When an examiner to whom a case has been
forwarded for a Patentability Report is of the
opinion that final action is in order as to the
referred claims, he should so state. The Pat-
entability Report when signed by the Primary
Examiner of the reporting division will be
returned to the division to which the applica-
tion is regularly assigned.

The examiner preparing the Patentability
Report will be entitled to receive an explana-
tion of the disclosure from the examiner to
whom the case is assigned to avoid duplication
of work. If the Primary Examiner of a re-
porting division is of the opinion that a Pat-
entability Report is not in order, he should so
advise the Primary Examiner of the forward-
ing division.

### DISAGREEMENT AS TO CLASSIFICATION

Conflict of opinion as to classification may
be referred to an Examiner of Classification
for decision.

If the Primary Examiner of the Division
having jurisdiction of the case agrees with the
Patentability Report, he should incorporate the
substance thereof in his action, which action
will be complete as to all claims. The Pat-
entability Report in such a case will not be
given a paper number but will be allowed to
remain in the file until the case is finally dis-
posed of by allowance or abandonment, at
which time it should be removed.

#### DISAGREEMENT ON PATENTABILITY REPORT

If the Primary Examiner does not agree
with the Patentability Report or any portion
thereof, he may consult with the Primary Ex-
aminer responsible for the report. If agree-
ment as to the resulting action cannot be
reached, the Primary Examiner having juris-
diction of the case need not rely on the Pat-
entability Report but may make his own action
on the referred claims, in which case the Pat-
entability Report should be removed from the
file.

#### APPEAL TAKEN

When an appeal is taken from the rejection
of claims, all of which are examinable in the
division preparing a Patentability Report, and
the application is otherwise allowable, formal
transfer of the case to said division should be
made for the purpose of appeal only. The
receiving division will take jurisdiction of the
application and prepare the examiner's answer.
At the time of allowance, the application may
be sent to issue by said division with its clas-
sification determined by the controlling claims
remaining in the case. (Basis: Notice of April
12, 1951.)

#### 705.01(b) Sequence of Examination

In the event that the Primary Examiners
concerned in a P.R. case cannot agree as to the
order of examination by their divisions, the
Primary Examiner having jurisdiction of the
case will direct that a complete search be made

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of the art relevant to his claims prior to re-
ferring the case to another division for report.
The division to which the case is referred will
be advised of the results of this search.

If the Primary Examiners are of the opin-
ion that a different sequence of search is ex-
pedient, the order of search should be corre-
spondingly modified.

# 705.01(c) Counting and Recording P. R.'s

The forwarding of the application for a Pat-
entability Report is not to be treated as a
transfer by the forwarding division. When
the P.R. is completed and the application is
ready for return to the forwarding division,
it is not counted either as a receipt or action
by transfer. Credit, however, is given for the
time spent. See 1705.

A box is provided on each file wrapper
headed "P.R. Div. ______ " and the number of
the division making the P.R. is entered in
pencil.

The date status of the application in the
reporting division will be determined on the
basis of the dates in the division of original
jurisdiction. To insure orderly progress in the
reported dates, a timely reminder should be
furnished to the division making the P.R.

# 705.01 (d) Duplicate Prints of Draw- ings

In Patentability Report cases having draw-
ings, the examiner to whom the case is as-
signed will furnish to the division to which the
case is referred, prints of such sheets of the
drawings as are applicable, for interference
search purposes. That this has been done may
be indicated by a pencil notation on the file
wrapper.

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 allow-
ance or abandonment on his duplicate set of
prints. At such time as these prints become
of no value to the reporting division, they may
be destroyed.

# 705.01(e) Limitation as to Use

The above outlined Patentability Report
practice is not obligatory and should be re-
sorted to only where it will save total examiner
time or result in improved quality of action

due to specialized knowledge. A saving of to-
tal examiner time that is required to give a
complete examination of an application is of
primary importance. Patentability Report
practice is based on the proposition that when
plural, indivisible inventions are claimed, in
some instances either less time is required for
examination, or the results are of better qual-
ity, when specialists on each character of
claimed invention treat the claims directed to
their specialty. However, in many instances a
single examiner can give a complete examina-
tion of as good quality on all claims, and in
less total examiner time than would be con-
sumed by the use of the Patentability Report
practice.

Where claims are directed to the same char-
acter of invention but differ in scope only,
prosecution by Patentability Report is never
proper.

Exemplary situations where Patentability
Reports are ordinarily not proper are as fol-
lows:

(1) Where the claims are related as a manu-
facturing process and a product defined by the
process of manufacture. The examiner having
jurisdiction of the process can usually give a
compete, adequate examination in less total
examiner time than would be consumed by the
use of a Patentability Report.

(2) Where the claims are related as a prod-
uct and a process which involves merely the
fact that a product having certain characteris-
tics is made. The examiner having jurisdic-
tion of the product can usually make a com-
plete and adequate examination.

(3) Where the claims are related as a com-
bination distinguished solely by the charac-
teristics of a subcombination and such sub-
combination per se. The examiner having
jurisdiction of the subcombination can usually
make a complete and adequate examination.

Because of the high percentage of new ex-
aminers, situations frequently arise where the
Patentability Report would of necessity be
made by an examiner who knows less about the
art than the examiner seeking the Patentabil-
ity Report. Then there are also situations
where the examiner seeking the report is suffi-
ciently qualified to search the art himself.

In view of these conditions which are ex-
pected to prevail for some time to come, it is
felt to be in the best interests of the Office to
suspend the present Patentability Report prac-
tice. Where it can be shown, however, that a
Patentability Report will save total examiner
time, exceptions may be permitted with the
approval of the Supervisory Examiner of the
group to which the requesting division is as-
signed. The "Approved" stamp should be im-

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# MANUAL OF PATENT EXAMINING PROCEDURE

pressed on the memorandum requesting the
P.R. (Basis: Notice of October 8, 1956.)

## 705.01(f) Interviews With Applicants

In situations where an interview is held on
an application in which a Patentability Report
has been adopted, the reporting group may be
called on for assistance at the interview when
it concerns claims treated by them. (Basis :
Notice of November 12, 1948.) See 713 to
713.10 regarding interviews in general.

## 706 Rejection of Claims

Although this part of the Manual explains
the procedure in rejecting claims, the Examiner
should never overlook the importance of his
role in allowing claims which properly define
the invention.

Rule 106. Rejection of claims. (a) If the invention
is not considered patentable, or not considered patenta-
ble as claimed, the claims, or those considered unpat-
entable will be rejected.

(b) In rejecting claims for want of novelty or for
want of invention, the examiner must cite the best ref-
erences at his command. When a reference is complex
or shows or describes inventions other than that
claimed by the applicant, the particular part relied on
must be designated as nearly as practicable. The
pertinence of each reference, if not obvious, must be
clearly explained and each rejected claim specified.

When an application discloses patentable
subject matter and it is apparent from the
claims and the Applicant's arguments that the
claims are intended to be directed to such pat-
entable subject matter, but the claims in their
present form cannot be allowed because of de-
fects in form or omission of a limitation, the
Examiner should not stop with a bare objec-
tion or rejection of the claims. The Exam-
iner's action should be constructive in nature
and when possible he should offer a definite
suggestion for correction.

=

If the Examiner is satisfied after the search
has been completed that patentable subject
matter has been disclosed and the record indi-
cates that the applicant intends to claim such
subject matter, he may note in the Office action
that certain aspects or features of the patenta-
ble invention have not been claimed and that
if properly claimed such claims may be give
favorable consideration.

Rule 112. Reexamination and reconsideration. After
response by applicant (rule 111) the application
will be reexamined and reconsidered, and the appli-
cant will be notified if claims are rejected, or objec-

tions or requirements made, in the same manner as
after the first examination. Applicant may respond
to such Office action, in the same manner provided in
rule 111, with or without amendment, but any amend-
ments after the second Office action must ordinarily be
restricted to the rejection or to the objections or re-
quirements made, and the application will be again
considered, and so on repeatedly, unless the examiner
has indicated that the action is final.

## 706.01 Contrasted With Objection

The refusal to grant claims because the sub-
ject matter as claimed is considered unpatenta-
ble is called a "rejection." The term "rejected"
must be applied to such claims in the Exam-
iner's letter. If the form of the claim (as dis-
tinguished from its substance) is improper, an
"objection" is made. The practical difference
between a rejection and an objection is that a
rejection, involving the merits of the claim, is
subject to review by the Board of Appeals,
while an objection, if persisted in, may be
reviewed only by way of petition to the Com-
missioner.

An example of a matter of form as to which
objection is made is improper dependency of a
claim. See 608.01 (n).

## SPECIAL APPLICATION OF Ex PARTE QUAYLE PRACTICE

In cases where all claims are patentable in
substance and where minor technical grounds
of rejection not previously raised are in order,
the Examiner should object to the claims and
at the same time offer constructive sugges-
tions for overcoming the criticisms. Such an
action is to be made in accordance with the
Ex parte Quayle practice and a shortened
statutory period should be set.

## 706.02 Rejection on Prior Art

By far the most frequent ground of rejection
is on the ground of unpatentability in view of
the prior art, that is, that the claimed matter
is not "new" and patentable or does not in-
volve invention. The reference relied upon is
identified and the claim is accordingly rejected
either because it is fully met therein or com-
pletely anticipated, or if there is a difference
between the requirements of the claim and the
showing of this prior art, as unpatentable
thereover.

In the event that there is no invention in-
volved in combining several elements of two or
more prior structures, the rejection is made on
the combination of the several references. See

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706.03 (a)

<!-- PageHeader="EXAMINATION OF APPLICATIONS" -->

707.07 (d) for language to be used in rejecting
claims.

.A. U.S. patent is a valid reference against an
application even though the patent date is af-
ter the filing date of an application provided
that the filing date of the patent is prior to the
filing date of the application. The fact that
the second applicant had no way of knowing
about the prior application that is now a pat-
ent does not matter. It is proper to use such
a patent as a basic or an auxiliary reference
and such patents may be used as both basic and
auxiliary references. The doctrine of the Mil-
burn Co. v. Davis-Bournonville Co. decision,
1926 C.D. 303; 344 O.G. 817, has been thus
construed in In re Youker (C.C.P.A.), 1935
C.D. 658; 461 O.G. 10, and in Minn. Mining &
Mfg. Co. v. Coe (C.A.D.C.) 1938 C.D. 100;
497 O.G. 766. See also Detrola Corp. v. Hazel-
tine (U.S.S.C.) 1941 C.D. 811; 528 O.G. 245
and In re Gregg (C.C.P.A.), 1957 C.D. 284;
720 O.G. 227.

For the proper way to cite a patent granted
after the filing of an application, see 707.05 (e)
and the sample letter in 707.03. Rejections on
"old combination" are treated in 706.03(j).

## 706.02(a) Establishing "Well Known" Prior Art

Things believed to be known to those skilled
in the art are often asserted by the Examiner
to be "well known" or "matters of common
knowledge". If justified, the Examiner should
not be obliged to spend time to produce docu-
mentary proof. If the knowledge is of such
notorious character that judicial notice can be
taken, it is sufficient so to state. In re Mal-
colm, 1942 C.D. 589; 543 O.G. 440. If the ap-
plicant traverses such an assertion the Exam-
iner should cite a reference in support of his
position.

Failure of the applicant to seasonably chal-
lenge such assertions establishes them as ad-
mitted prior art. See In re Gunther, 1942 C.D.
332; 538 O.G. 744; In re Chevenard, 1944 C.D.
141; 500 O.G. 196. This applies also to asser-
tions of the Board. In re Selmi, 1946 C.D.
525; 591 O.G. 160; In re Fischer, 1942 C.D.
295; 538 O.G. 503.

## 706.03 Rejections Not Based on Prior Art

The primary object of the examination of an
application is to determine whether or not the
claims define a patentable advance over the
prior art. In too many instances this consid-
eration is relegated to a secondary position,
while undue emphasis is given to technical re-

jections. Where a major technical rejection
is proper (e.g. aggregation, lack of proper dis-
closure, undue breadth) such rejection should
be stated with a full development of the rea-
sons rather than by a mere conclusion coupled
with some stereotyped expression.

Certain technical rejections (e.g. negative
limitations, indefiniteness) should not be made
where the Examiner recognizing the limita-
tions of the English language, is not aware of
an improved mode of definition.

Rejections not based on prior art are ex-
plained in 706.03(a) to 706.03(y). IF THE
ITALICIZED LANGUAGE IN THESE
SECTIONS IS INCORPORATED IN THE
REJECTION, THERE WILL BE LESS
CHANCE OF A MISUNDERSTANDING
AS TO THE GROUNDS OF REJECTION.

## 706.03(a) Nonstatutory Subject Mat- ter

Patents are not granted for all new and use-
ful inventions and discoveries. The subject
matter of the invention or discovery must come
within the boundaries set forth by 35 U.S.C.
101, which permits patents to be granted only
for "any new and useful process, machine,
manufacture, or composition of matter, or any
new and useful improvement thereof.

The term "process" as defined in 35 U.S.C.
100, means process, art or method, and includes
a new use of a known process, machine, manu-
facture, composition of matter, or material.

Judicial decisions, have determined the lim-
its of the statutory classes. Examples of sub-
ject matter not patentable under the Statute
follow :

## PRINTED MATTER

For example, a mere arrangement of printed
matter, though seemingly a "manufacture," is
rejected as not being within the statutory
classes.

## NATURALLY OCCURRING ARTICLE

Similarly, a thing occurring in nature, which
is substantially unaltered, is not a "manufac-
ture." A shrimp with the head and digestive
tract removed is an example. Ex parte Gray-
son, 51 USPQ 413.

## METHOD OF DOING BUSINESS

Though seemingly within the category of a
process or method, the law is settled that a
method of doing business can be rejected as not
being within the statutory classes. Hotel Se-
curity Checking Co. v. Lorraine Co., 160 Fed.
467.

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706.03 (b)

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## SCIENTIFIC PRINCIPLE

A scientific principle, divorced from any
tangible structure, can be rejected as not
within the statutory classes. O'Reilly v. Morse,
15 Howard 62.

This subject matter is further limited by the
Atomic Energy Act explained in 706.03(b).

# 706.03(b) Barred by Atomic Energy Act

A limitation on what can be patented is imposed by
the Atomic Energy Act of 1954. Section 151 (a) thereof
(42 U.S.C. 2181) reads as follows:

No patent shall hereafter be granted for any inven-
tion or discovery which is useful solely in the utiliza-
tion of-special nuclear material or atomic energy in
an atomic weapon.

The terms "atomic energy" and "special nuclear
material" are defined in Section 11 of the Act (42 U.S.C.
2014).

Sections 151(c) and 151(d) (42 U.S.C. 2181c and d)
set up categories of pending applications relating to
atomic energy that must be brought to the attention
of the U.S. Atomic Energy Commission. Under Rule
14(c), applications for patents which disclose or which
appear to disclose, or which purport to disclose, inven-
tions or discoveries relating to atomic energy are re-
ported to the Atomic Energy Commission and the Com-
mission will be given access to such applications, but
such reporting does not constitute a determination that
the subject matter of each application so reported is in
fact useful or an invention or discovery or that such
application in fact discloses subject matter in cate-
gories specified by the Atomic Energy Act.

Applications MUST be inspected promptly
when received to determine those which appear
to relate to atomic energy and those so related
MUST BE PROMPTLY FORWARDED to
the Patent Security Division for processing
under Rule 14(c), in order for the Commis-
sioner to fulfill his responsibilities under Sec-
tion 151(d) of the Act.

All rejections based upon Sections 151(a)
and 155 of the Atomic Energy Act MUST be
made only by Divisions 10, 44 and 46.

## 706.03 (c) Functional

See Ex parte Ball et al., 1953 C.D. 4; 675
O.G. 5 In re Arbeit et al., 1953 C.D. 409;
677 O.G. 843 and Ex parte Stanley, 121 USPQ
621.

Section 112 of the Patent Act of 1952 con-
sists of three paragraphs, which read as fol-
lows:

The specification shall contain a written description
of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and

exact terms as to enable any person skilled in the art
to which it pertains, or with which it is most nearly .
connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor of
carrying out his invention.

The specification shall conclude with one or more
claims particularly pointing out and distinctly claim-
ing the subject matter which the applicant regards as
his invention.

An element in a claim for a combination may be
expressed as a means or step for performing a specified
function without the recital of structure, material, or
acts in support thereof, and such claim shall be con-
strued to cover the corresponding structure, material,.
or acts described in the specification and equivalents
thereof.

Paragraph 3 of section 112 has the effect of
prohibiting the rejection of a claim for a com-
bination of elements (or steps) on the ground
that the claim distinguishes from the prior art
solely in an element (or step) defined as a
"means" (or "step") coupled with a statement
of function. However this provision of para-
graph 3 must always be considered as subordi-
nate to the provision of paragraph 2 that the
claim particularly point out and distinctly
claim the subject matter. If a claim be found
to contain language approved by paragraph 3
such claim should always be tested additionally
for compliance with paragraph 2 and if it fails
to comply with the requirements of paragraph
2, the claim should be so rejected and the rea-
sons fully stated.

Paragraph 3 of section 112 makes no change
in the established practice of rejecting claims
as functional in situations such as the fol-
lowing :

1\. A claim which contains functional lan-
guage not supported by recitation in the claim
of sufficient structure to warrant the presence
of the functional language in the claim. An
example of a claim of this character may be
found in In re Fuller, 1929 C.D. 172; 388 O.G.
279\. The claim reads :

A woolen cloth having a tendency to wear
rough rather than smooth.

2\. A claim which recites only a single means
and thus encompasses all possible means for
performing a desired function. For an ex-
ample, see the following claim in Ex parte
Bullock, 1907 C.D. 93; 127 O.G. 1580:

In a device of the class described, means for
transferring clothes-carrying rods from one
position and depositing them on a suitable
support.

## 706.03(d) Vague and Indefinite

When the Examiner is satisfied that patenta-
ble novelty is disclosed and it is apparent to

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the Examiner that the claims are directed to
such patentable subject matter, he should al-
low claims which define the patentable novelty
with a reasonable degree of particularity and
distinctness. Some latitude in the manner of
expression and the aptness of terms should be
permitted even though the claim language is
not as precise as the Examiner might desire.

The fact that a claim is broad does not nec-
essarily justify a rejection on the ground that
the claim is vague and indefinite or incom-
plete. In non-chemical cases, a claim may, in
general, be drawn as broadly as permitted by
the prior art.

The rejection of a claim as indefinite would
appear to present no difficulties. On occasion,
however, a great deal of effort is required to
explain just what is wrong with the claim,
when writing the Examiner's letter. Although
cooperation with the attorney is to be com-
mended, undue time should not be spent trying
to guess what the attorney was trying to say in
the claim. Sometimes, a rejection as indefinite
plus the statement that a certain line is mean-
ingless is sufficient. The Examiner's action
should be constructive in nature and when pos-
sible he should offer a definite suggestion for
correction. Inclusion of a negative limitation,
such as a "metal, excepting nickel", may make
a claim indefinite. Expressions such as: "an-
hydrous", "colorless" and "non-poisonous" have
been permitted because they are definite and by
far the least cumbersome way to express the
limitation. The mere inclusion of reference
numerals in a claim otherwise allowable is not
a ground for rejection. But see Ex parte Os-
borne, 1900 C.D. 137; 92 O.G. 1797.

Alternative expressions such as "brake or
locking device" may make a claim indefinite if
the limitation covers two different elements.
If two equivalent parts are referred to such as
"rods or bars", the alternative expression may
be considered proper.

Still another way in which a claim can be in-
definite is where a non sequitur occurs. For
example, a claim is inferential and therefore
indefinite when it recites "said lever" and there
was no earlier reference or no antecedent in
the claim to a lever. An indirect limitation
also affords a ground of rejection as indefinite.
If a "lever" is set forth and, later in the claim,
"said aluminum lever" is recited, the claim is
rejected as indefinite.

## 706.03(e) Product by Process

An article which cannot be described in any
other manner, may be claimed by a process of
making it. In re Moeller, 1941 C.D. 316, 527
O.G. 559. Applicant must, however, make a

showing that the product cannot be described
except by reference to the process of making it,
In re Dreyfus and Whitehead, 1935 C.D. 386,
457 O.G. 479. Accordingly both product claims
described by characteristics and product-by-
process claims concurrently presented are in-
consistent. As a rule, the product-by-process
claims should be limited to one, unless it ap-
pears that there are material differences be-
tween the products produced by the processes
recited in the different claims. See also "Prod-
uct by Process Claims" (Wolffe) 28 J.P.O.S.
852.

## 706.03(f) Incomplete

A claim can be rejected as incomplete if it
omits essential elements, steps or necessary
structural cooperative relationship of elements,
such omission amounting to a gap between the
elements, steps or necessary structural connec-
tions. Greater latitude is permissible with re-
spect to the definition in a claim of matters not
essential to novelty or operability than with
respect to matters essential thereto. See also
706.03 (d).

## 706.03(g) Prolix

Claims are rejected as prolix when they con-
tain long recitations of unimportant details
which hide or obscure the invention. Ex parte
Iagan, 1911 C.D. 10; 162 O.G. 538, expresses
the thought that very long detailed claims set-
ting forth so many elements that invention can-
not possibly reside in the combination should
be rejected as prolix. See also In re Ludwick,
1925 C.D. 306; 339 O.G. 393.

### 706.03(h) Nonstatutory Claim

Some applications when filed contain an om-
nibus claim such as A device substantially as
shown and described.

Such a claim can be rejected as follows:

Claim
is rejected for failing to par-
ticularly point out and distinctly claim the
invention as required in 35 U.S.C. 112.

For cancellation of such a claim by Examin-
er's Amendment, see 1302.04(b).

## 706.03(i) Aggregation

Rejections on the ground of aggregation
should be based upon a lack of cooperation be-
tween the elements of the claim. No prior art
should be relied upon in this rejection. How-
ever, if art is found showing the various ele-
ments, an additional rejection on the prior art

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may be advisable. Many decisions and some
legal writers extend the term to include old and
exhausted combinations (706.03(j)). Rejec-
tions on the latter grounds, however, involve
the state of the art, and cooperation is present.
Confusion as to what is meant can be avoided
by treating all claims which include more than
one element as combinations (patentable or un-
patentable) if there is actual cooperation be-
tween the elements, and as aggregations if there
is no cooperation.

Example of aggregation: A washing ma-
chine associated with a dial telephone.

Example of old combination: An improved
carburetor claimed in combination with a gaso-
line engine.

A claim is not necessarily aggregative be-
cause the various elements do not function si-
multaneously. A typewriter, for example, is a
good combination. Neither is a claim necessar-
ily aggregative merely because elements which
do cooperate are set forth in specific detail.

## 706.03(j) Old Combination

The rejection on the ground of old combina-
tion (synonymous with "exhausted combina-
tion") requires the citation of a reference, but
is treated here because of its relation to aggre-
gation. The reference is cited, not to antici-
pate the claim, but to anticipate the broad
combination set forth in the claim. Moreover,
the cooperation and result between the ele-
ments in the reference must be the same as it
is in the claim.

Example : An improved (specifically recited)
carburetor claimed in combination with a gaso-
line engine. A reference is cited which shows
a carburetor combined with a gasoline engine.
This shows the broad combination to be old.
Both in the reference and in the claimed com-
bination, the cooperation between the carbu-
retor and engine is the same and the end result
is the same. The claimed combination is an
improvement over the prior art only because
of the improved carburetor. The carburetor
has separate status, since entire subclasses are
devoted to carburetors, claimed as such. A
reference is preferably cited to show the sepa-
rate status and development. (See 904.01 (d).)
See 707.03 for form.

5

## 706.03(k) Duplicate Claims; Double Patenting

Inasmuch as a patent is supposed to be lim-
ited to only one invention or, at most, several
closely related indivisible inventions, limiting
an application to a single claim, or a single
claim to each of the related inventions might

appear to be logical as well as convenient.
However, court decisions have confirmed ap-
plicant's right to restate (i.e., by plural claim-
ing) his invention in a reasonable number of
ways. Indeed, a mere difference in scope be-
tween claims has been held to be enough.

Nevertheless, when two claims in an appli-
cation are duplicates, or else are so close in
content that they both cover the same thing,
despite a slight difference in wording, it is
proper after allowing one claim to reject the
other as being a substantial duplicate of the
allowed claim. Also, it is possible to reject
one claim on an allowed claim if they differ
only by subject matter old in the art. The lat-
ter ground of rejection is set forth in the fol-
lowing paragraph quoted from Ex parte
Whitelaw, 1915 C.D. 18; 219 O.G. 1237:

"Claim 54 is not patentable over claim 51
and claims 53, 55 and 56 are not patentable
over claim 50 in view of Comstock, No. 590,657,
which shows that it is old to employ an engine-
casing in tools of this character. The claims
held patentable are considered as fully cover-
ing applicant's invention, and applicant can-
not be permitted to multiply his claims by
presenting alleged combinations which distin-
guish from the real invention only by including
elements which are old in the art and perform
no new function."

This rejection (the ex parte Whitelaw doc-
trine) is usually not applied if there are only
a few claims in the application.

Situations related to that given above are as
follows:

Conflicting subject matter in two applica-
tions of the same inventor, one of which is as-
signed, see Section 304.

Where there is a common assignee for two
or more applications by different inventors, see
Section 305.

Where the same inventor has two or more
applications for species or for related inven-
tions, see Chapter 800, particularly Sections
804-804.02, 806.04 (h), 822 and 822.01 for dou-
ble patenting rejections of inventions not pat-
entable over each other.

APPLICATION FILED UNDER 35 U.S.C. 121

The Commissioner has determined that un-
der 35 U.S.C. 121, the Patent Office cannot re-
ject a divisional application on the parent pat-
ent if the divisional application is filed as a
result of a requirement for restriction made by
the Office even though the requirement for re-
striction relates to species. In re Joyce, 1958
C.D. 2; 727 O.G. 4. See also In re Herrick et
al., 1958 C.D. 1; 727 O.G. 4 where the Com-

1

:

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missioner ruled that a requirement for restric-
tion should not be made in an application claim-
ing more than five species if the examiner is of
the opinion that the various species are obvi-
ously unpatentable over one another.

## 706.03(1) Multiplicity

Rule 75(b). More than one claim may be presented,
provided they differ substantially from each other and
are not unduly multiplied.

An unreasonable number of claims; that is
unreasonable in view of the nature and scope
of applicant's invention and the state of the
art, affords a basis for a rejection on the
ground of multiplicity. A rejection on this
ground should include all the claims in the case
inasmuch as it relates to confusion of the issue.

To avoid the possibility that an application
which has been rejected on the ground of un-
due multiplicity of claims may be appealed to
the Board of Appeals prior to an examination
on the merits of at least some of the claims
presented, the Examiner should, at the time of
making the rejection on the ground of multi-
plicity of claims, indicate the number of claims
which in his judgment is sufficient to prop-
erly define Applicant's invention and require
the Applicant to select a number of claims, not
to exceed the number specified, for examina-
tion on merits. The Examiner should be rea-
sonable in setting the number to afford the
Applicant some latitude in claiming his inven-
tion.

The Applicant's response to this require-
ment of the Examiner, to be complete, must
either:

1\. Reduce the number of claims presented to
a number not exceeding the number specified
by the Examiner in the Office action, thus over-
coming the rejection based upon the ground of
multiplicity, or

2\. Select certain claims for the purpose of
examination, the number of which is not
greater than the number previously indicated
by the Examiner to be sufficient to adequately
point out Applicant's invention. This selec-
tion must be made even though the Applicant
traverses the rejection entered by the Examiner
on the ground of multiplicity. If the rejec-
tion on multiplicity is adhered to, all claims
retained will be included in such rejection and
the selected claims only will be additionally
examined on their merits. This procedure pre-
serves applicant's right to have the rejection
on multiplicity reviewed by the Board of Ap-
peals. (Basis: Notice of Oct. 14, 1960.)
See also 706.03(k).

### 706.03(m) Nonelected Inventions

See 821 to 821.03. See particularly the last
paragraph of 821 for the necessity of rejecting
claims, which stand withdrawn because not
readable on the elected species, where appli-
cant has traversed the Examiner's holding.

### 706.03(n) Correspondence of Claim and Disclosure

Rule 117. Amendment and revision required. The
specification, claims and drawing must be amended and
revised when required, to correct inaccuracies of de-
scription and definition or unnecessary prolixity, and
to secure correspondence between the claims, the speci-
fication and the drawing.

Another category of rejections not based on
the prior art is based upon the relation of the
rejected claim to the disclosure. In chemical
cases, a claim may be so broad as to not be
supported by disclosure, in which case it is
rejected as unwarranted by the disclosure. If
averments in a claim do not correspond to the
averments or disclosure in the specification, a
rejection on the ground of inaccuracy may be
in order. It must be kept in mind that an
original claim is part of the disclosure and
might adequately set forth subject matter
which is completely absent from the specifica-
tion. Applicant is required in such an in-
stance to add the subject matter to the specifi-
cation. If subject matter capable of illustra-
tion is originally claimed and it is not shown
in the drawing, the claim is not rejected but
Applicant is required to add it to the drawing.
See 608.01 (1).

See 706.03 (z) for rejections on undue
breadth.

#### 706.03(o) New Matter

In the examination of an application fol-
lowing amendment thereof, the Examiner must
be on the alert to detect new matter. The pro-
hibition against new matter has been incorpo-
rated into the New Patent Code. See 35 U.S.C.
132.

In amended cases, subject matter not dis-
closed in the original application is sometimes
added and a claim directed thereto. Such a
claim is rejected on the ground that it is drawn
to new matter. New matter includes not only
the addition of wholly unsupported subject
matter, but also, adding specific percentages or
compounds after a broader original disclosure,
or even the omission of a step from a method.
See 608.04 to 608.04 (c).

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706.03(p)

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

##### 706.03(p) No Utility

A rejection on the ground of lack of utility
includes the more specific grounds of inopera-
tiveness, involving perpetual motion, frivolous,
fraudulent, against public policy. The former
practice of affording applicant an opportunity
for a refund of the filing fee in perpetual mo-
tion cases was discontinued by the Notice of
November 13, 1945. See 608.01 (p).

##### 706.03(q) Obvious Method

An Applicant may invent a new and useful
article of manufacture. Once the article is
conceived, it often happens that anyone skilled
in the art would at once be aware of a method
of making it. In such a case, if applicant as-
serts both article and method claims, the arti-
cle claims are allowed but the method claims
may be rejected as being drawn to an obvious
method of making the article.

#### 706.03(s) Statutory Bar

Another category of rejections not based on
the prior art finds a basis in some prior act of
applicant, as a result of which the claim is
denied him.

#### ABANDONMENT OF INVENTION

Under 35 U.S.C. 102(c); abandonment of
the "invention" (as distinguished from aban-
donment of an application) results in loss of
right to a patent.

#### OWN PRIOR FOREIGN PATENT

35 U.S.C. 102. Conditions for patentability; novelty
and loss of right to patent. A person shall be entitled
to a patent unless-
*

***

\*

\*
\*

(d) the invention was first patented or caused to
be patented by the applicant or his legal representatives
or assigns in a foreign country prior to the date of the
applications for patent in this country on an applica-
tion filed more than twelve months before the filing of
the application in the United States.

NoTE .- Section 4(b) of the Act of July 19,
1952, provides :

"Section 102(d) of Title 35, as enacted by section 1
hereof, shall not apply to existing patents and pending
application, but the law .previously in effect, namely
the first paragraph of R.S. 4887, shall apply to such
patents and applications."

The statutory bar of prior foreign patenting
stated in the first paragraph of R.S. 4887 has
been changed as expressed in paragraph (d) of
Section 102 of the new law. An application
for United States patent filed more than one
year after the filing of an application for the

same invention in a foreign country is no
longer barred unless the foreign patent issued
before the United States application is filed.

The statute above quoted establishes four
conditions which, if all are present, establish a
bar against the granting of a patent in this
country :

(1) The foreign application must be filed
more than one year before the filing in the
United States (Modified by Public Law 690,
201.16).

(2) It must be filed by the applicant, his legal
representatives or assigns.

(3) The foreign patent must be actually
granted (e.g., by sealing of the papers in Great
Britain) before the filing in the United States.
Ex parte Gruschwitz et al., 138 U.S.P.Q. 505
discusses "patented" as applied to German
procedures.

(4) The same invention must be involved.

If such a foreign patent is liscovered by the
Examiner, the rejection is made on the ground
of statutory bar.

The new law only applies to applications
filed after January 1, 1953.

#### SUBMISSION TO LIBRARY UNNECESSARY

Such applications [those filed after Janu-
ary 1, 1953] should not be submitted as a rou-
tine matter to the Library to ascertain if the
foreign application has become a patent. Since
the foreign patent to be a bar under 35 U.S.C.
102(d) must have been granted before the filing
date in this country, the probability of the
foreign patent having issued after the date of
execution of the original oath and before the
U.S. filing date is so slight as to make such a
search ordinarily unproductive. The practice
with reference to cases filed before January 1,
1953 remains unchanged. (Basis: Notice of
December 17, 1956.)

#### FOREIGN FILING WITHOUT LICENSE

35 U.S.C. 184. Filing of application in foreign coun-
try. Except when authorized by a license obtained
from the Commissioner a person shall not file or cause
or authorize to be filed in any foreign country prior to
six months after filing in the United States an applica-
tion for patent or for the registration of a utility model,
industrial design, or model in respect of an invention
made in this country. A license shall not be granted
with respect to an invention subject to an order issued
by the Commissioner pursuant to section 181 of this
title without the concurrence of the head of the depart-
ments and the chief officers of the agencies who caused
the order to be issued. The license may be granted
retroactively where an application has been inadvert-
ently filed abroad and the application does not disclose
an invention within the scope of section 181 of this title.

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The term "application" when used in this chapter
includes applications and any modifications, amend-
ments, or supplements thereto, or divisions thereof.

35 U.S.C.185. Patent barred for filing without license.
Notwithstanding any other provisions of law any per-
son, and his successors, assigns, or legal representa-
tives, shall not receive a United States patent for an
invention if that person, or his successors, assigns, or
legal representatives shall, without procuring the
license prescribed in section 184 of this title, have
made, or consented to or assisted another's making,
application in a foreign country for a patent or for the
registration of a utility model, industrial design, or
model in respect of the invention. A United States
patent issued to such person, his successors, assigns, or
legal representatives shall be invalid.

If, upon examining an application, the Ex-
aminer learns of the existence of a correspond-
ing foreign application which appears to have
been filed before the United States application
had been on file for six months, and if the in-
vention apparently was made in this country,
he shall refer the application to the Patent
Security Division, calling attention to the for-
eign application. Pending investigation of the
possible violation, the application may be re-
turned to the examining division for prosecu-
tion on the merits. When it is otherwise in
condition for allowance, the application will be
again submitted to the Patent Security Divi-
sion unless the latter has already reported that
the foreign filing involves no bar to the United
States application.

If it should be necessary to take action under
35 U.S.C. 185, an appropriate security examin-
ing division will request transfer of the appli-
cation to it. (Basis: Notice of July 14, 1961.)

#### OTHER STATUTORY BARS

Further, claims to an invention in public use
or on sale in the United States more than
twelve months before the effective U.S. filing
date are also rejected. 35 U.S.C. 102(b).

#### 706.03(t) Other Assigned Application

As pointed out in 304, assignment of one of
several overlapping applications may be a
ground of rejection. See also 305 and 706.03
(k).

#### 706.03(u) Disclaimer

Claims may be rejected on the ground that
applicant has disclaimed the subject matter in-
volved. Such disclaimer may arise, for exam-
ple, from the applicant's failure :

(a) to make claims suggested for interfer-
ence with another application under Rule 203
(1101.01(m)),

(b) to copy a claim from a patent when sug-
gested by the Examiner (1101.02(f), or

(c) to respond or appeal, within the time
limit fixed, to the Examiner's rejection of
claims copied from a patent (see Rule 206(b)
and 1101.02(f)).

The rejection on disclaimer applies to all
claims not patentably distinct from the dis-
claimed subject matter as well as to the claims
directly involved.

# 706.03(v) After Interference or Pub- lic Use Proceeding

For rejections following an interference, see
1109 to 1110.

The outcome of public use proceedings may
also be the basis of a rejection. (See Rule 292.)

## 706.03(w) Res Judicata

A prior adjudication against the inventor on
the same or similar claims constitutes a proper
ground of rejection as res judicata. Where a
different question of patentability is presented
the rejection of res judicata does not apply.

The rejection should only be used when the
earlier decision was a final, appellate one, such
as a Board of Appeals decision where the time
limit for further remedies has expired, or a
decision by the Court of Customs and Patent
Appeals. But see 201.11, last paragraph, for a
special situation.

"When making a rejection on res judicata,
action should ordinarily be made also on the
basis of prior art." (Basis: Notice of April
20, 1938.)

See also 201.07.

## 706.03(x) Reissue

35 U.S.C. 251 forbids the granting of a re-
issue "enlarging the scope of the claims of the
original patent" unless the reissue is applied
for within two years from the grant of the
original patent. This is an absolute bar and
cannot be excused. This prohibition has been
interpreted to apply to any claim which is
broader in any respect than the claims of the
original patent. Such claims may be rejected
as being barred by 35 U.S.C. 251. However,
when the reissue is applied for within two
years, the Examiner does not go into the ques-
tion of undue delay.

The same section permits the filing of a re-
issue application by the assignee of the entire
interest only in cases where it does not "enlarge
the scope of the claims of the original patent".
Such claims which do enlarge the scope may
also be rejected as barred by the statute.

A defective reissue oath affords a ground for
rejecting all the claims in the reissue appli-
cation. See 1401.08.

<!-- PageBreak -->

706.03(y)

# MANUAL OF PATENT EXAMINING PROCEDURE

Note that a reissue application is "special"
and remains so even if applicant does not make
a prompt response.

## 706.03(y) Improper Markush Group

Ex parte Markush, 1925 C.D. 126; 340 O.G.
839, sanctions, in chemical cases, claiming a
genus expressed as a group consisting of cer-
tain specified materials. This type of claim is
employed when there is no commonly accepted
generic expression which is commensurate in
scope with the field which the applicant de-
sires to cover. Inventions in metallurgy, re-
fractories, ceramics, pharmacy, pharmacology
and biology, may be claimed under the Mar-
kush formula but it has consistently been held
to be improper to extend it to purely mechani-
cal features or process steps. The use of the
disjunctive, as in "group consisting of A, B, or
C" is improper. In re Archbold, 1946 C.D. 63;
582 O.G. 178. It is also improper to use the
term "comprising" instead of "consisting of".
Ex parte Dotter, 12 U.S.P.Q. 382. Regarding
the normally prohibited inclusion of Markush
claims of varying scope (generic and sub-
generic for example) in the same case, see Ex
parte Burke, 1934 C.D. 5; 441 O.G. 509.

The materials set forth in the Markush group
ordinarily must belong to a recognized physi-
cal or chemical class or to an art-recognized
class. However, when the Markush group oc-
curs in a claim reciting a process or a combi-
nation (not a single compound), it is sufficient
if the members of the group are disclosed in
the specification to possess at least one prop-
erty in common which is mainly. responsible
for their function in the claimed relationship,
and it is clear from their very nature or from
the prior art that all of them possess this prop-
erty. The test should be applied as liberally
as possible. Where a Markush expression is
applied only to a portion of a chemical com-
pound, the propriety of the grouping is deter-
mined by a consideration of the compound as
a whole, and does not depend on there being
a community of properties in the members of
the Markush expression.

=

A rejection of a Markush type claim based
on any of the grounds pointed out above relates
to the merits and is appealable.

# SUBGENUS CLAIM

A situation may occur in which a patentee
has presented a number of examples which, in
the examiner's opinion, are sufficiently repre-
sentative to support a generic claim and yet a
court may subsequently hold the claim invalid

on the ground of undue breadth. Where this
happens the patentee is often limited to species
claims which may not provide him with suit-
able protection.

The allowance of a Markush type claim under
a true genus claim would appear to be bene-
ficial to the applicant without imposing any
undue burden on the Patent Office or in any way
detracting from the rights of the public. Such
a subgenus claim would enable the applicant
to claim all the disclosed operative embodi-
ments and afford him an intermediate level of
protection in the event the true genus claims
should be subsequently held invalid.

The examiners are therefore instructed not
to reject a Markush type claim merely because
of the presence of a true genus claim embra-
cive thereof. (Basis: Notice of Sept. 23, 1949.)

See also 608.01 (p) and 715.03.

## 706.03(z) Undue Breadth

In mechanical cases, broad claims may prop-
erly be supported by a single form of an ap-
paratus or structure. In re Vickers et al., 1944
C.D. 324; 564 O.G. 174.

In chemical cases, however, the disclosure of
a single species usually does not provide an
adequate basis to support generic claims. In
re Sol, 1938 C.D. 723; 497 O.G. 546. This is
because in chemistry it is not obvious from the
disclosure of one species, what other species
will work. In re Dreshfield, 1940 C.D. 351;
518 O.G. 255 gives this general rule: "It is well
settled that in cases involving chemicals and
chemical compounds, which differ radically in
their properties it must appear in an appli-
cant's specification either by the enumeration
of a sufficient number of the members of a
group or by other appropriate language, that
the chemicals or chemical combinations in-
cluded in the claims are capable of accomplish-
ing the desired result." The article "Broader
than the Disclosure in Chemical Cases", 31
J.P.O.S. 5, by Samuel S. Levin covers this sub-
ject in detail.

## 706.04 Rejection of Previously Al- lowed Claims

A claim noted as allowable shall thereafter
be rejected only after the proposed rejection
has been submitted to the Primary Examiner
for consideration of all the facts and approval
of the proposed action.

Great care should be exercised in authorizing
such a rejection. See Ex parte Grier, 1923
C.D. 27; 809 O.G. 223; Ex parte Hay, 1909
C.D. 18; 139 O.G. 197 (Basis: Order 3157).

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<!-- PageHeader="706.07" -->
<!-- PageHeader="EXAMINATION OF APPLICATIONS" -->

### PREVIOUS ACTION BY DIFFERENT EXAMINER

Full faith and credit should be given to the
search and action of a previous examiner un-
less there is a clear error in the previous action
or knowledge of other prior art. In general, an
examiner should not take an entirely new ap-
proach or attempt to reorient the point of view
of a previous examiner, or make a new search
in the mere hope of finding something.

Because it is unusual to reject a previously
allowed claim, the Examiner should point out
in his letter that the claim now being rejected
was previously allowed.

## 706.05 Rejection After Allowance of Application

See 1308.01 for a rejection based on a refer-
ence.

For rejection of claims in an allowed case
which has failed to make the date of a senior
application in correspondence under Rule 202,
see 1101.01 (i).

## 706.06 Rejection of Claims Copied From Patent

See 1101.02(f).

## 706.07 Final Rejection

Rule 113. Final rejection or action. (a) On the
second or any subsequent examination or considera-
tion, the rejection or other action may be made final,
whereupon applicant's response is limited to appeal in
the case of rejection of any claim (rule 191) or to
amendment as specified in rule 116. Petition may be
taken to the Commissioner in the case of objections
or requirements not involved in the rejection of any
claim (rule 181). Response to a final rejection or
action must include cancellation of, or appeal from the
rejection of, each claim so rejected and, if any claim
stands allowed, compliance with any requirement or
objection as to form.

(b) In making such final rejection, the examiner
shall repeat or state all grounds of rejection then con-
sidered applicable to the claims in the case, clearly
stating the reasons therefor.

Before final rejection is in order a clear issue
should be developed between the Examiner and
applicant. To bring the prosecution to as
speedy conclusion as possible and at the same
time to deal justly by both the applicant and
the public, the invention as disclosed and
claimed should be thoroughly searched in the
first action and the references fully applied;
and in response to this action the applicant
should amend with a view to avoiding all the
grounds of rejection and objection. Switching
from one subject matter to another in the

claims presented by applicant in successive
amendments, or from one set of references to
another by the Examiner in rejecting in suc-
cessive actions claims of substantially the same
subject matter, will alike tend to defeat at-
taining the goal of reaching a clearly defined
issue for an early termination; i.e., either an
allowance of the case or a final rejection.

While the Rules no longer give to an appli-
cant the right to "amend as often as the Ex-
aminer presents new references or reasons for
rejection", present practice does not sanction
hasty and ill-considered final rejections. The
applicant who is seeking to define his invention
in claims that will give him the patent protec-
tion to which he is justly entitled should re-
ceive the cooperation of the Examiner to that
end, and not be prematurely cut off in the
prosecution of his case. But the applicant
who dallies in the prosecution of his case, re-
sorting to technical or other obvious subter-
fuges in order to keep the application pending
before the Primary Examiner, can no longer
find a refuge in the Rules to ward off a final
rejection.

The Examiner should never lose sight of the
fact that in every case the applicant is entitled
to a full and fair hearing, and that a clear issue
between applicant and Examiner should be de-
veloped, if possible, before appeal is prose-
cuted. However, it is to the interest of the
applicants as a class as well as to that of the
public that prosecution of a case be confined to
as few actions as is consistent with a thorough
consideration of its merits.

Ex parte Hoogendam 1939 C.D. 3; 499 O.G.
3, states the attitude of the Office on the mat-
ter of final rejections. The position therein
taken holds that neither the Statutes nor the
Rules of Practice confer any right on an ap-
plicant to a more extended prosecution of his
application than is comprised in an "examina-
tion" and a re-examination thereof. It is rec-
ognized, however, that the equities in a given
case may justify a large number of Office ac-
tions.

# STATEMENT OF GROUNDS

In making the final rejection, all outstand-
ing grounds of rejection of record should be
carefully reviewed, and any such grounds re-
lied on in the final rejection should be reiter-
ated. They must also be clearly developed to
such an extent that applicant may readily judge
the advisability of an appeal unless a previous
(single) Office action contains a complete state-
ment supporting the rejection. (Note of Feb-
ruary 18, 1949.)

However, where a single previous Office ac-
tion contains a complete statement of a ground

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## 706.07(a)

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

of rejection, the final rejection may refer to
such a statement and also should include a re-
buttal of any arguments raised in the appli-
cant's response. If appeal is taken in such a
case, the examiner's answer should contain a
complete statement of the examiner's position.

A summary indicating the final disposition
of each claim is desirable and also a statement
that:

"The above rejection is made FINAL", or
"This is a FINAL rejection".

For amendments filed after final rejection,
see 714.12 and 714.13.

# 706.07 (a) Final Rejection, When Proper

Due to the change in practice as affecting
final rejections, older decisions on questions of
prematureness of final rejection or admission of
subsequent amendments do not necessarily re-
flect present practice. Where a claimed sub-
ject matter has been held unpatentable over a
reference or combination of references, finality
of rejection cannot be avoided by presenting
that subject matter anew in a re-worded claim,
especially if the state of prosecution of the case
is beyond the second Office action; nor can final
action be forestalled by adding to the claim
limitations clearly disclosed in the reference
patent.

It may therefore be proper to make the re-
jection final. even though the references are
applied and combined in a manner different
from that employed in the prior Office actions
or if a reference whose pertinency has been
previously pointed out, is relied upon for the
first time. See 707.05 (c).

In the consideration of claims in an amended
case where no attempt is made to point out the
patentable novelty, the Examiner should be on
guard not to allow such claims. See 714.04.
The claims, however, may be finally rejected
if, in the opinion of the Examiner, they are
clearly open to rejection on grounds of record.

# 706.07(b) Final Rejection, When Proper on First Action

=

In certain instances, the claims of a new ap-
plication may be finally rejected in the first ac-
tion. This may be done when the claims of
the new application, for example, a continuing
application, are similar to those of an earlier
application filed by the same applicant, and if
the claims of the earlier application were re-
jected on the grounds which are also applica-
ble against the claims of the new application.
If the rejection is based on res judicata, how-
ever, and the earlier application had not been

rejected on such a ground, it may not be made
final in the first action, since this would con-
stitute a new ground of rejection.

# 706.07(c) Final Rejection, Prema- ture

The examiner should guard against prema-
ture final rejections. A premature final rejec-
tion may result from failure to permit a full
development of clear-cut issues, especially in
cases involving complex machines or processes.
Or, again, if the Examiner waits until the
final rejection before giving an adequate ex-
planation of the application of the references
against the claims, such final rejection may be
premature.

Any question as to prematureness of a final
rejection should be raised, if at all, while the
case is still pending before the Primary Exam-
iner. This is purely a question of practice,
wholly distinct from the tenability of the re-
jection. It may therefore not be advanced as a
ground for appeal, or made the basis of com-
plaint before the Board of Appeals. It is re-
viewable by petition.

# 706.07(d) Final Rejection, With- drawal of, Premature

If, on request by applicant for reconsidera-
tion, the Examiner finds the final rejection to
have been premature, he should withdraw the
finality of the rejection.

# 706.07(e) Withdrawal of Final Re- jection, General

See 714.12 and 714.13, Amendments after
final rejection.

Once a final rejection that is not premature
has been entered in a case, however, it should
not be withdrawn at the applicant's request ex-
cept on the showing of Rule 116. This does
not mean that no further amendment or argu-
ment will be considered. An amendment that
will place the case either in condition for al-
lowance or in better form for appeal may be
admitted.

The Examiner may withdrew the rejection of
finally rejected claims whenever he deems the
conditions appropriate for such action. If, for
example, new facts or reasons are presented
such as to convince the Examiner that the pre-
viously rejected claims are in fact allowable,
then the final rejection should be withdrawn.
Occasionally, the finality of a rejection may be
withdrawn in order to apply a new ground of
rejection.

(
i

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<!-- PageHeader="707.02(a)" -->
<!-- PageHeader="EXAMINATION OF APPLICATIONS" -->

When a final rejection is withdrawn, all
amendments filed after the final rejection are
ordinarily entered.

If the Examiner's action in which the final-
ity of a prior rejection is withdrawn is not
itself made final, it must be submitted to the
Supervisory Examiner for approval.

## 707 Examiner's Letter or Action

Extract from Rule 104. (b) The applicant will be
notified of the examiner's action. The reasons for any
adverse action or any objection or requirement will
be stated and such information or references will be
given as may be useful in aiding the applicant to judge
of the propriety of continuing the prosecution of his
application.

## 707.01 Primary Indicates Action for New Assistant

After the search has been completed, action
is taken in the light of the references found.
Where the assistant Examiner has been in the
Office but a short time, it is the duty of the
Primary Examiner to go into the case thor-
oughly. The usual procedure is for the as-
sistant Examiner to explain the invention and
discuss the references which he regards as most
pertinent. The Primary Examiner may indi-
cate the action to be taken, whether restriction
or election of species is to be required, or
whether the claims are to be considered on
their merits. If action on the merits is to be
given, he may indicate how the references are
to be applied in cases where the claim is to be
rejected, or authorize allowance if it is not met
in the references and no further field of search
is known.

Until a new assistant becomes familiar with
Patent Office phraseology, his letters will gen-
erally be dictated to him by the Primary
Examiner. Later, the wording of the Office
action is usually left to the assistant, the char-
acter of the action being supervised by the
Primary.

# 707.02 Actions Which Require the Per- sonal Attention of the Primary Examiner

The Primary Examiner, though responsible
for all of the actions and decisions made in
the conduct of the work of his division, must,
in view of the amount of that work, delegate
to the experienced and reliable assistant Exam-
iners of his division authority to pass on many
of the questions to be decided in the prosecu-
tion of cases. There are some questions, how-
ever, which existing practice requires the Pri-

mary Examiner, personally, to decide. The
following actions fall in this category :

Third action on any case (707.02(a)).

Action on a case pending 5 or more years
(707.02(a)).

Final rejection.

Setting up an interference. (1101.01 (c).)

Disposition of an amendment in a case in
interference looking to the formation of an-
other interference involving that application
(1111.05).

Decisions on interference motions under
Rules 232 to 235; also, actions taken under
Rule 237 (1105.02 to 1105.05).

Rejection of a previously allowed claim
(706.04).

Proposed rejection of a copied patent claim.
(If applicable to a patentee, see 1101.02(f).)
Classification of allowed cases (903.07).

Holding of abandonment for insufficient
response.

Suspension of Examiner's action (Rule 103).

Treatment of newly filed application which
obviously fails to comply with 35 U.S.C. 112
(702.01).

Consideration of the advisability of a pat-
entability report (705.01).

Requirements for restriction (803.01).

Withdrawal of final rejection (706.07(d) and
706.07 (e)).

Decision on reissue oath.

Decision on affidavits under Rule 131
(715.08) and under Rule 132(716).

Decision on affidavit under Rule 131
(715.08).

Sealing of Rule 131 affidavit prior to inter-
ference.

For a list of actions that are to be submitted
to the Supervisory Examiners see 1003, 1004,
and 1005.

# 707.02(a) Cases Up for Third Action and Five-Year Cases

The Principal Examiners should impress
their assistants with the fact that the shortest
path to the final disposition of an application
is by finding the best references on the first
search and carefully applying them.

The Principal Examiners are expected to
personally consider every application which is
up for the third official action with a view to
finally concluding its prosecution.

Any case that has been pending five years
should be carefully studied by the Principal
Examiner and every effort made to terminate
its prosecution. In order to accomplish this
result, the case is to be considered "special"
by the Examiner. (Basis: Notice of October
11, 1930.)

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PAPER NO.

3

POL-90

ADDRESS ONLY
THE COMMISSIONER OF PATENTS
WASHINGTON, D. C. 2021

U. S. DEPARTMENT OF COMMERCE
PATENT OFFICE
WASHINGTON

IN REPLY PLEASE REFER TO:

John A. Smith
16753 Main Street
Detroit, Michigan 48200

Please find below a communication from the
EXAMINER in charge of this application.

Commissioner of Patents.

Applicant:

James A. Brown

Ser. No.

346.213

Filed

April 1, 1953

For
AIR CIRCULATOR

This application has been examined.
References applied:

Sutton
2,651,598
(filed Mar. 17, 1951)

Sep. 8, 1953
255-65 uxr

Renoir (French)
1,009,197
Mar. 5, 1952
167-75

(1 pg. includes spec. and dwg.)
(Corresponding U.S. - Renoir

2,650,334
Aug. 25, 1953
167-75)

Monnet (French)
975,000
July 17, 1945
167-75
(4 shts. dwg .; 8 pp. spec.)
(Only Fig. 4 of the dwg. and pg. 6 of the spec. are
relied on.)

References further showing the state of the art:
Mead, abstract of application Serial No. 11,520 published
May 1, 1948, 615 0.G. 71
167-75

Winslow, C.E.A., Fresh Air and Ventilation. N.Y.,
E.P. Dutton, 1926.
TH763.W5
(pp. 97-99 relied on.)

=

Receipt is acknowledged of papers submitted under
35 U.S.C. 119, which papers have been placed of record in
the file.

A new title which is aptly descriptive of the
invention claimed is required. The title -- AIR CIRCULATOR
WITH REMOTE SPEED CONTROL -- is suggested.
Claim 1 is rejected as fully met by Monnet.
Element 87 of Monnet is the spring-pressed latch claimed.

☒

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<!-- PageHeader="707.03" -->
<!-- PageHeader="EXAMINATION OF APPLICATIONS" -->
<!-- PageHeader="Serial No. 346,213" -->

-2-

Claim 2 is rejected as being obviously fully met
by Monnet.

Claim 3 is rejected as being indefinite. In
line 4 of the claim, the expression "upwardly and axially
depending" is meaningless. If this expression were changed
to -- upwardly extending from the base -- , the claim would be
allowed.

Claim 7 is rejected as being unpatentable over
Renoir in view of Sutton. Renoir discloses a fan 27, a
motor 19, and a pedestal 51 with a speed control unit 77
having a cable 79 extending into the pedestal. Renoir's
motor is different from the motor claimed. However, the
substitution of the specific motor of Sutton, which motor
corresponds to that claimed, for the corresponding motor
of Renoir in Renoir's combination would be obvious to a
person having ordinary skill in the art since the use and
advantages of a motor of the type claimed are taught by
Sutton. Any advantages that would flow from the proposed
substitution would be those inherently expected due to the
substituted motor.

The Mead abstract and the Winslow publication
are cited to show pedestal supports of the type shown by
applicant in Figs. 6 and 9 respectively.

Summary :

Claims 1, 2, 3, and 7 are rejected.
Claims 4, 5, and 6 are allowed.

JHSmith : bc

Examiner

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## 707.04 Initial Sentence

The initial sentence of each letter should in-
dicate the status of that action, as, "This appli-
cation has been examined" if it is the first
action in the case, or, "This is in response to
amendment filed * * ** if such is the case.
Other papers received, such as supplemental
amendments, affidavits, new drawings, etc.,
should be separately mentioned.

Preliminary amendment in a new case should
be acknowledged by adding some sentence such
as "Amendment filed (date) has been received"
following the initial sentence. It should be
noted, however, that in cases in which claims
in excess of the number supported by the filing
fee are presented before the first official action
in the case, action is given only on the claims
originally presented and any additional claims
covered by the original fee and applicant ad-
vised accordingly. See 714.10.

## 707.05 Citation of References

The citation of all references used for the
first time in the prosecution of the case should
then be made.

Rule 107. Citation of references. If domestic pat-
ents be cited, their numbers and dates, the names of
the patentees, and the classes of inventions must be
stated. If foreign patents be cited, their nationality
or country, numbers and dates, and the names of the
patentees must be stated, and such other data must be
furnished as may be neecssary to enable the applicant
to identify the patents cited. In citing foreign pat-
ents, the number of pages of specification and sheets
of drawing must be specified, and in case part only
of the patent be involved, the particular pages and
sheets containing the parts relied upon must be identi-
fied. If printed publications be cited, the author (if
any), title, date, pages or plates, and place of pub-
lication, or place where a copy can be found, shall be
given. When a rejection is based on facts within the
personal knowledge of an employee of the Office, the
data shall be as specific as possible, and the reference
must be supported, when called for by the applicant, by
the affidavit of such employee, and such affidavit shall
be subject to contradiction or explanation by the affi-
davits of the applicant and other persons.

See 901.04-901.05(b) for details on citation
of references.

The practice of placing references in the file
for use by the typist is not to be encouraged
since this may make the references unavailable
for search purposes for unduly long periods.
(Basis: Notice of September 24, 1956.)
See 1302.12.

<!-- PageFooter="Rev. 1, Jan. 1964" -->

# 707.05(a) Grouped at Beginning of Letter

In citing references for the first time, the
identifying data of the citation should be placed
in the typed letter immediately following the
initial introductory sentence (707.04), or
acknowledgement of preliminary amendment
(if any). It is helpful in preparing the list
of references (PO-98), if the U.S. patents are
arranged in numerical order. (Basis: Order
No. 2938.)

## 707.05(b) References Applied

The references selected as needed for treating
the claims should be preceded by a heading such
as: "References Applied." (Basis: Order No.
2938.)

## 707.05(c) References Pertinent

Any references selected to cover subject mat-
ter disclosed but not claimed should be sep-
arately listed under a heading such as "Other
pertinent art", "References further showing
the state of the art," or some similar expres-
sion. The pertinent features of such references
must be pointed out but a lengthy explanation
is unnecessary. See 706.07 (a).

## 707.05(d) References Cited in Subse- quent Actions

When references are cited in a subsequent
action, the heading should be "Additional ref-
erences made of record," or "Additional refer-
ences relied upon." (Basis: Order 2938.)

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

If an English language patent is found cor-
responding to an earlier cited foreign language
patent, see 707.05 (e).

## 707.05(e) Data Used in Citing Refer- ences

Rule 107 (707.05 and 901.05 (a) ) requires the
Examiner to give certain data when citing ref-
erences. See 901.04 for details concerning the
various series of U.S. patents and how to cite
them. Note that patents of the X-Series
(dated prior to July 4, 1836) are not to be
cited by number. Some U.S. patents issued in
1861 have two numbers thereon. The larger
number should be cited.

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If the patent date of a U.S. patent is after
the effective U.S. filing date of the application,
the filing date of the patent must be set forth
in parentheses below the citation of the patent.
This calls attention to the fact that the partic-
ular patent relied on is a reference because of
its filing date and not its patent date. Simi-
larly, when the reference is a continuation-in-
part of an earlier-filed application which
discloses the anticipatory matter and it is
necessary to go back to the earlier filing date,
the fact that the subject matter relied upon was
originally disclosed on that date in the first
application should be stated.

## CROSS-REFERENCES

Official cross-references should be marked
"XR" and unofficial cross-references "uxr."
(Basis: Order 3217.)

Cite abstracts as in 711.06(a) giving class
and subclass.

See 901.06 (c) for citation of Alien Property
Custodian publications.

## FOREIGN PATENTS

Data to be used in citing foreign patents is
given in Rule 107, in 901.05 (a).

In some instances the entire copy of a for-
eign patent will not be needed for the purpose
of a rejection. In these instances the number
of sheets of drawing and pages of specifica-
tion must be specified and also the particular
part of the drawing and the particular pages
of specification relied upon must be given.
(Basis: Order No. 3251.) See citation of
foreign patent in sample letter of 707.03.

In order to direct attention of interested
parties to English translations of foreign lan-
guage patents, the following practice should
be observed :

Cite the foreign language patent as usual.
If at that time the Examiner knows of a cor-
responding English language patent, but be-
cause of date or disclosure, the Examiner must
rely upon the foreign language patent, he
should cite both, thus:

Herrmann (French), 860,963, 3 pp., Oct. 15,
1940, 167-75.

(Corresponding U.S .- Herrmann, 2,537,757,
Jan. 9, 1951, 167-75.)

If the corresponding English language pat-
ent is found later, the Examiner should cite it
in the next regular Office action or, if the
application is being sent to issue, in an Exam-
iner's Amendment calling attention to its cor-
respondence to the previously cited foreign
language patent in the following manner:

Herrmann, 2,537,757, Jan. 9, 1951, 167-75.

(U.S. Corresponding to Herrmann-French
Cited in paper No. ______. )

To insure inclusion of both patents and to
indicate the correspondence between them in
the list of references (Form PO-98), the Ex-
aminer should make a marginal notation on
the Office action adjacent the citation of the
foreign language patent, such as:

"See Paper No. _______ for corresponding
U.S. patent." This should be in pencil and
initialed by the Examiner. (Basis: Notice of
September 27, 1951.)

## PUBLICATIONS

In citing a publication, sufficient information
should be given to determine the identity and
facilitate the location of the publication. The
data required by Rule 107 (Sec. 705.05) to-
gether with the Scientific Library call number
will suffice. The call number appears on the
"spine" of the book if the book is thick enough
and, in any event, on the back of the title page.

If the copy relied upon is located in the
Group making the action and there is no call
number, the additional information, "Copy in
Group
" should be given. Examples of
nonpatent bibliographical citations follow :

Winslow, C. E. A. Fresh air and ventila-
tion. N.Y., E. P. Dutton, 1926. p. 97-112.
TH7653.W5.

Singer, T. E. R. Information and communi-
cation practice in industry. N.Y., Reinhold,
1958. Chapter 8, p. 157-165, by J. F. Smith,
Patent searching. T175.S5

Machinery's Handbook, 16th ed. N.Y., Indus-
trial Press, 1959. p. 1526-1527. TJ151.M3
1959

Calvert, R. Patents (Patent law). In En-
cyclopedia of chemical technology, ed. by R. E.
Kirk and D. F. Othmer. N.Y., Interscience
Encyclopedia. Vol. 9, 1952, p. 868-890. TP9.
E68

Hine, J. S. Physical organic chemistry.
N.Y., McGraw-Hill, 1956. QD476.H5

Noyes, W. A., Jr. A climate for basic chemi-
cal research. In Chem. & Eng. News. 38(42) :
p. 91-95. Oct. 17, 1960. TPI-1418.

NOTE: In this citation, 38 is the volume num-
ber, 42 the issue number, and 91-95 the page
numbers.

If the original publication is located outside
the Office, the Examiner should immediately
order a photocopy of at least the portion relied
upon and indicate the class and subclass in
which it will be filed. The Office action MUST
designate this class and subclass. The Exam-
iner must, in addition, state the place where
the original publication may be found. For
example, Whitrow, G. J. Berkeley's philosophy

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of motion. In British Journal for the Philos-
ophy of Science. 4(13) : p. 37-45. May 1953.
(175.B787 Library of Congress.

Whenever in citing references in applica-
tions and in Form PO-98 (1302.12) the titles
of periodicals are abbreviated, the abbrevia-
tions of titles used in Chemical Abstracts and
printed in the list of periodicals abstracted
by Chemical Abstracts should be adopted with
the following exceptions: (1) the abbreviation
for the Berichte der deutschen chemischen
Gesellschaft should be Ber. Deut. Chem. rather
than Ber., and (2) where a country or city of
origin is a necessary part of a complete iden-
tification, the country or city of origin should be
added in parentheses, e.g., J. Soc. Chem. Ind.
(London). (Basis: Memorandum of Feb. 3,
1947.)

### 707.05(f) Effective Dates of Declassi- fied Printed Matter

In using declassified material as references
there are usually two pertinent dates to be con-
sidered, namely, the printing date and the pub-
lication date. The printing date in some in-
stances will appear on the material and may be
considered as that date when the material was
prepared for limited distribution. The publi-
cation date is the date of release when the ma-
terial was made available to the public .* If
the date of release does not appear on the mate-
rial, this date may be determined by reference
to the Office of Technical Services, Commerce
Department.

In the use of any of the above noted material
as an anticipatory publication, the date of re-
lease following declassification is the effective
date of publication within the meaning of the
statute.

¥

For the purpose of anticipation predicated
upon prior knowledge under 35 U.S.C. 102(a)
the above noted declassified material may be
taken as prima facie evidence of such prior
knowledge as of its printing date even though
such material was classified at that time. When
so used the material does not constitute an
absolute statutory bar and its printing date
may be antedated by an affidavit under Rule
131. (Basis : Notice of Feb. 24, 1947.)

*See Ex parte Harris et al., 79 U.S.P.Q. 438.

### 707.05(g) Incorrect Citation of Ref- erences

Whenever a reference has been incorrectly
cited in any official paper forming part of an
application file, and such citation has been cor-
rectly given in an ensuing Office action, the
Examiner is directed to correct the error, in

ink, in the paper in which the error appears,
and place his initials on the margin of such
paper, together with a notation of the paper
number of the action in which the citation has
been correctly given.

Where a wrong citation of a patent has been
made by the Examiner and this is evidenced
by the submission of the purchased copy, it is
customary as a matter of courtesy to mail the
applicant a correct copy. The erroneous copy
should be removed from the file and discarded.
It should not be returned to Patent Copy Sales
Branch. See also 710.06.

In any case otherwise ready for issue, in
which the erroneous citation has not been for-
mally corrected in an official paper, the Ex-
aminer is directed to correct the citation by
way of an Examiner's Amendment. (Basis:
Notice of May 13, 1948.)

If a FOREIGN patent is incorrectly cited;
for example, the wrong country is indicated
or the country omitted from the citation, the
General Reference Branch of the Scientific
Library may be helpful. The date and num-
ber of the patent are often sufficient to deter-
mine the correct country which granted the
patent.

### 707.06 Citation of Decisions, Orders and Notices

In citing published decisions, both the C.D.
and the O.G. citation should be given if the
case is reported in these publications. The
U.S., C.C.P.A., Federal Reporter or U.S.P.Q.
citation should also be given when it is con-
venient to do so. (Basis: Order 3357.)

In citing a manuscript decision which is
available to the public but which has not been
published, the tribunal rendering the decision
and complete data identifying the paper should
be given. Thus, a decision of the Board of
Appeals which has not been published but
which is available to the public in the patented
file should be cited, as "Ex parte ____ , deci-
sion of the Board of Appeals, Patent No.
,paper No. ____ , ______ pages."

Decisions found only in patented files should
be cited only when there is no published deci-
sion on the same point. Any such decision
which is frequently cited should be called to
the attention of the appropriate Director to
determine if it would be advisable to have it
published.

The citation of manuscript decisions which
are not available to the public should be
avoided. If an examiner believes that a par-
ticular manuscript decision not open to public
inspection would be useful, he may, call it to
the attention of the appropriate Director who

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will determine whether steps should be taken
to release it for publication. (Basis: Order
1870.)

When a Commissioner's Order, Notice or
Memorandum is cited in any official action, the
date of the order, notice or memorandum or
the Official Gazette in which the same may be
found should also be given. (Basis: Notice of
Feb. 12, 1924.)

### 707.07 Completeness and Clarity

Rule 105. Completeness of examiner's action. The
examiner's action will be complete as to all matters,
except that in appropriate circumstances, such as mis-
joinder of invention, fundamental defects in the appli-
cation, and the like, the action of the examiner may be
limited to such matters before further action is made.
However, matters of form need not be raised by the
examiner until a claim is found allowable.

Whenever, upon examination, it is found that
the terms or phrases of modes of characteriza-
tion used to describe the invention are not
sufficiently consonant with the art to which the
invention pertains, or with which it is most
nearly connected, to enable the examiner to
make the examination specified in Rule 104, the
examiner should make a reasonable search of
the invention so far as it can be understood from
the disclosure. The action of the examiner
may be limited to a citation of what appears to
be the most pertinent prior art found and a
request that applicant correlate the terminology
of his specification with art-accepted termi-
nology before further action is made.

A suitable form for this action is as follows:
"A preliminary examination of this applica-
tion indicates that the following terminology
(or properties or units of test data, etc) . . .
which appear(s) at page(s) ... of the speci-
fication is (are) so different from those gen-
erally accepted in the art to which this inven-
tion pertains that it is difficult or impossible
to make a reliable search.

Applicant is therefore requested to provide
a sufficient elucidation of these terms (or prop-
erties or test data) or correlation thereof with
art-accepted terminology so that a proper com-
parison with the prior art can be made.

A SHORTENED STATUTORY PERIOD
FOR RESPONSE TO THIS ACTION IS
SET TO EXPIRE (date)." (Basis: Notice
of March 28, 1962.)

#### 707.07(a) Action on Formal Matters

In every instance requirements to correct in-
formalities noted on Form PO-152 (pink slip)
by the Head of the Application Branch and

Draftsman's criticisms of the drawings should
be made in the first letter.

Every action on the merits should be com-
plete and thorough as to the merits. (Basis:
Order 5267.) See 714.02.

# 707.07(b) Requiring New Oath See 602.02.

## 707.07(c) Draftsman's Requirement

The Examiner should embody the Drafts-
man's criticism of the drawing in his first letter
to the applicant, clearly indicating whether a
new drawing is required. He should also state
that correction as indicated or submission of
the new drawing may be deferred pending the
allowance of a claim. See also 608.02(a),
608.02(e), 608.02 (s).

## 707.07 (d) Language To Be Used In Rejecting Claims

Where a claim is refused for any reason re-
lating to the merits thereof it should be "re-
jected" and the ground of rejection fully and
clearly stated, and the word "reject" must be
used. If the claim is rejected as too broad, the
reason for so holding should be given; if re-
jected as indefinite the Examiner should point
out wherein the indefiniteness resides; or if re-
jected as incomplete, the element or elements
lacking should be specified, or the applicant
be otherwise advised as to what the claim re-
quires to render it complete.

In general, the most usual ground of rejec-
tion is based on a prior patent or patents and
the rejection should generally be set forth as
follows :

## SINGLE REFERENCE

(1) If the claim reads element for element
on the reference, the claim should be rejected
as

(a) obviously fully met by, or

(b) clearly readable on, or

c) fully anticipated by, or

(d) fully met by, (or other equivalent ex-
pression) the reference.

The difference between (a) and (b) on the
one hand and (c) and (d) on the other should
not be lost sight of.

If the rejection is under (a) or (b), no adei-
tional comment is usually necessary. Under
(c) or (d), one or more elements of the refer-
ence should be pointed out to explain the re-
jection.

If claims are grouped, care should be taken to
insure that no claim in the group recites limi-

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tations which are not, in fact, shown in the
reference.

(2) If there are differences in structure, ma-
terials or process steps between the subject
matter set forth in the claim and the reference
relied on, 35 USC 103 applies rather than 35
USC 102 and the claim should be rejected as

(a) substantially met by, or

(b) unpatentable in view of 35 USC 103
over, or

(c) obvious in view of 35 USC 103 over,

the reference. Such rejection should be accom-
panied by a statement taking note of that fea-
ture or those features of the claim which are
not present in the reference and pointing out
the reasons why said feature or features do not
render the claim patentable.

COMBINATION OF REFERENCES :

(3) If the claim is rejected on A in view of
B, such rejection should be accompanied by a
statement that

(a) it would not be patentable to substitute
for the element X of A the element X' as
shown (or taught, or disclosed) in B; or

(b) it would be obvious to one having ordi-
nary skill in the art to substitute in A for his
element X the equivalent element X' as shown
in B.

It is not sufficient in a rejection based on A
in view of B merely to state that B teaches (or
shows) the element defined in the claim. This
is not conclusive that the claim should be re-
jected; for even if B does disclose the element
as claimed, its inclusion in the A organization
might result in a patentable combination.
Reasons should be given why it would not be
patentable to combine the indicated features.
In some cases, in addition to the above gen-
eral statement as set forth in (a) or (b), it
may be advisable to point out specifically how
the substitution can be made. The pertinency
of each reference should be fully set forth.

€

Everything of a personal nature must be
avoided. Whatever may be the Examiner's
view as to the utter lack of patentable merit
in the disclosure of the application examined,
he should not express in the record the opinion
that the application is, or appears to be, devoid
of patentable subject matter. Nor should he
express doubts as to the allowability of allowed
claims or state that every doubt has been re-
solved in favor of the applicant in granting
him the claims allowed.

### IMPROPER REJECTIONS

An omnibus rejection of the claim "on the
references and for the reasons of record" is
stereotyped and usually not informative and

should therefore be avoided. This is especially
true where certain claims have been rejected
on one ground and other claims on another
ground.

A plurality of claims should never be
grouped together in a common rejection, unless
that rejection is equally applicable to all claims
in the group.

Cumulative (multiple )or "pyramid" rejec-
tions should ordinarily be avoided, the best
references only being used.

## 707.07(e) Note All Outstanding Re- quirements

In taking up an amended case for action the
Examiner should note in every letter all the
requirements outstanding against the case.
Every point in the prior action of an Exam-
iner which is still applicable must be repeated
or referred to, to prevent the implied waiver
of the requirement.

As soon as allowable subject matter is found,
correction of all informalities then present
should be required.

## 707.07(f) Answer All Material Tra- versed

Where the requirements are traversed, or
suspension thereof requested, the Examiner
should make proper reference thereto in his
action on the amendment.

Where the applicant traverses any rejection,
the Examiner should, if he repeats the rejec-
tion, take note of the applicant's argument and
answer the substance of it.

If a rejection of record is to be applied to
a new or amended claim, specific identification
of that ground of rejection, as by citation of
the paragraph in the former Office letter in
which the rejection was originally stated,
should be given.

## ANSWERING ASSERTED ADVANTAGES

After an Office action, the response (in addi-
tion to making amendments, etc.) may fre-
quently include arguments and affidavits to the
effect that the prior art cited by the Examiner
does not teach how to obtain or does not in-
herently yield one or more advantages (new
or improved results, functions or effects),
which advantages are urged to warrant issue
of a patent on the allegedly novel subject mat-
ter claimed.

If it is the Examiner's considered opinion
that the asserted advantages are without sig-
nificance in determining patentability of the
rejected claims, he should state the reasons for

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his position in the record, preferably in the
action following the assertion or argument
relative to such advantages. By so doing the
Applicant will know that the asserted ad-
vantages have actually been considered by the
Examiner and, if appeal is taken, the Board of
Appeals will also be advised.

The importance of answering such argu-
ments is illustrated by In re Herrmann et al.,
1959 C.D. 159; 739 O.G. 549 where the appli-
cant urged that the subject matter claimed
produced new and useful results. The court
noted that since Applicants' statement of ad-
vantages was not questioned by the Examiner
or the Board of Appeals, it was constrained
to accept the statement at face value and there-
fore found certain claims to be allowable.
(Basis : Notice of October 27, 1959.)

### 707.07(g) Piecemeal Examination

Piecemeal examination or prosecution should
be avoided as much as possible. The Examiner
ordinarily should reject each claim on all valid
grounds available, avoiding, however, undue
multiplication of references. (See 904.02.)
Moreover, when there exists a sound rejection
on the basis of prior art which discloses the
"heart" of the alleged invention (as distin-
guished from prior art which merely meets the
terms of the claim), secondary rejections on
technical grounds ordinarily should not be
made. Where a major technical rejection is
proper (e.g., aggregation, lack of proper dis-
closure, undue breadth), such rejection should
be stated with a full development of the rea-
sons rather than by a mere conclusion coupled
with some stereotyped expression. Certain
technical rejections (e.g. negative limitations,
indefiniteness) should not be made where the
examiner recognizing the limitations of the
English language, is not aware of an improved
mode of definition.

### 707.07(h) Notify of Inaccuracies in Amendment

### See 714.23.

### 707.07(i) Each Claim To Be Men- tioned in Each Letter

In every letter each claim should be men-
tioned by number, and its treatment or status
given. Since a claim retains its original nu-
meral throughout the prosecution of the case,
its history through successive actions is thus

eastly traceable. Each action should conclude
with a summary of rejected, allowed and can-
celled claims.

Claims retained under Rule 142 and claims
retained under Rule 146 should be treated as
set out in 821 to 821.03 and 809.02(a).

See 1109.02 for treatment of claims in the
application of losing party in interference.

The Index of Claims should be kept up to
date as set forth in 717.04.

## 707.07(j) State When Claims Are Al- lowable

ALLOWANCE EXCEPT AS TO FORM

When an application discloses patentable
subject matter and it is apparent from the
claims and the Applicant's arguments that the
claims are intended to be directed to such
patentable subject matter, but the claims in
their present form cannot be allowed because
of defects in form or omission of a limitation,
the Examiner should not stop with a bare ob-
jection or rejection of the claims. The Exam-
iner's action should be constructive in nature
and when possible he should offer a definite
suggestion for correction.

If the Examiner is satisfied after the search
has been completed that patentable subject
matter has been disclosed and the record indi-
cates that the Applicant intends to claim such
subject matter, he may note in the Office action
that certain aspects or features of the patent-
able invention have not been claimed and that
if properly claimed such claims may be given
favorable consideration.

If a claim is otherwise allowable but is de-
pendent on a cancelled claim (Ex parte Brice
et al., 110 U.S.P.Q. 560) or on a rejected claim,
the Office action should state that the claim
would be allowable if made complete in itself.

### SPECIAL APPLICATION OF EX PARTE QUAYLE

In order to avoid entry of minor technical
grounds of rejection in a case wherein all
claims are patentable in substance, and where
such grounds of rejection have not been previ-
ously raised, instead of rejecting the claims,
and thereby possibly precluding a final dis-
posal, the Examiner should object to the claims
and at the same time offer constructive sug-
gestions for overcoming the criticisms. Such
an action is to be made in accordance with the
Ex parte Quayle practice and a shortened
statutory period should be set.

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# EARLY ALLOWANCE OF CLAIMS

Where the Examiner is satisfied that the
prior art has been fully developed and some of
the claims are clearly allowable, he should not
delay the allowance of such claims. The prac-
tice of some Examiners of never allowing a
claim in the early actions, when the afore-
mentioned conditions exist, is a handicap to
attorneys or agents. An early allowance of
some claims is more conducive to a compromise
or cancellation of rejected claims. Such prac-
tice is also a hardship on the inventor in his
attempts to negotiate for the exploitation of
his invention.

## 707.07(k) Numbering Paragraphs

It is good practice to number the paragraphs
of the letter consecutively. This facilitates
their identification in the future prosecution of
the case.

## 707.08 Reviewing and Initialing by As- sistant Examiner

The typed Office action is compared with the
rough draft by the Assistant Examiner and the
original copy initialed when satisfactory.

## 707.09 Signing by Primary or Other Authorized Examiner

In each Examiner's letter, the word "Ex-
aminer" without the number of the Division,
should appear at the end on both the original
and carbon copies, the original only being
signed. (Basis: Order 2938.)

## 707.10 Entry

After the original copy has been signed by
the Primary Examiner, the typist places it in
the file wrapper and enters in black on the out-
side of the wrapper, under "Contents", the
character of the action.

=

## 707.11 Date

Since the period for response begins to run
from the date of mailing of the Examiner's
action, the date should not be typed when the
letter is written, but should be stamped on all
copies of the letter after it has been signed
by the Examiner and the carbon copies are
about to be mailed.

## 707.12 Mailing

The carbon copies are mailed after the origi-
nal, initialed by the Assistant and signed by
the Primary Examiner, has been placed in the
file.

## 707.13 Returned Office Action

Letters are sometimes returned to the Office
because the Post Office has not been able to de-
liver them. The Examiner should use every
reasonable means to ascertain the correct ad-
dress and forward the letter again, after
stamping it "remailed" with the date thereof
and redirecting it if there be any reason to
believe that the letter would reach applicant
at such new address. If the Office letter was
addressed to an attorney, a letter may be writ-
ten to the inventor or assignee informing him
of the returned letter. The six months run-
ning against the application begins with the
date of remailing. (Ex parte Gourtoff, 1924
C.D. 153; 329 O.G. 536.)

If the Office is not finally successful in de-
livering the letter, it is placed, with the en-
velope, in the file wrapper. If six months
elapse from the remailing with no communica-
tion from applicant, the case is forwarded to
the Abandoned Files Unit.

## 708 Order of Examination

Rule 101. Order of examination. (a) Applications
filed in the Patent Office and accepted as complete ap-
plications (rules 53 and 55) are assigned for examina-
tion to the respective examining divisions having the
classes of inventions to which the applications relate.
Applications shall be taken up for examination by the
examiner to whom they have been assigned in the or-
der in which they have been filed.

(b) Applications which have been acted upon by the
examiner, and which have been placed by the appli-
cant in condition for further action by the examiner
(amended applications) shall be taken up for such
action in the order in which they have been placed in
such condition (date of amendment).

## 708.01 List of Special Cases

Rule 102. (a) Advancement of examination. Appli-
cations will not be advanced out of turn for examina-
tion or for further action except as provided by these
rules, or upon order of the Commissioner to expedite
the business of the Office, or upon a verified showing
which, in the opinion of the Commissioner, will justify
so advancing it.

(b) Applications wherein the inventions are deemed
of peculiar importance to some branch of the public

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service and the head of some department of the Gov-
ernment requests immediate action for that reason, may
be advanced for examination.

Certain procedures by the Examiners take
precedence over actions even on special cases.
For example, all papers typed and ready for
signature should be completed and mailed.

All issue cases returned with a "Printer
Waiting" slip must be processed and returned
within the period indicated.

Cases in which practice requires that the
examiner act within 60 days, such as decisions
on motion (1105.06) and examiner's answers
(1208), necessarily take priority over special
cases without specific time limits. Such cases
should be taken up for action at least 30 days
before the 60-day period expires, to guarantee
completion within the 60-day limit. (Basis:
Notice of March 29, 1963.)

If an Examiner has a case which he is satis-
fied is in condition for allowance, or which he
is satisfied will have to be finally rejected, he
should give such action forthwith instead of
making the case await its turn. (Basis: Order
3084.)

If the applicant makes prompt response to
the Examiner's requirement for restriction, the
application will thereafter be considered "spe-
cial" until it has received an action on the
merits. For this purpose, response within 60
days for domestic applicants and, within 90
days for foreign applicants should be consid-
ered as being prompt. (Basis: Order 5282.)

Order 5282 does not apply to cases where
generic claims, linking claims, or any claims
receive an action on their merits.

The following is a list of special cases (those
which are advanced out of turn for examina-
tion) :

(a) Applications wherein the inventions are
deemed of peculiar importance to some branch
of the public service and when for that reason
the head of some department of the Govern-
ment requests immediate action and the Com-
missioner so orders (Rule 102).

(b) Cases made special as a result of a peti-
tion. (See 708.02.)

Subject alone to diligent prosecution by the
applicant, an application for patent that has
once been made special and advanced out of
turn for examination by reason of a ruling
made in that particular case (by the Commis-
sioner or an Assistant Commissioner) will con-
tinue to be special throughout its entire course
of prosecution in the Patent Office, including
appeal, if any, to the Board of Appeals; and
any interference in which such an application
becomes involved shall, in like measure, be con-
sidered special by all Patent Office officials con-
cerned. (Basis: Notice of Dec. 3, 1954.)

(c) Applications for reissues (Rule 176).

(d) Cases remanded by an appellate tribunal
for further action.

(f) Applications which appear to interfere
with other applications previously considered
and found to be allowable, or which it is de-
manded shall be placed in interference with an
unexpired patent or patents (Rule 201).

(g) Cases ready for allowance, or ready for
allowance except as to formal matters. (See
Order 3084 above, and Order 5267 in 710.02
(b).)

(h) Cases which are in condition for final
rejection. (See Order 3084 above.)

(i) Cases pending more than five years, in-
cluding those which, by relation to a prior
United States application, have an effective
pendency of more than five years. See 707.02
(a) and 710.02(b), item (d).

(j) Cases where the first action on the case
has been limited to a requirement for restric-
tion and applicant has made a prompt response.
(See Order 5282 above.)

(k) Cases awaiting third action. (Notice of
Oct. 12, 1961.)

See also 714.13 and 1207.

## 708.02 Petition to Make Special MANUFACTURE OR INFRINGEMENT

Petitions to make special may be based on
the grounds of prospective manufacture or ac-
tual infringement (as explained in Form PO-
94) or the inability of the applicant to interest
capital due to the lack of a patent or of an
Office action indicating patentable subject
matter.

### AGE OR ILL HEALTH

Petitions to make special may be based on
a verified showing that the age (65 or older)
or state of health of the applicant is such that
he might not be available to assist in the prose-
cution of the application, if it were to run its
normal course, or be alive at the time of the
grant to derive any benefit from his patent.

### CONTINUING APPLICATION

Petitions to make special a continuing appli-
cation may be based on an allegation that the
application contains only claims which have
been held allowable in the parent case or claims
differing therefrom only in matters of form
or by immaterial terminology. The examiner
is requested to make a report stating whether
the allegation in the petition is correct and in-
cluding a list of the references over which the
claims were allowed, unless such references have
been listed in the petition. If, in the opinion

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of the Examiner, the claims in the application
do not qualify it for special status as above
noted, but he is able to determine from inspec-
tion that the application is allowable in matters
of substance or that the claims are otherwise
such as would, by reason of the previous prose-
cution, be clearly subject to immediate final ac-
tion, he should report the fact. (Basis: Notice
of July 25, 1938, and Notice of November 7,
1955, 700 O.G. 567.)

Beginning August 1, 1961, each petition to
make special, regardless of the ground upon
which the petition is based and the nature of
the decision is placed of record in the applica-
tion file, together with the decision thereon.
The petition and the decision will be entered in
the application by the Office where the petition
is ruled on. The petition, together with any
attached papers and supporting affidavits, will
be given a single paper number and entered
by that number in the "Contents" of the file.
The decision will be accorded a separate paper
number and so entered in the "Contents" of the
file.

In order to insure entries in the "Contents"
of the application file in proper order, the clerk
in the examining group will be expected to
make certain that all papers prior to a petition
have been entered in the application file before
forwarding it for consideration. (Basis: No-
tice of July 25, 1961.)

### 708.03 Examiner Tenders His Resig- nation

Whenever an Examiner tenders his resigna-
tion, the Primary Examiner should see that he
spends his remaining time as far as possible in
winding up the old complicated cases or those
with involved records and getting as many of
his amended cases as possible ready for final
disposition. (Basis: Order 3084.)

If the Examiner has considerable experience
in his particular art, it is also advantageous
to the Office if he indicates (in pencil) in the
file wrappers of new cases on his desk, the field
of search that he considers appropriate.

## 709 Suspension of Action

Rule 103. Suspension of action. (a) Suspension of
action by the Office will be granted at the request of
the applicant for good and sufficient cause and for a
reasonable time specified. Only one [such] suspension
may be granted by the primary examiner ; any further
suspension must be approved by the Commissioner.

(b) If action on an application is suspended when
not requested by the applicant, the applicant shall be
notified of the reasons therefor.

Action by the examiner may be suspended by order.
of the Commissioner in the case of applications owned

by the United States whenever publication of the in-
vention by the granting of a patent thereon might be
detrimental to the public safety or defense, at the re-
quest of the appropriate department or agency.

Suspension of action (Rule 103) should not
be confused with extension of time for reply
(Rule 136). It is to be noted that a suspension
of action applies to an impending Office action
by the examiner whereas an extension of time
for reply applies to action by the applicant.

The second paragraph of the Rule provides
for a suspension of Office action by the exam-
iner on his own initiative, as in Secs. 709.01
and 1101.01 (i).

## 709.01 Overlapping Applications by Same Applicant or Owned by Same Assignee

Examiners should not consider ex parte,
when raised by an applicant, questions which
are pending before the Office in inter partes
proceedings involving the same applicant or
party of interest. (See ex parte Jones, 1924
C.D. 59; 327 O.G. 681.)

Because of this where one of several appli-
cations of the same inventor or assignee which
contain overlapping claims gets into an inter-
ference it was formerly the practice to suspend
action by the Office on the other applications
in accordance with Ex Parte McCormick, 1904
C.D. 575; 113 O.G. 2508.

Now, partly in view of In re Seebach, 1937
C.D. 495; 484 O.G. 508 the prosecution of all
the cases not in the interference is required to
be carried as far as possible, by treating as
prior art the counts of the interference and by
rejections forcing the drawing of proper lines
of division. See 1111.08.

## 709.02 Actions Following Correspond- ence Under Rule 202

See 1101.01 (i).

### 710 Period for Response

See Chapter 1200 for period for response
when appeal is taken or court review sought.

### 710.01 Statutory Period

Extract from Rule 135. (a) If an applicant fails to
prosecute his application within six months after the
date when the last official notice of any action by the
Office was mailed to him, or within such shorter time
as may be fixed (rule 136), the application will become
abandoned.

The normal statutory period for response to
an Office action is six months. 35 U.S.C. 133.

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710.02(b)

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# 710.01(a) Statutory Period, How Computed

The period is computed from the day of the
mailing of the Office action to the date of re-
ceipt by the Office of applicant's response. No
cognizance is taken of fractions of a day and
applicant's response is due on the corresponding
day of the month six months after the Office
action.

Response to an Office action dated August 30,
is due on the following February 28 (or 29
if it is a leap year), while a response to an
Office action dated February 28 is due on Au-
gust 28 and not on the last day of August. Ex
parte Messick, 1930 C.D. 6; 400 O.G. 3.

The date of receipt of a response to an Office
action is given by the "Office date" stamp which
appears on the responding paper. See 505.

In some cases the Examiner's letter does not
determine the beginning of a statutory re-
sponse period. For example, the Examiner
may write a letter adhering to a final rejection,
in which case the statutory response period
running from the date of the final rejection is
not disturbed. In all cases where the statutory
response period runs from the date of a previ-
ous action, a statement to that effect should be
included at the end of the letter.

## 710.02 Shortened Statutory Period and Time Limit Actions

Under Rule 136 (35 U.S.C. 133) an appli-
cant does not always have six months within
which to respond to an Office action. He may
be required to respond in a shorter period, not
less than 30 days, whenever it is deemed "neces-
sary or expedient". Some conditions deemed
"necessary or expedient" are listed in Section
710.02 (b).

## SPECIFYING DATE

Every letter setting a shortened statutory
period for response other than three months
should conclude with :

A SHORTENED STATUTORY PERIOD
FOR RESPONSE TO THIS ACTION IS
SET TO EXPIRE (date).

Every letter with a three months' period for
response should conclude with :

A SHORTENED STATUTORY PERIOD
FOR RESPONSE TO THIS ACTION IS
SET TO EXPIRE THREE MONTHS
FROM THE DATE HEREOF.

Capital letters should be used. (Basis:
Notice of June 11, 1940 and Notice of Novem-
ber 6, 1961.)

In other situations, for example, the rejection
of a copied patent claim, the Examiner may
require applicant to respond on or before a
specified date. These are known as time limit

actions. The time limit requirement should
also be typed in capital letters.

Care should be exercised to set a date which
is not a Saturday, Sunday or holiday.

Furthermore, the legend "SHORTENED
TIME FOR REPLY" is stampted on the first
page of every action, including all carbon copies
in which a shortened time for reply has been
set. This legend is applied preferably just
under the date stamp so prominently that a
person looking merely for the mailing date of
the action and not reading the action as a whole
cannot reasonably avoid seeing the legend.
(Basis: Notice of November 22, 1941.)

# 710.02(a) Approval of Time Set in Case of Shortened Statu- tory Period

Before being mailed, certain letters setting a
shortened statutory period for response must be
approved by the Commissioner, but this ap-
proval is obtained from the Group Supervisory
Examiner, to whom the Commissioner has dele-
gated this authority. (Basis: Order 3494.)
(See 1005.)

# 710.02(b) Shortened Statutory Pe- riod: Situations in Which Used

From time to time the Commissioner adds to
or removes from the list of types of actions
calling for a shortened statutory period. In
general where the prosecution has obviously
been dilatory, or where the circumstances are
such that the public interest requires the prose-
cution to be promptly closed, a shortened statu-
tory period may be set. A shortened statutory
period for response to a final rejection should
be set only when approved by the Group Super-
visor. See, however, 710.02(c), par. (b).

Some specific cases are :

(a) When an application is in condition for
allowance, except as to matters of form, such
as correction of drawings or specification, a
new oath, etc., the case will be considered special
and prompt action taken to require correction
of formal matters. Such action should include
a statement that prosecution on the merits is
closed in accordance with the decision in ex
parte Quayle, 1935 C.D. 11; 453 O.G. 213, and
should conclude with the setting of a shortened
statutory period for (approximately 45 days)
response. (Basis: Order 5267.) Shortened
period for signing and returning drawing pre-
pared by Patent Office. See 608.02 (x).

(b) When a prompt issue as a patent is de-
sired to avoid futile interference proceedings,
as where the junior party fails to overcome the
senior party's filing date under Rule 202, a

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710.02 (c)

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shortened period for response by the senior
party may be set. See 1101.01 (i).

(c) Where, after the termination of an inter-
ference proceeding, the application of the win-
ning party contains an unanswered office action,
final rejection or any other action, the Primary
Examiner notifies the applicant of this fact.
In this case response to the Office action is re-
quired within a shortened statutory period (60
days) running from the date of such notice.
See Ex parte Peterson, 1941 C.D. 8; 525 O.G. 3.
(Basis: Notice of April 14, 1941, Revised.)

(d) When a case has been pending for five
years, in order to expedite termination of the
prosecution. This also applies to any case
which by relation to a prior application has
an effective pendency of more than five years.

# THIRD ACTION

A shortened statutory period of three months
should be set in any third or subsequent com-
plete action on the merits which does not close
the prosecution of the case. (Basis: Memoran-
dum of Sept. 14, 1951 and Notice of Oct. 12,
1961.)

(e) When an error in citation of a reference
is called to the attention of the Office more
than three months after the Office action. See
710.06.

(f) Upon the reopening of a case consequent
to a Quality Control review.

(g) In any action requiring restriction which
action does not include a rejection of any claim.

(h) When multiplicity is the only ground of
rejection relied upon.

A shortened statutory period may not be less
than 30 days and may be as much as three
months, depending on the work involved on
the part of applicant, whether references have
to be ordered, whether applicant resides abroad
and similar considerations.

# 710.02(c) Nonstatutory Time-Limit: Situations in Which Used

(a) Rule 203 provides that in suggesting
claims for interference :

The parties to whom the claims are suggested will be
required to make those claims (i.e., present the sug-
gested claims in their applications by amendment)
within a specified time, not less than 30 days, in order
that an interference may be declared.

See 1101.01 (j), and 1101.01 (m).

(b) Rule 206 provides:

Where claims are copied from a patent and the ex-
aminer is of the opinion . . . that none of the claims
can be made, he shall state in his action why the appli-
cant cannot make the claims and set a time limit, not

less than 30 days, for reply. If, after response by the
applicant, the rejection is made final, a similar time
limit shall be set for appeal.

See 1101.02(f).

(c) When applicant's action is not fully re-
sponsive to the Office action, the Examiner may
give applicant a limited time, usually 20 days
to complete his response. See third paragraph
of Rule 135 which reads as follows :

When action by the applicant is a bona fide attempt
to advance the case to final action, and is substantially
a complete response to the examiner's action, but con-
sideration of some matter or compliance with some re-
quirement has been inadvertently omitted, opportunity
to explain and supply the omission may be given before
the question of abandonment is considered.

See 714.03.

# 710.02(d) Difference Between Short- ened Statutory and Time- Limit Periods

The distinction between a limited time for
reply and a shortened statutory period under
Rule 136 should not be lost sight of. The
penalty attaching to failure to reply within the
time limit (from the suggestion of claims or
the rejection of copied patent claims) is loss of
the subject matter involved on the doctrine of
disclaimer. A rejection on the ground of dis-
claimer is appealable. On the other hand, a
complete failure to respond within the set statu-
tory period results in abandonment of the entire
application. This is not appealable, but a peti-
tion to revive may be granted if the delay was
unavoidable. Further, where the applicant re-
sponds a day or two after the time limit, this
may be excused by the Examiner if satisfac-
torily explained; but a response one day late
in a case carrying a shortened statutory period
under the Rule 136, no matter what the excuse,
results in abandonment; however, if asked for
in advance extension of the period may be
granted by the Examiner, provided the exten-
sion does not go beyond the six months' period
from the date of the Office action. See also
1101.02(f).

## 710.02(e) Extension of Time

Extract from Rule 136. (b) The time for reply, when
a time less than six months has been set, will be ex-
tended only for good and sufficient cause, and for a
reasonable time specified. Any request for such ex-
tension must be filed on or before the day on which
action by the applicant is due, but in no case will the
mere filing of the request effect any extension. Only
one extension may be granted by the primary examiner
in his discretion; any further extension must be ap-
proved by the Commissioner. In no case can any ex-

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tension carry the date on which response to an action
is due beyond six months from the date of the action.

It should be very carefully noted that neither
the Primary Examiner nor the Commissioner
has authority to extend the shortened statutory
period unless request for the extension is filed
on or before the day on which applicant's ac-
tion is due. While the shortened period may
be extended within the limits of the statutory
six months' period, no extension can operate to
extend the time beyond the six months.

Compare, however, Rule 135 (c) and 714.08.

# 710.03 Three Year Period, Certain Government Owned Cases

35 U.S.C. 267. Time for taking action in Govern-
ment applications. Notwithstanding the provisions of
sections 133 and 151 of this title, the Commissioner
may extend the time for taking any action to three
years, when an application has become the property
of the United States and the head of the appropriate
department or agency of the Government has certified
to the Commissioner that the invention disclosed there-
in is important to the armament or defense of the
United States.

## 710.04 Two Periods Running

There sometimes arises a situation where two
different periods for response are running
against an application, the one limited by the
regular statutory period, the other by the lim-
ited period set in a subsequent Office action.
The running of the first period is not sus-
pended nor affected by an ex parte limited
time action or even by an appeal therefrom.
For an exception, involving suggested claims,
see 1101.01 (n).

## 710.04(a) Copying Patent Claims

Where in an application in which there is an
unanswered rejection of record, claims are
copied from a patent and all of these claims
are rejected there results a situation where two
different periods for response are running
against the application. One period, the first,
is the regular statutory period of the unan-
swered rejection of record, the other period is
the limited period set for response to the re-
jection (either first or final), established under
Rule 206. The date of the last unanswered
Office action on the claims other than the
copied patent claims is the controlling date of
the statutory period. (Ex parte Milton, 164
Ms. D. 1, 63 USPQ 132 and Ex parte Nelson,
164 Ms. D. 361, 26 J.P.O.S. 564.) See also
1101.02(f).

# 710.05 Period Ending on Saturday, Sunday or Holiday

Rule 7. Times for taking action; expiration on Satur-
day, Sunday, or holiday. Whenever periods of time
are specified in these rules in days, calendar days are
intended. When the day, or the last day, fixed by stat-
ute or by or under these rules for taking any action or
paying any fee in the Patent Office falls on Saturday,
Sunday, or on a holiday within the District of Colum-
bia, the action may be taken, or the fee paid, on the
next succeeding day which is not a Saturday, Sunday,
or a holiday. See rule 304 for time for appeal or for
commencing civil action.

The holidays in the District of Columbia
are: New Year's Day, January 1; Washing-
ton's Birthday, February 22; Memorial Day,
May 30; Independence Day, July 4; Labor
Day (first Monday in September) ; Veterans'
Day, November 11; Thanksgiving Day (fourth
Thursday in November) ; Christmas Day, De-
cember 25; Inauguration Day (January 20,
every four years). Whenever a holiday falls
on a Sunday, the following day (Monday) is
a holiday for the Federal establishment. Ex.
Order 10,358; 17 F.R. 5269.

When an amendment is filed a day or two
later than the expiration of the period fixed by
statute, care should be taken to ascertain
whether the last day of that period was Satur-
day, Sunday or a holiday in the District of
Columbia, and if so, whether the amendment
was filed or the fee paid on the next succeed-
ing day which is not a Saturday, Sunday or a
holiday.

An amendment received on such succeeding
day which was due on Saturday, Sunday or a
holiday is endorsed on the file wrapper with
the date of receipt. The Saturday, Sunday
and/or holiday is also indicated.

# 710.06 Miscellaneous Factors Deter- mining Date

Where the citation of a reference relied upon
for a rejection is incorrect and this error is
called to the attention of the Office not later
than three months after the action is mailed,
the normal period of six months for response
starts from the date of the Office letter giving
the correct citation. If the error in citation is
not called to the attention of the Office until
more than three months after the Office action,
a statutory period for reply should be set to
expire on a specified date which is three
months from the mailing date of the letter
giving the correct citation. See 707.05(g) for

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the manner of correcting the record where
there has been an erroneous citation. (Basis:
Notice of April 29, 1959, Revised.)

Where for any reason it becomes necessary
to remail any action (707.13), the action should
be correspondingly redated, as it is the re-mail-
ing date that establishes the beginning of the
six months period. Ex parte Gourtoff, 1924
C.D. 153; 329 O.G. 536.

A supplementary action after a rejection ex-
plaining the references more explicitly or giv-
ing the reasons more fully, even though no
further references are cited, establishes a new
date from which the statutory period runs.

If for any other reason an Office action is
defective in some matter necessary for a proper
response applicant's time to respond begins
with the date of correction of such defect. An
example is an action rejecting a claim on a
reference which is not cited at all nor already
of record.

## 711 Abandonment

Rule 135. Abandonment for failure to respond within
time limit. (a) If an applicant fails to prosecute his
application within six months after the date when the
last official notice of any action by the Office was mailed
to him, or within such shorter time as may be fixed
(rule 136), the application will become abandoned.

(b) Prosecution of an application to save it from
abandonment must include such complete and proper
action as the condition of the case may require. 'The
admission of an amendment not responsive to the last
official action, or refusal to admit the same, and any
proceedings relative thereto, shall not operate to save
the application from abandonment.

(c) When action by the applicant is a bona fide at-
tempt to advance the case to final action, and is sub-
stantially a complete response to the examiner's action,
but consideration of some matter or compliance with
some requirement has been inadvertently omitted, op-
portunity to explain and supply the omission may be
given before the question of abandonment is considered.

(d) Prompt ratification or filing of a correctly signed
copy may be accepted in case of an unsigned or im-
properly signed paper.

=
See rule 7.

Rule 138. Express abandonment. An application may
be expressly abandoned by filing in the Patent Office a
written declaration of abandonment, signed by the ap-
plicant himself and the assignee of record, if any, and
identifying the application.

Abandonment may be either of the invention
or of an application. This discussion is con-
cerned with abandonment of the application
for patent.

An abandoned application is one which is re-
moved from the Office docket of pending cases
through :

1\. formal abandonment by the applicant
himself (acquiesced in by the assignee if there
be one), or through

2\. failure of applicant to take appropriate
action within a specified time at some stage in
the prosecution of the case.
But see 608.02(1).

# 711.01 Express or Formal Abandon- ment

Applications may be expressly abandoned
as provided for in Rule 138. When a letter
expressly abandoning an application (not in
issue) is received, the Examiner should
acknowledge receipt thereof, indicate whether
it does or does not comply with the require-
ments of Rule 138, and if it does comply, state
that the application is abandoned and that it
is being sent to the Abandoned Files Unit.
However, in the case of an application in issue,
express abandonments which are received be-
fore the final fee is paid are acknowledged by
the Head of the Issue and Gazette Branch; in
those cases where the final fee has been paid
and the patent to be issued has received its
date and number, express abandonments must
be approved by the Commissioner, and under
these circumstances, approval depends upon a
showing of sufficient cause for waiting so long
before deciding to abandon the application.

In view of the doctrine set forth in Ex parte
Lasscell, 1884 C.D. 66; 29 O.G. 861, an amend-
ment canceling all of the claims, even though
said amendment is signed by the applicant
himself and the assignee, is not an express
abandonment. Such an amendment is re-
garded as non-responsive and should not be
entered, and applicant should be notified as
explained in 714.03, 714.05. But see 608.02 (1)
for situation where application is abandoned
along with transfer of drawings to a new appli-
cation.

# 711.02 Failure To Take Required Ac- tion During Time Period

Rule 135 specifies that an application be-
comes abandoned if applicant "fails to prose-
cute" his application within the fixed statutory
period. This failure may result either from

1\. failure to respond within the statutory
period, or

2\. insufficiency of response, i.e., failure to
take "complete and proper action, as the condi-
tion of the case may require" within the statu-
tory period (Rule 135).

Abandonment by entire failure to respond
presents no problems.

(
1

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Nor is there ordinarily any particular diffi-
culty when an amendment reaches the Office
(not the division) after the expiration of the
statutory period. The case is abandoned and
the remedy is to petition to revive it. The Ex-
aminer should notify the applicant or attorney
at once that the application has been aban-
doned. The late amendment is endorsed on the
file wrapper but not formally entered. (See
714.17.)

To pass on questions of abandonment, it is
essential that the Examiner know the dates
that mark the beginning and end of the statu-
tory period under varying situations. The ex
parte prosecution before the Examiner presents
few departures from the ordinary type in
which the applicant's response must reach the
Office within six months from the mailing date
of the Office letter, or not later than the date
set as ending the shortened period for reply.
(See 710 to 710.06.)

# 711.02 (a) Insufficiency of Response

Abandonment may result in a situation
where applicant's reply is within the statutory
period but is not fully responsive to the Office
action. But see 710.02(c), par. (c). See also
714.02 to 714.04.

# 711.02(b) Special Situations Involv- ing Abandonment

The following situations involving questions
of abandonment often arise, and should be spe-
cially noted :

1\. Copying claims from a patent when not
suggested by the Patent Office does not consti-
tute a response to the last Office action and will
not save the case from abandonment, unless the
last Office action relied solely on the patent for
the rejection of all the claims rejected in that
action.

2\. A case may become abandoned through
withdrawal of, or failure to prosecute, an ap-
peal to the Board of Appeals. See 1215.01 to
1215.04.

3\. Likewise it may become abandoned
through dismissal of appeal to C.C.P.A. or
civil action, where there was not filed prior to
such dismissal an amendment putting the case
in condition for issue or fully responsive to the
Board's decision. See 1215.05.

4\. Where claims are suggested for interfer-
ence near the end of the statutory period run-
ning against the case, see 1101.01 (n).

5\. When drawings are transferred under
Rule 88. See 608.02 (1).

# 711.02(c) Termination of Proceed- ings

"Termination of proceedings" is an expres-
sion found in 35 U.S.C. 120. As there stated,
a second application is considered to be co-
pending with an earlier case if it is filed before
(a) the patenting, (b) the abandonment of, or
(c) other termination of proceedings in the
earlier case. "Before" has consistently been
interpreted, in this context, to mean "not later
than".

In each of the following situations, proceed-
ings are terminated :

1\. When the final fee is not paid and the ap-
plication is forfeited, proceedings are termi-
nated as of the date the final fee was due and
the application is the same as if it were aban-
doned on that date (but if the final fee is later
accepted, on petition, the application is in a
sense revived).

2\. If an application is in interference involv-
ing all the claims present in the application as
counts and the application loses the interfer-
ence as to all the claims, then proceedings on
that application are terminated as of the date
appeal or review by civil action was due if no
appeal or civic action was filed.

3\. Proceedings are terminated in an applica-
tion after decision by the Board of Appeals
as explained in Section 1214.06.

4\. Proceedings are terminated after a deci-
sion by the court as explained in Sections
1215.05 and 1216.01.

# 711.03 Reconsideration of Holding of Abandonment; Revival

When advised of the abandonment of his
application, applicant may either ask for re-
consideration of such holding, if he disagrees
with it; or petition for revival if he acquiesces
with the holding.

# 711.03 (a) Holding Based on Insuffi- ciency of Response

Applicant may deny that his response was
incomplete.

While the Examiner has no authority to act
upon an application in which no action by ap-
plicant was taken during the statutory period,
he may reverse his holding as to whether or
not an amendment received during such period
was responsive and act on a case of such char-
acter which he has previously held abandoned.
This is not a revival of an abandoned appli-
cation but merely a holding that the case was
never abandoned. See also 714.03.

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## 711.03 (b)

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

## 711.03(b) Holding Based on Failure To Respond Within Period

When an amendment reaches the Patent
Office (not the Examining Group) after the ex-
piration of the statutory period and there is no
dispute as to the dates involved, no question of
reconsideration of a holding of abandonment
can be presented.

However, the Examiner and the applicant
may disagree as to the date on which the statu-
tory period commenced to run or ends. In this
situation, as in the situation involving suffi-
ciency of response, the applicant may take issue
with the examiner and point out to him that
his holding was erroneous.

# 711.03(c) Petitions Relating to Aban- donment

Rule 137. Revival of abandoned application. An
application abandoned for failure to prosecute may be
revived as a pending application if it is shown to the
satisfaction of the Commissioner that the delay was
unavoidable. A petition to revive an abandoned ap-
plication must be accompanied by a verified showing
of the causes of the delay, by the proposed response
unless it has been previously filed, and by the petition
fee.

A petition to revive an abandoned applica-
tion should not be confused with a petition
from an Examiner's holding of abandonment.
Abandonment may result not only from insuffi-
ciency of response but also from entire failure
to respond, within the statutory period follow-
ing an office action.

Where the holding of abandonment is predi-
cated on the insufficiency of the response, or
disagreement as to controlling dates the peti-
tion from such holding comes under Rule 181
and does not require a fee.

Where the applicant acquiesces in the hold-
ing of abandonment, or where the petition
from such holding is denied, applicant's only
recourse, so far as concerns the particular case
involved, is by petition to revive.

E

# 711.03(d) Examiner's Statement on Petition Relating to Aban- donment

## ON PETITION TO REVIVE

Effective immediately, no answer will be
prepared by the Examiner to a petition to re-
vive, except by filling out the form which will
accompany the application when it is forwarded
to him for a report. No communication will
be sent to the applicant by the Examiner and

no credit will be given for an action. (Basis:
Notice of December 14, 1961.)

# ON PETITION TO SET ASIDE EXAMINER'S HOLDING

Rule 181 states that the Examiner "may be
directed by the Commissioner to furnish a
written statement within a specified time set-
ting forth the reasons for his decision upon the
matters averred in the petition, supplying a
copy thereof to the petitioner". Often, how-
ever, the question is passed upon without a
statement being requested, if the issue raised
is clear from the record. Unless requested,
such a statement should not be prepared. See
1002.01.

# 711.04 Disposition of Abandoned Ap- plications

Extract from Rule 14. Abandoned applications may
be destroyed after twenty years from their filing date,
except those to which particular attention has been
called and which have been marked for preservation.
Abandoned applications will not be returned.

As explained in 1302.07, a retention label
is used to indicate applications not to be
destroyed.

## 711.04(a) Pulling and Forwarding

Once each month, the files and drawings of
such applications as have become abandoned
during the preceding month are pulled and
forwarded to the Abandoned Files Unit.

They should be carefully scrutinized by the
appropriate assistant examiner to verify that
they are actually abandoned. A check should
be made of files containing a decision of the
Board of Appeals for the presence of allowed
claims to avoid their being erroneously sent to
the Abandoned Files Unit.

## 711.04(b) Ordering Abandoned Files

Abandoned files may be ordered by sending
(through the Messenger Service) a completed
Form PO-125 to the Abandoned Files Unit
which is no longer located in the Department
of Commerce building. The name and group
of the individual Examiner orde: ing the file
should appear on the form and the file will be
sent to him through the Messenger Service.

Abandoned files more than ten years old
which have not been marked for permanent
retention are stored in a nearby Federal
Records Center. Orders for files in this group
require at least two days for processing. The
file should be returned promptly when it is no
longer needed.

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### EXPEDITED SERVICE

By dialing Extension 2597, service may be
expedited.

# 711.05 Letter of Abandonment Re- ceived After Application Is Allowed

Receipt of a letter of abandonment while an
application is allowed, is acknowledged by the
Issue and Gazette Branch. When the final fee
has been paid and the patent to issue has re-
ceived its date and number, the abandonment
may not be accepted without a showing of the
reasons for such a late abandonment. Ap-
proval of the Commissioner is necessary. (See
Rule 313.) If a letter of abandonment is re-
ceived while an application is forfeited, the
Docket Branch prepares and sends the
acknowledgement.

# 711.06 Publication of Abstracts

The practice of publishing abstracts of
abandoned applications, instituted by Commis-
sioner's Notice of January 25, 1949, 610 O.G.
258, has been discontinued. (Basis: Com-
missioner's Order of May 26, 1953, 671 O.G
316.)

# 711.06(a) Use of Abstract as Refer- ence

The published abstracts will be used as ref-
erences against any aplication in which they
may be applicable. Care must be taken by the
examiner not to refer to these abstracts as
patents or as applications. They may be desig-
nated and cited as follows:

Brown, abstract of application serial
number
published

O.G.
(Give class and sub-
class.)

These abstracts will be used by the examiner
as a basis for rejection only as printed publi-
cations effective from the date of publication
in the Official Gazette (This is similar to the
practice with respect to applications published
for the Alien Property Custodian, see notice
of May 14, 1943). If properly prepared, it
should not be necessary to refer to the complete

application file, but in any case in which ma-
terial in the application file is used as a refer-
ence it should only be used as evidence of mat-
ters of public knowledge on the date of the
publication of the abstract. (Basis: Circular
of Apr. 13, 1949.)

See 901.06(d).

# 712 Forfeiture

Rule 316. Forfeited application. (a) A forfeited
application is one upon which a patent has been with-
held for failure to pay the final fee within the pre-
scribed time. (See rule 314.)

(b) A forfeited application is not considered as pend-
ing while forfeited, and, if the final fee is not subse-
quently paid and accepted as provided in rule 317, the
application is abandoned, as of the date it became for-
feited.

It is seen that a forfeited application is one
which had the status of an allowed case for six
months and on which the final fee was not paid.
(Rule 316.) Its legal status during the year
dating from its forfeiture makes possible its
being issued as a patent on petition to the Com-
missioner when the petition is supported by
a verified showing (as, for example, that the
delay was unavoidable) and accompanied by
the final fee and the petition fee ($10). (Rule
317.)

When the six months' period within which
the final fee might have been paid has expired,
the file is returned by the Issue and Gazette
Branch to the Examining Group. Certain cler-
ical operations are performed and the file and
drawing are forwarded to the Abandoned Files
Unit. When the final fee is not paid and the
application is forfeited, proceedings are ter-
minated as of the date the final fee was due
and the application is the same as if it were
abandoned on that date (but if the final fee is
later accepted, on petition, the application is in
a sense revived). If the final fee is not tendered
within eighteen months after the date of allow-
ance and accepted, the forfeited case becomes
abandoned; and such abandoned application
cannot be revived. In this respect an abandoned
application that has passed through the twelve
months' period of forfeiture differs in status
from an application that has become abandoned
under the provisions of Rules 135 and 136 in
that the latter may be revived under the provi-
sions of Rule 137.

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# 713 Interviews

The personal appearance of an applicant,
attorney, or agent before the Examiner pre-
senting matters for the latter's consideration
is considered an interview.

# 713.01 General Policy, How Con- ducted

Rule 133. Interviews. (a) Interviews with exam-
iners concerning applications and other matters pend-
ing before the Office must be had in the. examiners'
rooms at such times, within office hours, as the respec-
tive examiners may designate. Interviews will not
be permitted at any other time or place without the
authority of the Commissioner. Interviews for the
discussion of the patentability of pending applications
will not be had before the first official action thereon.
Interviews should be arranged for in advance.

Until further notice, the patent examining
divisions will be closed on Fridays to attor-
neys, agents and the general public. ... In
particular cases where undue hardship to the
applicant can be shown, exceptions to this
order may be made by the Director, Patent
Examining Operation. It is urged that inter-
views with Examiners on other days be kept to
a minimum both as to number and duration.
(Basis: Notice of October 11, 1955.)

An interview should normally be arranged
for in advance, as by letter, telegram or phone
call, in order to insure that the Primary Exam-
iner and/or the Examiner in charge of the ap-
plication will be present in the Office. When a
second division is involved (Patentability Re-
port), the availability of the second Examiner
should also be checked. (See 705.01(f).) The
unexpected appearance of an attorney or appli-
cant requesting an interview without any pre-
vious notice to the Examiner may well justify
his refusal of the interview at that time, par-
ticularly in an involved case.

An interview should be had only when the
nature of the case is such that the interview
could serve to develop and clarify specific is-
sues and lead to a mutual understanding be-
tween the Examiner and the applicant, and
thereby advance the prosecution of the applica-
tion. Thus the attorney when presenting him-
self for an interview should be fully prepared
to discuss the issues raised in the Office action.
When it is obvious that the attorney is not so
prepared, an interview should not be permitted.

The Examiner should not hesitate to state, if
such be the case, that claims presented for con-
sideration at the interview require further
search and study. Nor should the Examiner
hesitate to conclude an interview when it ap-

pears that no common ground can be reached
nor when it becomes apparent that the appli-
cation requires further amendment or an addi-
tional action by the Examiner.

It is the duty of the Primary Examiner to
see that an interview is not extended beyond a
reasonable period even when he does not per-
sonally participate in the interview.

During an interview with an applicant who
is prosecuting his own case and is not familiar
with Office procedure the Examiner may make
suggestions that will advance the prosecution
of this case; this lies wholly within his discre-
tion. Too much time, however, should not be
allowed for such interviews.

## EXAMINATION BY EXAMINER OTHER THAN THE ONE WHO CONDUCTED THE INTERVIEW

Sometimes the Examiner who conducted the
interview is transferred to another division or
resigns, and the examination is continued by
another Examiner. If there is an indication
that an interview had been held, the second
Examiner should ascertain if any agreements
were reached at the interview. Where condi-
tions permit, as in the absence of a clear error
or knowledge of other prior art, the second
Examiner should take a position consistent
with the agreements previously reached.

# 713.02 Interviews Prior to First Offi- cial Action

Prior to the first action and, obviously, prior
to filing, no interview is permitted. However,
in the Examiner's discretion, a limited amount
of time may be spent in indicating the field of
search to an attorney, searcher or inventor.

# SEARCHING IN DIVISION

Searching in the division should be permit-
ted only with the consent of the Primary Ex-
aminer.

# EXPOUNDING PATENT LAW

The Patent Office cannot act as an ex-
pounder of the patent law, nor as a counsellor
for individuals.

# 713.03 Interview for "Sounding Out" Examiner Not Permitted

Interviews that are solely for the purpose of
"sounding out" the Examiner, as by a local at-
torney acting for an out-of-town attorney,
should not be permitted when it is apparent

=

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that any agreement that would be reached is
conditional upon being satisfactory to the prin-
cipal attorney.

# 713.04 Substance of Interview Must Be Made of Record

The substance of an interview must always
be made of record in the application, particu-
larly where agreement between attorney and
the Examiner is reached. Rule 133 (second
paragraph) specifically requires that :

(b) In every instance where reconsideration is re-
quested in view of an interview with an examiner, a
complete written statement of the reasons presented at
the interview as warranting favorable action must be
filed by the applicant. An interview does not remove
the necessity for response to Office actions as specified
in rules 111, 135.

This is further brought out by the following
Rule :

Rule 2. Business to be transacted in writing. All
business with the Patent Office should be transacted in
writing. The personal attendance of applicants or
their attorneys or agents at the Patent Office is un-
necessary. The action of the Patent Office will be based
exclusively on the written record in the Office. No at-
tention will be paid to any alleged oral promise, stipu-
lation, or understanding in relation to which there is
disagreement or doubt.

## EXAMINER TO CHECK FOR ACCURACY

Applicant's summary of what took place at
the interview should be carefully checked to
determine the accuracy of any statement at-
tributed to the examiner during the interview.
(a) If there is such an inaccuracy and it bears
directly on the question of patentability, it
should be pointed out in the next Office letter.
If the claims are allowable for other reasons of
record, the Examiner should withhold allow-
ance by means of an Ex parte Quayle action
until the record is clarified. (b) If the inac-
curacy does not bear directly on the question
of patentability, the case may be sent to issue,
if allowable for reasons of record, but the Ex-
aminer should send a letter setting forth his
version of the statement attributed to him.

An inaccuracy with respect to an argument
presented at the interview; e.g., including in
the summary of the interview an argument not
then presented, should be treated as in (a) or
(b) above.

Some Examiners prepare, for their own in-
formation, informal notes setting forth what
occurred at the interview. These informal
notes do not become an official part of the.
record. A convenient arrangement is to make
the notes on 4 by 6 cards which may be re-

tained with the file wrapper by means of the
slits in the flap. All notes should be removed
from the file at the time of allowance.

# 713.05 Interviews Prohibited or Granted, Special Situations

Friday interviews, see 713.01.

Patent Office employees are forbidden to hold
either oral or written communication with a
disbarred attorney regarding an application
unless it be one in which said attorney is the
applicant. See 105.

Interviews are frequently requested by per-
sons whose credentials are of such informal
character that there is serious question as to
whether such persons are entitled to any infor-
mation under the provisions of Rule 14. In
general, interviews are not granted to anyone
who lacks proper authority from the applicant
or attorney of record in the form of a paper
on file in the case. A MERE POWER TO
INSPECT IS NOT SUFFICIENT . AU-
THORITY FOR GRANTING AN INTER-
VIEW INVOLVING THE MERITS OF
THE APPLICATION.

However, interviews may be granted to per-
sons who are known to be the local representa-
tives of the attorney in the case, even though
their power of attorney be not of record in the
particular application. When prompt action
is important an interview with the local repre-
sentative may be the only way to save the ap-
plication from abandonment. (See 408.)

If the person seeking the interview is un-
known to the Examiner but has in his posses-
sion a copy of the application file, the Exami-
ner may accept his statement that he is the
person named as the attorney of record or an
employee of such attorney.

# 713.06 No Inter Parte Questions Dis- cussed Ex Parte

The Examiner may not discuss inter partes
questions ex parte with any of the interested
parties. See 1111.01.

# 713.07 Exposure of Other Cases

Prior to an interview the Examiner should
arrange his desk so that files, drawings and
other papers, except those necessary in the in-
terview, are placed out of view. See 101.

# 713.08 Demonstration, Exhibits, Models

The invention in question may be exhibited
or demonstrated during the interview by a

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model thereof which may be sent to the Office
prior to the interview where it is received in
the model room and forwarded to the division.
A model is not to be received by the Examiner
directly from the applicant or his attorney.
See 608.03 and 608.03(a).

Oftentimes a model or exhibit is not given
into the custody of the Office but is brought
directly into the division by the attorney solely
for inspection or demonstration during the
course of the interview. This is permissible.
Demonstrations of apparatus or exhibits too
large to be brought into the Office may be
viewed by the Examiner outside of the Office,
(in Washington) with the approval of the Pri-
mary Examiner. It is presumed that the wit-
nessing of the demonstration or the reviewing
of the exhibit is actually essential in the de-
veloping and clarifying of the issues involved
in the application:

# 713.09 Finally Rejected Application

The grace extended an applicant after final
rejection will be determined in part by the
length of prosecution prior to final rejection,
and the possible patentable subject matter in
the case. Interviews on finally rejected cases
can be justified only on the ground that the
applicant has not fully understood the position
of the Examiner or that the Examiner has not
fully appreciated the limitations in the claims
over the prior art, or that the Examiner may
be able to offer some constructive aid in amend-
ing finally rejected claims or in formulating a
new claim that would distinguish over the
prior art where the case contains patentable
subject matter not fully protected by any
allowed claims.

# 713.10 Interview Preceding Filing Amendment Under Rule 312

A

After a case is sent to issue, it is technically
no longer under the jurisdiction of the Pri-
mary Examiner, Rule 312. An interview with
an Examiner that would involve a detailed
consideration of claims sought to be entered
and perhaps entailing a discussion of the prior
art for determining whether or not the claims
are allowable should not be given. Obviously
an applicant is not entitled to a greater degree
of consideration in" an amendment presented
informally than is given an applicant in the
consideration of an amendment when formally
presented, particularly since consideration of
an amendment filed under Rule 312 cannot be
demanded as a matter of right.

# 714 Amendments, Applicant's Action

Rule 115. Amendment by applicant. The applicant
may amend before or after the first examination and
action, and also after the second or subsequent exam-
ination or reconsideration as specified in rule 112 or
when and as specifically required by the examiner.

# 714.01 Signatures to Amendments

Note 605.04 to 605.05 (a) for a discussion of
signatures to the application.

# 714.01(a) Unsigned or Improperly Signed Amendment

An unsigned amendment or one not properly
signed by a person having authority to prose-
cute the case is not entered. This applies, for
instance, where the amendment is signed by
one only of two applicants and the one signing
has not been given a power of attorney by the
other applicant. An amendment signed by a
person whose name is known to have been re-
moved from the Registers of Attorneys and
Agents under the provisions of Rule 347 or
Rule 348 is not entered. The file and un-
entered amendment are submitted to the Office
of the Solicitor for appropriate action.

# 714.01(b) Unsigned or Improperly Signed Amendment, Dis- posal of

When an unsigned amendment or an im-
properly signed amendment is received it is
returned, but when there is not sufficient time
for the return of the paper for signature be-
fore the expiration of the time allowed by law
within which to take proper action, the Ex-
aminer will endorse such amendment on the
file wrapper and notify the applicant of the
status of the case.

The Examiner in carrying out the provisions
of the above paragraph gives applicant a speci-
fied time (as 20 days) to furnish a duplicate
amendment properly signed, or to ratify the
amendment already filed. [See Rule 135, 711.]

Informal amendments which are to be re-
turned will be forwarded to the Correspond-
ence and Mail Branch with a memorandum giv-
ing the name and address of the attorney, or
other person to whom correspondence is to be
sent (from file wrapper), the date of the last
Office action in the case and a statement as to
why the paper is to be returned. The Corre-
spondence and Mail Branch will cancel the
impression of the receiving stamp and conduct
the correspondence incident to the return of
the papers. (Basis: Order No. 1961, Revised.)

C

(
:

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Note 717.01 on return of papers entered on
File Wrapper.

Before returning unsigned or improperly
signed amendments, the Examiner should call
in the local representative of the attorney if
there be one, as he may have authority to sign
said attorney's name to the amendment.

# 714.01(c) Signed by Attorney Not of Record

Where an amendment is filed, signed by an
attorney whose power is not of record, he
should be notified that the amendment cannot
be entered and similar notification sent to the
applicant in person and to the attorney of
record, if there be one. (Basis: Notice of Sep-
tember 30, 1918, Revised.)

If this is after the death of an attorney of
record, see 406.

# 714.01 (d) Amendment Signed by Ap- plicant But Not by Attor- ney of Record

If an amendment signed by the applicant
is received in an application in which there
is a duly appointed attorney, the amendment
should be entered and acted upon. Attention
should be called to Rule 35. The customary
two carbon copies of the action should be pre-
pared, one only being sent to the attorney and
the other direct to Applicant. The notation :
"Copy to applicant" should appear on the
original and on both copies.

# 714.01(e) Power of Attorney to a Firm

See 402.03, 402.04, 402.04 (a).

# 714.02 Must Be Fully Responsive

Rule 111. Reply by applicant. (a) After the Office
action, if adverse in any respect, the applicant, if he
persist in his application for a patent, must reply
thereto and may request re-examination or reconsid-
eration, with or without amendment.

(b) In order to be entitled to re-examination or re-
consideration, the applicant must make request there-
for in writing, and he must distinctly and specifically
point out the supposed errors in the examiner's action ;
the applicant must respond to every ground of objec-
tion and rejection in the prior Office action (except
that request may be made that objections or require-
ments as to form not necessary to further considera-
tion of the claims be held in abeyance until a claim
is allowed), and the applicant's action must appear
throughout to be a bona fide attempt to advance the
case to final action. A general allegation that the

claims define invention without specifically pointing out
how the language of the claims patentably distinguishes
them from the references does not comply with the re-
quirements of this rule.

(c) In amending an application in response to a re-
jection, the applicant must clearly point out the patenta-
ble novelty which he thinks the claims present in view
of the state of the art disclosed by the references cited
or the objections made. He must also show how the
amendments avoid such references or objections. See
rules 135 and 136 for time for reply.

Compliance with or discussion of a require-
ment for the correction of formal matters may
be deferred by applicant until a claim is indi-
cated to be allowable or allowable in substance.
See 707.07 (a).

Formal matters generally include drawing
corrections, correction of the specification and
the presentation of a new oath. However, the
line between formal matters and substance is
not sharp, and the determination of the merits
of a case may sometimes require that drawing
corrections, corrections of the specifications and
the presentation of a new oath be insisted upon
prior to allowance of a claim.

Extract from Rule 119. Amendment of Claims .. .
The requirements of Rule 111 must be complied with
by pointing out the specific distinctions believed to ren-
der the claims patentable over the references in pre-
senting arguments in support of new claims and amend-
ments.

An amendment submitted after a second or
subsequent non-final action which is otherwise
responsive but which increases the number of
claims drawn to the invention previously acted
upon is not to be held nonresponsive for that
reason alone.

The prompt development of a clear issue re-
quires that the responses of the applicant meet
the objections to and rejections of the claims.

Responses to requirements to restrict are
treated under 818.

## 714.03 Amendments Not Fully Re- sponsive, Action To Be Taken

If there is sufficient time remaining in the
six months' statutory period or set shortened
period when applicant's amendment is found
to be not fully responsive to the last Office
action, a letter should at once be sent applicant
pointing out wherein his amendment fails to
fully respond coupled with a warning that the
response must be completed within the time
period in order to avoid the question of aban-
donment. See 714.05.

Where a bona fide response to an Examiner's
action is filed before the expiration of a per-

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missible period, but through an apparent over-
sight or inadvertence some point necessary to a
complete response has been omitted,-such as
an amendment or argument as to one or two of
several claims involved or signature to the
amendment,-the Examiner, as soon as he notes
the omission, should require the applicant to
complete his response within a specified time
limit (usually 20 days) if the period has already
expired or not sufficient time is left to take ac-
tion before the expiration of the period. If
this is done the application should not be held
abandoned even though the prescribed period
has expired. (Basis: Circular of July 26,
1934.)

See Rule 135.

The Examiner must exercise discretion in
applying this practice to safeguard against
abuses thereof.

The practice outlined above does not apply
where there has been a deliberate omission of
some necessary part of a complete response.
For example, if an election of species has been
required and applicant does not make election
because he holds the requirement to be wrong,
the amendment on its face is not a "bona fide
attempt to advance the case to final action"
(Rule 111), and the Examiner is without au-
thority to postpone.decision as to abandonment.

If there be ample time for applicant's reply
to be filed within the time period, no reference is
made to the time limit other than to note in the
letter that the response must be completed with-
in the statutory period dating from the last
Office action.

# 714.04 Claims Presented in Amend- ment With No Attempt To Point Out Patentable Novelty

In the consideration of claims in an amended
case where no attempt is made to point out the
patentable novelty, the claims should not be
allowed. (Basis : Order 2801.) (See Rule 111,
714.02.)

1

B

An amendment failing to point out the pat-
entable novelty which the applicant believes to
exist in his case should generally be held to be
nonresponsive and a time limit set to furnish a
proper response if the statutory period has ex-
pired or almost expired (714.03). However, if
the claims as amended are clearly open to rejec-
tion on grounds of record, a final rejection may
be made.

# 714.05 Examiner Should Immediately Inspect

Actions by Applicant, especially those filed
near the end of the statutory period, should be

inspected immediately upon filing to determine
whether they are completely responsive to the
preceding Office action so as to prevent aban-
donment of the application. If found inade-
quate, and sufficient time remains, applicant
should be notified of the deficiencies and
warned to complete the response within the
statutory period. (Basis : Order 22151/2.) See
714.03.

All amended cases when put on the Exam-
iner's desk should be inspected by him at once
to determine:

If the amendment is properly signed
(714.01).

If the amendment has been filed within the
statutory period, set shortened period or time
limit (710).

If the amendment is fully responsive. See
714.03 and 714.04.

If the changes made by the amendment war-
rant transfer.

If the case is special. See 708.01.

If claims suggested to Applicant for inter-
ference purposes have been inserted.

If there is a traverse of a requirement for
restriction. See 818.03 (a).

If there has been a prompt response to a
requirement for restriction, whether traversed
or complied with. See 708.01.

If "easily erasable" paper has been used or
other non-permanent method of preparation or
reproduction. See 714.07.

## ACTION CROSSES AMENDMENT

A supplemental action is usually necessary
when an amendment is filed on or before the
mailing date of the regular action but reaches
the examining group later. The supplemen-
tal action should be promptly prepared. It
need not reiterate all portions of the previous
action that are still applicable but it should
specify which portions are to be disregarded,
pointing out that the period for response runs
from the mailing of the supplemental action.
The action should be headed "Responsive to
amendment of (date) and supplemental to the
action mailed (date)".

# 714.06 Amendments Sent to Wrong Group

See 508.01.

# 714.07 Amendments Not in Perma- nent Ink

Rule 52(a) requires "permanent ink" to be
used on papers which will become part of the

<!-- PageFooter="Rev. 1, Jan. 1964" -->

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# 714.12

<!-- PageHeader="EXAMINATION OF APPLICATIONS" -->

record and In re Benson, 1959 C.D. 5; 744
O.G. 353 holds that documents on so-called
"easily erasable" paper violate the requirement.
The fact that Rule 52(a) has not been com-
plied with may be discovered as soon as the
amendment reaches the examining division or,
later, when the case is reached for action. In
the first instance, applicant is promptly noti-
fied that the amendment is not entered and is
required to file a permanent copy within 30
days or to order a copy to be made by the
Patent Office at his expense. Physical entry
of the amendment will be made from the per-
manent copy.

If there is no appropriate response within
the 30 day period, a copy is made by the
Patent Office, applicant being notified and re-
quired to remit the charges or authorize charg-
ing them to his deposit account.

In the second instance, when the non-per-
manence of the amendment is discovered only
when the case is reached for action, similar
steps are taken, but action on the case is not
held up, the requirement for a permanent copy
of the amendment being included in the Office
action.

Xeroprinting or good carbon copies on satis-
factory paper are acceptable. But see In re
Application Papers Filed Jan. 20, 1956, 706
O.G. 4.

## 714.08 Telegraphic Amendment

When a telegram amendment is received it
is placed in the file but not entered. If con-
firmation of this amendment by a properly
signed formal amendment does not follow in
due time, the applicant is notified that proper
confirmation is required; otherwise, the tele-
gram will not be accepted as a response to the
former Office action. If he does confirm
promptly, the amendment is entered. (See Ex
parte Wheary, 1913 C.D. 253; 197 O.G. 534.)

The same test as to completeness of response
applies to an amendment sent by telegraph as
to one sent by mail. See 714.02.

## 714.09 Amendments Before First Office Action

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 status as part of the
original disclosure. It is entered in the case
and acted on in the first Office action. In re-
gard to the introduction of new matter by such
an amendment, see 608.04 (b).

## 714.10 Claims Added in Excess of Filing Fee

In cases in which claims in excess of the
number supported by the filing fee are pre-
sented before the first Official action on the
case, the clerk will place the amendment in the
file and enter it on the file wrapper. Only
such claims are entered as are covered by the
original fee. In his first action the Examiner
should act only on such claims and the original
claims and should defer action on the other
claims. In this first action the Examiner also
should inform the applicant that if he believes
that any of the claims presented by the amend-
ment are patentable, he can have them entered
and considered in the next action but only by
specifically pointing out wherein the claims
presented in the amendment are patentable
over the references relied upon in rejecting any
claim. (Basis: Notice of August 18, 1928,
Revised.)

## 714.11 Amendment Filed During In- terference Proceedings

See 1111.05.

## 714.12 Amendments After Final Re- jection or Action

Rule 116. Amendments after final action. (a) After
final rejection or action (rule 113) amendments may
be made cancelling claims or complying with any re-
quirement of form which has been made, and amend-
ments presenting rejected claims in better form for
consideration on appeal may be admitted; but the ad-
mission of any such amendment or its refusal, and any
proceedings relative thereto, shall not operate to re-
lieve the application from its condition as subject to
appeal or to save it from abandonment under rule 135.

(b) If amendments touching the merits of the appli-
cation be presented after final rejection, or after ap-
peal has been taken, or when such amendment might
not otherwise be proper, they may be admitted upon a
showing of good and sufficient reasons why they are
necessary and were not earlier presented.

(c) No amendment can be made as a matter of right
in appealed cases. After decision on appeal, amend-
ments can only be made as provided in rule 198, or
to carry into effect a recommendation under rule 196.

Once a final rejection that is not premature
has been entered in a case, applicant no longer
has any right to unrestricted further prosecu-
tion. This does not mean that no further
amendment or argument will be considered.
Any amendment that will place the case either
in condition for allowance or in better form
for appeal will be entered. If a final rejection

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is withdrawn and prosecution resumed; for
example, rejection on a different reference, the
new rejection not being made final, the ap-
proval of the Supervisory Examiner must be
secured before mailing the action. See 706.07
(e) and 714.13, 1207.

## 714.13 Amendments After Final Rejec- tion or Action, Letter Written

Any amendment filed after a final rejection
should be immediately considered to determine
whether it places the application in condition
for allowance or in better form for appeal. In
the first instance, the Notice of Allowance is
sufficient notification, however, if less than four
weeks remain in the period for response, the
Examiner should immediately send a letter as
follows :

"Responsive to amendment filed (date)."

"Said amendment has been entered as com-
plying with Rule 113."

/

Such a letter is important because it may act
as a safeguard against a holding of abandon-
ment. It may avoid an unnecessary appeal.
Every effort should be made to mail the letter
before the statutory period expires.

## ENTRY NOT A MATTER OF RIGHT

It should be kept in mind that applicant
cannot, as a matter of right, amend any finally
rejected claims, add new claims after a final
rejection (see Rule 116) or reinstate previously
canceled claims. Except for the provisions of
item 3 of 714.20, applicant's failure to properly
respond within the statutory period results in
abandonment.

See also 1207 and 1211.

## No APPEAL FILED

=

In the event that the amendment does not
place the case in better form for appeal, nor in
condition for allowance, applicant should be
promptly informed of this fact, whenever pos-
sible, within the statutory period. The refusal
should not be arbitrary. The proposed amend-
ment should, at least, be given sufficient con-
sideration to determine whether it obviously
places any of the claims in condition for al-
lowance or would simplify the issues on appeal.
Ordinarily, the letter should not discuss the
specific deficiencies of the amendment. The
reasons should be concisely expressed. For
example,

(1) the claims as amended do not avoid any
of the rejections set forth in the last Office
action, and thus the amendment does not place
the case in condition for allowance or in better
condition for appeal,

(2) the claims as amended avoid the rejec-
tion on indefiniteness but do not avoid the re-
jection on the references. The amendment will
be entered upon the filing of an appeal,

(3) the claims as amended present new is-
sues requiring further consideration or search,

(4) since the amendment presents additional
claims without canceling a corresponding num-
ber of finally rejected claims it is not consid-
ered as placing the application in better con-
dition for appeal; Ex parte Wirt, 1905 C.D.
247; 117 O.G. 599.

Applicant should be notified, if it is a fact,
that certain portions of the amendment would
be acceptable as placing some of the claims in
better form for appeal, if a separate paper
were filed containing only such amendments.
Similarly, if the proposed amendment to some
of the claims would render them allowable,
applicant should be so informed. This is help-
ful in assuring the filing of a brief consistent
with the claims as amended. A statement that
the final rejection stands and that the statutory
period runs from the date of the final rejection
is also in order.

## SECOND AMENDMENT AFTER FINAL

If applicant submits a second or further
amendment, it should be considered to the
extent of determining if the claims are placed
in allowable condition or obviously in better
form for appeal by such amendment or if it
substantially complies with the previous Office
action. If not, the Examiner need not respond
thereto but should merely write in pencil on
the margin of the amendment that he has
noted it and the application should be returned
to the "rejected" files. If an appeal is later
filed, the second amendment should be treated
in the same way as the first amendment after !.
a final rejection as outlined above.

## APPEAL FILED

If an appeal has been filed, the Examiner
should consider and reply to any unanswered
amendment including those mentioned in the
paragraph immediately above. If the denial
of entry is due to the fact that the amendment
cannot be entered in part, a statement that
certain parts of the amendment will be entered
if submitted in a separate paper should be in-
cluded. Change in status of a claim, such as
its being rendered allowable upon entry of the
amendment, should be specifically noted. In
this case also, it should be stated that the brief
should be directed to the claims in their pres-
ent form, if the amendment is not entered, or
to the claims as amended, if the amendment
has been entered.

(
1

(

(

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## NEW REFERENCE

In the consideration of any proposed amend-
ment, a new reference may be discovered which
is pertinent to the claims as amended. The
practice set forth in 1207, last two paragraphs,
should be followed. '

## 714.14 Amendments After Allowance of All Claims

Under the decision in Ex parte Quayle, 1935
C.D. 11; 453 O.G. 213, after all claims in a
case have been allowed the prosecution of the
case on the merits is closed even though there
may be outstanding formal objections which
preclude making the action final.

Amendments touching the merits are treated
in a manner similar to amendments after final
rejection, though the prosecution may be con-
tinued as to the formal matters. See 714.12
and 714.13.

## 714.15 Amendment Mailed Before, But Received in Examining Division After Allowance

Where an amendment, even though prepared
by applicant prior to allowance, does not reach
the Office until after the notice of allowance
has been mailed, such amendment has the
status of one filed under Rule 312. Its entry
is a matter of grace. For discussion of amend-
ments filed under Rule 312, see 714.16 to
714.16(e).

If, however, the amendment is filed in the
Office, but is not received by the Examiner
prior to the mailing out of the notice of allow-
ance, it has the same standing in the case as
though the notice had not been mailed. Where
the case has not been closed to further prose-
cution, as by final rejection of one or more
claims, or by an action allowing all of the
claims, applicant may be entitled to have such
amendment entered even though it may be
necessary to withdraw the application from
issue. Such withdrawal, however, is unneces-
sary if the amendatory matter is such as the
Examiner would recommend for entry under
Rule 312.

As above implied, the case will not be with-
drawn from issue for the entry of an amend-
ment that would reopen the prosecution if the
Office action next preceding the notice of allow-
ance closed the case to further amendment,
i. e., by indicating the patentability of all of
the claims, or by allowing some and finally
rejecting the remainder.

After an applicant has been notified that the
claims are all allowable, further prosecution of
the merits of the case is a matter of grace and
not of right (Ex parte Quayle, 1935 C.D. 11;
453 O.G. 213). To this extent the practice
affecting the status of an amendment received
in the Office on the date of mailing the notice
of allowance, as set forth in Ex parte Miller,
1922 C.D. 36; 305 O.G. 419, is modified.

## 714.16 Amendment After Notice of Allowance, Rules 312

Rule 312. Amendments after allowance. Amendments
after the notice of allowance of an application will
not be permitted as a matter of right, but may be made,
if the printing of the specification has not begun, on
the recommendation of the Primary Examiner, ap-
proved by the Commissioner, without withdrawing the
case from issue.

The Commissioner has delegated the ap-
proval of such recommendation to the Super-
visory Examiners.

A supplemental oath is not treated as an
amendment under Rule 312, see 603.01.

After a case is sent to issue, and the Notice
of Allowance has been mailed, it is technically
no longer under the jurisdiction of the Pri-
mary Examiner. Amendments may, however,
be made under Rule 312 subject to the follow-
ing qualifications :

The Primary Examiner has authority to
make Examiner's Amendments, see Section
1302.04; and also authority to enter amend-
ments submitted after Notice of Allowance of
an application which embody merely the cor-
rection of formal matters in the specification
or drawing, or formal matters in a claim with-
out changing the scope thereof, or the cancella-
tion of claims from the application, without
forwarding to the Supervisory Examiner for
approval. (Extract from Order 3311, Re-
vised.)

Recommendations concerning any amend-
ment affecting the disclosure of the specifica-
tion or drawing, or adding claims, or changing
the scope of any claim shall be submitted to
the Supervisory Examiner. The following
general considerations relative to amendments
of this type are noted.

Consideration of an amendment under Rule
312 cannot be demanded as a matter of right.
Prosecution of a case should be conducted be-
fore, and thus be complete including editorial
revision of the specification and claims at the
time of the Notice of Allowance. However,
where amendments of the type noted are shown
(1) to be needed for proper disclosure or pro-

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## 714.16(a)

tection of the invention, and (2) to require no
substantial amount of additional work on the
part of the Office, they may be considered and,
if proper, entry may be recommended by the
Primary Examiner.

The requirements of Rule 111(c) (714.02)
with respect to pointing out the patentable
novelty of any claim sought to be added or
amended, apply in the case of an amendment
under Rule 312, as in ordinary amendments.
See 713.04 and 713.10 regarding interviews.
As to amendments affecting the disclosure, the
scope of any claim or that add a claim, the re-
marks accompanying the amendment must
fully and clearly state the reasons on which
reliance is placed to show: (1) why the amend-
ment is needed; (2) why the proposed
amended or new claims require no additional
search or examination; (3) why the claims are
patentable and, (4) why they were not earlier
presented.

## NOT To BE USED FOR CONTINUED PROSECUTION

Rule 312 was never intended to provide a
way for the continued prosecution of appli-
cation after it has been passed for issue. When
the recommendation is against entry, a detailed
statement of reasons is not necessary in sup-
port of such recommendation. The simple
statement that the proposed claim is not obvi-
ously allowable and briefly the reason why is
usually adequate. Where appropriate, any one
of the following reasons is considered suffi-
cient: (1) an additional search is required, or
(2) more than a cursory review of the record
is necessary, or (3) the amendment would in-
volve materially added work on the part of the
Office, e.g. checking excessive editorial changes
in the specification or claims.

Where claims added by amendment under
Rule 312 are all of the form of dependent
claims, some of the usual reasons for non-entry
are less likely to apply although questions of
new matter, sufficiency of disclosure, or undue
multiplicity of claims could arise. (Basis:
Notice of April 6, 1961.)

=

## 714.16(a) Amendments Under Rule 312, Copied Patent Claims

See 1101.02(g) for the procedure to be fol-
lowed when an amendment is received after no-
tice of allowance which includes one or more
claims copied or substantially copied from a
patent.

The entry of the copied patent claims is not
a matter of right. See 714.19 item (4).

## 714.16(b) Amendment Under Rule 312 Filed With a Motion Under Rule 234

Where an amendment filed with a motion
under Rule 234 applies to a case in issue, the
case is not immediately withdrawn from issue
if the date set for transmitting the motion
comes well within the six months' period of al-
lowance. Otherwise, the case is withdrawn,
but the amendment is not entered unless and
until the motion has been granted. See 1105.03.

## 714.16(c) Amendment Under Rule 312, Excess Number of Claims

When an amendment under Rule 312 which
has been approved adds claims which increase
the total number in the case above twenty, the
Examiner's clerk in preparing the form will
see that the amount of the final fee is filled in
to correspond to the number of claims that
stand allowed in the case after the entry of the
amendment if the number of claims has been
increased. (Basis: Notice of Jan. 26, 1928,
Revised.)

A proposed amendment under Rule 312
which, if entered, would increase the final fee
beyond that remitted, and received both with-
out the additional necessary fee and too late in
the period to notify applicant so that the addi-
tional fee will be received within the period,
should be refused entry. Applicant should be
promptly informed of this act and also whether
or not the proposed amendment is otherwise
enterable.

## 714.16(d) Amendments Under Rule 312, Handling

### AMENDMENTS NOT UNDER ORDER 3811

Amendments under Rule 312 are sent by
the Mail and Correspondence Branch to the
Issue and Gazette Branch which, in turn, for-
wards the proposed amendment, file, and draw-
ing (if any) to the division which allowed the
application. In the event that the class and
subclass in which the application is classified
has been transferred to another division after
the application was allowed, the proposed
amendment, file and drawing (if any) are
transmitted directly to said other division and
the Issue and Gazette Branch notified (Ext.
2495). If the Assistant Examiner who allowed
the application is still employed in the Patent
Office but not în said other Division, he may
be consulted about the propriety of the pro-

(

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<!-- PageHeader="714.18" -->
<!-- PageHeader="EXAMINATION OF APPLICATIONS" -->

posed amendment and given credit for any
time spent in giving it consideration.

The amendment is PROMPTLY considered
by the Examiner who indicates thereon
whether or not its entry is recommended. It
should be kept in mind that the words "rec-
ommended" or "not recommended" are used
instead of "entered" or "not entered".

If the recommendation is favorable, the
amendment is entered and the stamp "Entry
Recommended under Rule 312" is affixed
thereto. A notice of entry (POL-97) is pre-
pared. This notice is not signed by the Pri-
mary Examiner, his concurrence being indi-
cated by his signature in the space provided
on the stamp.

If the Examiner's recommendation is com-
pletely adverse, the Examiner's report giving
the reasons for non-entry is typed on the notice
of disapproval (POL-105). This notice is
signed by the Primary Examiner.

The file, drawing, and unmailed notices
(POL-97 or POL-105) are forwarded to the
Supervisory Examiner for consideration, ap-
proval, and mailing. The file and drawing are
returned to the Issue and Gazette Branch by
the Supervisory Examiner's office. Note that
the file is forwarded DIRECTLY from the
examining division to the Supervisory Exam-
iner. (Basis: Order No. 2698.)

For entry-in-part, see 714.16(e).

The filling out of the appropriate form by
the clerk does not signify that the amendment
has been admitted; for, though actually en-
tered it is not officially admitted unless and
until approved.

### AMENDMENTS UNDER ORDER 3311

Amendments concerning merely formal mat-
ters do not require submission to the Super-
visory Examiner prior to entry. See 714.16.
The notice of entry (POL-66) is date stamped
and mailed by the examining division. If such
amendments are disapproved either in whole
or in part, they are handled like those not
under Order 3311.

## 714.16(e) Amendments Under Rule 312, Entry in Part

The general rule that an amendment cannot
be entered in part and refused in part should
not be relaxed, but when, under Rule 312, an
amendment, for example, is proposed contain-
ing a plurality of claims or amendments to
claims, some of which may be entered and some
not, the acceptable claims or amendments
should be entered in the case. If necessary,
the claims should be renumbered to run con-

secutively with the claims already in the case.
The refused claims or amendments should be
canceled in lead pencil on the amendment.

The Examiner should then submit a report
on Form POL-103 recommending the entry of
the acceptable portion of the amendment and
the non-entry of the remaining portion to-
gether with his reasons therefor. The claims
entered should be indicated by number in this
report. (Basis: Notice of August 11, 1922.)

Handling is similar to complete entry of a
Rule 312 amendment.

## 714.17 Amendment Filed After the Pe- riod for Response Has Expired

When an application is not prosecuted
within six months from the date of the last
Office action therein, or within a set shortened
statutory period and thereafter an amendment
is filed, such amendment shall be endorsed on
the file wrapper of the application, but not
formally entered and the Examiner shall im-
mediately notify the applicant that the amend-
ment was not filed within the time period and
therefore cannot be entered. The applicant
should also be notified that the application is
abandoned. (Basis: Order 1854.)

## 714.18' Entry of Amendments

Amendments are stamped with the date of
their receipt in the division. It is important
to observe the distinction which exists between
the stamp which shows the date of receipt
of the amendment in the division ("Division
Date" stamp) and the stamp bearing the date
of receipt of the amendment by the Office
("Office Date" stamp). The latter date, placed
in the left-hand corner, should always be re-
ferred to in writing to the applicant with re-
gard to his amendment.

The amendment or letter is placed in the file,
given its number as a paper in the application,
and its character endorsed on the file wrapper
in red ink.

When several amendments are made in an ap-
plication on the same day no particular order
as to the hour of the receipt or the mailing of
the amendments can be assumed, but considera-
tion of the case must be given as far as pos-
sible as though all the papers filed were a com-
posite single paper.

After entry of the amendment the applica-
tion is "up for action", and it is generally kept
separated from those applications which await
action by the applicant. It is placed on the
Examiner's desk, and he is responsible for its
proper disposal. The Examiner should imme-
diately inspect the amendment as set forth in

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714.05. After inspection if no immediate or
special action is required, the application
awaits re-examination in regular order.

Amendments or other papers filed in cases
before the Law Examiner should be promptly
forwarded to him. (Basis: Notice of April
18, 1919.)

## 714.19 List of "Amendments, Entry Denied

The following types of amendments are or-
dinarily denied entry :

1\. An amendment presenting an unpatent-
able claim, or a claim requiring a new search
or otherwise raising a new issue in a case whose
prosecution before the Primary Examiner has
been closed, as where

(a) All claims have been allowed,

(b) All claims have been finally rejected,

(c) Some claims allowed and remainder
finally rejected.

See 714.12 to 714.14.

2\. Substitute specification that has not been
required and is not needed. See Rule 125,
608.01(q) and 714.20. If the Examiner ap-
proves, it may be entered.

3\. A patent claim suggested by the Ex-
aminer and not presented within the time
limit set or a reasonable extension thereof,
unless entry is authorized by the Commis-
sioner. See Notice of September 27, 1933, re-
vised, 1101.02(f).

4\. While copied patent claims are generally
admitted even though the case is under final
rejection or on appeal, under certain condi-
tions, the claims may be refused entry. See
1101.02(g).

5\. An unsigned or improperly signed amend-
ment or one signed by a disbarred attorney or
any person having no authority.

6\. An amendment filed in the Patent Office
after the expiration of the statutory period or
set time limit for response. See 714.17.

7\. An amendment so worded that it cannot
be entered with certain accuracy. See 714.23.

:

8\. An amendment cancelling all of the
claims and presenting no substitute claim or
claims. (711.01.)

9\. An amendment in a case no longer within
the Examiner's jurisdiction with certain ex-
ceptions in applications in issue (714.16), ex-
cept on approval of the Commissioner.

10\. An amendment filed before the first ac-
tion increasing the number of claims when all
the added claims are in excess of those sup-
ported by the filing fee. But see 714.10.

11\. Amendments to the drawing held by the
Examiner to contain new matter are not en-
tered until the question of new matter is set-

tled. This practice of non-entry because of
alleged new matter, however, does not apply
in the case of amendments to the specification
and claims.

12\. An amendatory paper containing objec-
tionable remarks that, in the opinion of the
Examiner, brings it within the condemnation
of Rule 3, will be submitted to the Commis-
sioner with a view toward its being returned
to applicant. See 714.25.

13\. Amendments not in permanent ink.
Amendments on so-called "easily erasable
paper." See In re Benson, 1959 C.D. 5; 744
O.G. 353.

While amendments falling within any of the
foregoing categories should not be entered by
the Examiner at the time of filing, a subse-
quent showing by applicant may lead to entry
of the amendment.

## 714.20 List of Amendments Entered in Part

To avoid confusion of the record the general
rule prevails that an amendment should not be
entered in part. As in the case of most other
rules, the strict observance of its letter may
sometimes work more harm than would result
from its infraction, especially if the amend-
ment in question is received at or near the end
of the statutory period. Thus,

(1) An "amendment" presenting an un-
called-for and unnecessary substitute specifica-
tion along with amendatory matter, as amend-
ments to claims or new claims, should be
entered in part, rather than refused entry in
toto. The substitute specification should be
denied entry and so marked, while the rest of
the paper should be entered. The case as thus
amended is acted on when reached in its turn,
the applicant being advised that the substitute
specification has not been required and is not
necessary and therefore has not been entered,
and that any desired changes in the original
specification must be made by specific amend-
ments. (Basis: Notice of August 17, 1934.)
See also Rule 125, 608.01 (q).

It may be noted in this connection, however,
that the fact that a substitute specification, in
the opinion of the Examiner, contains new
matter is not in itself a proper reason for re-
fusing entry thereof.

(2) An amendment under Rule 312, which
in part is approved and in other part disap-
proved, is entered only as to the approved
part. See 714.16(e).

(3) In a case having some claims allowed
and others finally rejected, where an amend-
ment is received at or near the close of the
statutory period cancelling the finally rejected

(
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claims and presenting one or more new ones
which the Examiner cannot allow, the amend-
ment, after the statutory period has ended, is
entered to the extent only of cancelling the
finally rejected claims. Of course, if any of
the new claims were, in the Examiner's opin-
ion, patentable, they too would be entered.
The applicant is notified that the new claims
which are held unpatentable have not been
admitted, and at the same time the case is
passed for issue.

(4) Where all of the claims are under final
rejection and the amendment cancels these
claims and presents new ones, only some of
which are deemed allowable by the Examiner,
the same practice is followed as indicated in
(3).

(5) In a case having all claims allowed and
some formal defect noted, where an amend-
ment is presented at or near the close of the
statutory period curing the defect and adding
one or more claims some or all of which are
in the opinion of the Examiner not patentable,
or will require a further search, the procedure
indicated in (3) is followed. After the statu-
tory period has ended, the amendment in such
a case will be entered only as to the formal
matter and to any of the newly presented
claims that may be deemed patentable.

(6) In an amendment accompanying a mo-
tion granted only in part, only so much of the
amendment as is covered in the grant is en-
tered. See 1108.

(7) An amendment, before the first action,
adding claims in excess of the number sup-
ported by the filing fee. See 714.10.

## 714.21 Amendments Inadvertently En- tered, No Legal Effect

If the clerk inadvertently enters an amend-
ment when it should not have been entered,
such entry is of no legal effect, and the same
action is taken as if the changes had not been
actually made, inasmuch as they have not been
legally made. Unless such unauthorized entry
is deleted, suitable notation should be made on
the margin of the amendatory paper, as "Not
Officially Entered".

An amendatory paper, even though not en-
tered, should be given a paper number, and
appropriately endorsed on the file jacket, as by
"Not Entered".

## 714.22 Entry of Amendments, Direc- tions for

Rule 121. Manner of making amendments. Erasures,
additions, insertions, or alterations of the papers and

records must not be made by the applicant. Amend-
ments are made by filing a paper (which should con-
form to rule 52), directing or requesting that specified
amendments be made. The exact word or words to be
stricken out or inserted in the application must be
specified and the precise point indicated where the
deletion or insertion is to be made.

## 714.23 Entry of Amendments, Direc- tions for, Defective

The directions for the entry of an amend-
ment may be defective, as, inaccuracy in the
line designated, or lack of precision where the
word to which the amendment is directed oc-
cars more than once in the specified line. If it
is clear from the context what is the correct
place of entry, the amendatory paper will be
properly amended in the examining division,
and notation thereof, initialed by the Exam-
iner, who will assume full responsibility for the
change, will be made on the margin of the
amendatory paper. In the next Office action
the applicant should be informed of this altera-
tion in his amendatory paper and the entry of
the amendment as thus amended. He will also
be informed of the nonentry of an amendment
where defective directions and context leave
doubt as to the intent of applicant. (Basis:
Notice of June 30, 1939, as amended May 7,
1951.)

## 714.24 Amendment of Amendment

Rule 124. Amendment of amendments. When an
amendatory clause is to be amended, it should be
wholly rewritten and the original insertion cancelled,
so that no interlineations or deletions shall appear in
the clause as finally presented. Matter cancelled by
amendment can be reinstated only by a subsequent
amendment presenting the cancelled matter as a new
insertion.

However, where a relatively small amend-
ment to a previous amendment can be made
easily without causing the amendatory matter
to be obscure or difficult to follow, such small
amendment should be entered.

## 714.25 Discourtesy of Applicant or At- torney

Rule 3. Business to be conducted with decorum and
courtesy. Applicants and their attorneys or agents
are required to conduct their business with the Patent
Office with decorum and courtesy. Papers presented
in violation of this requirement will be submitted to
the Commissioner and will be returned by his direct
order. Complaints against examiners and other em-
ployees must be made in communications separate
from other papers.

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If the attorney is discourteous in the remarks
or arguments in his amendment, either the dis-
courtesy should be entirely ignored or the
paper submitted to the Supervisory Examiner
with a view toward its being returned.

## 715 Swearing Back of Reference-Affi- davit Under Rule 131

Rule 131. Affidavit of prior invention to overcome
cited patent or publication. (a) When any claim of
an application is rejected on reference to a domestic
patent which substantially shows or describes but does
not claim the rejected invention, or on reference to a
foreign patent or to a printed publication, and the
applicant shall make oath to facts showing a comple-
tion of the invention in this country before the filing
date of the application on which the domestic patent
issued, or before the date of the foreign patent, or
before the date of the printed publication, then the pat-
ent or publication cited shall not bar the grant of a
patent to the applicant, unless the date of such patent
or printed publication be more than one year prior to
the date on which the application was filed in this
country.

(b) The showing of facts shall be such, in charac-
ter and weight, as to establish reduction to practice
prior to the effective date of the reference, or concep-
tion of the invention prior to the effective date of the
reference coupled with due diligence from said date to
a subsequent reduction to practice or to the filing of
the application. Original exhibits of drawings or rec-
ords, or photocopies thereof, must accompany and form
part of the affidavit or their absence satisfactorily
explained.

Any printed publication dated prior to an
applicant's effective filing date, or any patent
of prior filing date, which is in its disclosure
pertinent to the claimed invention, is available
for use by the examiner as a reference, either
basic or auxiliary, in the rejection of the claims
of the application.

Such a rejection may be overcome, in certain
instances noted below, by applicant's filing of
an affidavit under Rule 131, known as “swear-
ing back" of the reference.

Affidavits under Rule 131 may be used :

(1) Where the date of the foreign patent or
that of the publication is less than one year
prior to applicant's effective filing date.

(2) Where the reference, a U.S. Patent, with
a patent date less than one year prior to appli-
cant's effective filing date, shows but does not
claim the invention.

Affidavit under Rule 131 is not appropriate
in the following situations:

(1) Where reference publication date is
more than one year back of applicant's effective

filing date. Such a reference is a "statutory
bar".

(2) Where the reference U.S. patent claims
the invention. See 1101.02(a).

(3) Where reference is a foreign patent for
the same invention to applicant or his legal
representatives or assigns issued prior to the
filing date of the domestic application on an
application filed more than twelve months prior
to the filing date of the domestic application.

(4) Where the effective filing date of appli-
cant's parent application or an International
Convention proved filing date is prior to the
effective date of the reference, affidavit under
Rule 131 is unnecessary and the reference is
not used. See 201.11 to 201.15.

(5) Where the reference is a prior U.S. pat-
ent to the same party, claiming the same in-
vention, the question involved is one of "dou-
ble patenting."

(6) Where the reference is the disclosure of
a prior U.S. patent to the same party, not co-
pending, the question is one of dedication to
the public.

Should it be established that the portion of
the patent disclosure relied on as the reference
was introduced into the patent application by
amendment and as such was new matter, the
date to be overcome by the affidavit is the date
of the amendment. In re Williams et al., 1935
C.D. 229; 454 O.G. 535.

It should be kept in mind that it is the re-
jection that is withdrawn and not the refer-
ence.

## 715.01 Reference Claims Foreign Fil- ing Date

In overcoming, under Rule 131, a domestic
patent where the patentee has an earlier for-
eign filing date to which he would be entitled
in establishing priority to the invention
claimed in the patent, it is not necessary for
the applicant to carry his date back of the pat-
entee's foreign filing date. (Viviani v. Taylor
v. Herzog, 72 U.S.P.Q. 448).

## 715.01(a) Reference a Joint Patent to Applicant and Another

When subject matter disclosed but not
claimed in a patent issued jointly to S and an-
other is claimed in a later application filed by
S, the joint patent is a valid reference unless
overcome by affidavit under Rule 131. In re
Strain, 1951 C.D. 252; 648 O.G. 5. Disclaimer
by the other patentee should not be required.
But see 201.06.

(
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# 715.01 (b) Reference and Application Have Common Assignee

The mere fact that the reference patent
which shows but does not claim certain sub-
ject matter and the application which claims
it are owned by the same assignee does not
avoid the necessity of filing an affidavit under
Rule 131. The common assignee does not ob-
tain any rights in this regard by virtue of
common ownership which he would not have
in the absence of common ownership. In re
Beck et al., 1946 C.D. 398; 590 O.G. 357; Pierce
v. Watson, 124 U.S.P.Q. 356.

# 715.01 (c) Reference Is Publication of Applicant's Own Invention

Unless it is a statutory bar, a rejection on a
publication may be overcome by a showing
that it was published either by applicant him-
self or in his behalf Ex parte Lemieux, 1957
C.D. 47; 725 O.G. 4; Ex parte Powell et al.,
1938 C.D. 15; 489 O.G. 231.

# Co-AUTHORSHIP

Where the applicant is one of the co-authors
of a publication, cited against his application,
he is not required to file an affidavit under
Rule 131. The publication may be removed
as a reference by filing a disclaiming affidavit
of the other authors. Ex parte Hirschler, 110
U.S.P.Q. 884.

## 715.02 General Rule as to Generic Claims

A reference applied against generic claims
may (in most cases) be antedated as to such
claims by an affidavit under Rule 131 showing
completion of the invention of only a single
species, within the genus, prior to the effec-
tive date of the reference (assuming, of course,
that the reference is not a statutory bar or a
patent claiming the same invention). See,
however, 715.03.

## 715.03 Practice Relative to Chemical Cases

In chemical cases, where generic claims have
been rejected on a reference which discloses a
species not antedated by the affidavit, the re-
jection will not ordinarily be withdrawn un-
less the applicant is able to establish that he
was in possession of the generic invention
prior to the effective date of the reference.
In other words, the affidavit under Rule 131
must show as much as the minimum disclosure

required by a patent specification to furnish
support for a generic claim.

"The principle is well established in chem-
ical cases, and in cases involving compositions
of matter, that the disclosure of a species in a
cited reference is sufficient to prevent a later
applicant from obtaining generic claim." In
re Steenbock, 1936 C.D. 594; 473 O.G. 495.

Where the only pertinent disclosure in the
reference is a single species, which species is
antedated by the affidavit, the reference is
overcome. In re Stempel 1957 C.D. 200; 717
O.G. 886.

# MARKUSH TYPE GENUS CLAIM

Where a claim reciting a Markush group
is rejected on a reference disclosing but not
claiming a specific member of the group, the
reference cannot be avoided by an affidavit un-
der Rule 131 showing different members of the
group.

## 715.04 Who May Make Affidavit

A. The Inventor.

B. One of two joint inventors is accepted
where suitable excuse is given for failure of
the other applicant to sign. In re Carlson et
al, 1936 C.D. 95; 462 O.G. 479.

C. The Assignee or other party in interest
when it is not possible to produce the affidavit
of the inventor. Ex parte Foster, 1903 C.D.
213; 105 O.G. 261.

## 715.05 Patent Claiming Same Inven- tion

When the reference in question is a patent
claiming the same invention as applicant and
its issue date is less than one year prior to the
filing date of the application being examined,
applicant's remedy, if any, must be by way of
Rule 204 instead of Rule 131. The Examiner
should therefore take note whether the status
of the patent as a reference is that of a PAT-
ENT or a PUBLICATION. If the patent is
claiming the same invention as the application,
this fact should be noted in the Office letter.
The reference patent can then be overcome
only by way of interference. Note, however,
35 U.S.C. 135, 1101.02(f).

## 715.06 Affidavit Under Rule 131 Must Be Removed Before Interfer- ence

Where an application in which an affidavit
under Rule 131 has been filed is to be involved
in an interference, the affidavit must be sealed

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in an envelope properly labeled before for-
warding the application to the interference
division.

The same practice obtains with respect to a
Rule 131 affidavit in the file of an application
made the subject of a motion under Rule 234
or 235.

Under the practice established in Ferris v.
Tuttle, 1940 C.D. 5; 521 O.G. 523, the Rule
131 affidavit is thrown open to the opposing
party or parties to the interference at the time
the preliminary statements are opened. See
1101.03 and 1102.01.

## 715.07 Facts and Documentary Evi- dence

The essential thing to be shown under Rule
131 is priority of invention and this may be
done by any satisfactory evidence of the fact.
FACTS, not conclusions, must be shown by the
evidence accompanying an affidavit under Rule
131. For example:

1\. As shown in attached sketches.

2\. As shown in attached blueprints.

3\. As indicated by accompanying model.

4\. As shown in attached photographs.

5\. As shown in reproductions of notebook
entries.

6\. If verbal disclosures were made instead
of the above, supporting statements by the wit-
ness will be acceptable.

7\. If the dates of the exhibits have been
removed or blocked off, the matter of dates can
be taken care of in the body of the oath.

The dates in the oath may be the actual dates
or, if the applicant does not desire to disclose
his actual dates, he may merely allege that the
acts referred to occurred prior to a specified
date.

A general allegation that the invention was
completed prior to the date of the reference is
not sufficient. Ex parte Saunders, 1883 C.D.
23; 23 O.G. 1224.

₹

"If the applicant made sketches he should so
state, and produce and describe them; if the
sketches were made and lost, and their contents
remembered, they should be reproduced and
furnished in place of the originals. The same
course should be pursued if the disclosure was
by means of models. If neither sketches nor
models are relied upon, but it is claimed that
verbal disclosures, sufficiently clear to indicate
definite conception of the invention, were made
the witness should state as nearly as possible
the language used in imparting knowledge of
the invention to others." Ex parte Donovan,
1890 C.D. 109; 52 O.G. 309.

The affidavit must state FACTS and pro-
duce such documentary evidence and exhibits

in support thereof as are available to show
conception and completion of invention IN
THIS COUNTRY, the conception at least be-
ing at a date prior to the effective date of the
reference. Where there has not been reduction
to practice prior to the date of the reference,
the applicant must show diligence in the com-
pletion of his invention from a time just prior
to the date of the reference continuously up to
the date of an actual reduction to practice or
up to the date of filing of his application,
which constitutes a constructive reduction to
practice. Rule 131. In this connection, note
the following:

A conception of an invention, evidenced by
disclosure, drawings, and even a model, is not
a complete invention under the patent laws,
and confers no rights on an inventor, and has
no effect on a subsequently granted patent to
another, UNLESS HE FOLLOWS IT WITH
REASONABLE DILIGENCE BY SOME
OTHER ACT, such as an actual reduction to
practice or filing an application for a patent.
Automatic Weighing Mach. Co. v. Pneumatic
Scale Corp., Limited, 1909 C.D. 498; 139 O.G.
991.

Conception is the mental part of the inven-
tive act, but it must be capable of proof, as by
drawings, complete disclosure to another per-
son, etc. In Mergenthaler v. Scudder, 1897
C.D. 724; 81 O.G. 1417, it was established that
conception is more than a mere vague idea of
how to solve a problem; the means themselves
and their interaction must be comprehended
also.

The facts to be established under Rule 131
are similar to those to be proved in interfer-
ence. The difference lies in the way in which
the evidence is presented. If applicant dis-
agrees with a holding that the facts are in-
sufficient to overcome the rejection, his remedy
is by appeal from the continued rejection.

### 715.07(a) Diligence

Where conception occurs prior to the date of
the reference, but reduction to practice is after-
ward it is not enough merely to allege that ap-
plicant had been diligent. Ex parte Hunter,
1889 C.D. 218; 49 O.G. 733.

What is meant by diligence is brought out in
Christie v. Seybold, 1893 C.D. 515; 64 O.G.
1650. In patent law, an inventor is either dili-
gent at a given time or he is not diligent; there
are no degrees of diligence. A man may be
diligent within the meaning of the patent law
when he is doing nothing, if his lack of activity
is excused.

!

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Note, however, that only diligence before re-
duction to practice is a material consideration.
The "lapse of time between the completion or
reduction to practice of an invention and the
filing of an application thereon" (Ex parte
Merz, 75 U.S.P.Q. 296) is not relevant to a
Rule 131 affidavit.

### 715.07(b) Interference

## Testimony Sometimes Used

In place of an affidavit the testimony of the
applicant in an interference may be sometimes
used to antedate a reference in lieu of a Rule 131
affidavit.

The part of the testimony to form the basis
of priority over the reference should be pointed
out. Ex parte Bowyer, 1939 C.D. 5; 505
O.G. 759.

## 715.07(c) Acts Relied Upon Must Have Been Carried Out in This Country

The affidavit must contain an allegation that
the acts relied upon to establish the date prior
to the reference were carried out in this country.
See 35 U.S.C. 104.

# 715.07(d) Disposition of Exhibits Submitted as Evidence to Support Facts

Exhibits, such as those filed as part of an
affidavit under Rule 131, that are too bulky to
be placed in the application file are retained in
the Examining Group until the case is finally
disposed of. When the case goes to issue (or
abandonment) the exhibits are sent to the Model
and Receiving Room, notation to this effect
being made on the margin of the affidavit. See
608.03 (a).

# 715.08 Passed Upon by Primary Ex- aminer

The question of sufficiency of affidavits under
Rule 131 should be reviewed and decided by a
Primary Examiner. (Basis: Order 2712.)

# 715.09 Seasonable Presentation

Affidavits under Rule 131 must be seasonably
presented. Ex parte Berg, 1906 C.D. 36; 120
O.G. 903; Ex parte Romunder, 1910 C.D. 121;
157 O.G. 209; Ex parte Hale, 49 U.S.P.Q. 209;
Ex parte Bowyer, 1939 C.D. 5; 505 O.G. 759.

For affidavits under Rule 131 filed after ap-
peal see Rules 195 and 1212.

# 716 Affidavits Traversing Rejections, Rule 132

Rule 132. Affidavits traversing grounds of rejection.
When any claim of an application is rejected on ref-
erence to a domestic patent which substantially shows
or describes but does not claim the invention, or on
reference to a foreign patent, or to a printed publi-
cation, or to facts within the personal knowledge of
an employee of the Office, or when rejected upon a
mode or capability of operation attributed to a refer-
ence, or because the alleged invention is held to be
inoperative or lacking in utility, or frivolous or in-
jurious to public health or morals, affidavits traversing
these references or objections may be received.

NOTE THAT RULE 132 IS NOT APPLI-
CABLE TO A REJECTION BASED ON A
U.S. PATENT WHICH CLAIMS THE RE-
JECTED INVENTION.

Hereafter, it shall be the responsibility of
the Primary Examiner to personally review
and decide whether affidavits submitted under
Rule 132 for the purpose of traversing grounds
of rejection, are responsive to the rejection and
present sufficient facts to overcome the rejec-
tion. (Basis: Notice of December 15, 1959.)

This rule sets forth the general policy of the
Office consistently followed for a long period
of time of receiving affidavits evidence tra-
versing rejections or objections, Ex parte
Gresselin, 1896 C.D. 39; 76 O.G. 1573. The enu-
meration of rejections in the rule is merely exem-
plary. All affidavits presented which do not
fall within or under other specific rules are to
be treated or considered as falling under this
rule.

Certain legal principles and standards have
been established respecting affidavit evidence.
Some are applicable to all affidavits, while
others are applicable only to particular types
of affidavits, as indicated below. The critical
factors and standards are summarized as an
aid or guide to the examiners in evaluating such
affidavits. Affidavits timely filed (i.e. before
final action or appeal) should be acknowledged
and commented upon in the action following
filing. See Sec. 707.02. If an affidavit is filed
later and entered (See Rule 195) similar action
should be taken.

The following criteria are applicable to all
affidavits submitted under this rule :

(1) Affidavits must be timely or seasonably
filed (i.e. before final rejection or appeal) to be
entitled to consideration. In re Rothermel et
al., 1960 C.D. 204; 755 O.G. 621. Affidavits
not timely filed must meet the requirements of
Rule 195.

(2) Affidavits must set forth facts, not merely
conclusions. In re Pike et al., 1950 C.D. 105;

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633 O.G. 680. The facts presented in the affi-
davits must be pertinent to the rejection. In
re Renstrom 1949 C.D. 306; 624 O.G. 5. Other-
wise, the affidavits have no probative value.

(3) Affidavits should be scrutinized closely
and the facts presented weighed with care.
The affiant's interest is a factor which may be
considered, but the affidavit cannot be disre-
garded solely for that reason. In re McKenna
et al., 1953 C.D. 251; 674 O.G. 9; Bullard &
Co. v. Coe 1945 C.D. 13; 573 O.G. 547.

Rule 132 affidavits may be classified in five
groups, and such affidavits must conform, in
addition, to the established criteria and stand-
ards for the group into which they fall. These
groups and the applicable standards are :

# COMPARATIVE TESTS OR RESULTS

Affidavits comparing applicant's results with
those of the prior art must relate to the ref-
erence relied upon and not other prior art-
Blanchard v. Ooms 1946 C.D. 22; 585 O.G. 175
-- , and the comparison must be with disclosure
identical (not similar) with that of the refer-
ence. In re Tatincloux 1956 C.D. 102; 702
O.G. 964. Otherwise, the affidavits have no
probative value.

Where the comparison is not identical with
the reference disclosure, deviations therefrom
should be explained-In re Finley, 1949 C.D.
284; 624 O.G. 262-and if not explained should
be noted and evaluated, and if significant, ex-
planation should be required. In re Arm-
strong 1960.C.D. 422; 759 O.G. 4. Otherwise,
the affidavits may be entitled to little weight.

Where the comparison shows unexpected re-
sults or advantages, it should be compared with
the application disclosure, since recitals of the
specification are controlling. Abbott v. Coe,
1940 C.D. 13; 512 O.G. 3. In re Rossi 1957
C.D. 130; 717 O.G. 214. Advantages not dis-
closed carry little or no weight in establishing
patentability.

Affidavits setting forth advantages and as-
serting that despite familiarity with the art,
the claimed subject matter was not obvious to
affiants, do not afford evidence of non-obvious-
ness, where the advantages relied upon are
merely those which would result from follow-
ing the teaching of the prior art. In re Hen-
rich 1959 C.D. 353; 747 O.G. 793.

## OPERABILITY OF APPLICANT'S DISCLOSURE

Since it is the Examiner's duty to pass upon
the operativeness of any invention which he is
called upon to examine he is free to express
his opinion on that question so long as he
gives reasons for his holding with clarity and

completeness. Therefore, he need not support
every rejection on inoperativeness with refer-
ences or affidavits. In re Quattlebaum 84
U.S.P.Q. 383.

Affidavits attempting to show that the struc-
ture deemed inoperative was seen in operation
by persons who vouch for its operability, are
insufficient. In re Perrigo, 1931 C.D. 512, 411
O.G. 544.

Where the invention involved is of such a
nature that it cannot be tested by known sci-
entific principles, theoretical arguments in af-
fidavit form are unacceptable, and the only
satisfactory manner of overcoming the rejec-
tion is to demonstrate the operability by con-
struction and operation of the invention.
Buck v. Ooms 1947 C.D. 33; 602 O.G. 177. In
re Chilowsky 1956 C.D. 155; 704 O.G. 213.

## INOPERABILITY OF REFERENCES

Since every patent is presumed valid (35
U.S.C. 282), and since that presumption in-
cludes the presumption of operability-Metro-
politan Eng. Co. v. Coe 1935 C.D. 54; 455 O.G.
3-Examiners should not express any opinion
on the operability of a patent. Therefore af-
fidavits attacking the operability of a patent
cited as a reference, though entitled to consid-
eration, should be treated, not as conclusive of
the factual matter presented, but rather as an
expression of opinion by an expert in the art.
In re Berry, 137 U.S.P.Q. 353. See also In
re Lurelle Guild 1953 C.D. 310; 677 O.G. 5.
Opinion affidavits need not be given any weight.
In re Pierce 1930 C.D. 34; 390 O.G. 265; In
re Reid 1950 C.D. 194; 635 O.G. 694.

Further, since in a patent it is presumed that
a process if used by one skilled in the art will
produce the product or result described there-
in, such presumption is not overcome by a mere
showing that it is possible to operate within
the disclosure without obtaining the alleged
product. It is to be presumed also that skilled
workers would as a matter of course, if they
do not immediately obtain desired results, make
certain experiments and adaptations, within
the skill of the competent worker. The fail-
ures of experimenters who have no interest in
succeeding should not be accorded great weight.
Bullard v. Coe 1945 C.D. 13; 573 O.G. 547;
In re Michalek 1947 C.D. 458; 604 O.G. 223;
In re Reid 1950 C.D. 194; 635 O.G. 694.

Where the affidavit presented asserts inop-
erability in some features of the patent as to
which it was not relied upon, the matter is of
no concern. In re Wagner, 1939 C.D. 581; 407
O.G. 1041.

Where the affidavit asserts inoperability of
the process disclosed in the reference for pro-

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aucing the claimed product, which product is
fully disclosed in the reference, the matter is
of no concern. In re Attwood 1958 C.D. 204;
730 O.G. 790.

Where the affidavit presented asserts that the
reference relied upon is inoperative, it is ele-
mentary that the claims presented by appli-
cant must distinguish from the alleged in-
operative reference disclosure; therefore the
matter is of no concern. In re Crecelius 1937
C.D. 112; 474 O.G. 465. In re Perrine 1940
C.D. 465; 519 O.G. 520. In re Crosby 1947
C.D. 35; 595 O.G. 5.

Affidavit by patentee that he did not intend
his device to be used as claimed by applicant is
immaterial. In re Pio 1955 C.D. 59; 691 O.G.
454.

# COMMERCIAL SUCCESS

Affidavits submitting evidence of commercial
success can have no bearing in a case where
the patentability over the prior art is not in
doubt. In re Jewett et al 1957 C.D. 420; 724
O.G. 225. In re Troutman, 1960 C.D. 308;
757 O.G. 556.

Affidavits showing commercial success of a
structure not related to the claimed subject
matter has neither significance nor pertinence.
In re Kulieke 1960 C.D. 281; 756 O.G. 288.

Affidavits which attribute commercial suc-
cess to the invention "described and claimed"
or other equivalent indefinite language have
little or no evidenciary value. In re Troutman
1960 C.D. 308; 757 O.G. 556.

Where affidavits show commercial success it
must appear that such success resulted from
the invention as claimed. In re Hollingsworth
1958 C.D. 210; 730 O.G. 282. Otherwise the
affidavit showing is non-pertinent.

# SUFFICIENCY OF DISCLOSURE

Affidavits presented to show that the disclo-
sure of an application is sufficient to one skilled
in the art are not acceptable to establish facts
which the specification itself should recite. In
re Smyth 1951 C.D. 449; 651 O.G. 5.

Affidavits purporting to explain the disclo-
sure or to interpret the disclosure of a pending
application are usually not considered. In re
Oppenauer 1955 C.D. 587; 568 O.G. 393.
(Basis: Notice of Oct. 21, 1960.)

# 717 File Wrapper

## 717.01 Papers in File Wrapper

Every paper entered on the "Contents" of a
file should be entered in clean red ink and not
with a ball point pen nor in pencil. If the

paper is not to be allowed entry in the case,
that fact may be noted in ink at the time the
entry on the "Contents" is made. If subse-
quently the paper is allowed entry in the case
a line may be drawn through the "not entered"
note. No paper entered on the "Contents" of
the file should ever be withdrawn or returned
to the applicant without special authority of
the Commissioner (Basis: Order 2799).

It is directed that entries shall not be made
on the back of a file wrapper, containing the
application papers for a patent, of papers or
actions which do not become a permanent part
of the contents of the file (Basis: Order 767).

The papers when placed in the file are num-
bered and noted in the contents column, the
application papers being No. 1, the print of
the drawing, if there is one, ordinarily being
No. 2, and the next paper, usually the first
Office letter being No. 3, etc.

The papers are noted in the contents column
according to their character. If it is an Office
action rejecting any claim, the word "Rejec-
tion" is entered on the file, or if the rejection
has taken the form of a requirement for re-
striction, the entry will so indicate, otherwise
the word "Letter" is used. Papers from the
applicant amending the case are designated
"Amendment", "Letter to Draftsman", "Asso-
ciate Attorney", etc.

Correspondence from the applicant is en-
tered in the contents column in red ink and
Office correspondence is entered in black ink.

In Rule 47 cases, these entries (made by the
Law Examiner) are in blue (turquoise) and
green ink respectively.

After the notation of the character of the
papers, the mailing date is entered in regard
to Office correspondence and the filing date in
regard to correspondence from the applicant.

## 717.01 (a) Arrangement of Papers in File Wrapper

All papers in applications must be arranged
and marked uniformly in the following man-
ner.

The specification and all amendments that
are to be printed must be kept separate from
office letters appeals and miscellaneous corre-
spondence. The specification and amendments
must be fastened to the second or middle page
of the jacket with the original specification
and claims on the bottom and the last amend-
ment on the top. The print of the drawing,
the Office letters and other papers not needed
by the printer must be fastened to the third
page of the jacket, the print of the drawing
being always kept uppermost. A communica-
tion containing amendments, and explanations

<!-- PageBreak -->

# 717.01 (b)

# MANUAL OF PATENT EXAMINING PROCEDURE

should ordinarily not be divided. If the
amendments and explanatory matter be pre-
sented in the same paper, it should be treated
as an amendment and placed on the amend-
ment side, or second page of the jacket, care
being taken so to mark and enclose the parts
to be printed by red ink that the printer can
readily distinguish the amendment from the
explanatory matter. All the papers in the case
will be marked serially as heretofore.

Amendments will be lettered alphabetically
in the order of their receipt, all the amend-
ments of the same date bearing the same serial
letter. If the amendment is short it should be
transcribed in red ink at the proper place, and
the notation per "A", per "B", etc. should be
written in red ink on the margin. Amend-
ments that are transcribed should never be
marked A1, A2, B1, B2. Amendments that are
too long to be transcribed should be marked
A1, A2, B1, B2, etc. on the margin, the first
amendment of this character in amendment
sheet "A" being A1 the second A2, etc. At the
margin point at which the amendment is to be
inserted should be written "Insert A1", "A2",
etc., as the case may be, and the same letters
placed in the angle of a caret at the proper
point of insertion, so that when several inser-
tions are placed in the same line these differ-
ent insertions may be readily distinguished.

All insertions and substitutions should be
marked on the original application, if practi-
cable. For instance, if Amendment A provides
that claims 1 to 5 should be canceled and new
claims substituted, a red line should be drawn
diagonally across claims 1 to 5 and in the
margin should be written "Sub. A1".

Where amendments are submitted in dupli-
cate, the carbon copy is destroyed except where
the duplicate is received within the time pe-
riod for response and the original is late. In
this latter situation both copies are placed in
the file. The "original" (ribbon copy) is en-
tered with reference made to the carbon copy.

If the attorney wishes a receipt for any pa-
per filed, this may be had by enclosing with
the paper a self-addressed postal card identi-
fying the paper. The mail-room receiving-
stamp will be placed on the card, and the card
dropped in the outgoing mail. (Basis: Order
1733.)

## 717.01(b) Prints

The prints of the drawing are fastened in-
side the file wrapper by the Application
Branch, and shall always be kept on top. A
paper number is assigned by the Clerk of the
division.

The prints shall always be kept on top of
the papers on the right of the file wrapper.

All prints and inked sketches subsequently
filed to be part of the record should be en-
dorsed with the date of their receipt in the
office and given their appropriate paper num-
ber. (Basis: Order 3240.)

## 717.02 Data Entered on File Wrapper

See also 707.10, 717.01 and 1302.08.

If the Examiner notices an error in any of
the data originally entered on the file wrap-
per, he should have it corrected by the Appli-
cation Branch.

If an error is noticed in the name or ad-
dress of the assignee, it should be corrected by
the Assignment Branch.

All of the above entries are either typed or
made in black ink. Such changes by amend-
ment as change of address or of attorney are
entered in red ink by the clerk of the division,
the original entry being canceled but not
erased.

717.02 (a)
Statutory Period Ends on
Saturday, Sunday or Holi-
day

See 710.05.

## 717.02(b) Name or Residence of In- ventor or Title Changed

The distinction between "residence" and Post
Office address should not be lost sight of.

When the name or residence of applicant or
title of invention is changed by amendment it
must be changed on the face of the file in red
ink by the clerk of the division. After mailing
of the Notice of Allowance, such changes are
made in green ink.

Sec. 605.04(c) explains the procedure to be
followed concerning sending the application to
the Assignment Branch and the Application
Branch when Applicant changes name.

Unless specifically requested by applicant,
the residence will not be changed on the file.
For example, if a new oath gives a different
residence from the original, the file will not
be changed.

## 717.03 Classification During Examina- tion

When a new case is received in a division
the Primary Examiner notes in pencil in the
upper left-hand corner of the face of the file
wrapper the classification of the case and in-
dicates the assistant examiner who will exam-
ine it.

(

(
)

C

(

<!-- PageBreak -->

<!-- PageHeader="EXAMINATION OF APPLICATIONS" -->
<!-- PageHeader="717.07" -->

## 717.04 Index of Claims

Constant reference is made to the "Index of
Claims" found in the inside of the file wrap-
per of all applications. It should be kept up
to date so as to be a reliable index of all claims
standing in a case, and of the amendment in
which the claims are to be found.

A column has been designated on the new
file wrapper (Form PO-436) for the entry of
the final numbering of allowed claims. The
preprinted series of claim numbers appearing
on the old jacket (Form PO-136) has been
retained and continues to refer to claim num-
bers as originally filed.

A line in ink should be drawn below the
number corresponding to the number of claims
originally presented. Thereafter, a line in ink
should be drawn below the number correspond-
ing to the highest numbered claim added by
each amendment. Just outside the Index of
Claims form opposite the number correspond-
ing to the first claim of each amendment there
should be placed the letter designating the
amendment.

As any claim is canceled a line should be
drawn through its number. (Basis: Circular
of February 17, 1936.)

# 717.05 Field of Search

In each action involving a search, the Exam-
iner shall encorse, on the flap of the file wrap-
per, the classes and subclasses and publications
searched, the date when the search was made
or was brought up to date and the Examiner's
initials, all entries being in BLACK INK.
Great care should be taken, inasmuch as this
record is important to the history of the ap-
plication. (Basis: Order 2146.)

# 717.06 Foreign Filing Dates

See 1302.06.

# 717.07 Related Applications

The file wrapper should identify earlier filed
related applications. See 202.02.