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OCR transcription for search; preserved printed pages are authoritative

# Chapter 900 Prior Art, Classification, Search

901
Prior Art

901.01
Canceled Matter in U. S. Patent Files

901.02
Abandoned and Forfeited Applications

901.03
Pending Applications

901.04
U. S. Patents

901.05
Foreign Patents

901.05
(a) Citation Dates

901.05
(b)
Other Significant Data

901.05
(c)
Obtaining copies

901.05
(d)
Translation

901.06
Non-Patent Publications

901.06

(a)
Scientific Library

901.06
(b)
Requests for Obtaining

901.06

801.06
(d) Abstracts of U. S, Applications

901.07
Arrangement of Art in Examining Divisions

901.08
Borrowing References

901.09
Missing Copies- Replacement

902
Official Publications and Indices of U. S. Patents

802.01
Manual of Classification

902.02
Definitions

902.02
(a) Search Notes

902.02
(b) Search Cards

902.03
U. S. Patent Classification Indices

902.03
(a)
Numerical

902.03
(b)
Blue Slip

902.03 (c) Subclass Lists

902.03

(đ)
Count

902.04
Classification Orders and Bulletins

903
Classification

903.01
Statutory Authority

903.02
Basis and Principles of Classification

903.02
(a)
New and Revised Classes

903.02
(b) Scope of a Class

903.03
Of Foreign Patents

903.04 Stamping Examiners' and Search Room
Copies

903.05
Transfer of U. S. Patents

903.06
Ordering Official Cross-References

903.06
(a) Discovery of New Cross-References

903.07
Classifying and Cross-Referencing at Allow-
ance or before Issue

903.07 (a) · Cross-References - Keeping Systematic
Notes during Prosecution

903.07 (b) Issuing in Another Division Without
Transfer

903.08 Applications-Assignment and Transfer

903.08 (a) New Applications

903.08 (b) Classification and Assignment to Assist-
ant Examiner

903.08 (e)
Immediate Inspection of Amendments

903.08 (đ)
Transfer Procedure

903.08 (e)
General Rules

903.08 (f)
Classification Examiner's Decision

903.08 (g)
Transfer to Another Division after Deci-
sion

904
How to Search

904.01 Analysis of Claims

904.01 (a) Variant Embodiments within Scope of
Claim

904.01 (b)
Equivalents

904.01
(c)
Analogous Arts

904.01
(đ)
Outlining Field of Search

904.02
Selecting Pertinent References

905
Miscellaneous

905.01
Orders for Photostats

905.02
Orders for Soft Copies

905.02
(a) Return of Soft Copies

905.03
Orders for Patented and Abandoned Files

905.04 Marking Examiners' Copies

## 901 Prior Art

Extract from Rule 104. (a) On taking up an appli-
cation for examination, the examiner shall make a
thorough study thereof and shall make a thorough
investigation of the available prior art relating to the
subject matter of the invention sought to be patented.

## 901.01 Canceled Matter in U. S. Patent Files

Canceled matter in the application file of a
U. S. patent is not a proper reference, since it is
neither a patent nor a printed publication. See
Fessenden v. Wilson et al., 1931 C. D. 419; 410
O. G. 815.

## 901.02 Abandoned and Forfeited Ap- plications

Rule 108. Abandoned and forfeited applications not
cited. Abandoned and forfeited applications as such
will not be cited as references.

Where a forfeited or abandoned application
is referred to in an issued U. S. patent the dis-
closure of the application is incorporated by
reference into the disclosure of the patent and
is available to the public. See Rule 14 (b).

In re Heritage, 1950 C. D. 419; 639 O. G. 638.
holds that where a patent refers to and relies
upon the disclosure of a copending abandoned
application, such disclosure is available as a
reference.

It has also been held that where the reference
patent refer's to a copending but abandoned ap-
plication which discloses subject matter in com-
mon with the patent, the effective date of the
reference as to the common subject matter is the
filing date of the abandoned application. Ex
parte Clifford, 49 U. S. P. Q. 152; Ex parte
Peterson, 63 U. S. P. Q. 99; and In re Switzer
et al., 612 O. G. 11.

## 901.03 Pending Applications

U. S. applications which are pending before
the Office are secret and so are not available as
references (Rule 14a ) except that claims in one
application may be rejected on the claimed sub-
ject matter of a copending application of the
same inventor (822.01) or assignee (305).

Published abstracts of applications are refer-
ences (901.06 (d)).

## 901.04 U. S. Patents

The following different series of U. S. pat-
ents are being, or in the past have been issued.
The date of patenting given on the face of each
copy is the publication date and is the one usu-
ally cited. "The filing date, in most instances
also given on the face of the patent, is ordi-
narily the effective date as a reference.

X-Series. These are the approximately
10,000 patents issued between 1790 and July 4,
1836. They were not originally numbered, but
have been arbitrarily assigned numbers in the
sequence in which they were issued. The num-
ber should not be cited. When copies are or-
dered, the patentee's name and date of issue
suffice for identification. Copies in stock are
arranged alphabetically.

1836 Series. The mechanical, electrical, and
chemical patents issued since 1836 and fre-
quently designated as "utility" patents, are in-
included in this series. A citation by number
only is understood to refer to this series. This
series comprises the bulk of all U. S. patents
issued. Some U. S. patents issued in 1861 bear
two numbers but only the larger number should
be cited.

Reissue Series. Reissued patents (1401)
have been given a separate series of numbers,
preceded by "Re." In citing the letters. must
be given, e. g., Re 1776. The date that it is
effective as a reference is the effective date of

the original patent application, not the filing
date of the reissue application.

A. I. Series. From 1838 to 1861, patents cov-
ering an inventor's improvement on his own
patented device were given a separate series of
numbers preceded by "A. I." to indicate Addi-
tional Improvement. In citing, the letters
must be given, e. g., A. I. 113. Only 275 such
patents were issued.

Plant Patent Series. When the statutes were
amended to provide for patenting certain types
of plants (Chapter 1600) these patents were
given a separate series of numbers. In citing,
the letters "P. P." must be given, e. g., P. P. 13.
Design Patents. Patents for designs (Chap-
ter 1500) are issued under a separate series of
numbers. In citing, the letter "D" must be
given, e. g., D. 140,000.

## 901.05 Foreign Patents

For a comprehensive list of the patent pub-
lications officially issued by foreign govern-
ments and detailed instructions for their use
see "Manual of Foreign Patents" by Belknap
Severance, 161 pages, published 1935 by the
Patent Office Society.

A pamphlet entitled "Guide to the Search
Department of the (British) Patent Office Li-
brary," is published by the British Patent Of-
fice. A copy of this pamphlet is in the Scien-
tific Library. Appendix 1 of this pamphlet
consists of a concordance of British, United
States and German classes.

## 901.05 (a) Citation Dates

Country

Citation date

Australia

Complete specification ac- cepteđ.

Austria

Ausgegeben.

Belgium

Brevet Octroyé or Octrooi Torgekend.

Canađa

Issued.

Czechoslovakia

Vydano.

Denmark

Udstedt.

Finland

Julkaistu.

France

Délivré.

Germany

Ausgegeben.

Great Britain

Complete specification pub- lished or complete specifica- tion accepted.

Hungary

Megjelent.

India

Complete specification left.

Ireland

Complete specification ac-

cepted.

Italy

Des. or Rilasciato.

Netherlands

Uitgegeven.

Norway

Offentliggjort.

Phillipines

Patented.

Poland

Undesignated date on top right of patent.

Sweden.

Publicerat or offentliggjord.

Switzerland:

Publié or Veröffentlicht or Pubblicato.

The dates indicated in the table are custom-
arily used in the identification of foreign pat-
ents which are cited as references. These dates
are not in all cases the effective dates of the
references, either as printed publications or as
patents and when the dates become critical, it
may be necessary to establish the exact effective
date of the reference.

See 901.05 (b).

### 901.05 (b) Other Significant Data

Occasionally, the exact date of foreign pat-
enting becomes material. This is the sealing
date in the case of Australia, Great Britain,
India and Ireland and does not appear on the
printed copies of the patents. If necessary, this
information can be secured from the Scientific
Library.

German allowed applications have been issued
in printed form beginning September 1, 1955.
Those printed from this date up to December
31, 1956, are captioned "Patentanmeldung."
They should be cited as German printed appli-
cations and identified by the name of the ap-
plicant and serial number of the application;
the date of printing is the date following the
words "Bekanntgemacht am." The applica-
tions printed after January 1, 1957, are cap-
tioned "Auslegeschrift" and have an additional
number which is larger than 1,000,000; this
new number should be used instead of the origi-
nal serial number. In addition to the above,
data customarily given in citing foreign patents
should be used.

Certain British applications had become void
and hence lack a date of acceptance. Neverthe-
less, they were given a number in the patent
series. The date of publication (year only) is
given following the statement "Printed for His
Majesty's Stationery Office," and this should
be cited.

British specifications prior to 1916 have printed
in large heavy type at the head of the first page of
the specification a number and year, as 1451 A. D.
1912. This, together with the name, as required
by the rules, is always the proper citation of the
patent. The year given at the head of the speci-
fication is either the year of filing or the year of
acceptance, but in either case it is the official desig-
nation of the patent.

The year printed on the drawing is not always the
year for correct designation of the patent. Where
it is not, the correct year is shown by a small supe-
rior number or exponent placed to the right and
above the serial number of the patent, as-

1910-No. 499 #
1912-No. 19421 "

In instances of this kind the patent should be cited
as No. 499 of 1911 or No. 19421 of 1913. (Extract
from Notice of September 30, 1931, Revised.)

Many countries issue patents of addition,
"Zusatz" for example in Austria and Germany,
and they should be identified as addition patents
and both the number of the principal patent and
of the addition patent should be cited.

For citation of the number of pages of draw
ing and specification, see 707.05 (e).

## 901.05 (c) Obtaining Copies

Prints of foreign patents classified in arts in
other divisions can be had by an Examiner if
he thinks the patents would be of frequent use
in his own class (905.01).

## 901.05 (d) Translation

A translator in the Scientific Library is avail-
able to assist the Examiner with the specifica-
tions in various languages with which the
Examiner is not familiar. Typed translations
can be had, if necessary, of any material to be
used.

## 901.06 Non-Patent Publications

All printed publications may be used as refer-
ences, the date to be cited being the publication
date. Recognized abbreviations of names of
periodicals may be used in their citation
(707.05 (e)).

There are some publications kept or circu-
lated in every division and each assistant Ex-
aminer should ascertain which are available in
his division and whether or not any of them
is likely to bear on any class assigned to him.

## 901.06 (a) Scientific Library

The Scientific Library of the Patent Office
has a large collection of volumes, including sci-
entific and technical books and periodicals,
arranged in accordance with the Library of
Congress classification and card indexed as to
author, title and subject matter. Since these
books and periodicals are maintained for the
maximum service to the examination process,
frequently the most recent of them are to be

found in the examining divisions concerned.

The Library also has bound volumes of for-
eign patents in numerical order.

The Examiner should acquaint himself with
this Library sufficiently to know when it is
likely to afford him assistance in his examina-
tion of an application. The reference staff of
the Library will assist in making use of the
Library's holdings.

## 901.06 (b) Requests for Obtaining

Whenever it is necessary to borrow reference ma-
terial from other libraries including the main Com-
merce library, for official use, or to obtain cata-
logues, bulletins or other literature, a letter to this
effect is sent to the Librarian, Scientific Library.
(Circular of Oct. 7, 1922, Revised.)

A PHOTOCOPY SHOULD IMME-
DIATELY BE ORDERED OF THE
PORTION OF ANY BORROWED BOOK
WHICH IS CITED IN AN OFFICE AC-
TION. SUCH PHOTOCOPY SHOULD BE
PLACED IN AN APPROPRIATE CLASS
AND SUBCLASS AND SUCH CLASS AND
SUBCLASS MUST BE CITED IN THE
OFFICE LETTER. See 707.05 for citation
data.

As the examiner currently inspects non-patent
literature pertinent to the class or classes that he
examines, he should fill out a form PO-253 for each
item or part thereof that is essential in connection
with search in his arts. The publication, the par-
ticular pages desired, each class and subclass in
which he desires a copy and the other information
on the order form should be given and the order
approved by Primary Examiner.

The order should be sent to the Manuscript and
Lithographie Branch with the publication (where
possible). The copies made will be sent to the
Classification Group for processing, the publication
(when submitted) being returned to the Examining
Division. The publication copies will be stamped in
the same manner as officially assigned U. S. patent
copies, and the classification recorded. No change
in classification of copies so stamped should be made
except on approval of an Examiner of Classification.

A reasonable effort should be made to avoid dupli-
cation of disclosures that are patented or about to
be patented. (Notice of October 31, 1949.)

# 901.06 (c) Alien Property Custodian Publications

Applications vested in the Alien Property Custo-
dian during World War II were published in 1943

even though they had not become patents.

Care must be taken not to refer to these publica-
tions as patents; they should be designated as A. P. C.
published applications.

An A. P. C. published application may be used by
the examiner as a basis for rejection only as a printed
publication effective from the date of publication
which is printed on each copy.

The manner of citing one of these publications
is as follows: A. P. C. Application of
Ser. No.
Published

Before citing any A. P. C. published application,
and before each subsequent action, the examiner
should verify whether the application has become
abandoned or patented. If it has become aban-
doned, the examiner's action should state this fact.
If it has become patented the patent is to be cited.
The patent should be substituted for the printed
application as the basis for the rejection unless the
date of publication is material.

When any A. P. C. application becomes a patent,
copies of the printed application may be removed
from the files and returned to the Classification
Division for disposal if the examiner has no fur-
ther use for them. (Extract from Notice of May 14,
1943.)

# 901.06 (d) Abstracts of U. S. Appli- cations

For a period of years, it was possible to have an
abstract of an abandoned application published, con-
taining a brief description of the subject matter and
a figure of the drawing, if any. See 711.06 and
711.06 (a).

Additional copies of abstracts may be obtained by
a request directed to the Classification Group, iden-
tifying the desired abstract by serial number, and
date of publication, and by giving the class and sub-
class in which the added copy is to be placed. The
forms used in ordering copies of U. S. patents may
be employed.

The Classification Group has a set of abstracts
arranged by serial number for ready reference when
only the serial number is known. (Extract from
Notice of August 10, 1949.)

# 901.07 Arrangement of Art in Examin- ing Divisions

In the examining divisions the U. S. patents
are arranged in shoes bearing appropriate la-
bels, each showing the class, sub-class, and
usually the lowest and highest numbered patents
put in the respective shoe. The patents should
be arranged in numerical order.

Some U. S. copies are marked "Cross Ref-
erence." These are patents which are classified
in other classes or subclasses but which have
disclosures pertinent to the subclasses in which
they are placed as cross references. Cross ref-
erence copies may be filed in the shoes along
with the copies of the original patents to sim-
plify the tasks of searching and filing.

Copies of foreign patents are usually kept in
shoes separate from and immediately following
the U. S. patents and are preferably arranged
numerically without regard to country.

Non-patent publications or photocopies
thereof containing disclosures for particular
subclasses, if numerous, should be filed in shoes

following the foreign patents, otherwise at the
bottom of the last shoe of foreign patents.

# 901.08 Borrowing References

The search files in each examining division
should at all times be complete. Where they are
incomplete, the Examiners using such files and
relying upon their completeness may miss valu-
able references. References removed from the
files whether for use in the division or other-
wise should, of course, be promptly returned.

The following is established as the uniform Office
practice in borrowing references (domestic and for-
eign patents and publications) :

a. References may be borrowed and charged for a
maximum of two days. In all possible instances, the
references should be returned in less than two days,
preferably in a few hours. It is the responsibility of
the chief of the borrowing division to see that all
borrowed references are returned within the time
indicated.

b. The file clerk of each division shall review the
charges each morning, select all charges over two
days old and collect the corresponding borrowed
references. The file clerk shall report to his chief
for appropriate action any failure to obtain overdue
references and any instances where it is necessary
repeatedly to collect overdue references.

c. In the case of domestic patents, when it appears
that they will be needed for more than two days, par-
ticularly where future use is indicated, soft copies
should be ordered, but the references may be bor-
rowed for immediate use, if this will facilitate an
action. The Patent Copy Sales Branch should give
prompt service on Examiner's orders for soft copies.
(Extract from Notice of April 6, 1948.)

## 901.09 Missing Copies-Replacement

When the original copy of a reference is miss-
ing from the Examiner's files, a soft copy should
be substituted at once and marked-"Keep until
original is found." When it definitely appears
that the original is lost, the Classification Group
should be notified and requested to supply a
mounted copy. When received, this is substi-
tuted for the soft copy. If the original copy is
subsequently found, the substitute copy should
be removed from the file and discarded.

# 902 Official Publications and Indices of U. S. Patents

## 902.01 Manual of Classification

The Manual of Classification is published in
loose-leaf form, and supplementary sheets con-
taining changes are issued from time to time to
replace the original sheets.

All manual changes are effected by a series
of Classification Orders each of which is cur-
rently published in the Official Gazette to the
extent necessary to keep the manuals up to date.
As these changes are published, each Examiner
should enter them in his manual, so that his
manual will at all times be complete and up-to-
date. As supplementary sheets are issued, the
old sheets should be removed, and the new
sheets substituted therefor.

There are over 300 classes of utility inven-
tions each having a title descriptive of its sub-

ject matter and being identified by one of a
series of class numbers (some numbers of the
series are blank and not presently assigned to
any class). Each class is subdivided into a
number of subclasses with each subclass bear-
ing a title descriptive of its subject matter and
being identified by a subclass number which in
many instances will include decimal fractions.
A complete identification of a subclass requires
both the class and subclass numbers, the class
number appearing first and the subclass num-
ber second, e. g., "103-161" identifies Class 103.
Subclass 161.

The Manual of Classification has the follow-
ing parts :

A Brief Statement on the Use of the Manual.

Classes Arranged by Related Subjects. Tab-
ulation of classes, in which the classes are ar-
ranged in five major subject groups, with the
classes listed under each group by relationship
of subject matter. This tabulation is for the
purpose of assisting the user in finding the main
class pertinent to his search.

Classes Arranged by Examining Division.

Classes Listed Alphabetically by title.

Classes Listed Numerically with titles.

Subclass Schedules. Complete subclass
schedules for each class, the utility classes ap-
pearing first in numerical sequence of class
numbers, and then the design classes in numeri-
cal sequence of design class numbers. Design
class alphabetical sequence by class names cor-
responds to numerical sequence. This is not
true of the utility classes.

Alphabetical Index. Words and phrases
(frequently called titles) identifying various
characters of patentable subjects arranged in
alphabetical order, with the citation of a class
or both class and subclass in which subject mat-
ter identified by the title will be found.

## 902.02 Definitions

All of the utility classes (i. e., classes devoted
to technology) except a few unrevised classes
have definitions. None of the design classes
has definitions.

Such definitions state the subject matter that
is found in each defined class and subclass much
more explicitly than it is possible to state in
short class and subclass titles.

Each examining division has a set of defini-
tions and there are several sets in the Public
Search Room. Additional or replacement
sheets incorporating all changes and additions
are issued from time to time and should be
promptly added to each set of definitions.

# 902.02 (a)

## 902.02 (a) Search Notes

The definitions have search notes as a part
thereof; namely, notes giving information as to
where subject matter related to the class will be
found (such notes appearing after the class
definition), and also notes as to where subject
matter pertinent to the subclass will be found
(appearing after the subclass definition).
These notes are intended to indicate both the
relationship and the difference between the
separately classified subjects.

Such search notes are not exhaustive and
should be regarded as suggestive of additional
fields of search, but not as limiting the search.

## 902.02 (b) Search Cards

In one shoe of each defined subclass in both
the examining division and the Public Search
Room is a "Search Card" having the definition
of the subclass and the search notes if any.

## 902.03 U. S. Patent Classification In- dices

The following indices of U. S. patents are
available and may be used to obtain classifica-
tion data of U. S. patents :

## 902.03 (a) Numerical

A numerical index of domestic patents giv-
ing their present original classification is in
card files in the Public Search Room and in
ledger books in the Service Branch of the
Classification Group.

A numerically arranged punched card index
of both original and officially cross-referenced
domestic patents is on file in the Machine Tabu-
lating Branch of the Administrative Services
Division.

In each of the above, there is a separate index
for each series, X, 1836, AI, Re, PP and D.

## 902.03 (b) Blue Slips

The "blue" issue or classification slips (Form
PO-270), starting with patent number 1,987,000,
RE. 19,228, D 126,796, P. P. 1, and for all sub-
sequently issued patents, and containing the
original classification and cross-references or-
dered at time of issue are on file in the Service
Branch, Classification Group.

## 902.03 (c) Subclass Lists

Cards representing all U. S. patents, ar-
ranged by class and subclass, are available in
punched card form in the Machine Tabulating
Branch of the Administrative Services Divi-
sion.

Tabulated lists for each subclass can be ob-
tained, one list for originals and one list for
cross-reference and published abstracts of U. S.
applications.

# 902.03 (d) Count

In the Service Branch, Classification Group,
is maintained a subclass "count," giving the
number of U. S. patents originally classified in
each class and subclass, and & corresponding
"count" for cross-referenced U. S. patents.

# 902.04 Classification Orders and Bul- letins

Classification Orders are issued from time to
time giving all changes in the classification that
have been made officially, including every
change to be made in the Manual of Classifica-
tion or in the definition books.

Photolithographed copies are distributed to
all examining divisions for immediate use.

Each order, except for those portions per-
taining to the amendment of existing defini-
tions, is subsequently printed in the Oficial
Gazette.

These orders are from time to time collected
and issued as a Classification Bulletin. As class
schedules and definitions are extensively
amended to take care of developments subse-
quent to original classification, they are repub-
lished in amended form in Classification
Bulletins.

# 903 Classification

## 903.01 Statutory Authority

The statutory authority for establishing and
maintaining a classification is given in the fol-
lowing statute, which states:

35 U. S. C. 9. Classification of patents. The Com-
missioner may revise and maintain the classification
by subject matter of United States letters patent, and
such other patents and printed. publications as may
be necessary or practicable, for the purpose of deter-
mining with readiness and accuracy the novelty of
inventions for which applications for patent are filed.
(Act June 10, 1898, ch. 430, sec. 1, 30 Stat. 440.)

## 903.02 Basis and Principles of Classi- fication

The basis of classification used in the U. S.
Patent Office, the principles followed, and the
reasons why such principles were adopted are
set forth in two pamphlets :

Classification of Patents, 2nd revision
History of Classification

These are available to every Examiner on
request addressed to the Classification Group.
Since the classification is the basic tool of every
Examiner, these pamphlets and the classifica-
tion as it at present exists should be studied
carefully.

Unofficial subclasses and digests made by patent
examiners, if made in accordance with the plan of
classification, could be defined and issued as an
official part of the classification.

Relative to all such work, the patent examiners
doing the same are directed to consult the Examiner
of Classification having jurisdiction of the class to
the end that, when the work is completed, it can be
defined and made official. (Notice of August 22,
1949.)

## 903.02 (a) New and Revised Classes

The establishment of new classes or subclasses
and the revision of old classes are done under
the supervision of an Examiner of Classifi-
cation.

When an old class is to be revised, or a new
class formed, an assistant Examiner who has
been examining applications in the art involved
may be transferred from the examining division
to a classification division for the reclassifying
work.

The Examiner performing the reclassification
secures a set of patent copies of the present
classification, by either ordering soft copies or
borrowing the Search Room copies. With
these copies, by study and successive groupings,
he develops an arrangement of the patents
which is satisfactory for searching.

The lines marking the confines of the new or
revised class and its subclasses are determined,
and appropriate definitions drawn, all subject to
the supervision and approval of an Examiner
of Classification and to the final approval by the
Commissioner. Then the Examiner's and the
Search Room's copies of the patents included
in the new class are collected, arranged and
stamped conformably to the new classification.
Official cross-references are also prepared and
appropriately stamped.

The patents comprised in the new class are
entered upon the numerical and subclass indices.

Notification of the new class or subclass is
published in the Official Gazette, and Supple-
mentary sheets necessary to correct the loose
leaf Manual of Classification are published.

Definitions of all revised classes and sub-
classes are found in the Classification Bulletins.

## 903.02 (b) Scope of a Class

In using any classification system, it is neces-
sary to analyze the organization of the class or
classes to be included in the search.

The initial analysis should determine which
one or ones of the several types of subject mat-
ter (manufacture, art, apparatus or starting
material) are contained in the class being
considered.

Further, relative to each type of subject mat-
ter, it is necessary to consider each of the
various combinations and subcombinations set
out below :

Feature Combined with Basic Subject Mat-
ter for Some Added Purpose. The added pur-
pose is in excess of the scope of the subject
matter for the class, as defined in the class defi-
nition, e. g., adding a sifter to a stone crusher
which gives the added function of separating
the crushed stone.

Feature Combined to Perfect the Basic Sub-
ject Matter. Features may be added to the
basic subject matter which do not change the
character thereof, but do perfect it for its in-
tended purpose, e. g., an overload release means
tends to perfect a stone crusher by providing
means to stop it on overload and thus prevent
ruining the machine. However, this perfect-
ing combined feature adds nothing to the basic
character of the machine.

Basic Subject Matter. The combination of
features necessary and essential to the funda-
mental character of the subject matter treated,
e. g., a stone crusher requires a minimum num-
ber of features as essential before it can func-
tion as such.

Subcombinations Specialized to Basic Sub-
ject Matter. Each type of basic subject matter
may have subcombinations specialized to use
therewith, e. g., the crushing element of a stone
crusher.

Subcombinations of General Utility. Each
type of basic subject matter may have subcom-
binations which have utility with other and dif-
ferent types of subject matter, e. g., the machine
elements of a stone crusher. Subcombinations
of this character usually are provided for in
some general class so that the Examiner should
determine in each instance where they are
classified.

# 903.03 Classification of Foreign Pat- ents note change 5-8

It would be advisable for the classification
Examiners to classify foreign patents, but there
has never been a corps large enough to do it.
The present procedure is for the Scientific

903.04

Library to distribute the foreign patent copies
and a list of the same on Form PO-235 to the
examining divisions. The Patent Examiners
classify those patents belonging in their divi-
sion indicating the class and subclass on the
patents. It is no longer necessary to indicate
the class and subclass on the list. If the Ex-
aminers consider that some of the patents should
go to another division, those patents and the list
are marked for routing to that division. The
list is returned to the Library with those patents
marked for other divisions.

An Examiner should be on the alert to recog-
nize foreign patents which are exact duplicates
of either domestic or foreign patents. Such
foreign duplicates are discarded to minimize
the number of patents to be inspected in making
searches. "Dup." should be entered on the list.
However, when the newly received foreign
duplicate is in a more widely read language
than that of the present file copy, the newly
received foreign patent will be retained and the
former file copy discarded. When the effective
date of any discarded foreign duplicate is ear-
lier than that of the U. S. or retained foreign
duplicate, the date and patent number of the
discarded patent should be noted on the U. S.
patent or retained foreign patent.

Since foreign patents, in addition to duplicat-
ing the disclosure of other patents, sometimes
disclose additional subject matter, care should
be exercised to avoid discarding a patent having
a useful disclosure.

Time spent in classifying foreign patents is allowed
in computing an Examiner's output subject, how-
ever, to the condition that the total time allowed for
each division for any quarter may not exceed
forty man-hours, exclusive of the time spent by
the Primary Examiner. The method used in
classifying foreign patents and the assignment of
such work among the Examiners of the division
are left to the Primary Examiner. The hours spent
by each Examiner on this work is noted in column
5 of the Periodic Report of Patent Examining Per-
formance. Suitable comment is made in "Notes
regarding individual examiners." (Extract from
Notice of September 24, 1940, Revised.)

# 903.04 Stamping of Examiner's and Search Room Copies

Before each application in issue becomes a
patent, the Issue and Gazette Branch forwards
the issue slip and the printed Examiner's and
Search Room copies of the patent to the Classi-
fication Group for stamping and recording of

the classification of the patent, preparation of
cross-references and transmittal to the Exam-
iner and Search Room on the date of the patent.

After they are so stamped and recorded, the
photolithographic copies are retained in the re-
spective classes in the divisions and no changes
in the classification or the arrangement of the
copies are permitted except with the approval of
the Classification Group as set out in 903.05.

The classification printed in the heading of
patents issued since 1933 cannot always be re-
lied upon to be the present original classifica-
tion, since this data is obtained from the file
wrapper of the application at time of issue and
will not reflect any changes in classification
made after the issuance of the patent.

## 903.05 Transfer of U. S. Patents

The transfer of official copies of U. S. patents,
either original or cross-reference, from one class or
subclass to another requires the approval of a Classi-
fication Examiner. (Extract from Notice of Feh-
ruary 20, 1918.)

Examiners must submit to the Classification
Group all questions of transfer of patents.

When an Examiner desires to transfer official
copies of domestic patents to a different class or
subclass, he should have a memorandum list pre-
pared for signature of the Primary Examiner of the
numbers of all patents which are to be transferred
indicating only the class and subclass into which
each is to be placed. Both originals and properly
identified official cross-references may be included
in the same list and these may involve transfers to
or from any number of different classes or subclasses.
Additional cross-reference copies of any listed patent
may also be requested. This list with the Exam-
iner's copies of the patents is routed through any
other division involved for its prompt approval or
comment and is forwarded to the Classification
Group.

In those instances where a transfer is approved by
a Classification Examiner, the class and subclass
designations on both the Examiner and Search
Room copies of the patents are changed and the
numerical patent index and subclass lists are altered
to agree with the new classification. When the
transfer is not approved, the copies of the patents
will be returned with a notification thereof.
(Extract from Notice of March 9, 1953.)

Unauthorized transfers render the subclasses in
the Public Search Room no longer duplicates of
those in the Examiners' rooms, and also render in-
correct the official numerical index and subclass
lists. (Extract from Notice of February 20, 1918.)

903.07

When it becomes necessary in the course of a
transfer to remove copies from the files in the
Public Search Room, a red dummy a little
longer than a patent copy is substituted there-
for, and the identification data of the patents
withdrawn are written thereon. This dummy
is amended if the patents are returned, and
should all be returned the dummy is removed.

The procedure for transferring an entire
class or subclass from one division to another
is given in the Manual of Clerical Operations.

# 903.06 Practice To Be Followed in Ordering Official Cross-Refer- ences

The following three alternatives are available for
obtaining official cross-reference copies of United
States patents.

In many instances, U. S. patents are found which
contain disclosure that the searcher believes should
be cross-referenced. Such patents should be brought
to the attention of the Classification Group for con-
sideration in any of the following ways:

a. Call extension 4087, identify the patent and
give the class and subclass to which it is thought it
should be cross-referenced.

b. Send to the Classification Group a list of pat-
ents and relative to each patent, indicate the class
and subclass in which it is thought each should be
cross-referenced.

c. The preferred mode of ordering a cross-refer-
ence where the Examiner has a soft copy with the
pertinent portion marked, is to indicate on the
marked soft copy the class and subclass in which it
is thought it should be cross-referenced. Such soft
copy should be forwarded to the Classification Group
where it will be promptly inspected, the necessary
action taken and the soft copy returned within two
days of its receipt. (Extract from Notice of April 6,
1948.)

# 903.06 (a) Discovery of New Cross- References

In addition to the cross-references officially
designated, valuable references are often to be
found by an inspection by the Examiner of the
Official Gazette each week, as well as by being
alert to disclosures revealed during the search.
Such patents may be placed as soft copies in the
Examiner's files. However, if they contain dis-
closure properly classifiable in an official sub-
class they should, with the approval of a Classi-
fication Examiner, be given the status of official
cross-references, by copies of the patents being
mounted and placed in the appropriate sub-

classes in both the Examiner's files and in the
Public Search Room in accordance with the
practice enumerated above.

# 903.07 Classifying and Cross-Refer- encing at Allowance or Before Issue

Careful attention should be given by Examiners
to the classification of all applications pending in
their respective divisions. It is the duty of each
Primary Examiner to personally review the classifi-
cation and cross-referencing made by his assistants
of every application passed for issue and to initial
the blue slip to show that this review has been made.
(Extract from Order 2357 and from Memorandum
of Feb. 18, 1952.)

The initial classification of pending applica-
tions and the drawings thereof will have been
indicated in pencil by the Primary Examiner.
See 903.08 (6).

However, an application, properly classified
at the start of examination, may be improperly
classified when it is ready for allowance. The
claims as allowed should be reviewed, in order to
determine the subject matter covered thereby.
It is the disclosed subject matter covered by
the allowed claims that determines the original
classification of U. S. patents.

Only the correct official classification should be
left on the file and drawing of each application
when passed for issue. Unofficial subclasses (not
established by classification order) should not be
indicated on the file wrapper or drawing. (Extract
from Notice of Mar. 31, 1914.)

The examiner fills out a blue slip (PO-270) or
a salmon slip (PO-328) in the case of designs to
indicate the class and subclass in which the patent
should be classified and also the classes in which
it should appear as a cross reference. Unofficial
subclasses should not be indicated on the blue slip,
neither as original nor as cross-reference. The
Examiner attaches the blue slip to the inside of the
left fold of the file wrapper to be forwarded to the
Issue and Gazette Branch. (Extract from Order
2952, Revised, and Memorandum of May 14, 1952.)

The Examiner also enters the classification ap-
pearing on the issue slip in the space provided on
the front of the file and in the space provided in
the stamping at the left margin of the drawing.
Care should be exercised to see that all three entries
of the classification are correct and in agreement,
particularly after any alteration of one entry, for
otherwise the patent will be printed with an erro-
neous classification or improperly positioned in the
Official Gazette.

## 903.07 (a)

All Examiners are requested to fill in the class
and subclass on the drawings in large numerals
using as much of the space provided as feasible.
In this way the filing of drawings and subsequent
searching by the Issue and Gazette Branch will
be greatly aided. (Extract from Memorandum of
January 5, 1953.)

In the case of oversized patents, where only
a minor portion of the disclosure is pertinent
to the subclass in which a cross reference is to
be placed, the Examiner may indicate on the
Issue Classification Slip that a digest of the pat-
ent should be prepared, thus, 74-340 (digest).
At about the time the Examiner receives the
hard copy, the Service Branch of the Classifica-
tion Group will consult him to ascertain which
sheets of the patent should constitute the digest.

The classification of all applications which have
been passed to issue, which would be changed by any
changes, made in the official classification by classi-
fication order, are corrected by the Classification
Group to show the changed classification on the file
wrapper, blue slip and drawing, if any. The Classi-
fication Group notifies the Docket Clerk of the classi-
fication changes so that the Docket and Serial
Register cards may be similarly corrected. Appli-
cations which already have been sent to the printer
will be classified by the Classification Group at the
time the patent issues. (Extract from Notice of
March 31, 1914, Revised.)

## 903.07 (a) Cross-Referencing-Keep Systematic Notes During Prosecution

Throughout the examination of the case,
systematic notes should be kept as to cross-
references needed either due to claimed or un-
claimed disclosure. The several Examiners
handling related subject matter should be con-
sulted during prosecution (whether they handle
larger unclaimed combinations or claimed or

unclaimed, but disclosed, subcombinations), and
asked if cross-references are needed. If needed,
systematically note the proper class and sub-
class. It is to be noted that a cross-reference
MUST be provided for all CLAIMED dis-
closure.

All of these should be inserted on the blue slip
at time of issue.

## 903.07 (b) Issuing in Another Divi- sion Without Transfer

Where a prospective patent is to be classified in
a division other than the one which is sending the
application to issue, the Examiner, after indicating
in blue or black ink on the blue issue slip the class
and subclass number in which the patent is to appear,
designates in red ink on the blue slip the division to
which the patent is to be sent. For example. the
blue issue slip, in such cases will read:

Class 18, Subclass 51 (Div. 15)

The division passing the case to issue will insert its
own number as usual in the space provided in the
lower left hand corner. (When the patent issues,
the Classification Division will, as a matter of routine,
send the necessary notices to the divisions involved.)

The sending of cases to issue from one division and
assigning them to classes in another division is re-
stricted to those situations where both Examiners
concur in the proposed classification of the patent,
which must be shown by the concurring Examiner
initialing the slip, or where there has been a ruling
by a Classification Examiner, who must initial the
slip. (Notice of March 24, 1937, Revised.)

The prints of the drawings, if any, should be for-
warded to said other division so as to be available
therein for interference search purposes. If the
allowed cases of the division passing the case to
issue are still being checked for classification, the
prints should not be forwarded until the proposed
classification has been approved by the Classification
Examiner. Where the nature of the disclosure is
such that it would be desirable that prints of the

903.08 (d)

drawings be also present in the division passing the
case to issue, copies thereof may be ordered for this
purpose. (Extract from Notice of September 8,
1952.)

## 903.08 Applications: Assignment and Transfer

The Primary Examiner of an examining
division to which an application is assigned is
responsible for its examination until such time
as the application is officially transferred to
another division by the Application Branch.

The Primary Examiners have full authority
to accept any application submitted to them that
they believe is properly classifiable in a class in
their division. Only where there is a difference
of opinion amongst Primary Examiners, should
cases be submitted to a Classification Examiner.
903.08 (a) New Applications

New applications are assigned to the various
examining divisions in the first instance by the
Application Branch.

Upon receiving an application from the Ap-
plication Branch and before making any entry
on the serial or docket register cards, each
Primary Examiner will forthwith decide
whether it has been properly assigned to his
division.

If the Primary Examiner decides that the
application properly belongs in his division, it is
turned over to the Docket Clerk for processing
as a new receipt.

Where new applications assigned to an examining
division by the Application Branch are accepted by
the Primary Examiner, as evidenced by any entry
made on the docket or serial register cards, the first
action thereon must be given by that division. Once
a new application is accepted, it can not be trans-
ferred until a response to the first action is received,
except cases involved in a class transfer or which are
transferred to or from Division 70 because of a
change in security status. Other new cases, includ-
ing those transferred because of a prospective inter-
ference, can be transferred only after the approval
of a Supervisory Examiner which should be noted (in
pencil) on the file wrapper. (Extract from Notice of
June 20, 1951, Revised, and Memorandum of Feb.
17, 1954.)

When a new application is received and in the
Primary Examiner's opinion the application
does not belong to his division, he will submit
it without any entry made on the docket or
serial register cards, to the Examiner of the
division to which he thinks it belongs.

If the latter agrees to accept the application,
the Examiner to whom the application was
originally sent instructs the clerk of his division

to effect the transfer of the application to the
other division.

If a new application is thought not to be properly
examinable in the division receiving the same and
the division in which the Primary Examiner believes
it to be properly classifiable refuses to accept it, it
may be promptly and informally submitted to the
Classification Group for assignment by oral decision
prior to entry. No search for prior art to show
classification need be made. The division to which
the Classification Examiner assigns it will make the
first action thereon. If the search in connection
with the first action develops art showing proper
classification elsewhere, after the response is received
appropriate action to transfer may be taken. (Ex-
tract from notice of June 20, 1951.)

# 903.08 (b) Classification and Assign- ment to Assistant Exam- iner

Every application, new or amended and in-
cluding the drawings, if any, when first assigned
to a division must be classified and assigned to
an assistant Examiner.

The Primary Examiner assigns them to his
assistants, noting in lead pencil in the upper
left hand corner of the face of the file, the class,
and subclass to which the case pertains, and also
the numeral of the desk or the initials of the
Examiner to whom the case is assigned for ex-
amination. The application file is then turned
over to the clerk.

# 903.08 (c) Immediate Inspection of Amendments

Steps to transfer an application should be
taken promptly on receipt of any amendment
thereto which makes the transfer proper, and
in accordance with the transfer procedure of
section 903.08 (d).

## 903.08 (d) Transfer Procedure

Submission of Applications for Classification

Where the Examiners in different divisions are
in agreement that an application is properly assign-
able to one of the divisions but are in disagreement
as to which one should receive it, the Examiners in-
volved should present their positions orally to the
appropriate Classification Examiner for verbal deci-
sion. This is generally termed informal submission.

In all other instances, including those instances
where a Classification Examiner feels that additional
evidence is necessary, applications are submitted
for classification as follows: The Examiner having
jurisdiction thereof submits a memorandum listing
the division or divisions and the classes therein in

which he believes the case may be classifiable and
makes a search both in his own class and the class
to which he thinks the case should be transferred
and cites the most pertinent art relative to the ques-
tion of classification. He should not take time to
write either an analysis of the art or an argument.
He forwards the file, together with his memoran-
dum, to the Examiner of another division involved.
He also fills out blank Form PO-319 and has it re-
ceipted by such Examiner and retains the receipted
form as a charge. Each other Examiner involved
may similarly make a search and cite art without
taking the time to write either an art analysis or
an argument. The time involved in making such
searches is not lost, since the cited art may be of
value to the Examiner to whom the case is assigned.
Each Examiner in turn promptly adds his memo-
randum to the file and the last forwards the file and
all papers to the Classification Group. This practice
eliminates the time consumed in evaluating the art
and expounding reasons for proposed assignments;
it is all that is required by the general rules govern-
ing the assignment of applications for examination.
See particularly items 4 and 10 of the regulations
governing assignment of application [903.08 (e)].
This is generally termed formal submission. (Notice
of Nov. 25, 1947, Revised.)

# 903.08 (e) General Regulations Gov- erning the Assignment of Applications for Examina- tion

The fact should be borne in mind that the follow-
ing regulations are only general guides, and excep-
tions frequently arise because of some unusual condi-
tion. The fact should also be kept in view that the
Classification Examiners as well as the Patent Exam-
iners are confronted with an already existing classi-
fication, made up of newly revised classes, those re-
vised years ago and which have somewhat outgrown
their definitions and limits, and still others made a
generation ago and never changed. Also, these
classes are based on different theories and plans,
some on art, some on structure, some on functions,
some on the material worked upon, and some ap-
parently, on no theory or plan at all. The Classifi-
cation Examiners cannot change this existing con-
dition as each application comes up for assignment
but must seek to dovetail the cases into the patch-
work and try to get the applications where they will
be best handled. To do this often violates the Classi-
fication Examiner's views as to what constitutes a
really proper classification.

1\. The assignment of applications follows, as far
as possible, the rules or principles governing the
classification of patents. (See the bulletins: "Plan
of Classification" 1900, "The Classification of Pat-

ents," 2nd revision, 1946 and "History of Classifica-
tion of Patents.")

2\. The most comprehensive claim, that is the claim
to the most extensive combination, governs, and this
is true whether there is only one such claim and a
large number of other claims, or whether the sets
of claims are more evenly divided. It is regarded
as just as vital that one complex claim be searched
and adjudicated by an Examiner skilled in the art
as that of a group of such claims be so searched and
adjudicated.

3\. The claims and statement of invention are gen-
erally taken as they read, since any attempt of &
Classification Examiner to go behind the record and
decide the case upon what is deemed the "real in-
vention" would, it is believed, introduce more errors
than such action would cure. The Classification
Examiners cannot possess the specific knowledge of
the state of the art in all the classes that the Patent
Examiners collectively possess. Further, such ques-
tions are matters of merit for the Examiners to
determine and are often open to argument and are
subject for appeal.

4\. The location of the U. S. patents constituting
the prior art is generally controlling over all else.
(Note: Where time permits, obvious misplacements
of the patents constituting the prior art are cor-
rected, but to straighten all lines as the cases come
up for assignment would require the time of several
men and would often involve a reclassification of an
entire class.)

5\. Ordinarily an application cannot be assigned
to a class which includes one element or part only
of several claimed in combination. The claim is
treated in its entirety. The question of aggregation
is not reviewed by the Classification Examiners:

6\. The Examiners of Classification are authorized
in all cases, where they evaluate the facts as war-
ranting it, to assign applications for examination to
the division best able to examine the same. Since
assignment for examination on this basis will at
times be contrary to classification of patents con-
taining the same character of claims, the Examiners
of Classification will indicate the proper classifica-
tion of the patent if such claims are allowed.

7\. When an application has been taken up by an
Examiner for action and a requirement to restrict is
found necessary, a part of the claims being directed
to matter classifiable in the division where the case
is being examined, an action requiring restriction
should be made without seeking a transfer of the
case to another division. The action of the appli-
cant in response to the requirement for restriction
may result in making a transfer of the application
unnecessary.

8\. Ordinarily where all the claims of an appli-
cation are for an article made of a specific com-
position or alloy with no other characteristic of the

article recited, the application will be assigned to
the composition or alloy class.

9\. A class of cases exists in which either no art
or a divided art is found and in which no rule or
principle is involved. (Such cases are placed where,
in the judgment of the Classification Examiner they
will be best searched and adjudicated. It is often
impossible to so explain a decision in this class of
cases as to satisfy or in any way aid the Examiners
interested. Indeed the reasons for or against send-
ing such cases one place or another may be so evenly
balanced that no reason of any value can be given.

10\. An examiner seeking the transfer of a case
should make a search, both of his own class and the
class to which he thinks the case should be trans-
ferred, and the Examiner in charge of the division
exhibit the result of such search to the Classification
Group. This is the only way to utilize the expert
knowledge of the Examiners involved. (Notice of
April 15, 1919, Revised.)

# 903.08 (f) Classification Examiner's Decision

An Examiner in the Classification Group de-
cides the question of the proper classification
of the application, and returns the application
to the division which submitted it enclosing a
statement of the grounds of his decision.

# 903.08 (g) Transfer to Another Ex- amining Division After Decision

If the application is to remain in the division
which submitted it for classification, no further
procedure is necessary. If assigned to another
division, the clerk processes the case as de-
scribed in Sections 2-6 and 2-8 of the Manual
of Clerical Operations.

## 904 How To Search

Having obtained a thorough understanding
of the subject matter disclosed and claimed in
the application, the Examiner then searches the
prior art as disclosed in patents and other
printed documents. Any such document used
in the rejection of a claim is called a "reference."

## 904.01 Analysis of Claims

The breadth of claim of the application
should always be carefully noted; that is, the
Examiner should be fully aware of what the
claim does not call for, as well as what it does
require. For, there is always danger of read-
ing into the claim limitations imported from
the specification or drawing.

# 904.01 (a) Variant Embodiments Within Scope of Claim

Substantially every claim includes within its
breadth or scope of definition one or more vari-
ant embodiments not disclosed by applicant,
which would anticipate the terms of the
definition. The claim must be so analyzed and
understood that any such variant encountered
during the search will be recognized and
selected.

In each type of subject matter capable of such
treatment (e. g., a machine or other apparatus),
the subject matter as defined by the claim may
be sketched in order to clearly delineate the
limitations of the claim. Two or more sketches,
each of which is as divergent from the particu-
lar disclosure as is permitted by claim recita-
tion, will assist the Examiner in determining
the claim's actual breadth or scope. However,
an applicant will not be required to submit such
sketches of claim structure (In re Application
filed November 16, 1945, 1951 C. D. 1; 646
O. G. 5).

## 904.01 (b) Equivalents

Also, all subject matter that is the patentable
equivalent of the subject matter as defined in
the claim, even though specifically different
from the definition in the claim, must be
considered.

## 904.01 (c) Analogous Arts

Not only must the art be searched with which
the invention claimed is classifiable, but also all
analogous arts regardless of where classified.

The determination of when arts are analo-
gous is at times difficult. It depends upon the
necessary essential function or utility of the
subject matter covered by the claims, and not
what it is called.

For example, a tea mixer and a concrete
mixer are for the same art, namely, the mixing
art, this being the necessary function of each.
Similarly a brick cutting machine and a biscuit
cutting machine have the same necessary
function.

## 904.01 (d) Outlining Field of Search

In outlining a field of search the Examiner
should note every class and subclass that may
have material pertinent to the subject matter as
claimed, or that may in the future properly be
claimed in that case. Every subclass pertinent
to each type of invention claimed should be
listed, from the largest combination through
the various subcombinations to the most ele-

mentary part needed to anticipate any disclo-
sure properly claimable in that case.

The following should be kept in mind: (a)
that a combination reference is necessary to
anticipate a claim drawn to an old or exhausted
combination, (b) that a combination reference
is valuable as a basic reference where elements
thereof may be varied by substituting equiva-
lent elements of a secondary reference, (c) that
a convincing aid to a rejection on the ground of
old combination is the citation of references
showing the subcombinations to have been al-

ready recognized as having practical and more
general utility, (d) that combination claims at
times can be anticipated by combining sepa-
rately classified subcombinational elements
where reasons can be given for holding non-
invention in forming the combination, and (e)
that in the rejection of a claim on the ground
of aggregation, the citation of references show-
ing the individual utility of the elements may
better prove that the aggregative structure is no
more than the sum of the features shown by the
several elemental patents.

In each action by an Examiner upon an appli-
cation, he makes an initialed endorsement in ink
in the space provided on the left-hand page of
the open file wrapper, stating the classes and
subclasses of domestic and foreign patents, and
the publications in which search for references
was made and also the date of the search.

In subsequent actions, if further search is
made, notation of the additional field covered is
also endorsed and initialed on the file wrapper.

## 904.02 Selecting Pertinent References

It is a prerequisite to a speedy and just deter-
mination of the issues involved in the examina-
tion of an application that a careful and ex-
haustive search be made in the first action. It
is not enough that the claims alone be searched,
especially if they be broad in their scope; but
the search should, in so far as possible, cover the
entire claimable subject matter in the case.

It thus results that the Examiner finds refer-
ences that, while not needed for treating the
claims before him, would be useful in forestal-
ling the possible presentation of claims to other
subject matter disclosed by applicant but shown
to be old by these references. To that end, an
Examiner may cite at the beginning of his letter
two groups of references, one under the head-
ing, "References applied," 707.05 (b) and the
other under the heading, "References further
showing the state of the art" 707.05 (c).

In selecting the references to be cited the Ex-
aminer should carefully compare the references

with one another and with the applicant's dis-
closure to avoid the citation of an unnecessary
number. The Examiner is not called upon to
cite all the references that may be available, but
only the "best." (Rule 106.) Multiplying ref-
erences, any one of which is as good as, but no
better than, the others, adds to the burden and
cost of prosecution, and should therefore be
avoided. However, if doubt exists as to the
inclusion of a reference, it is better to err in
citing too much art rather than too little.

While the best reference should always be the
one used, yet if this is of a date less than one
year prior to the filing date of the application,
a second reference, though inferior but not
thus open to being overcome under Rule 131, if
such reference is found, should be cited and the
claims additionally rejected thereon.

In all references, including non-patent, for-
eign patents and domestic patents, the Exami-
ner should study the specification or description
as it relates to every feature in the drawing
which he does not thoroughly understand.

# 905 Miscellaneous

905.01 Orders for Photostats To Be
Signed by Primary Examiner
All orders for photostats or for photoprints (Form
' 247) sent to the Manuscript and Lithographie
Branch from the examining divisions must be signed
by the Primary Examiner or in his absence by the
Assistant Chief. (Extract from Notice of April 19,
1930,)

# 905.02 Orders for Soft Copies

Soft copies may be ordered on PO-14 by the Ex-
aminer for his use. These orders are filled by em-
ployees of Patent Copy Sales Branch. No employees
other than those assigned to this Branch have access
to the files of printed copies of patents. In emer-
gency cases, orders may be taken to the Chief of
the Branch whose approval therof, if given, will
insure immediate filling of said orders. (Notice of
February 25, 1927, Revised.)

Because of the cost of printing copies of pat-
ents economy should be exercised in their use. It
is advisable to place in the application file soft
copies of those patents cited from other classes.
This will avoid a duplicate order when the
application as amended is re-examined, or ap-
pealed. However, soft copies of patents other
than those relied on by the Examiner should
be removed from the file before forwarding an
appeal to the Board of Appeals.

(

( )

# 905.02 (a) Return of Soft Copies

All soft copies which are in perfect condition and
unmarked and which are not deemed useful for
cross-reference or other purposes should be re-
turned to the Patent Copy Sales Branch from time
to time for replacement on the shelves. (Notice of
February 2, 1924, Revised.)

# 905.03 Orders for Patented and Aban- doned Files

In the examination of an application it is
sometimes necessary to inspect the application
papers of some previously abandoned applica-
tion or granted patent. This is always true in
the case of a reissue application.

Patented and abandoned files may be obtained in
the Record Room and Abandoned File Room, respec-
tively, by filling out a slip (PO-125), found there,
and leaving this slip with the clerk in charge. The
patented files are drawn from the shelves and dis-
tributed, the slip being retained by the clerk as a
charge. The patent file should be promptly returned
when the Examiner has finished with it, and it should
not be kept longer than thirty days without renewing
the charge. Where the file is needed for the purpose
of reissue or interference, this information should be
given to the Record Room upon obtaining the file,
and as soon as these matters have been disposed of,
the file should be returned to the Record Room ..

When an interference is declared between a patent
and an application and the interference is forwarded
to the Examiner of Interference, the clerk in charge
of the Record Room should be informed in order that
the charge may be changed and the location of the
file known at all times. (Notice of March 19, 1947,
Revised.)

Examiners may expedite service in obtaining
abandoned files in the manner indicated in
711.04 (b).

When ordering a patented file from the Rec-
ord Room, the name of the person ordering the
file should appear on the form PO-125. It is
important that the Patent Number be stated
rather than the number of the application which
matured into the patent. An examiner ordering
a patented file should also place his division
number on the form. If the notation "HOLD"
is marked on the form PO-125 the case will be
held at the Record Room and in the absence of
such notation it will be sent to the division indi-
cated. Examiners may expedite service by re-
questing the patented file by telephone and later,
at a time indicated by the clerk in charge, the
examiner may appear at the record room to
complete the Form PO-125 and to pick up the
file. If the need for the file is not urgent, exami-
ner time may be saved by sending a form PO-
125, completed in the manner indicated above,
to the Record Room by regular Office Messenger
Service. The file will be delivered by the same
Messenger Service to the division indicated on
the form or it will be held at the record room
only if so requested on the form.

Patent Copy Sales Branch has charge of the
drawings in patented cases. Canceled sheets,
however, are not retained with the patented
drawings but are filed with the "Abandoned
Files and Drawings."

## 905.04 Marking Examiner's Copies of Patents

When the Examiners' copies of patents are sent to
their respective divisions to be filed, the assistant
Examiners who examined the application should
mark in ink on the face of the drawings, or the
specifications where there are no drawings, such
features as may be deemed advantageous in aiding
understanding of the patents in future searches.
(Order 2380, Revised.)

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