1300

OCR transcription for search; preserved printed pages are authoritative

# Section 13. INTERFERENCE

13-1.
Preliminaries to An Interference

-1-1.
Between Applications

-1-1.1.
The Interference Search

-1-1.2.
Correspondence under Pule 23.2

Failure to overcome Filing, Date

-1-1.3.
-1-1.4.
Suspention of claims

=1-1.41.
'To Party in lasuo
-1-2.
with A Intent

-1-2.1.
Copying Cinims from A Patent

-2.
Preparation of Interference rapers and Declaration
-2-1.
Preparation of Papers

*2-1.1.
Letter to Examiner of Interferences

-2-1.2.
Letter to rarty

-2-1.3.
interference Brief Card

-2-2.
Declaration of interference

-3.
Suspension of Ex Parte Prosecution

-4.
Jurisdiction of Interference

-5.
Matters Requiring Decision by Primary Examiner

-5-1.
Brief on Motion

-5-2.

Oral Hearing

-5-3.

Decision of Motion to Dissolve

-5-4.
Decision on Motion to Amend or Substitute
An Application

.5-5.
Decision on Motion to Shift Burden of Proof

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13-5-6.

Dissolution on Examiner's Own Motion

-5-7.

roma of Decision Letter

-5-8.

Petition for Reconsideration

-6.

Kedeclaration and Additional interference

-6-1.

After Decision on motion

-6-2.

By Adding New Farty

-7.

Examiner's Action Subsequent to interference

-7-1.

Entry of Amendments in Support of Motions

-7-2.

After Award of Priority

-7-3.

After Dissolution

-8.

Miscellaneous

-8-1.

Interviewa

-8-2.

Record in Each Interference Complete

-8-3.

Overlapping Application

-8-4.

Secrecy Case

-8-5.

Amendment Filed during Interference

-8-6.

Notice in File relating to Motions under Rule 25.4

-8-7.

Conversion of Joint Application to Sole

-8-8.

Reissue during Interference

-8-9.

Suit under Section 4915

-8-10.

Public Law 690

-8-11.

Dual Prosecution

-8-12.

Consultation with Examiner of Interferencea

-9.

Letter Forms Used in Interferences

-9-1.

To Law Examiner

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13.4.2

S PPenCing Claims

.9.3

Base Attorney

Hequestiug Withdrawal from Issue

Letter of Declaration

intter to Each Party

aquelle Jurisdiction of Application

** acesteny Jurisdiction of Interferen

*:: Idrawal of Interference

Primary examiner initiates Dinsolution

declaratie after Decision on Motion

Letter to Hauntmed Party

Letter to New Party

Ating A Party . No Testimony Takeni

***** 10 examiner of Interferencea

***** delcanal Party

* ** * *** Lew Party

Teattrony Taken!

Hoe damiter of Interferencees

Letter to Original Party

Letter to New Party

******* * dat to Gole

£ wester to Kultur Sole Party

.

Latte: to Other Party

F Nat artes of Amendment Seeking further

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## INTERFERENCE

The interference practice is based on See 4904 RXC
here set forth:

Sec 4904 R.S. Whenever an application
is made for a patent which, in the opinion
of the Commissioner, would interfere with any
pending application, or with any unexpired
patent, he shall give notice thereof to the
applicanta, or applicant and patentee, as the
ense may bo, and shall direct a board of three
Examiners of Interferences to proceed to de-
termine the question of priority of invention
And tho Commissioner may isque a patent to the
party who :: adjudged the prior inventor.

Rule 23.1 set foron the definition of an interference
and is here roproduced ;

Rule 23.1 Definition -- When declared. An
interference is a proceeding instituted for the
purpose of determining the question of priority
of invention between two or more parties claim-
ing substantially the same patentable invention
and may be instituted as soon as it is deter.
mined that common patentable subject matter 13
claimed in a plurality of applications or in an
application and a patent

An interference will be declared between
pending applications of different parties for
petent or for reissue when such applications
contain clsims for substantially the game inven-
tion which are allowable in the application of
each party, and interferences will also be de-
clared between pending: applications for patent,
or for reissue and unexpired original or re-
issued patents, of different parties, when such
applications and patents contain claims for
substantially the same invention which are
allowable in all of the applications involved
in accordance with the provisions of these rules

interferences will not be declared between
applications of applications and patents owned
by the same party unless good cause is shown
therefor, nor will interferences be continued
between such applications The parties shall

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make full disclosure of all right, title and
interest in any application or patent involved
when an interference is declared, or At any
other time when requested to do so.

### 13-1. Preliminaries to An Interference

An interference is often an expensive and time-con-
suming proceeding, yet it is important that a patent be not
granted to any one applicant when other applicants before
the Office are claiming the same invention, without a deter-
mination of the question of priority where under the tests
na to difference in filing dates n question of priority is
seen to exist.

The greatest care must therefore be exercised both
In the search for interfering applications and in the deter-
mination of the question as to whether an interferonce should
be declared. Also the claima in recently issued potente,
especially those used as references agoinat the application
claims should be considered for possible interference.

The question of the propriety of initiating an Inter-
ference in any given case is affected by so many factors
that a discussion of them here is impracticable. Some cir-
cumstances which render an interference unnecessary are
hereinafter noted, but each instance must be carefully con-
sidered If serious errors are to be avoided.

13-1-1.
Between Applications

Where two or more applications are found to be claim-
Ing the same patentable invention they may be put in inter-
ference, dependent on the status of the respective capes and
the difference between their filing dates. Before taking any
steps looking to the formation of an interference, it is very
essentin1 that the Banminer make certain that each of the
prospective parties is claiming the same patentable invention
and that the claims that are to constitute the counts of the
Interference are clearly rendable upon the disclosure of each
party and allowable in ench application. Failure to observe
this practice results in time-consuming and burdensome pro-
ceedings to dissolve or redeclare the Interference and, if
the Interference be not dissolved or redeclared, very serious
difficulties mny bo cronted in connection with the trial of
the cause and the award of priority.

It is to be noted that while the cintas of two or
more applicants may vary in scope and in immaterial detalla,
ynt if directed to the some invention, an interference ih
fact exists. But mere disclosure by an applicant of na

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invention which he is not claiming does not afford a
ground for suggesting to that applicant claims for the
sald invention copied from another application that is
claiming the invention. The intention of the parties to
claim the aune patontable invention as expressed in the
objects of the invention or elsewhere in the disclosure
or in the cinims is an essential in every ihatonen

It in preparing an application for lanue it appears
that an interference should be instituted between it and
an application assigned to some other division, the Exam-
iner having the allowable case will ask for the transfer
of said second application to his division and take the
necessary steps toward initinting the interference After
the termination of the Interference he will transfer the
application back to the division from which it came.

Applications made by the same applicant ara of
course not put into Interference with ench other. This
holda for applications having the same assignae to the
extent that if a plurality of applications containing.
claims to the same patentable subject matter are found to
Inve common assignee the Examiner informs the common assignee
or its counsel that the claims to that subject matter must be
placed in one application in the absence of good and suffi-
cient reasons why this may not be done.

13-1 -1.1
The Interference Search

The search for interfering applications which is always
made when preparing an application for allowance, but may be
mnde nt thy time after a caso has been found to contain allow-
able subject matter, must not be limited to the class or aub
cinco in which it is classified, but must be extended to nil
classes In or out of the Examiner's division which it has
been necessary to search in the examination of the application
Moreover, the possibility of the existence of interfering
applications should be kept in mind throughout the prosecution
of each application and every indication of the existence of
interfering mutter noted in such a way that it will not be
overlooked, should it be decided not to declare the interfer.
ehee forthwith.

In connection with the subject of Interference search
it is to be noted that, where the Examiner at Any time finds
that. tweeet more applications are claiming the same invention
And he does not deem it expedient to institute Haberference
proceedings at that time, he should make a record of the pos
sible interference an, on the face of the file wrapper in the
Apndo reserved for class and subclass designation His nota-
tlona, however, if made on the file wrapper or drawings must

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not be such as to give any hint to the applicants, who may
inspect their own applications at any time, of the date or
identity of a supposedly interfering application. Serial
numbers or filing dates of conflicting applications must
never be placed upon drawings or file wrappers and, since
relative order of filing dates may be determined therefrom,
references to the exact location of the conflicting case in
the division's register should likewise be avoided.

In determining whether an interference exists, the
Examiner in charge of the division must personally review
and decide the question. The Law Examiner may, however,
be consulted to obtain his advice and he will have charge
of such correspondence with junior parties as is provided
for in Rule 23.2. (Order 2687.)

13-1-1.2.
Correspondence under Rule 23.2

After the Primary Examiner has determined that e
conflict exists in the claimed patentable subject matter
of two or more applications, he considers the question of
correspondence under Rule 23.2. The rule follows:

Rule 23.2 Preparation for interference

between applications. Preliminary inquiry of
Junior applicant. In order to ascertain
Whether any question of priority arises between
several applications which appear to interfere
and are otherwise ready to be prepared for
interference, any junior applicant may be called
upon to state in writing under oath the date
and the character of the earliest fact or act,
susceptible of proof, which can be relied upon
to establish conception of the invention under
consideration. The statement filed in com-
pliance with this rule will be retained by the
Patent Office separate from the application
file and if an interference is declared will
be opened simultaneously with the preliminary
statement of the party filing the same. in
case the junior applicant makes no reply within
the time specified, not less than twenty days,
or if the earliest date alleged is subsequent
to the filing date of the senior party, the
interference might not be declared.

Under Rule 23.2 the Commissioner may require an ap-
plicant junior to another applicant "to state in writing
under oath the date and the character of the earliest fact
or act, susceptible of proof, which can be relied upon to
establish conception of the invention under consideration."

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Such affidavit does rot become a part of the record in the
application, nor does any correspondence relative thereto
The Affidavit, however, will become A part of the interfer.
ence record, if an interference is formed

Correspondence under Rule 23.2 is not an action on
the ense. Hence, it cannot serve to extend the statutory
period if the case is awaiting netion by the applimint

The Rule 23.2 correspondence is conducted by the
Low Examiner on receipt from the primary promluer of #
notice of the proposed interference set forth In a letter
modeled after the form found under "Letter Forms Used in
Interferonces" (13-9-1).

This letter and a carbon copy thereor, both alened
by the Primary Einalter, together with the files are for-
warded to the Law Examiner. The files, however, nie hat
retained by the Law Examiner, but are returned to the exam.
tning division where they are held separate from other fila
while the correspondence is being conducted.

in preparing enues for submission to the Low Examiner
and in subsequent trentment of the cases Involved- attention
should be given to the following points:

(1) 'The name of the Examiner to be called for a
conference should be given na indiented on the
for.

(e ) It should be atated which of the applicationa
In rendy for allowanco.

(3) if an application la n division, continuation of
continuation-in-part of an earlier one, t1 19
fact should be stated

(4) if one or more applications are owned by the same
assignee, or are presented by the same attorney,
It should be ao stated. Where cries are prose-
cuted by the some attorney or are owned by the
nome nosignee, ordinarily the claims of one
application are restricted to potentially distin.
rulsh from the claims of the other und ha tifer.
ference will be suppeated.

(5) In the muerestion of counts only count: which
efe treesenry to determine the question of
priority should be selected, citat which are

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not patentable over the proposed claims should
be omitted and the applicants should be advised
when the interference is declared that auch
claims are not patentable over the issue and
will be held subject to the outcome of the in-
terference. Claims are not patentably distinct
unless they differ sufficiently to sustain sep-
arate patente. Where doubt exists as to patent-
able distinction the doubtful claims should be
included.

(6) Any other points which have a bearing on the
declaration of the interference should be stated.

(7) Amendmente or other papers filed in cases held
by the Law Examiner bearing on the question of
interference should be promptly forwarded to him.

(6) Letters of submission should be in duplicate.

Where there is a difference between the dates of ap-
plications of the senior and junior parties of about six
months or more, the Law Examimer will require from the junior
party a verified statement relating to his date of conception.

As a result of said correspondence the Law Examiner
will stamp the letters from the Examiner either "Approved"
or "Disapproved," as the case may require, and return the
carbon copy to the examining division.

If the earliest date alleged by the junior party under
Rule 23.2 fails to antedate the filing date of the senior ap-
plicant, the Law Examiner disapproves the proposed interfer-
ence and the Examiner then follows the procedure outlined
in the next seoti on.

Where the junior party, as required by Rule 23.2,
states under oath a date of a fact or an act, susceptible of
proof, which would establish that he had conceived the claimed
invention prior to the filing date of the senior applicant,
the Law Examiner approves the Examiner's proposal to suggest
claimo and the Examiner may then proceed with declaring the
interforenco.

Before forwarding the files to the Interference Divi-
sion, the Examiner should ascertain if any such statement has
been filed and if so, senl this statement and forward it with
the files to the Docket Branch ( Order 3380).

The oath under Rule 23.3 becomes a part of the Inter-
ference file in contradistinction to the application file na

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Atomanarrowit under Rule 12.1 or ml .4
kat, with the subject to inspection on the
WHENIt

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Petit THE date is when the filing or to the
.Net, za in the case Of S DIVISION" OP "CHE
Now or fontinaetinin-party application.

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THIERRYHENRY HONOR ARAB CAN IS PLANET
... MAIS GENEL THEY TOFINES OF
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w twee Mon ds forthwith sent to 1390

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### 13-1-1.3. Failure of Junior Party to Overcome Filing Date of Senior Farty Under Rule 23.2

If the earliest date alleged by a junior party in
his affidavit under Rule 23.2 fails to overcome the filing
date of the senior party and if the interference in not to
be declared (note that an Interference might be necessary
because another junior party has overcome the senior party's
filing date), the senior party's application will be sent
to patent na speedily as possible and the conflicting claims
of the junior applicant will be rejected on the patent when
granted. A shortened period for response may be set in the
senior party's case with the approval of n Supervisory
Examiner.

After the senior applicant'n application has been
passed for lasue, the Law Examiner should be notified and he
writes a letter to that applicant urging him to promptly pay
the final fee, this being done to the end that prosecution
of the junior application may be promptly resumed, the senior
party's disclosure then being available as prior art in trent-
Ing the claims of the Junior application.

In the meantime the junior party's application will be
trented in accordance with the following:

Where a junior party after correspondence under Rule
23.2 fails to overcome the filing date of the senior party,
the Examiner when he reaches the case for action will write a
letter substantially as follows:

FORM

In view of Rule 23.2, action on this cnse
(or on claims 1, 2, 4, etc., Indicating the
conflicting cinims) is suspended for six months
to determine whether an Interference will be
declared (unless these claims are canceled). At
the end of the six months applicant should call
up the case for action.

The letter should include the usual action on the re-
meining claims in the case, Indicating what, if any, claims
are allowable. (Order 2913)

The Examiner should also note the ense on his calendar
nt the date marking the end of the six months' period, and, if
applicant does not call up the cnae, the Examiner should do so
unless the senior party's patent will soon isque, since fail-
ure of applicant to call up the case does not work abandonment,
and the case should not be permitted to remain indefinitely
among the files In the examining division.

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It Better hareng that Are the
Junior porty La sal ademed and suttit elde deeur .. .
bring it to the attention of the Examquer and tunt ::
patat to ****** ** **** I was promptly
hardship upon the WAY ANHANG

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pharat with ap razrin's comment ta deyamaor app , and
**************== ====

If the pooh few to col) bis c up
for mellom at the end of the : 0000 period and the
Bem likelihood of the sender application tel put m.
condition for columce, de wer should of A
møte *** **** Lernt, and reject !!
cimimo that are unjetztdie ver the sender application
on the ground that correspondente under Kule ## # #1:
the fact that the ysaivr applingat is ack the first av.
tor of the chalet isenta If there be other suppe :
matter In the .* - Und. planten ....
the senior perty . . care, the flower of clans. .
such subject matter ary result in the cancellation OF Giv
claims to the tutorforthe subject matter of the - 19
final diapanel of AN Faller nellahin

If, however The = nothing In the power opp
cation that is phtestable over the sender application
rejection Just eat brat have the offer1.

other hand, & AA .0Pt. 2 65

So | up now.

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13-1-1.4.
Suggestion of Claims

Rule 23.3 Same. Suggestion of claims
for Interference. Before the declaration of
Interference, It must be determined that there
is common patentable subject matter in the
cases of the respective parties, patentable
to anch of the respective parties, subject to
the determination of the question of priority.
Claims In the same langunge, to form the counts
of the interference, must be present or be
presented, in euch application.

When the cinima of two or more applications
differ In phraseology, but relate to substan-
tially the name patentable subject matter, the
Examiner shall, if It has been determined that
an Interference should be declared, suggest to
the parties auch cinimo na are necesary to
cover the common invention in the same language.
The Examiner shall send copies of the letter
suggesting claims to the applicant and to the
assignee, na well as to the attorney or agent
of record In each case. The parties to whom the
claims are suggested will be required to make
those claims (i.e., present the suggested claims
in their applications by mmendmont) within n
specified time, hot less than 20 days, In order
that on Interference iny be declared. The
failure or rofusal of any applicant to make nny
olnim suggested within the time specified, shall
be taken without further nction os o disclaimer
of the Invention covered by that clnim unless
the time be extended upon a proper showing.

The suggestion of claims for purpose of
Interference will not stay the period for ro-
sponso to an office action which may be running,
against an application, unless the cinima are
møde by the applicant within the time apeelfied
for making the claim ..

Rule 23.8 Conflicting parties having anme
attorney. whenever It shall be Found that two
or more parties me Interests appear to be
In conflict are represented by the onme attorney
or agent, the Examiner shall notify each of gold
principal parties and the attorney or opent of
this fact, and alall also call the matter to the
attention of the Commissioner. If conflicting
Interests appear the attorney of frent will not

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be recognized to represent the parties when
internats or in conflict in further proceed
ings before the Patent Office

Interference betweenas much of the pdf
outlined ts ** ** allende to :ramach. Interfax
with P intett

If the application cont in sentient alguma wavering
the cure off In anfel tter the Newer groei
under ml- ... .. . ! le HererDO, Thomas propor
claim must Infrared la date of all of the parte

period detergent :. the Kratzer 1. det for reply

suggested wall art: what It already set
claims. (See "Letter Forms Vard In Intertyp heeg " }} },' 1
Copies of the Items satie what are sent to the
followthe Attacker scent of round applicant Post.
Office adt ** daumen Post VIII++ +++

oferpred >> >> me Ottorty orient the MAIN
notifies each of said principal parties tapplight And
assigned! and alat the attorney or grant of this fact

Of All copies

matton * ****** ******* * ***

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The Examiner la riluired to infara each applicant when
the interference is declared what claims in his application
are unpatentable over the issue. There would seem to be no
objection to, and ant advantages in giving this Information
when suggesting eleti ....

Where in a letter surgesting claims to en mediennt
for Interference, the Exmulher states that none of the claims
In the case is patentable over the clalas suggested, this
statement does not constitute a formal rejection of the claim,
so that after the expiration of the period fixed for present-
ing the suggested claims if no amendment has been filed the
Examiner should make a definite netion on the claims then in
the appliention.

If claims are suggested in an application hear the end
of the statutory period running against the case, and the time
limit for making the claims extends beyond the end of the
period, such claims will be admitted if filed within the time
limit even though outside the six months' period and even though
no amendment was made responsive to the Office action outstand -
ing against the case at the time of suggesting the claims.
However, if the suggested claims are not nus made within the
specified time. the case becomes abandoned in the absence of
a responsive amendment filed within the six months' period .

### 13-1-1.41. Suggestion of Claims Involving An ApplTertion In Issue

If claims are suggested to a party whose application is
in issue, the procedure is as follows:

The application will not be withdrawn from lasue for the
purpose of suggesting claims for an interference . When an
application is pending before the Examiner which contains a
claim which may be made in a case in issue, the Examiner may
write a letter suggesting such claims to the applicant whose
case is in issue, stating that if such claims be made within a
certain specified time the case will be withdrawn from issue,
the amendment embodied and the interference declared. Such
letters must have the approval of the Commissioner.

When the Examiner suggests a claim appearing in a case
in issue to an applicant whose cage la pending before him, the
ense in issue will not be withdrawn for the purpose of Interfer-
ence unless the suggested claims shall be made in the pending
application within the time specified by the Examiner ..

In either of the above cases the Issue and. Gazette Branch
should be notified when the claim is suggested so that in case
the final fee is paid during the time in which the suggested

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claims any be ande proper step may LA Then to front
the final fee from Being applied Forder 1505]

This avalda am paulothe error
for To further Where Halt Meg HAM
the Examiner at TANA KA
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apply ter " Should the Final fre Dagar & jonah.

Mented to other applications already involved In Inter IE e
and to form whether Itofferente, the Fury Mulher P.
questo jurisdiction of the lost hond applications

to the Communioner Is written for each file referring sky
to that file zad is placed thetelů
the Examiner of interferences for his approval before print
forwarded to : water i can the uil La
to be added to the war Interference, the Urlary Het
requests juillet of the Interferem in ....
format []- [ la med. This is addressed to the ANTI
of interferens

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13-1-4
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when the filing date of an applicant is
subsequent to the filing date of n patentee,
the applicant, before an interference will be
declared, shall file an affidavit that he
made the invention in controversy in this
country, before the filing inte of the patentee;
and, when required, the applicant shall file an
affidavit (of the nature specified in Kule 18.1)
setting forth ('nets showing that he completed
the invention in controversy in this country,
before the filling date of the potentee.

Hule 23.5 Some copying cinima from patent.
before an Interference will be areinred with a
patent, the applicant must present in hia applica-
tion, copies of all the claims of the patent which
also define his Invention and such cinima must be
patentable In the application if cinimn ennnot
be properly presented in his application owing to
the Inclusion of an immeterini limitation or
emrintion, an Interference mny be decinred after
copying the cinima excluding such immaterial limi-
Ention or variation.

Where an applicant presenta a claim copied or
substantially copied from a patent, he must, at
the time he presenta the claim, Identify the pat-
ont. give the number of the patented claim, and
specifically apply the fermo of the copied claim
to his own disclosure unless the claim in copled
In response to a suggestion by the Office The
Examiner will call to the Commissioner's atten-
tion any instance of an attorney or agent filing
an application or presenting an amendment copying
claims from n potent without calling attention to
that fact and Identifying the patent

Rule 21.6 Same. Same Claims improperly
copied. Where claims are copied from & patent and
the Freminer la of the opinion that the applicant
can make only some of the claims ao copled, he
shall notify the applicant to that effect, atnte
why he Is of the opinion the applicant cannot make
the other claims and state further that the Inter-
ference will be promptly declared and that the
applicant may proceed under Rule 25.3. if he fur-
ther deulres to contest his right to make the
cinima not Included In the declaration of the
١ntorferetee

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Where the Examiner is of the opinion
that none of the claims enn De inde, he should
stnte in his action why the applicant can not
make the clans and get a Life Huit, not less
that twenty migr for ppl if afor p.
by the applicant , the Popsreti m ia mode front
a similar time Irait should be art for appeal
Failure to respond or appent, as the crde mey
be, withis the time fixed, will, in the absence
of a satisfactory showing, be deemed n dis -
eliger of the invention claimed

When an interference with a patent in proposed it
should be ascertained before any steps are taken whether
there Is common ownership An abstract of title must be
placed in the patented file when the papers for an inter-
ference between an application and a pe tent are forwarded
To this and the Examiner, before initiating an interference
Involving a patent, should refer the patented file to the
Assignment Branch for notation as to ownership.

Where an application is under Dual Prosecution, and
claims are copied therein from a patent cinasified in the
second division, the propriety of deciaring the interference
(if any ) is decided by and the interference is declared by
the second division. In such a case, it is usually advis-
able to transfer the application including the drawings
temporarily to second division A print of the drawings
should be made end filed in the first division in piace of
the originel drawings

13-1-2.1
Copying Claims from A Patent

A large proportion of interferences with a patent
arise through the initiative of an applicant in copying
claims of a pretent which has come to his attention through
citation in an Office action or otherwise. However in some
Instances the Sxeminer observes that certain claims of a
patent een be gede in a pending application and if the
patent is not a statutory ber, he takes steps toward declara
tion of an interference After having the title report of
the patent prepared to be certain that there is no comment
ownership, his next step is the suggestion of cinias fra
the prtent to the napiieant

The procedure to be followed in autesting che mme from
a patent to an applicant is generally the moment in the
of a prospeetage interference between applications and 18
dienasted in detail under the bending of "Suggestion of Clanthe"
under intert renees "Between Applications" (13-1 3 4). How.
ever the following differences must be observed

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(1) No correspondence under kule 23.2 is conducted
with a Junior applicant to whom a claim from #
patent is suggested but , instend, an affidavit
under Rule 23.4 is required

(2) In suggesting a ciola from a patent, the patent
should be cited and the source of the claim given,
wherens no information concerning the source of
the claim should be revealed when a claim is sup-
posted for a prospective interference Involving.
only applications

(3) All claims of a patent which an applienht cnt
make are suppested to him, whereas only patent-
mbly distinct claims are angrested for an Inter-
ference involving only applicationa.

(4) Claims suggested to an applicant from a patent
may differ from the patent einima by the ex-
clusion of af Immaterinl limitation or variation
which the applicant ennnot make, wherena cinimg
suggested for an interference between applica-
tions must tr identical in all cases.

As a patentee may not alter his claims (unless by dis-
claimer) an applicant must make one or more cinims of the pat-
ent, or substantial equivalents thereof to Invoke an Inter-
ference, as stated in male 23.5

If an attorney or agent presents a cinim copied or sub-
stantially copied from a patent without indicatity its origin
he may be deemed to be seeking, obviously improperly, to ob-
tain a claim or claims to which the applicant is not entitled
under the law without an interference or the Examiner may be
led into making an action different from what he would have
made had he been in possession of all the facts Rule 23.5
therefore requires the Examiner to "call the Commissioner's
attention to any Instance of an attorney or agent filing an
application or presenting an amendment copying or substantially
copying claims from a patent without calling attention to that
fact and identifying the potent."

The making of claims from a patent when not suggested
by the Office does not constitute a response to the last office
action and does not operate to stay the romaine of the atatu-
tory period dating from the ununswered Office notion

When claims from a potent are made, the application la
taken up at once, and the examiner may reject such claims to
the applicant if the ground of rejection is not also applicable
in the case of the patent, as, insufficient disclosure in the

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application or a reference whose date is Junior to
what of the post In this connection It should be ante
that the time within which an amendment may be made "rap
the first time with* of PERSIA:3 WHERE
chain of an want patent Int . :
granted * ** *** ***** ** ***** A ...
the ****** ** ******* ** *** *
Primmy Kommer delle them to the top

FORM
** *** ********* Propuesto there
Perman:# trajet !* * *; 2.2.11:
thegarage puminated

This should be accergented by a copy of the proposed afyon

| | DALLALANAWARRANTY
thirty days. : :: bericht the
of the Board of appeal ara special it apar tit. the aston
to respond et BAL KANINTE
deemed a later of the Invention :Napa

upforeAcharmaged fromajator
and the Exit 10:1: that one or For of Two Not
patentable to coplisant and at least one other is the
Examiner showifes cice act up the Interference On the

Holm 25.1 16 % MANERA
Nominer: 5 5 m.

provialets of 26 where the we Blog of the
**** *** ******** ANV. NACIONAL
١ ٠ ٠ ١٨١٩٥٢ ٩ ١٢٨٨٨ ٤٠ ٢٧ ١٠٣٢ * *** ٠٠ " ١ ٢٩ / > \*****.\* "
٦:٣ ١٢٢٣٩١ *٢٢٢ ١٢ ٢٠١ ٠١١٢٠ -٤٥٠ ١٥٧٣ Atmlhar

Primary ***** * CHAMPS

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the Supervisory Examiner The penalty resulting from failure
to re ly within the time limit under Rule 23.6 is loss of
the claim or claims involved, on the doctrine of disclaimer,
and this is appealable, while failure to respond within the
set statutory period ( Rule 19.2) results in abandonment of
the entire application That is not appealable. Further,
belated anetatrient after the time limit net in necorgance
with Rule 21.6, may be excused by the Examiner, Ir antis-
factorily explained, but one day Inte under the Rule 19.2
period, ho matter what the excuse results ih abandonment.
However, it asked for in advance, extension of the period
may be granted by the Examiner, provided the extension does
not po beyond the atx montlet period Otherwise the noend -
ment will not be entered without the approval of the
Commissioner.

The rejection of copied patent claims sometimes crentes
n situation where two different periods for response are pul-
ning against the application Fone the statutory period
dating from the last full action on the case; the other, the
limited period set for the response to the rejection (either
first or finnil of the patent claims. This condition should
be emphasized in the Examinar's Jetter.

In this connection it is to be noted that an appenl
from the final rejection of the patent claims will not stay
the running of the regular statutory period if there be an
unanswered Office netion in the case at the time appeal is
taken, nor does buch appeal relieve the Examiner from the
duty of acting on the code if up for action when renched in
its regular order

Where an Office action is such as requires the setting
of a time limit for the response to or appeal from that action
or to a portion thereof . the Examiner should note at the end
of the letter the date when the time limit period enda and
also the date when the statutory period ends .

While an amendment presenting a patent claim in an
application not In issue 12 usually admitted and promptly
acted on whatever may be the stage of prosecution - - final
rejection. appeal, interference, or what not, - yet, if the
ense had been closed to further proscention before the Primary
Examiner, as, by final rejection or allowance of all of the
claims, or by appeal, the applicant may no longer demand entry
of such amendment . Where the prosecution of the application
is closed before the Primary Examiner and the copied patent
claims relate to an invention distinct from that claimed in
the application, Ex parte Shohan, 1941 C D 1, 522 0.0. 501.
Admission of the amendment may very properly be denied in a
closed application it , prima facie, the claims are not sup-
ported by aprileant a disclosure An applicant may not have

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recourse to asserting a patent claim which he has no rie!'
to take ms a ments to reopen or prolong the prosecuting
his case

ance, which undstre hle of more finland copied of satte
tially copied fra a patent and the Examiner after .a.
erstlot of the Game sense *****
exist he should prepare a letter fant Letter Forms i. . . )

the purpose ** **** THAT WHEN
together with the Uil m the proposed menhet ( L
Commissioner.

When he eretuent la freelved after mitico of hilow
**** , which world of mr cha cup of
tially copied from a patent and the Exwalter find Marker
refering the interface on any ground he Ald ;
an adverse repart "Form Zel b) stating valy briefs. the
able on th duclair or if construed to rend on the
disclosure søt patentalle over the peter art ne Th
Exalter should also prepare m Informal memorandum BLUE
forth in detail hu genot for ref : the repente me
office ***** ****** FAIT

should ******* *

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affidavit under Rule #22 Nek never beccato & peper in
the as lication file, are available for inspection by an
opposing party to af Interference when the preliminary
atutomento nro opsunt Ferria v Tutti. 1946 C D 5, 521
0 5). The new Op Affidavit filed under Rule: 18.1
nad 27.4 may then be returned to the application files and
the officeits filed wader hale "> a filed in the int rfer-
enco Jecket

13-2
***** 90 Interference
Papera M.1 De 1 Ft100
The rules parole it to the met are set forth
Lolow.

Hule 217 Prepar tion of interference
notices and statement. when an Interference
FRUTTA OMARHention are in
****** *- for A From ry EXalter Small
Command the files to the Exmatters of Inter.
Ference, together atth, mitices of Interference
to be sent to all the parties the specified in
Hul+ 2) dicho the me what Celente
of each party and the of An attorney or agent
and of *** *** lenne and if any party te a pat-
antes, the date and number of the pastell The

be Docent; * / ** * effort
der UntFAMILYwith
Le mede N. . . .. the
count+ and shit !: d+ the In : Joms
of the respectiveFondet
Coment or count;

TA IMAGINATIONNATUR

**** **********.....
( ****** *******

\* **** ** PRIXMEINER
*************
*************** LA0
****** ** AI : FARE 008, 14th
principal And ***** %

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Rule 23 9 Declaration of interference
Mailing of notices, When the notices of in-
Lerference are in proper form, an Examiner
of Interferencea shell assign a number to
the Interference and add to the notices a
designation of the time within which the pro .
liminary statements required by kule :4 1
must be filed, and shell, pro forms , inatı-
tute and declare the interference by forward-
ing the notices to the several parties to the
proceeding

The notices of interference shall be for
warded by the Examiner of interferences to all
the parties, in care of their attorneys or
ngonta, and, if the application or patent in
Interference has been assigned to the assignees
When one of the parties has received a patent
A police shall be sent to the patente as well
as to his mitarney or agent of record

When the notices sent in the interest of
a patent are returned to the office undelivered
or when one of the parties resides abrond and
his agent in the united States is unknown
additional notice may be given by publication
In the Official Gazette for auch period of time
As the Commissioner may direct

#### 13-2- 1 Preparation of Popart

The procedure to be followed in setting up an inter-
ference is set forth in Rule 23 7 Further information 18
given in the preceding sections and in in re Redeciaration
of Interference Nos $9.635. 49 636. 49.866, 1926 C D 75,
350 0.0 3 The forma used by the Examiner in getting up
en interference five the details of all lettera to be written

To make the practice in declaring interferencea uni-
form the procedure to be followed to set forth below.

13-2-1 1
Letter to Examiner of interferences

The letter of the xxminer of interferenens is written
upon the blank "bir for that purpose See Letter Forma
11-0.5 And 119 % { This letter should contain first the
Information to the parties required by the rules, the
portles band erand the suveren chronological order of fil-
Ing of the applications directly involved th the interference
second, the counts of the Interference and third when there
are e plurality of counts a table showing the relationship
of the counta with the respective ciones made by the parties

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$

For example, in an interference involving X, Y, and Z in
wnich Z is the senior party and Y junior to both X and Z:

The relation of the county of the interference to
the claims of the respective parties is na follows ;

Counts

Y

x

2

L

10

1

2

2X

5

1

1

3

()

15

5

4

4

11

0

If reference is mado to a divisionat , continuation
or continuation -in-part application that application should
without any doubt support a count of the interference.

If the case In interference lu n division or continua-
tion of an earlier application, the parent application should
be completely Identified by application number and filing
date and including patent number and dato f it has matured
into a patent Also, if the parent application is, in turn.
a division or continuation of a atill earlier application,
the earlier application should also be completely identified
and its relationship stated This procedure should be fol-
lowed to the point where the earliest effective filing date
of each party with respect to all the counts in issue has
been given.

As evidence that the Examiner was considered the matter
and has decided that all the counts if insue are clonrly sup-
ported by the earlier application. he must initial the margin
of Form No 251 opposite the entry relating to the earlier
application Alternatively a poaltive aintement may be added
at the end of Form No. 251 to the following effect, after mak-
ing the proper entry and modification in the line "Division or
continuation of

"All the counta le kami are supported by Serial No. . "

or
"Counta numbered
in tsune are supported
by Serial NO
"

The letter to the result of interferences should not
include any reference to foreign fiithe datos, even though the
Examiner may have acted favorably on a request under Sec. 1 of
Public Law 690

If a relaque application of patent is involved in an
interference, complete information concerning it should be
given on Form 251. Including relaque patent number and date
reissue application number and filing date original patent num-
ber and filing dote.

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In preparing the papers for au interference which
involves a patent, the numeral of the patent claim should
be used rather than the original numeral of that claim
when the patent was a pending application. The interfer.
ence is betweoh the application which has copied the pat
ent claim and the patent, -- not the patented application
( Rule 2) 1 ;; and the interference papers should be prepared
accordingly . Observance of this practice la important.
since if the patentee loses the interference, this fact,
specifying the patent claims involved as obtained from the
Interference papers is published in the official Gazette
If the interference counts are modified claims of the
patent, the word "modified" or "substantially" should Ap.
pear in parentheses after the corresponding claim numbers
of the patent in the table of claims If an application
was merely in issue and did not become a patent, the orig
inal claim numbers of the application, prior to revision
for issue, should be used

The letter to the Examiner of interferencos (Form
251) must include copies of the counts. A certificate of
correction in a patent should not be overlooked For the
best practice in interference dependent counts should be
avoided and each count should be independent This avoids
confusion in language and disputes as to the meaning of
the counts When dependent counts cannot be avoided, as in
the case of an interference with a patent and one of the
counts is a dependent claim the count may likewise be
stated as dependent on the count corresponding to the claim
on which the dependent claim is founded in the rare in-
stance where a dependent claim is the sole count of an
Interference and the basic claim is not included, the count
should be copied as n dependent cinim and immediately there.
under, in brackets the basic claim should be copied

If an interference is decinred ha the result of a
decision on motions under Rules 25 3 and 25 4 in a prior
interference a statement should be added to Form 25!
to the following effect:

"This interference is declared as the result of a
decision on motions in Interference No
"
,

This insurey against the setting of a new motion port
od in the newly declared interference (See Rule 25 3, Last
sentence !

13.2 12
Lettera to Parties

The Letters to the different parties are written upon
the blanks for this purpose See Letter Form at 13 9-6
After the printed matter upon and blank there shall appear

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first, the counts of the interference, second, the informa-
tion pertaining to the other parties, as required by the
rules, arranged strictly in accordance with alphabetical
order, and third, the counts and claims of the parties tab-
ulated strictly in accordance with alphabetical order. For
example, after the counts, the letter to X would read :

(a) The interference involves your application
above identified, and
(b) An application for Bicycle Saddle filed by Y,
of 282 Broadway, New York, whose attorney 1s

of
and whose assignee is
.

(c) An application (patent) for Bicycle Saddle filed
by 2, of 1205 Chestnut Street, Philadelphia, Pennsylvania,
whose attorney la
.
of
and

whose nasignee is
of
,

(d) The relation of the counts of the Interference
to the claims of the respective parties is as follows:

Counts

I

Y

Z

1

16

3

2

2

5

1

3

3

9

15

5

4

4

11

6

Special precautions to be observed in filling out the
interference notice to the parties (Form 213 or POL-76) will
now be discussed.

If the interference involves a patent, the letter to
any opposing party includes complete information concerning
the patent, since this is public information which is avail-
able to anyone and which the opposing party may otherwise
have obtained. No statement as to parent applications of the
patent should be made.

In filling out Form 213 or POL-76 the blanks to the
right of the address box should be completely filled out.
If the case in interference is a division, continuation, or
continuation-in-part of an earlier application and, further,
that party has been given the benefit of the earlier applica-
tion in the letter to the Examiner of Interferences (Form 251) .
corresponding information should be included in the letter
to that party as, by adding after the identification to the
right of the address box, "Division (or continuation or con-
tinuation-in-part) of Serial No.
,"filed
9
.

Notation of the persons to whom Form 213 or POL-76 18
mailed should be made on all copies.

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The counts of the interference are ordinarily no
longer copied it. the letters to the parties unless a
particuler party 's rese does not include an exact copy
count ** * ** NAME ofthe Letter
******** ****** * of the SOUL Simply 1
the meACUERDOWILLUn dependent cinin.
**** *** * ******* KahSICH In the
letters well parties wod do not wie the whim in their
respektive cedes in rowritten form Also. !! the entry of
\* ****** ************. 000
********* ***** |WWW.
the costt tu ;t the form as amended or prior to the athond -
ment of the exact count may be copied in that party's letter

The attention of the Examinera is called to the do
ciutons in Votoy v Wundt v Domon, 1904 C D 323, 111 0.0
1627 and Earl : love, 109 = D 56, 140 0 1:09 In which
It is held that when an interference is dentered Inv,VII.
\# patate a . Examiner In of the option that the
appltest. wer spotications contain claims mot patentably
different from the Lasua of the Interforonce, he should append
to the decline a statement that such claims specifying
them by number will be held subject to the decision in the
Interference The ronson for making auch statement applies
equally well to an interference involving only applient. com

The fact was announced th Madalya A.1 1.
followed duel a statement in the portion mb at
what clots. the xxpor otider unt habe over the
lague 1. vous the Liability of Frentihr claims to the
which Are Bez KI EreI Am 1 protiv :00
motions under War 2" :

When parties te ap Interference have the Dome start
this fact should be At the bottom of euch inter. ...

of the addto copy should be made on all copies in
the code of AfEsti application ima repetition of
Information given at the time of ourseating claima, but where

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Div.
(date) ," at the upper left hand corner, and
also when there Is an assignee or a patentee, it should be
stated on all letters that a copy has been sent such party
or parties.

All the letters, both those for the files and those
to be mailed are forwarded as required by the rules, the
originala separate from the files, and the carbon copies
to be mailed preferably attached to their respective enve-
lopes, but in no case to be folded or placed within the
envelopes.

13-2-1.3
The Interference Brier Card

Interference brief cards Form No. 079 are placed in
the files of the respective parties. The names only of the
interfering parties arranged strictly in alphabetical order
shall be inserted after "Interference with." The patent
number, if any, should be inserted after its corresponding
serial number.

In declaring or redeclaring an interference the follow-
ing should be borne in mind:

(1) No party should be made junior as to some counts
and senior as to others, but two interferences
should be set up making the party with two appli-
cations junior in one interference and senior in
the other.

(2) No Interference should be declared unless each
party to the interference is involved on every
count.

(3) Where an applicant puts identical claims in two
applications by virtue of which he will be the
Junior party and by virtue of the other the senior,
the later application only should be placed in the
interference, leaving the applicant to gain such
benefit as he may from the senior application
either by motion to shift the burden of proof or
by introducing the senior application into the
interference us evidence (In re Redeclaration
of interferences Nos 49,635; 49,636; 1926 C.D. 75;
350 0.0. 3.1

Summarizing, in preparing the cases for interference,
Forms 251, 213 or FOL-76, and 079 should be filled out.

Any correspondence under Hule 23.2 should be obtained
from the Law Examiner, senled, and forwarded with the other

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rapers. Affidavits under kule 18.1 and those affidavits
under Rule 23 & which reveal facts of the nature of those
Included in an affidavit under Rule 18 I should be removed
from Application tout patent) files sealed, and retained !:
the examining wetake until called for or until the Inter-
ference is terminated. And, if n patent is involved in the
interference, a recent title report on the patent should be
forwarded with the other papers

13-2-2
Declaration of Interference

We ppIty In der / Interference
having been prepared in the examining division are sent.
to the Docket Branch, the Examiner filing in his own divi-
sion a copy of the letter to the Examiner of Interference:
In the Docket Branch the files and Interference letters are
put in an envelope or box and given an interference number
which, together with full data of the Interference in placed
on aald envelope or box . These dato are also recorded in a
card index

The Docket Branch then forwards the files with the
Interference letters and the envelope or box to the Interfer
ence Division where the files and letters are lospected to
see that the notices are in proper form if not, the files
and notices are returned to the primary Exominer for correc-
tion. When att the papers are correct ,the Examiner of
Interferences. mer the provider of war 2yal. 5 0
notices a designation of the time within which the preliminary
statements required by nule 24 I must be Filed and pro forma
institutes and declares the interference by forwarding the
notices to the several parties to the proceeding, After the
notices are malled the application and interference files
are returned to the Docket Branch, where the date get for
filing the preliminary statements is noted on the interference
envelope or for and in the interference register
13-3.
Suspension of Ex Parte Prosecution

kate 23.11 Suspension of ex parte From:
cution on declaration of the interference a.
parte prosecution of an application is suspended
and amendments aps other papers received during
the pendency of the intert rine . will not be
entered of considered without the consent of the
Continuer Property the me
1 rope menden drocket for the help
tion at an juterference with walther parte will
be considered to the extent necessary Ax pept.
prosecution as to specified matters ny be con-
Minded wonder Why With AN ELEMENT

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The treatment of amendments filed during an inter-
ference is considered in detail in sections 13-7-1 and 13-
8-5.

##### 13-4. Jurisdiction of interference

Rule 23.10 Jurisdiction of interference.
Upon the Institution and declaration of the
Interference, as provided in Rule 23.9, the
Examiners of interferences will take jurisdic-
tion of the same, which will then become a con-
tested case.

The Primary Examiner will retain juria-
diction of the case until the declaration of
interference is made.

The declaration of interference is made when the Ex-
aminer of Interferences malla the letters forwarded to him
by the Primary Examiner. The interference is thus technical-
ly pending before the Examiner of interferences from the date
on which the letters are mailed. The parties, however, aro
not committed to the contest until the preliminary statements
have been received and approved, and the files of the various
parties opened to the inspection of their opponent's. The pre-
liminary statements are not thus opened at this stage of the
interference proceedings.

During the period from the mailing of the notices
until the receipt and approval of the preliminary statements
and the ensuing opening up of the files to the opposing
parties, the Interference may be withdrawn at the discretion
of the Primary Examiner if he discovers facts that existod
at the time the notices were mailed that would have fore-
stalled declaration of the interference, such as a reference
for the interference claims applicable to one or to both parties.

When withdrawing an interference prior to the opening
up of the files to the opposing parties the Examiner writes
a letter to the Examiner of Interferences requesting the
withdrawal of the interference, whereupon the Examiner of
Interferences advises the parties that the interference has
been withdrawn and returns the files to the Primary Examiner.
The Primary Examiner then octa upon the applications as
though no interference had been declared For form see 13-9-8.

If, however, the Interference is between a patent and
an application, a subsequent disclaimer by the patentee of
a portion of the claim, or other modification thereof that
renders the claim not readable on the application disclosure
will not enable the Examiner to withdraw the interference.

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For the consideration of any fact, such as here presented
affecting the continuance of the interference, procedure
must be hed in accordance with Rule 25.2 or Rule 25 7

Throughout the interference. the interference
papers and appilancion filos involved are in the keeping
of the Docket Branch except at auch times au hearings on
motions, final hearings, appeals, etc , when they are com
porarily in possession of the tribunal before whom the
particular question is pending

If independent of that interfercaen, action as to
one or more of the applicationa becomes necessary, the Examiner
requoats jurisdiction of the necessary file or files from
the Commissioner but first forwards the lutter (or letters)
to the Examiner of Interferoncos through the Docket Branch
for his approval. Sou Form at 13-9-7.

If after the intorforonce hus passed the pro forma
stage, action by the Primary Examiner becomes necessary
relative to the ontire interference, he requests jurisdic.
tion of the interforonce from the Examiner of Interferences
forwarding the request through the Docket Branch. See
for at 13-97 :

The Examinor nover naks jurisdiction of n patent
file, but merely borrows it if needed. no, where the patent
Is to be involved in a now Interference

###### 13-5. Matters Harutring Decision by Primary Fxnminer During Interferonco

kule 25 / Notions to dissolve Motion
to dissolve an Interference may be brought, on
the ground fil that there has been auch in.
formality in declaring the same as will pro-
clude the proper determination of the question
of priority of invention or (2) that the
claimer formand the swants of the interference
are not gatestable or are not patentable to
A particular applicant while being patentalle
to another party or ()) that a particular
party bra tw right to make the claima, of (%)
that there is he interference in fact If the
Interfereher ihre)ves o danich or plant put
ont or mpirtention or if the interference
involver a peteht ,she claims of which have
buon copied in modified form

When Our of the parties to the interfer.
**** * * mentee motions to dissolve on the
Around the. the cunta At topalentable my
not & .. treimm,he

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Motions to dissolve on the ground that
the counts are unpatentable, or are unpatent-
able to the party bringing the motion, must
be accompanied by a proposed amendment to the
application of the moving party cancelling
the claims forming the counts of the inter-
ference (which amendment shall be entered by
the Primary Examiner to the extent the motion
is not denied, after the interference is ter-
minated).

Rule 25.3 Motions to amend. Motions
may be brought to amend the Interference to
put in issue any claims which should be made
the basis of interference between the moving
party and any other party. When a patent is
involved, such claims must be claims of the
patent (as provided by Rule 23.5). If the
claims are not already in the application of
the moving party, the motion must be accompa-
nied by a proposed amendment adding the claims
to the application. The preliminary stato-
ment for the proposed counts may be required
before the motion is considered,

Such motions must, if possible, be made
within the time set, but if a motion to dis-
solve the interference has been brought by
another party, such motion may be made within
thirty days from the filing of the motion to
dissolve.

Where a party opposes the addition of
such claims in view of prior patents or pub-
lications, full notice of such patente or
publications, applying them to the proposed
counts, must be given to all parties at least
twenty days before the transmission date as
fixed under Rule 25.6.

The proposed claims must be indicated to
be patentable in the opinion of the moving
party in each of the applications involved
and must, unless they stand allowed, be dis-
tinguished from the prior art of record or
sufficient other reason for their patentability
given. The reason why an additional count is
necessary must be stated and when more than one
count is proposed, the motion must point out
wherein they differ patentably from each other
and why each proposed count is necessary to the
interference. The proposed claims must also be

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shift th bsin of proot of the ground that

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suspended, the case referred to the Primary
Examiner for his determination of the ques-
tion of patentability, and the interference
shall be dissolved or continued in accord-
nnce with auch determination. The consider-
ation of such reference or reason by the
Primary Examiner shall be inter partes as in
the case of a motion to dissolve. If auch
reference or reason be found while the in-
terference is before the Primary Examiner
for determination of a motion, decision there-
on may be incorporated in the decision on the
motion, but the parties shall be entitled to
reconsideration or rohearing if they have not
been heard on the matter. (See Rule 25.6.)

Prior to the approval of the preliminary
statements and notification of the parties
thereof, an interference may be withdrawn at
the request of the Primary Examiner .-

An interference may be enlarged or diminished both as
to counts and applications involved, or may be entirely dis-
solved, by actions taken under Rules 25.2, 25.3, 25.4 and
25.7. The burden of proof may be shifted by action taken
under Rule 25.5. Decisions on questions arising under these
rules are ande by the Primary Examiner personally.

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 appli-
cant or party In Interest.

If a motion under kules 25 .2. through 25.5 is filed,
It is examined by the Examiner of Interferences who, if he
finds it to be proper in form, will later transmit it to
the Primary Examiner for determination. The Examiner of
Interferences'sets a date and time or transmission of the
Interference file to the Examiner, and, if oral hearing is
to be held, niso the place of hearing.

Oral hearing is not held unless requested by the mov-
Ing party in his motion or by another party at least twenty
dnys before the date of transmission of the motion. If an
orni hearing is to be held, n copy of the Interference Exam-
Inap's letter to the parties indicating that fact is sent to
the examining division wherein the Interference originated.
The Examiner In charge, Clerk, Typist, or other responsible
person in the division is requested to sign a receipt for
this notice of hearing. It then becomes the responsibility
of the Primary Examiner and the Clerk of the division to

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see that the hearing Ante is not overlooked, sitte ho ther
notice is given before the hearing Prior to the Lias :
the hearing the complete file of the interference should be
obtained from the Docket Branch and the primary Examiner
and his assistant in charge of the cam must be progent for
the hearing at the set time and place if their attendance
nt the indicated time is impracticable the matter should
be brought to the attention of the Examiner of Interferences
(this may be done orally) at the earliest possible time so
that, if a change in the hearing date is necessary. the
parties may be given adequate advance botten.

It is advisable to examine the mettons which will be
heard at least Arveral days prior to the hearing since
occasionally the phifre subject matter of the interference
has been transferred to another division between the time
of declaring the interference and the time of hearing the
motion If this boy neempred, after the second division
has agreed to trze the case the Docket Branch and interfer
ence Division should be notified so that appropriate changes
may be made on their records also the notice of the mo
tion hearing should be returned to the Examiner of inter.
ferences so thit it may be forwarded to the new division and
the receipt therefor signed

A further reason for examining the motiona prior to
the hearing is that it may be destrable to decide the mattone
by "dual prosecution" procedure If this is the case the
concurrence of the second division it the dual prosecution
procedure should be secured as soon as possible so that the
Primary Examiner of the second division and his assistant
may likewise attend the hearing.

If no omil hearing is to be held the gaaminer !! tet
notified of the filing of a motion until the transmission
date has passed when the complete file of the interferenen
is forwarded to him for decision through the pocket Branch
13-5-1.

###### Briefs on Motion

Concerning briefs on motions Rule 25.6 requires that
any briefs in support of a motion must accompany the motion
and that "any answer to the motion must be filed ten days
before the transmission det " if A party open the 441
tion of consta umpy Kulig 25 ; And 5 % In View of THE
patents of publications furt notice of such patente ne gl.
Itestiona, appletur them to the proposed count" great for
given to all pacetes at least twenty days before it trans
mission date tt ouch A Butter has been given the the
moving party muy under the provisions of tole 25 6 fifa
reply ten days before the transmission date

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13-5-2.

### Oral Hearing

Rule 26.3 states that in oral hearings on motions,
the moving parties shall have the right to make the open-
ing and closing arguments. it further states that unless
Otherwise ordered before the hearing begins, oral arguments
will be limited to one-half hour for each party. This
means that each party has a total of one-half hour to argue
all the motions which are to be heard in the interference.
Although the moving parties have the right to make the open-
ing and closing arguments, the total time available for each
party is only one-half hour and that time must be so appor-
tioned by the moving parties as to leave time for rebuttal
arguments, if they care to do so.

The hearing on motions is conducted in a formal man-
ner and, prior to the initial arguments, it is well to advise
the parties of the available time and to have the order of
the arguments clearly fixed. It may be stated as a general
rule that arguments must be limited to those motions which
were transmitted by the Interference Examiner and matters
relating thereto, as, for example, a motion to strike a brief
on one of the transmitted motions. No party has a right to
be heard on a motion which was dismissed or deferred to final
hearing by the Examiner of Interferences, nor does any party
have a right to be heard on a matter which he should have
presented by way of a timely motion under Rules 25.2 through
25.5 or notice under the third paragraph of Rule 25.3, but
failed to do so.

#### 13-5-3. Decision on Motion to Dissolve Under Rule 25.2

The Primary Examiner hears and decides motions to
dissolve as to some or all of the counts. One or more parties
may thus be entirely eliminated from the interference as a
result of a decision on a Rule 25.2 motion; or certain of the
counts may be eliminated. Where the interference is dissolved
as to one or more of the contestants only, ex parte action as
to such cases is resumed after the time for requesting recon-
sideration has expired, while the interference as to the re-
maining parties continues. The ex parte action then taken in
each rejected application should conform to the practice sot
forth hereinafter under the heading "Action after Dissolution"
(13-7-3).

It should be noted that if all the parties agree upon
the same ground for dissolution, which ground will subsequent-
ly be the basis for rejection of the interference count to one
or more parties, the Interference should be dissolved pro forma
upon that ground, without regard to the merits of the matter.

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THErecent MAIS De APOIO UM

If we ba windemble doubt as to whether or not
\* **** ** application www. the Subject matter in

twar then on the point

Where the affection date of a patent of sali ... ...
. : weercon by the effective filing datos of private
Franta of all the parties, then the anticipate ...
mit patent or publication need not be caldeira
Attner, but the reference should be considered If al
treat one party falla to overcome ita effective data I. ...
ont. filing date or his preliminary statement. A party
assertion that the date allowed in his preliminary alot.
sent astedates the effective date of a patent of pull ......
should be considered authorization for the Primary Examin"
to Inspect his statement but it must be promptly revealed
wwwindt Inspection by any opposing party and to refere.
must be made to the exact date of invention alleged Lared
Beyond the mere statement that the dute of the pelott ør
paulista to overcome

In decutter motions under lule 25 2 the Kama ..
should not be wieled by citation of decisions of the ...
Gastos um Patent Appeals to the effect that only way
** wetters ancillary therete will be considered as att
Fammiability of the counts will not be considered ine
wart decisions relate only to the final determination of
priority. after the Interference has passed the motion,
stage, in the ordinary case a motion to dissolve may ....
the patentability of the count and need not be limited ..
matters which are ancillary to priority.

! !
Dictator on Lotion to imend of
ambachtet offer Application
under Rules .5 3 and 45 %

******* ** * other applications owl by the
Such now be granted and the string made be

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formed by the Primary Examiner.

If a motion under Rule 25.4 relates to an applion-
!! n In Isque, the application should be withdrawn from
isana only if the date set for hearing the motion is close
to or subsequent to the ultimate date for paying the final
fee.

The case should be withdrawn from issue even though
the Examiner may be of the opinion that the motion will
probably be denied, but this withdrawal does not reopen the
case to further ex parte prosecution and if the motion is
denied the case is returned to issue with a new notice of
allowanco.

Contrary to the practice which obtains when all
parties agree upon the same ground for dissolution under
Rule 25.2, the concurrence of all parties in a motion under
Rules 25.3 or 25.4 does not result in the automatic grant-
ing of the motion. The mere agreement of the parties that
certain proposed counts are patentable does not relieve the
Examiner of his duty to determine independently whether the
proposed counts are patentable and allowable in the appli-
cations involved. Even though no references have been cited
against proposed counts by the parties, it is the Examiner's
duty to cite such references as may anticipate the proposed
counts, making a search for this purpose if necessary .
However, if the decision includes a now ground for holding
a proposed count unpatentable, the Examiner should set a
time within which the parties may request rehearing and file
briefe on such new ground

Also care should be exercised in deciding motions
under Rules 25.3 and 25.4 that any counts to be added to
the existing interference are patentably distinct from the
original counts and from each other and that counts of addi-
tional interferences nro likewise patentably distinct from
the counts of the first interference and from each other.
This practice is not followed when the counts are claims of
@ patent, since all the patent claims which an applicant can
properly make must be Included as counts of the interference.
The phrase "patentably distinct," na used herein, menns auf-
ficiently distinct to support separate patents in the event
of @ split award of priority.

Affidavits are occasionally offered in support of or
In opposition to motions under Rules 25.3 and 25.4. The
practice here is the same as in the case of affidavits ros
lating to disclosure of a party's application as, for example,
on the matter of operativeness or right to make, should not
be considered, but affidevits relating to the prior art may

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be considered by analogy to kulc 13.

Ir * motion under dulce :52 or .Mon

tion !!!** ** * * . they should

********** to theHOFFarth

10-5-5.
to burt ** ** :: " == " 0. 89.5.

In dechu swoim of this nature, it is usually
ndvianble firat to determine exactly which counts will be
Involved in the final redeclaration of the interference
The practice in deciding the motion under kule 25.5 should
then follow that set forth In the cnae of In ro Redeclaration
of Interferences Nos. 49.635: 49,636: 49,866, 1926 C.D. 75;
350 0 4.

With respect to the shifting of the burden of proof
it should be noted that the order of taking testimony should
be placed upon the applicant lost to file unless all the
counts of the Interference rend upon an earlier application
which antedates thet of the other party. In other words,
shifting: the burden of proof es to some counts will lead to
the onme confusion that is brought about by declaring the
Interference with the burden of proof different as to differ-
ont counts. A party should not be given the benefit of nh
øwriter application If there is doubt on the matter

13-5-1.
Dissolution of primary Examiner out
Wollen under Kule 25.7

In1- 25 7 covers dissolution of an Interference on
the Primary examiner's own motion if he dingvera a reference
or other person which renders all or part of the counter an-
portentable. Three procedures are available under this gate

First, prior to the approval of the pre-
liminary statements the interference may be
withdrawn. This is accomplished by a letter
from the Frizery amulher to the wind of
Interface testing At 9:

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be withdraw. . This letter is forwarded to the
Docket Branch. The Interference Examiner then
sends a letter to the parties informing them
that the interference has been withdrawn and
that the proceeding is terminated. The Primary
Examiner then acts upon the applications as
though no interference had been declared, Form, at 13-9-8.

Second, if the Primary Examiner finds a
reference or other renson for terminating the
interference in whole or in part while the in-
terference is before him for determination of a
motion, decision on this newly discovered mat-
ter "may be Incorporated in the decision on the
motion, but the parties shall be entitled to
reconsideration or rehearing if they have not
been heard on the matter" (Rule 25.7). This
amme practice obtaina when the Primary Examiner
discovers n new reason for holding counts pro-
posed under Rules 25.3 or 25 .4 unpatentable
Under this practice, the Primary Examiner
should set a time within which the parties mny
request reconsideration or rehearing and file
new briefs on such new ground .

Third, if the Primary Examiner finds n
reference or other renaon for terminating the
Interference in whole or in part after the pre-
liminary statements have been approved but not
while the interference is before him for deter-
mination of a motion, he should call the ntten-
tion of the Examiner of Interferences to the
matter. The Primary Examiner should include in
his letter to the Interference Examiner n state-
ment applying the reference or reason to ench
of the counts of the interference which he deems
unpatentable and should forward with the orig.
Innl signed letter a copy thereof for each of
the parties of the Interference Form at 13-9-8 1.

The Interference Examiner mny suspend the
Interference and refer the char to the Primary
Kanminer for his determination of the question
of potentebility, which is inter partes as 1h
the case of n motion to dissolve under Hule 25.2.
Briefs any be filed ma In the cnae of n motion
under kule 25.2 and a hearing may be held if
requested by one or more parties. Decision 1a
prepared and mailed by the Primary manminer na
In the case of a motion to dissolve

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1., in an interference involving two or more app 11 -
cations, a reference is brought to the attention of the
Examiner by one of the parties to the interference, that
fact should be mnde of record by the Examiner in his letter
to the Examiner of interferonces under kule #5 7

if, in an Interference involving An appliention and
a patent, the applicant calls attention to a reference which
he states anticipates the issue of the interference, the
Examiner of interferences will forthwith dissolve the inter-
ference, and the Primary Examiner will thereupon reject the
claim or claims to the applicant on his own ndmission of
nonpatentability without commenting on the pertinencey of the
reference. Such applicant Is of course alac estopped from
claiming subject matter not patentable over the issue. A
reference cited by the patenter will be ignored

13-5-7.
Form of Decision Letter

The decision is prepared on Form POL. 78, with carbon
copies for the parties on Form POL-78a. Sufficient carbon
copies are prepared so that ench party or his attorney or
agent as Indicated on the back of the interference file moy
be mailed a copy. At the right of the address box should
be typed the identification consisting of the Interference
number and the Inst anmen of the parties, Juniormost first.
For example:

Interference
No. 68.561

3mlth v
Jones v
Brown

The decision should be divided into three parts, the
heading, the body, and the summary

The bending should commence with a succinct statement
of each motion which has been set for hearing, For example:

The party Brown moves to dissolve of the
#rounds:
(1) that the counta (or counts | nod ;).
are unpatentable to all parties over
the prior art cited,

(2) that the party Jones has no right to
make the counts.

(3) that the party Smith la estopped to
make the counts.

The party Jones moven to add proposed
counts 6. 7. and 8 to the lonue.
The party Smith moves to stift the birden
· of proof

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Next should appear a brief description of the general
invention at lasue in general terms, followed by copies of a
representative count or counts and proposed counts. The ref-
erences cited in the motions mny then be listed, particular-
ly those relied upon by the Examiner in his decision

In the body of the decision each motion which has
been transmitted for decision should be discussed In detail .
Decisions on such matters as right to make, operativeness,
estoppel, and burden of proof should be particularly com-
plete, since they are often reviewed by the Board of Inter-
ference Examiners at final hearings and by the Court of Cus-
toma and Patent Appeals on appel, whereas decisions on mat-
ters of patentability over prior urt are not subject to inter
partes review.

The arrangement of the body of the decision must be
determined by the good judgment of the Examiner. In general,
the arguments pro and con should be referred to briefly and
disposed of succinctly. The grounds for the decision should
be stated clearly. It is usually advisable to reserve do-
cision on e motion to shift the burden of proof until after
motions under Rules 25.2. 25.3, and 25.4 have been disposed
of, since it is easiest to determine burden of proof after
the counts finally admitted to the interference have been de-
cided upon.

The summary should state the action taken un every
motion set for hearing, being sure that every count put in
question and every proposed count is mentioned, and should
offer, under penalty, the allowed proposed counts to such of
the parties as have not asserted them in their applications.
and set the time for filing preliminary statements as to any
nilowed proposed counts. For example:

Brown's motions to dissolve as to counta
1 and 8 Is granted on grounds 1 and 2 and 18
denied on ground 3.

Jones motion under Rule 29 3 13 granted
os to proposed counts 6 nad 7 and la denied ns
to proposed count 8

Smith's motion to shift the burden of
proof is granted and the order of the partiou
is changed to: - Jones v. Brown v Smith

Should the parties Smith and Brown desire
to contest priority na to proposed counts 6
and 7, they should naaert them by omendment to
their respective applications on or before

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, and failure to so nasert them
within the time allowed will be taken ns
a disclaimer of the subject matter thereof

On or before
, the state
ments demanded by Rule 24.I with respect
to proposed counts 6 and 7 must be sonled
up and filed with the name of the party
filing it, and the number and title of the
Interference, endorsed on the envelope ..

The time periods fixed in the decision for copying
allowed proposed counts and for filing preliminary state-
ments should ordinarily be the same and a period of thirty
days should suffice in most cases. However, where mailing
time lo materially longer, ns to the West Coast, or foreign
countries, or when an attorney and inventor are widely sep-
arated, this time may be Increased to as much as sixty days.

Decisions under Rules 25.2 through 25.5 and 25.7
are signed, dated, and mailed by the Primary Examiner in
the same way ns ex porte cases.

The Clerk of the division makes the entry of the
decision in the Interference file on the next vacant line
of the index sheet (Form 210). The entry should be, first,
the date, followed by "Dec. of Pr. Exr " and "Granted" if
all the motions have been granted, "Denied" if all the mo-
tions have been donied, or "Granted and Denied" if some
motions have been granted and others denied. If a date for
copying allowed proposed counts and for filing preliminary
statements has been set, this should also be indicated at
the end of the line by "Amdt. and Statement due
Appropirate entries should be made on the interference brief
In the section entitled "Decisions of Motion" (Form 079) in
ench caste Involved in the interference. In making this
entry the line "Ex'r, of Interferences" on the old forms
should be corrected to read Primary Ex'r. Examples of
entries are :

Dissolved
Dissolved as to counts 2 and 3
Dissolved as to Smith
Counts 4 and 5 admitted.

These entries should be verified by the Primary Examiner

Immediately upon mailing a decision under Rules 25.2
through 25.5 and 25.7, the Examiner should forward the com-
plete Interference file to the Docket Branch, where the date
of the duefalon de recorded on the interfering register.

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Special f cilities are also maintained to insure that the
interference is promptly called up for the next step, which
may be n redeclaration or the taking of testimony The
complete interference file will be returned to the Examiner
for redeclaration at the proper time if such action is neces-
sary.

##### 13-5-8. Petition for Reconsideration of Decision

Any petition for reconsideration , rehearing, or modi-
fication must be filed within twenty days from the date of
the decision (Rules 2º 6 and 26.3) and, unless this time has
been extended (see kule 26 4), any such petition filed more
than twenty days after the date of the decision should be
dismissed .

Action on a petition for reconsideration, rehearing.
or modification la similar to the original decision und 18
likewise signed, dated, and mailed by the Primary Examiner.
Appropriate entry should be made on the index sheet (Form
210) of the interference file and the complete interference
file should be forwarded Immediately to the Docket Branch.

### 13-6 Redeclaration of interferences and Additional Interferences

Redeclaration of Interferencen after decision on
motions involves such a variety of thetaal situations that it
is impossible to reproduce a single letter form which will
cover all cases

13-6-1
After Decision on Motion

Various procedures are necessary after decision on a
motion
The following general rules may be stated :

(1) If the total result of the motion decision con-
sists solely in the elimination of counts, the
elimination of parties or a shifting of the bur-
den of proof, no redeclaration is necessary
The motion decision itself constitutes the paper
deleting counts or parties and is likewise nde-
qunte notice of the shifting of the burden of
proof Where there is no motion decision of
other record in the interference, as when juris-
diction of the interference had been requested
In order to declare an interference between a
new party and the interferents as to some but
not all of the counts. it will be necessary to
redeclare the interference Soo 13-6-2

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(2) If the motion decision regulta in any nddi .
tion or substitution of parties or applica-
tions or the addition or substitution of
counts , then redeclaration is Here:38ry
redeclaration is necessary. the information
falling within category (1) should nino be
Included in the redeclaration jagera The
old counts should retain their uld members
for ease of Identification

(3) In redeclaring an interfereher the latter to
the Examiner of Interferencen should be writ-
ten on a long (8"x12}") platu sheet of paper
and should include in detail all pertinent
Information and date relating to the redeclara-
tion. Added or substituted counta should be
copied For form see 13 9.9

(4)
4) It redeclaring nn interference the letters to
the parties should give all propor information
relating to the redeclaration, omitting, how-
ever. nll serial numbers of opposing applica-
tiona. Parties should be arranged in alphabet-
ichl order. Although this precaution moy np-
pear to be unnecessary because the partico
nirendy have complete Inforantion concerning
the opposing chien, yet it la panential that
It be observed Decor a third party may prop
erly have access to one of the application
files and must not be civon any information
relative to the other application involved in
the Interference New consta need not be
copied in the letters to the parties except
under auch circumstances sa would necessitate
copying the counts in origlaul declaration
lettera to the parties The Letters to the
parties should be prepared on Form FOL-90 with
the same number of carbon coples as the original
declaration papera. Propre adresse enve-
Ipex must be provided For 4 1:9/1 119-9.2.

(5) Redeclaration popera munt never be malted by
the examining division but must always lo for-
warded, alone with the complete interference
file to the Docket Branch

When the time arrives for redeclaring an Interference
or declaring a new interference as the result of a motion
decision, the Interference szaminer will forward to the art-
mary Examiner, through the Docket Branch, the complete file
of the Interferes If the allowed proposed counts five

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been copied by the parties to whom they have been suggested
in the motion decision, the Examiner proceeds to prepare
the redeclaration papers. If one party fails to make the
claims, within the time set, which are to be added to the
Interference issue, the Examiner puts a statement to that
effect in a letter to the Examiner of interferences

In some instances it may be necessary to declare a
new interference as the result of a decision on motions
In such cases a statement should be added to the letter to
the Examiner of Interferences (Form 251) in the new inter-
ference to the following effect :

"This interference is declared as. the
result of a decision on motions in interfer-
enco No.
\#
13-6-2.
By Addition of New Party by Examiner

Rule 25.8 states the procedure to be followed when
the Examiner finds, or there is filed, other or new applica-
tions interfering as to some or as to all of the counts. The
procedure when any testimony has been taken differs consider-
ably from the procedure when no testimony has been taken, and
this distinction must be observed. Forms at 13-9-10 to 13-9-11.2.

If no testimony has been taken and the additional ap-
plication interferes as to all counts, the Examiner requests
jurisdiction of the interference and if granted, adds the new
party. if the additional application interferes as to some
of the counts only, the Examiner requests jurisdiction of the
Interference and, on the granting thereof, reforms the inter-
ference omitting the counts made by the proposed new party
and forms another interference including the new party, with
said omitted counts as the issue. In the latter instance the
fact that the issue was in a former interference should be
noted in all letters in the new interference Such action
should not be taken, however, if the new application is owned
by the assignee of one of the parties already in the interfer-
ence ..

#### 13-7. Examiner's Action Subsequent to Interference

An interference is terminated either by dissolution or
by an award of priority to one of the parties. In either ense
the Interference Is returned with the entire record to the
examiner as soon as the decision or judgment has become final.
After the files have been returned to the examining division.
the Primary Examiner is required to make an entry on the index
sheet (Form 210) in the interference file on the next vacant.
line that the decision has been noted, such as by the words

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"Decision Noted" and Initiated by him The Ducket Branch
will see that such note her bich way out initialen k
for !!!!; quy the !!!! !!*** ( A)
13-7-1.
Entry of Abenddes Plie In
contactton with Motions

This action . Helt .. ......
monta filed ! concertino !!! ! motivation
Involved in interfagene, after the Stuff ther mas top. -
nated.
.

The matter of treating amendment: which are filed in
an application during the course of the interference, 13
discussed in a separate section (13-8-)

The last paragraph of duty 25.2 romut no follows.

Motions to dissolve ou ths „. round t.t.t.
the counts are unpatenteble, or are umpatent-
able to the party bringing the button, mat
be accompanied by a proposed amendment to bi
application of the moving party cancelling
the claims forming the counts of the interter-
ence (which amendment shall be entered by the
Primary Examiner to the extent the motion is
not denied, after the interfer ne is bern +
nated ) .

An amendment accompanying o moti . under Rule 29 2
is placed in the appliention flie Lut 1 not enteres #1114
the interference continues. After the Estoyhe has been
terminated, this amendment is entered "to the catont the
motion 13 not denied " Any portion of the amendment porre
spending to a denied portion of the Rule 25 2 action is that
entered and it to do Indiested by striata want the partion
in pencii.

Under Rule 15.3 mm qppllent 1 0 0 1 .
with his button * * * pente wet metody
the proposed cintre ir the ch ts are not already it bi
application. This amendment is placed In the application
file whether the motion is granted or not

If the motion under Rule 25.3 is printed the mendment
10 of course entored. If the motion la not printed, the
amendment, though left in the file, is not entered and 10 so
marked.

If the motion under Rule 25.3 la granted in port and
denied in other part, only so much of the amendment as

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covered in the grant of the motion is entered, the remaining
part being marked in pencil as in the treatment of an amend-
ment under Rule 25.2 that is only party acceptable.

In euch Instance the applicant is informed of the
disposition of the amendment in the first action In the enan
following the termination of the interference. If the case
is otherwise ready for Issue the notice of allowance la sent
out concurrently with the letter informing applicant na to
the disposition of the amendment.

As u corollary to this practice, it follows that where
prosecution of the winning application had been closed prior
Lo the declaration of the interference, na by being in con-
dition for lasue, that application may not be reopened to
further prosecution following the interference, even though
said additional claima, presented under Rule 25.3, had boon
ndmitted and entored in the application The Interference
proceeding was not such an Office action as relieved the
case from its condition os subject to the doctrine of Ex
parte Quayle, 1935 C.D. 11; 453 0.0. 213.

It should be noted at this point that, under the pro-
visions of the last paragraph of Rule 28.2, the termination
of an interference on the basis of a disclaimer, concession
of priority, abandonment of the invention, or abandonment of
the contest filed by an applicant operates without further
action as a direction to cancel the cinims involved from the
application of the party making the same.

1)-7-2.
Action after Award of Priority

Under R.3. 4904 the Commissioner mey nt onco lasue A
patent to the applicant who to adjudged by the Board of Inter-
ference Examiners to be the prior inventor, without waiting
for appeal by any loser. However, in ordinary cases it la the
policy of the Office not to Issue a patent to the winning,
perty during the period within which appeal may be taken to
the Court of Customs and Patent Appena, or during the pond-
ency of such apponl. Therefore, the files are not returned
to the examining division until after the termination of the
appeal period, or the termination of the appeal, as the case
may be. Jurisdiction of the Examiner is automatically re-
stored with the return of the files, and the cases of nil
parties are subject to such ex parte action as their respective
conditions may require, even though, where ho appenl was filed.
the losing party to the Interference may at a Inter date within
the six months" period file a suit under R $. 4915 In this
event, the Examiner, if the patent to the winning party has
mit Issued, should take steps to withhold his application

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In the case of the winning party, if his application
was not in allowable condition when the interference was
formed and has since been amended, or if it contains an
unanswered mmendacht, or if the rejection atunding against
the claims at the time the interference was formed was over-
come by reason of the award of priority, an un interference
involving the application and a patent which formed the basis
of the rejection, the Examiner forthwith takes the applica-
tion up for action.

If. however, the application of the winning party
contains an unanswered Office action, the Examiner at once
notifies the applicant of this fact and requires response to
the Office action within a shortened statutory period (40
days) running from the date of such notice. Soe Ex parte
Peterson, 1941 C.D. 8, 525 O.G. 3. This procedure is not
to be construed as requiring the reopening of the case ir
the Office netion hed closed the prosecution before the
Examiner.

The winning party if the prosecution of the enao had
not been closed, may be allowed additional and broader claims
to the common potenteble subject matter. Having won the
interference, he is not denied anything he was In possession
of prior to the interference, nor has he nequired nny addi-
tional rights as a result of the Interference. His conc
thus stands as it was prior to the interference. If the
application was under final rejection us to some of its .
claims at the time the Interference wan formed, the Institu-
tion of the interference netod to suspend, but not to viente,
the final rejection

After termination of the interference n letter ia
written the applicant, as in the case of any other action
unanswered at the time the interference was instituted,
setting a shortened period (with the approval of the Super-
visory Examiner) within which to file an appeal or cancel
Cher finally rejected elaina

The application of each of the lesite: partles follow-
Ing nu interference terminated by a judgment of priority 18
acted on at once. The judgment is examined to determine the
basis therefor and action Is taken accordingly

If the judgment is based on a disclaimer, concession
of priority, or abandement of the Invention filed by the
wasthe applicant, such disclaimer, concenation of priority.
or abandonment of the Invention operates "without further
action as n direction to cancel the claims Involved from
the application of the porty making the ande" (kule 28 2).
The Interference counts thus disclaimed, conceded, or abon-

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doned are accordingly cancelled from the application of
the party filing the document which resulted in the adverse
Judgment.

If the judgment is based on grounds other than those
referred to in the preceding paragraph, the losing appli-
cant is notified that, in accordance with the provisions
of Rule 28.5 the claims (designated by numerals) "which
constituted the issue atand finally rejected and are not
open to further ex parte prosecution." The expression,
"stand finally rejected" as used in Rule 28.5 is not to
be confused with the more usual final rejection. It is
not such a final rejection as to cut the applicant off
from his right to amend the claims in question with a
view to patentably differentiating from the winning party's
disclosure.

With the exception of the situation referred to in
the next paragraph (when the judgment of priority is based
solely upon ancillary matters), the remaining claims, if
any, in the case of each defented party should be reviewed
In connection with the disclosure of the winning party
which disclosure, as a result of the interference, has the
status of prior art. Any claim in a losing party's caso
not patentable over the disclosure of the winning party.
taken either by itself or in conjunction with other refer-
ences, should be rejected.

When the award of priority is based solely upon
ancillary matters, as right to make, and is in favor of the
Junior party, the claims of the senior party, ovon though
the award of priority was to the junior party, are not sub-
Ject to rejection on the ground of estoppel (Rule 27.7) .

If the losing party's case was under final rejection
or rendy for issue when the interference was formed, his
right to reopen the prosecution is restricted to subject
matter related to the issue of the Interference

Where the losing party failed to get a copy of his
opponent's drawing during the interference, he may order a
print thereof to enable him to respond to a rejection based
on the successful party's disclosure. Such order is rofor-
red to the Chief of the Docket Branch who has nuthority to
approve orders of this noturo.

Where the rejection is based on the Issue of the
interference, there is no need for the applicant to have a
copy of the winning party's drawing, for the issue con be
Interpreted in the light of the applicant's own drawing as
well as that of the successful party.

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It may be added that rejection on estoppel through
failure to move under Rules 25.3 and 25.4 may apply where
the interference terminates in a judgment of priority as
well as where it la ended by dissolution.

In the rare instance where the winning party abandons
his application and a losing party learning of this fact
seeks to overcome the interference Judgment, see Joliffe v.
Waldo, 1917 C.D. 15; 235 O.C. 671; Fanslow v. Whitney, 1919
C.D. 93, 266 O.G. 742; and Nash v. Reeder v. Rymn, 1920 C.D.
72. 280 0.0. 589 for statement of the procedure to be taken.
13-7-3.
Action after Dissolution

The Inat paragraph of Rule 25.2 rendas os follows :

Motions to dissolve on the ground that
the counta ero unpatenteble, or are unpatent-
Able to the party bringing the motion, must
be accompanied by a proposed amendment to the
application of the moving party cancelling the
cinims forming the counts of the interference
(which amendment shall be entered by the Fri-
mary Examiner to the extent the motion is not
dented, after the Interference is terminated ) .

Accordingly, after dissolution of un interference nny
mmendmenta which nocompanied motions to dissolve are outered
to the extent that the motions were not denled. if the grounds
for dissolution are also applienbio to the non-moving purtics,
e ... . unpatentability of the subject matter of the interference,
the Exsaluer should, on the return of the files to his divi-
slon, reject in each of the applications of the non-moving
porties the cinims corresponding to the counts of the inter-
ference on the grounds stated in the decision.

"Under former mulo 122 it was not necessary for the
moving porty to file a proposed amendment cancelling, the
cinims of his application corresponding to the Interference
counts of the grounds for dissolution applied to his own
cinims Accordingly, If an interference is dissolved os
the result of a motion under former Hule 122, it is necessary
for the manminer, after dissolution, to miso reject the
claims in the moving party's application corresponding to
the Interference counts on the grounds stated in the decision.
Admit cally the claims of the moving party corresponding.
to Um interference counts are further rejected on an estoppel
beenuse of his own concession of non-patentability embodied
it hi> -Ljom. !

\* few the dissolution of the interference, any
Jums: > five com that might have been included in

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the issue of the interfer noe such claims should be rejected
on the ground of estoppel. The senior of the parties, in ac-
cordance with Hule 27.7, is exempted from auch rejection.
Where it is only the junior parties to the interference that
have common subject matter additional to the subject matter
of the interference, the senior one of this sub-group is free
to claim this common subject matter.

While the Court of Appeals of the District of Columbia
does not recognize the doctrine of estoppel resulting from
interference proceedings except as it applies to the issues
Involved in the interference counts ( International Cellucotton
Products Co. v. Coe, 1936 C.D. 40; 471 0.0. 243), the Patent
Office follows the ruling of the Court of Customs and Patent
Appeals as its appellate court (Ex parte Graham, 49 U.S.P. Q.
34; Ex parte Peterson and Daley, 60 U.S.P.Q. 500) to the effect
that failure to move under Rules 25.3 and 25.4 work estoppal
as to all issues that could have been made the basis of inter-
ference between two or more of the parties of interest involved,
except as relieved by the second paragraph of Rule 27.7.

13-8.

# Miscellaneous

13-8-1.
Interviews

Where an interference is declared all questions invol-
Wed therein are to be determined inter partes. This includes
not only the question of priority of Invention but all ques-
tions relative to the right of ench of the parties to make the
claims in issue or any claim suggested to be added to the
Issue and the question of the patentability of the claims.

The Examiners are admonishod that inter partes questions
should not be discussed ex parte with any of the Interested
parties and that they should so inform applicants or their
attorneys if any attempt is made to discuss ex parte these
Inter partes questions. See also 10-15.

13-8-2.
.Records in Each Interference Complete

When there are two or more interferencea pending in
this Office relating to the amme subject matter, or in which
substantially the same applicants or patentees are parties
thereto, In order thet the record of the proceedings in onch
particular interference may be kept separate and distinct, all
motions and papers sought to be filed thefin must be titled
In and relate only to the particular interference to which they
belong, and no motion or paper can be filed in any Interfer-
ence which relates to or in which is joined another interfer-
ence or matter affecting nhother interference.

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The Examiners are also directed to file in each
interference a distinct and separate copy of their netions,
so that it will not be necessary to examine the records of
several interfereters to ascertain the status of a parti-
cular case

This will not , however, apply to the testimony
All papera filed in violation of this practice will be
returned to the parties filing them. (Order 453)
13-8.3
Overlapping Applications

Where one of several applications of the same in-
Ventor or nasignee which contain overlapping claims gets
into an interference, the prosecution of all the cases not
in the Interference should be carried as far as possible,
by trenting as prior art not only the counts of tho inter-
ference, but also the disclosures of all the adverse parties
and by forcing the drawing of proper lines of division.
In some Instances suspension of action by the Office can
not be avoided ..

Where an application involved in interference includes,
in addition to the subject matter of the interference, a
separate and divisible invention, prosecution of the second
invention may be had during the pendency of the interference
by filing a divisional application for the second invention
or by filing a divisionel application for the subject matter
of the interference and moving to substitute the latter
divisional application for the application originally invol-
ved in the interference. However, the application for the
second invention may not be passed to issue if it contains
claims broad enough to dominate matter claimed in the applica-
tion involved in the interference.

13-8-4
Secret Cases

Applications having a secrecy order therein are treated
In the same manner as the other applications up to and includ-
ing the declaration of the Interference (see 2). However,
after the time for filing, preliminary statements has passed
the Examiner of Interferences suspends proceedings until
modification or roscission of the secrecy order permits
access by the parties to the respective applications.

After the declaration of the Interference the applica-
tions involved uro returned to the examining division for
safekeeping Since modification of rescission of the secrecy
orders may not come to the attention of the Examiner of
Interferences, it is vitally important that he be Immediately
notified of any auch modification or recission so that the
interference proceedings may be promptly resumed, if proper.

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## 13-8-5. Amendments 'iled during Interference

The disposition of amendments filed in connection
with motions in applications involved in an interference,
after the interference has been terminated, is treated in
a separate section (13-7-1).

The manner of treating other amendments which are
filed in an application during the course of the inter-
ference, is discussed in this section.

When an amendment to an application involved in an
interference is received, the Examiner inspects the amend-
ment and, if necessary, the application to determine whether
or not the amendment affects the pending or any prospective
Interference. If the amendment is an ordinary one which
does not affect the pending or any prospective interference
the amendment is marked in pencil "not entered" and placed
in the file, e corresponding entry being endorsed in ink in
the contents column of the wrapper and in the division
register. After the termination of the interference, these
temporary notations should be erased and the amendments
permanently entered and considered as in the case of ordin-
ary amendments filed during the ex parte prosecution of
the case. (Order 1759)

When an amendment filed during interference purports
to put the application in condition for another interference
either with a pending application or with a patent, the
Primary Examiner must personally consider the amendment
sufficiently to determine whether, in fact, it does do so.
If it does, he obtains from the Commissioner Jurisdiction
of the application for the purpose of setting up the new
Interference, unless such course will unduly disturb the
condition of the application with respect to the pending
Interference. To make certain on this point the Examiner
first submits his request for Jurisdiction to the Interfer-
ence Examiner for recommendation, assuming of course that
the existing interference is still pending before the Board
of Interference Examiners.

If the amendment presents allowable claims directed
to an invention claimed in a petent or in a pending opplions
tion in issue or ready for issue, the Examiner requenta
Jurtadiction of the file, na above, setting forth in his
request the reason why immediate jurisdiction of the file
la required by him, and, when the file is received, chters
the amendment and takes the proper steps to initiate the
second Interference.

Where in the opinion of the Examiner, the proposed
amendment does not put the application in condition for

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interference with other application at involved in the
interference the amendment is place in the file and anın ...
"not entered" and the applicant is informed why it will not
be now entered and acted upon. See form at 13-9-13 Where
the amendment copies claims of a patent not Involved in the
Interference and which the sanminer believes are not pat-
entable to str applicant and where the application is open
to further -a parte prosecution, Juri atletion of the file
should be ortainet the amendment . : tired and the claims
rejected sitime a time limit for responte if reconsider-
tion is requested and rejection made final i time limit for
appeal should or set where the application at the time of
formin' the interference was closed to further ex parte
prosecution and the disclosure of the application will.
prima facie not support the copied patent claims or where
copied patent cintura are drawn to a non-elmeted invention
the amendment will not be entered and the applicant will be
no Informed asylum very briefly the remon for the non-
entry of the mendment See Letter For 1-9-13.

## 13-8-6 Notice of kule 25.4 Motion Relating t. Application Not Involved In Interference

Whenever a porty in Interference brings a motion
under Hure 2' 4 affecting an application not nlrondy Included
in the interference, the canminer of Interferences should
at the tima ar transmitting the motim. for determination
send the Fiery &water a written tofler of auch mellom
and the Primary dinther should place this matter in mald
Application Tale "Order 3244)

The grasse is sont to the primary Examiner at the time
the part:wwwLifted that the Hole 25 4 motion will be
sent to the Seventon which declared the Interference winge
the wayterre referred to in the notion is generally examined
** ** * ***** then the correct division should be
**** INFO police forwarded to that division

Thisfree aretes several useful and essential pur-
**** * ** ** we must be given to 11 when 11 10 re-
selfet Pres the examiner la cantloned by the noblee hot
***** ** que questions which are youdie before the
Offre Q pe. pedine in the gap-
*** ** *** E PERFa Second If the application which
F: Mit and the Jest date
** ****** *** FI A port determination of the

***** *** ** applicato explains at affidavit under
We 18: EMAIL le sole because the aprostor perten

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## 13-8-7. Conversion of oint Application to Sole

Although, for simplicity, the subject of this sec-
tion is titled "Conversion of Joint Application to Sole."
it also includes cases where an application filed by three
or more co-applicants is converted to an application with
a lesser number of co-applicants.

If the conversion papers are filed before the pre-
liminary statements are approved and conversion is sought
at that time, the Primary Examiner may request jurisdiction
of the interference for purpose of effecting the desired
conversion or jurisdiction of the interference may be con-
ferred on the Primary Examiner on the Interference Exam-
iner's own initiative. In either event, the matter of
affecting the conversion is treated as an ex parte matter
at this stage and no papers are prepared for the Interfer-
ence file until the conversion is completed and the inter-
ference ta in condition for redecleration. If necessary
at this time, an ex parte letter may be written to the
party seeking conversion pointing out any curable defects
in the conversion papers and interviews, limited to this
matter alone, may also be held. After conversion has been
completed, the proper redeclaration papers are prepared and
forwarded to the Dooket Branch.

If conversion is attempted during the motion period.
the matter is treated as an inter partes matter, subject
to opposition, and the Interference Examiner muy transmit
it to the Primary Examiner for determination, inter partes.
If conversion is permitted at this stage, redeclaration of
the interference is necessary and the proper papers for this
purpose are forwarded to the Docket Branch.

If conversion is attempted after the close of the
motion period but prior to the taking of any testimony, the
Interference Examiner may, at his discretion, either trans-
mit the matter to the Primary Examiner for determination
or defer consideration thereof to final hearing for determin-
ation by the Board of interference Examiners. If transmitted
to the Primary Examiner, the matter is treated as outlined
In the preceding paragraph. For forms see 13-9-12 to 13-9-12.2.

If conversion la attempted after the taking of testi -
mony has commenced, the Interference Examiner will generally
defer consideration of the matter to final hearing for de-
termination by the Board of Interference Examiners.

In any case where the Examiner must decide the ques-
tion of converting a joint application to a sole application
he must, of course, determine whether the legal requirements
for such conversion have been satisfied, just as In the

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ordinary ex parte treatment of the matter

A joint party may occasionally seek to substitute
" sole application of a joint application with a lesser
number of co-applicants for the Joint application originally
involved in the Interference. if this ia attempted before
the preliminary statements are approved. then the butter
many be treated is the game moi.ber ha in attempted conversion
at this stage II substitution is attwanted during the
motion period, then it should be treated as a motion under
mule 25.4.

## 1-8.8. Reissue Application Filed while Patent Is In Interference

Care should be taken that a retenue of a patent should
not be granted wille the patent is involved in an Interfer-
enco.

if an application for reissue of a patent is filed
while the patent is involved In Interference, that applicu-
tion must be called to the attention of the commissioner
before any action by the Examiner la token thereon.
(Order 3193)

A letter with titling relative to the interference

copies thereof are placed in the reissue application and
mailed to the parties to the Interference. This letter
givos notice of the filing of the rolaque application and
generally includes a paragraph of the following nature:

"The reissue application will be open
to Inspecttom by the opposing party during
the Interference and may be separately prose-
cuted during the interference, but will not
be passed se lamme natil the final determin-
***** ** *** Interference, except upon the
Approval of the Commissioner "

114.0.
Just weder Section 4915 R.a. by
Losing Party

*** * *** party to ow Interference plyes hoLler
ms apptesty that he ben Filed a bill in equity adler
\* provalo are 495 8 relative to the interfer>
me that a>> > called for the attention of the
pocket Branch in order that a notation thereof can be made
on the Index of the interference.

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13-8-10.

<!-- PageHeader="Public Law 690" -->

If a request under Section 1 of rublic Law 690 1s
filed while an application is involved in interference,
the papers are to be placed in the application file in the
same manner as amendments received during interference, and
appropriate action taken after the termination of the inter-
ference.

A party is not given the benefit of a foreign filing
date in the original declaration of an interference, even
though a request under Section 1 of Public Law 690 has been
granted. The party having a foreign filing date may there-
fore find it desirable or necessary to file n motion under
Nulo 25.5 and the matter is then considered on an inter
partes basis.

13-8-11.
Dual Prosecution

The question of dual prosecution rarely arises in
Interference proceedings but the proper occasion therefor
may occur in deciding motions. If appropriate, dual prose-
cution practice may be utilized in deciding motions and the
procedure to be followed in the preparation and mailing of
the decisions should follow as closely as possible the ex
parte dual prosecution practice.

## 12-8-12. Consultation with Interference Examiner

In doubtful cases, or where the practice appears to
be obscure or confused, the Examiner should consult with the
Interference Examiner, since the latter may be able to sug-
gest a course of action which will avoid considerable diffi-
culty in the future treatment of the case.

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## 13-9. Letter Forms Used in Interferences

it is obviously impossible to include forms illustra-
tive of every situation which may orise in connection with
nn interference and this section is necessarily limited to
those forms which are used most frequently In Interference
practice.

For convenience in the preparation and forwarding of
the letter forma, under each title the following informa-
tion lø given:

Form No. or type of paper for preparation er form.
Number or copies to be prepared .
Person to whom ppers are to be forwarded .

13-9-1.
Letter to Lar Examiner Submitting Proposed Inter-
ference For Correspondance Under Rule 23.2

Form bus or short (0"x10}") pln in paper.
original and carbon copy, both signed .
Forward both to Lar Examiner.

( Date).

Mr. !!. S. Miller,
· Lar Examiner.

Sir:

Conflict Is found to exist between the following ap-
plications and it is proposed to surpent claims as indi-
cated below:

165,202
F. R. Jones
. L. Brown
*07,010, division of 203,504. T. A. Smith
260,554

The application of Jones is ready for allowance.

Respectfully,

Green.
And't Exr.

Examiner

( Cont'd)

<!-- PageBreak -->

Jones

Smith

Brown

10-13-33

Div. of

5-15-32

11-21-32

2-12-33

5 yes yon

55

no

yes

yes

1

no

yon -------------

2

yoo

no yes 3

*In using the above form, type the word "yes" oppo-
site each claim under the name of each applicant who can
make the claim and "no" under each who cannot.

13-9-2.
Letter Suggesting Claims for Interference
( Form POL 90)

( Original for application file, carbon copies
for attorney or agent of record, applicant,
and assignee)

(To be malled by examining division)

The following claims, found allowable, are suggested
for purpose of interference. Applicant should make same
Dy
(allow 20 days, plus holidays and time
for transit in mail)
under the provisions
of Rule 23.1; failure to do so will be considered a dis-
claimer of the subject matter Involved:

(Copy claims, without numerals.)

<!-- PageFooter="Examiner" -->

Copion to:

Applicant

Assignee

<!-- PageBreak -->

### 13-9-3. Same Attorney or Agent in Applications of Conflicting interests

( Form PCL 90)

(original for and application file, carbon
copios for attorney or agent of record,
each applicant, and each assignee. )

(To be malled by examining division. )

Under the provisions of Rule 27.0 attention in
called to the fact that the attorney (or agent) in this
case la also the attorney (or agent) in an application
of another party and of different ownership claiming
substantially the same patentable invention as claimed
in the above identified application. In further accord-
ance with Rule 23.0, this matter is being called to the
attention of the Commissicher.

Examiner.

Copies to:
Applicant
Assignee

13-0-4. Letter Requesting Witharaval from lague

Form 603 or short (8"×10}") plain paper
Original for application file.
Forward to Commissioner.

(Date)

Application of
:
John Doe
:
Ser. No. 65,96%
:
Washing Machine
:
Withdrawal from Issue

Filed Feb. 14, 1933
:
Allowed Mar. 6, 1935
:

Hon. Commissioner of Patents,

Sir:

It is requested that the atove entitled application
be withdrawn from issue for the purpose of (a), (b), (c),
(d), (o), (See below) , or ( other stated reason) .

The final fee has not (or has) boon paid.

Respectfully,

<!-- PageFooter="Examinor" -->
<!-- PageBreak -->

(a)
Interference, another party having made
claims suggested to him from this application.

( b)
interference, applicant having made the
claims suggested to him.

(c)
rejecting claims ..... (specify claims)
...... on the implied disclaimer resulting from
failure to make the claims suggested to him,
under Rule 23.3.

(d)
informing applicant that the claims can-
not be allowed nim because correspondence under
Rule 23.2 has developed the fact that applicant
is not the First inventor of their subject matter.

(0)
deciding a motion under Rule 25.4 involv-
ing this application, the date set for transmit-
ting the motion being subsequent to the ultimate
date for paying the final fee.

13-9-5.
Declaration Eopera

## Letter to Examiner of Interference

### ( Form 251)

(original for interference file, carbon
copy may be prepared for retention in
examining division. )

( Forvard to Docket Branch )

Preparei by properly fillin: in the blanks on this
form, settin; forth all of the counts and adding o tablo
showing the relationship of the counts to the various
parties. The counts should be checked againat the origi-
nal claims and the words "Counts compared" placed at the
end of the letter at the lower left hand corner of the
table to show that the counts had been compared with the
claims,

13-9-5.1. Declaration Papers Where One of the Parties Has
Two Applications, Both Junior or Both Senior
(In Effective Filing Dates) to the Other Party

In the letter to the Examiner of Interference (Form
251) the complete information of all applications should
be given, designating the tvo applications of the common
Inventor by letter. The tabulation of the counts should
he in the following form:

<!-- PageBreak -->

Count =

Jones

Smith . A

Smithis)

* .

₡

₡

*

?

6

3

*

:

..

****************** that of Smith

The identifient ::: Cum .. o" 1. .. 14:4 to the right of the
ndirena box In får irtter (Form 213 or POL-76; for Smith's
,ther .p. Helfen ws letter, after the printed por-
tion, tenda es folia;

..... presented in claims 3 and 7 of this application.

*******.... often should be

1-9-6 Letter to wash party (Interference Notice)
For 2:3 or POL-76)
(Or: :: : the application of patent file,

IDO NOT GIVE SERIAL NUMBER OR FILING DATE
OF ANY OTHER PARTY 1

(Forword to Docket Branch )

The interference tomber and date for filing the pre-
liminery statement will be filled in by the kaminer of
Interference:

After printed mutter rules "The subject matter in-
volved in the interference to" continue as follows;
presented in cial:> > an1 24 of the application for patent).

<!-- PageBreak -->

The interference Involves your application (or patent)
above identified end applications for:

( ( Typist: the first alphabetical name) )

A Hand Plov, filed by/John Brown, of Akron, Chio, whose
post office address Is Municipal Building, Akron, chio,
whose attorney Is Jas. hobb, o Euclid Avenue, Cleveland,
Chio, whose associate attorney is Robert Horn, Press Build-
ing, Wmanington, D. C., and "hose assignee In the Garden
Implement Company, of Cleveland, Ohio.

( (Typist: the second alphabetical name) )
Agricultural Implement, filed by/Thomas .imith, . .. etc ...

The relation of the counts of the interference to the
claims of the respective purties is as follows:

Counts

Brown.

Smith

Taylor

( (Typist:

1

3

23

8

note al- phabeti- cal ar-

2

4

24

10

rangement or par- ties) )

Counts compared ..

( Insert appropriate paragraph or paragraphs, hereinafter. )

Copies to:

Assignee

latentee

Examiner

(A) To party or parties not otherwise ready for allow-
ance add:

(1) "after termination of the interference
this application vill be held subject to
further examination under Rule 28.6."

(2) "Claims
will be held subject to
rejection as unptentable over the is-
sue in the event or an award of priority
adverse to applicant."

(B) To party rondy ror allowance, and ir applicable,
add :

Paragraph (A) (2) , nbovo.

<!-- PageBreak -->

# 13-9-7. Request for Jurisdiction of Application Involved In Interference

( Form 00; or sport (0"x10=") plain paper)
(original for application : 11 .)
( Forward to Bucket Breach for interference
Examiner's rocommonantion .;

This form is used vian it in ispred to take action
solely on an application Involved In an Interioronce, with-
ont dlaturning the existing interfarence.

( Date)

Application of
,
Jorn Smith
)
Cor. No. 05,905

)
:oquest for Jurladiction
Spraying Machine
)
Filed Fob. 14, 1955
1

fon. Commissioner of Fatent:,

Str:

Jurisdiction or the above entitled application, now
Involved in Interrerenco No. 44,444. Andreva v. imith, is
requested for the purpose of (o), (b), (r), (d), or (other
renson) .

(State briefly any further necessary information. )

Examiner

(a) ...... mu-costine Inims frereto for interference
wien another perty, and of esterthe men claims
It made, od f dederin quer elloand inter-
lerende.

(b) ...... entering an amendment velet puts the ap-
pileation In competition for anotrer Interference,
and of declaring must affer Interferegen.

(%) ...... declaring mother interferes, another
party paving wede luise sudeste to him from
this appllention.

(d) ...... entering me taking section on claims con-
ing From Patent No. .__ 16 ., with
rijet applicant regnenbe an inte Tar ine

<!-- PageBreak -->

13-9-1. 1.
Request for Jurisdiction of Interference

( Form bos or snort ( 8x10}") plain paper)
(original for interference file )
( Forvard to Docket Branch )

This form Is used when it Is desired to take action in
une interieronce wrich will result In alteration of the
existing interference .

( Date)

Interference No. 19. 78
1
Fenry Brown
V.
)
Jorn Smith and Advera Green)
Examiner of Interferenceos,

)
Request for Jurisdiction

Sir:

Jurisdiction of the above entitlea interference is re-
quested for the purpose of (a), (b), or (c) .

Respectfully,

Examiner

( a)
adding, under the provisions of Rule 25.8,
a nov party who has made the claims which are the
issue of the above interference ..

( May be used only prior to the taking of testi-
mony. If any testimony has been taken, sce Rule
25.8.)

(b) ...... striking out count 2 which will form the
basis of a new interference.

(c)
converting the joint application of Smith
(or mubatituting n sole application of Smith and
Green) .

( May be used only prior to the approval of the
preliminary statements. Thereafter, this matter
must be raised and disposed of as a motion.)

<!-- PageBreak -->

12-0-0. Withdrawal of Interference Under Rule 25.7

(Form 004 or stort (8"lo}") plain paper)
(original for interference file. )
(Forward to Docket Branch. )

This form may be used only prior to the approval of
tno preliminary statements and must not be used there.
after. Thereafter proccetina must be in necordones with
the first para rapp of Rule 25 7. (See "Letter Forms
Used in interferencea." 1"-"-0.)

(Date)

Interference No.
Henry srovn

John Smith

Withdravol

Examiner of Interferences,

Sir:
The above identifica interference, in vnich prolimi-
nary statements rave not been approved, Is hereby with-
drawn in view of a newly discovered reference which anti-
cipaten all the counts in issue.

Respectfully,

Examiner

## 13-9-0.1. Primary Examiner Initiating Dissolution of Interference (Rule 25.7)

( Form box or gfort (8"×10}") plein paper )
(original for interference ille, carbon
copy for enel party. )
( Forward to Docket Branch. )

This form is to be used after the approval of the pro-
liminary statements (if preliminary statements have not.
been approved, interference should be withdrawn -- see noc-
and paragraph of Rule 25.7) and need not be used if the in-
teridrende is before the Primary Kanminer for totermination
of a motion.

<!-- PageBreak -->

( Date)

Examiner of Interferences,

Sir:

Under the provisions of Rule 25.7 your attention is
called to the following patents:

Chambers

109,520

Nov.

2, 1075

01-18

Hoyers

248,704

Jan.

11, 1912

01-24

Counta 1 and 2 of interference No. 45,5/0, Brown v.
Jmith, pro conaldored unpntontable over either of these re-
ferences.

( Apply the references to the affected counts in suf-
ficient dotnil to enable the parties to nrque the
matter properly. )

Respectfully,

Examiner
Imchan.
Nedeclaring an Interference Pursuant to a
Decision on Notlong

A grenter varloty of Letters falls within this onto-
More than any other roup it is impossible to reproduce
letter forms which will cover overy aituntion and It will
therefore frequently be necessary for the gramminer to com-
Jose his own letters. in the following forma n relatively
complex fodeclaration is illustratod, with certain counts
stricken out, other counts added, an application substi-
tuted, and the burden of proof shifted. Simpler redecla-
rations will necessitate deletion of portions of these
forma; more complex redeclaration will require longer let-
ters. The general rule anould be observed of giving the
Exnainer of Interferencen completo Information In doto11
or any change in the interference and giving the parties
the name Information except that all reference to sorin1
numbersor relative filing anton must be omitted.

Letter to Examiner of Interferences

( Long (0":12)") plain sheet )
(criminal for interference file, carbon
may be prepared for rateation in examin-
ing division)
( Forward to Docket Branch )

<!-- PageBreak -->

in re Interference
No.
Jones
V
srovn
V.
mich

Examiner of Interferences,
.: tr.

Pursuant to the motion decision of the Primary Examiner
dated (Date) , the above entitled interference is here-
by redeclared as follows:

Count 2 In atrikon out, counts ; and 4 ore ronumbered
no county 7 and 1, respectively, and the following counts
are added.

Count 4 ( Copy count)
Count 6 (Copy count)

The application of Thomas W. Green for a land Plow,
Jørinl No. 335.113, filed october 19, 190 (division of
Sortel No. 222.222. : 1led June 23. 19'5. patented November
14. 1047, No. 2.1/2.204), "rose Post Office addpenn la
Municipal Building, Akron, Oblo, whose attorney is Jna. Robb,
** quella Avenue. Cleveland, Ohio, whose manciate attorney
is Robert Horn, Press Bullding, Washington, D. C., and whose
essilence is the førden Implement Company, of Cleveland, Ohio,
Im sunstitutod for the application of Brown formerly involved
in the Interference.

In viem of the ranting of the metion t shift the burd-
enef ptwee by the party Jones, the order of the parties in
now

Freen s. Smith v. Jonen

The relation of the counts of the Interfacede to the
elaine of the respective parties in no follows:

Temum&amp;#

*Foon

Wm. ICH:

doften

M

2.

2

11

"

1

15

4

200

"

29

1

AF9

19

4.

27

'U

<!-- PageBreak -->

<!-- PageHeader="Counts compared." -->
<!-- PageHeader="Examiner" -->

17-9-9.1
Letter to Enen Retained Farty
›

(Form POL 90)

(original for application or patent
file, carbon copies for attorney or
agent lapplicant ir there is no at-
torney or agent), assignee, and pat-
entre If party is a patenten . )
( Forward to wocket branch. )

Pursuant to the motion necistos of the Primary Examiner
dated
(Date)
*

Interference No.
is hereby ro-
docinred as follows:

Count 2 is striken out, counts / and 4 ore ronumbered
nø counts 2 and +. respectively, and counts 4 and 5, which
are presented in claims 19 and 20 (or 42 and 43 in the case
or the other retained application) of this application are
added.

The application of Thomas E. Green, for n Hond Plow.
whosn post office address is Municipal Building, Akron.
Chlo, whose attorney is das. Hobb, 16 Euclid Avonue, Cleve-
Land, Chio, whose associate attorney is Robert Horn, Press
Building, Washington, D. c., and whose assignce is the
tarden Implement Company, of Cleveland, Ohio, is substi-
tuted for inc application of Brown formerly involved in the
Interference.

The relation of tre counts of the interference to the
claims of the respective partien is as follows:

Counts

Green*

Jones*

Smith*

L

25

11

2

2

24

15

4

*

24

20

0

1

...

47

10

₹,

27

A+

20

Sounta comprares

<!-- PageFooter="Manminor" -->
<!-- PageBreak -->

Copies to:

Angienee

Intontee

*Note alphabetical arrangement.

Letter to New Farty
15-0-0.2

( Form FOL 90)

(original for application of patent Ille.
carbon coples for attorney or agent (ap-
plicant ir there is no attorney or agent ) ,
assignee, and potentee if party Is a pat-
entee. )
( Forward to Docket Branch . ]

To the right of the address box this application should
Do Identified no:

"Division or jerial No. 222,222, filed
June 24, 1935, patented November 14.
1047, No. 2.142,794."

Pursuant to the motion decision or the Primary Examiner
dated
(Date) , your application anove Identified is
hereby substituted In interferenco No.
For the ap-
plication of Brown formerly involved therein.

The subject matter of the interference Is presented in
claims 23, 24, 25, 20, and 27 of this application.

The interference Involves your application above identi-
Find and applications for:

Agricultural Implement, filed me Jern
Jones*, wrote Post Office address la
whose attorney in
Those nononlate attorney las
and those talence is
følelooting Device, Filed by
Fillirm .mith *........ etc.

The Form of The counts of the interference to the
Time of the respective parties is in follers;

<!-- PageBreak -->

Counts

Green*

Jones"

Smith*

1

23

11

2

2

** 4

15

4

3

25

29

Ö

4

26

42

19

5

27

45

20

Counta Compared .

Examiner

Copies to:
Assigned
Patentee
*Note alphabetical arrangement .

An interference orier (Form 0/9) must also be prepared
for the application rile of the new party.

It is unnecessary to prepare a letter for the party
who is being eliminato from the interference, since the mo-
tion decision is adequate notice to him and the entry on the
interference brief (Form 079) of his case indicates that ne
wns eliminated from the interference .

13-9-10. Adding a Party to an Interference Under Rule 25.8

If no testimony nas been taken it is necessary to first
request the Banminer of Interferences for jurisdiction of
the interference (see 13-7-b) ; thereafter the interference
may be redeclared as Follows:

Letter to Examiner of interferences

( Long (8"x12}") plain sheet)
(original for interference tile, carbon
copy may be prepared for retention in
examining division. )
( Forward to Docket Branch. ]

Examiner of Interferences,

.fir:

For
" nose Post office address
18
whose attorney 1s

In accordance with the provisions of Rule 25.8, the
application of Andrew Jones, Serial No
filed
and whose assignee is the X. Y .. ... Company of
in hereby aided to the Interference Brown v. Smith,

<!-- PageBreak -->

declared Maren 5, 196, No. 45,070.

The order of the parties is nov as follows: Jones v
Brown V. mith.

The logue of the interference remains the same

The claims of the Jones application corresponding to
the issue nre:

Counts

Jones

1

3

2

4

Respectfully,

Examiner

Counts compared .

14-0-10.1
Letter to Each Original Party

# (Form POL 90)

(original for application or patent file,
carbon copies for attorney or agent (ap-
plicant if there is no attorney or agent) ,
assignee, and patentee if party is a pat-
entee. )
( Forward to Docket, Branch. )

In accordance with the provisions of Rule 25.0 appli-
cation for
filed by Andrew Jones, whose post

Office address is
, whose attorney is
,
and whose assignee is the X. Y. Z. Company of

is hereby added to interference No. 45,678, Brown v. Smith
99
to which you are a party. The claims of the Jones applica-
tion corresponding to the issue are:

Counts

Jones

1

5

2

1

The new party is given until
" Ithin which to
rile the preliminary statement required by Rule 24 .1.

<!-- PageBreak -->

The issue of the Interference remains unchanged.

Examiner

Counts compared.
Coplos to:
Assignee
Patentee
14-9-10.2
Letter to Now Party

(Form FOL 00)

(original for application or patont illo,
carbon copian for attorney or agent (np-
plicant if there In no attorney or agent) ,
nosignoo, and potentee ir party lo pat -
onteo. )
( Forvard to Docket Branch )

In accordance with the provisions of kule 25.6 your
case above Identified is hereby added to Interference No.
45.670 in which no testimony has been taken.

The preliminary statement required by kule 24.1 must
be filed on or before

The subject matter of the interference Ist presontod
In claims ; and 4 of this application

The Interference Involves your cane above Identified,
And

The application for
filed by
A
The application for
1
filed by
( etc )

The reletion of the counts of the interference to the
ciales of the respective parties is as follows:

Count #

Broen

Jones

Smith

A

4

0

4

0

Counts compared.
Copies to.
Analenge
Patentre

<!-- PageFooter="Examiner" -->
<!-- PageBreak -->

13-9-11.
Adding A Party (Testimony Taken)

If testimony has been taken, it is not necessary for
ine examiner to first request jurisdiction of the inter-
ference and the forms used are different, an follows:

# Letter to Examiner of Interferencos

(Long ( 0"x12}") ploin sheet )

(Original for interference file, carbon
copy may be prepared for retention in
examining division.)
(Forward to Docket Branch. )

Examiner of interferences,
Jir:

It is requested that the application of Androy Jones,
Sorinl No.
riled
l'or

.
,
rhone post office address is

$
whose attorney
10
and whose assignee is the X. Y. 2. Company
of
be added to the interference of Urovn v. Smith,
declared Jon. b. 1950, No. 45,070, in which testimony has
been taken.

The order of the parties will then be ns follows:

Jones v. Brown v. Smith.
The Issue of the interference remains unchanged.

The claims of the Jones application corresponding to
the issue are:

Counts

Claims

1

3

2

4

Respectfully,

Examiner

<!-- PageFooter="imenta compared" -->
<!-- PageBreak -->

## 13-9-11.1 Letter to Each Uri inal Party

### (Form POL 90)

(original for each application rile, carbon
copies for attorney or agent in each appli-
cation (applicant ir there la no attorney
or agent), assignee, and patentee ir party
is a potentee. )
( Forvard to Docket Branch. )

An application for patent for
bas boon filed
by Andrew Jones, whose post Office address is

whoso attorney lo
and whose assignee in the X.
·
Y. Z. Company of
claiming the subject matter of
interference No. 45,078, Brown v. Smith, to which you are a
party. The claims of Jonen' application corresponding to
the counts of the issue are:

Counts

Jones

1.

3

2

4

Written objections to the admission of the above en-
titled application to the interference, with proof of ser.
vice on the proposed new party as well as the prosent par-
ties, will be considered ir filed on or before
1

The issue of the interference remains unchanged .

Counts compared .
Copies to:
Assignce
Patentee

Examiner

13-9-11.2
Letter to New Farty

( Form POL 90)

(original for application file, carbon copy
for attorney or agent (applicant if there is
no attorney or agent), assignee, and patentee
if party is a patentee. )
( Forward to Docket Branch. )

Your case; nbove identified, is adjudged to interfere
with others, hereinafter specified, which are not involved
in an Interference No. 45,678, in which testimony has been
taken ..

<!-- PageBreak -->

Written objections of the p agent parties to your ad-
mission to mp+ Interference, with procter cervic> apon
yen, will be considered ir elled on or before

The subject matter of the interior. 100 i pron b!
In clelas : mat 4 of this application

The parties to the interferance are
Heary Brown, whose Post Office adresa Ja
whose attorney :a
. Phone maalenen in Roe temu-
facturing Company or
and "note application ja
ent !! ! **
, 2111.1
John Jmitr
n .. .

The reistion of your claims man of the clains ci trd
wirtiva tu inc crunte of the Imaun lx as follows

: un:A

frown

Jone

Smith

1

4

1,

0

- 4.

"

: ..

(

*******
Counts ompht .
copies to:
45012510
1
11-7-12 Conversion of Joint Application to Sole
Ourin : Interference

Inter to Examiner of interteren'est

(Len (0"x12}") plain :- )
Ger.stand for interference file. )
(Porvar to booket Branch . ,
Seiner a laterforencos,

.;*:

le potaby proper by con; In the party Them 0 011
me joint investere to Cheat a role Inventor
We CAN win MAN dame.

Seper Polly

<!-- PageBreak -->

17-9-12.1
Latter to Resulting Sole Party

{: rm ich Go)

for' ingl for finlication fila, carbon copies for
aterner of entat (applicant i! there is no at-
tort y or Agent, and coignee. )
( Forvard to Docket Branch. )

Tas Amendment with new seth and a disclaimer identify-
tre the application as the sole invention of Wheat former-
ly having status mo a irlat inventor in the onse, has been

Interferenco No. 74,019, butler v. Wheat and Tomlin,
Involving the nuovo iden. Itled application la heraby re-
forrad, the party Wheat and Tomlin being changed from Wheat
na Tomlin es joint Inventors to Wheat as sole inventor.
In soesty remgia the same.

Examiner

14.9.12.2
Letter ro utner Farty

( For- PCL 90)

(original for application or patent file, carbon
copies for attorney or agent (applicant if there
it no attorney or agent), assignee and patented
:" party is a patentee. )
(Forvard te Docket Branch. ,

Interference NO. 74, 619, Butler v. Wheat and Tomlin,
involving the above identified application is hereby re-
formec, the party Wheat and Tomlin as joint inventors being
changed to Wheat as sole inventor.

The counts remain the 34no.

<!-- PageFooter="Examiner" -->

Copies to:
AS318000
Fatonice

<!-- PageBreak -->

(rien application or patent not Involved in present
interference)

(Form rol Qu)

(original for application file
and carbon copy for attorney )
(To be mailed by examining
division)

The amendment filed non not now been ontoren since it
does not place the case In condition for another interter-
once.

( Follow with appropriate paragraph a .... (a) or (h).

(a) Ap: lienat has no right to make claims ---- because
( state ronnon briefly). ( Use where noplicano cannot anke
claims for Interference with another application or store
applicant clearly cannot take claims or a patent .)

(b) Cinino - --- are directed to a species which is not
presently allowable in this case.