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# MANUAL OF PATENT EXAMINING PROCEDURE

PROPERTY OF THE UNITED STATES GOVERNMENT

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U. S. DEPARTMENT OF COMMERCE
Patent Office
Washington

## MANUAL OF PATENT EXAMINING PROCEDURE Third Edition

Transmitted herewith is the Third Edition of the Manual of Patent Examining
Procedure. This edition dated November 1961 completely supersedes the Second
Edition of the Manual published November 1953 with subsequent revisions.

There are many changes in the text of the Manual since Revision 4 of the
Second Edition. The sections listed below embody the more significant changes:

107.02

708.01

608.01

708.02

608.01 (m)

708.03

608.01 (v)

710.02 (b)

608.02 (1)

713.04

608.02 (s)

714.02

608.02 (x)

714.05

608.04 (a)

714.13

702.01

714.16

704

715.01 (a, b, c)

705.01 (c)

715.07 (a)

706

716

706.01

901.05 (b)

706.03 (i)

901.06 (a)

706.03 (k)

903.03

706.03 (1)

1005

706.03 (s)

1302.12

706.03 (x)

1401

706.03 (z)

1504

707.07 (d)

1701

707.07 (f)

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## MANUAL OF PATENT EXAMINING PROCEDURE Third Edition, November 1961

DEPARTMENT OF COMMERCE
UNITED STATES OF AMERICA

U.S. DEPARTMENT OF COMMERCE . PATENT OFFICE

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First Edition, November 1949

Revision 1, November 1950

Revision 2, December 1951

Revision 3, May 1952

Second Edition, November 1953

Revision 1, April 1955

Revision 2, June 1956

Revision 3, June 1957

Revision 4, July 1958

Third Edition, November 1961

For sale by the Superintendent of Documents, U.S. Government Printing Office
Washington 25, D.C.

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## Foreword

This Manual is published to provide examiners in the Patent Office with
a reference work on the practice and procedure within the Office as it relates
to their duties and operations. It contains instructions to examiners, as well
as other material in the nature of information and interpretation, and gen-
erally outlines the current procedure which the examiners are required or
authorized to follow in appropriate cases in the normal examination of
applications.

Examiners will continue to be governed as in the past by the applicable
statutes, the Rules of Practice, decisions, and orders and instructions issued
by the Commissioner, the Director, Patent Examining Operation, or the Super-
visory Examiners. Orders and Notices still in force which relate to the subject
matter included in this Manual are incorporated and identified as such. Orders
and Notices, or portions thereof, relating to the examiners' duties and functions
included in this Manual which have been omitted or not incorporated in the
text may be considered obsolete. Interference procedure not directly involv-
ing the Primary Examiner is not included in this Manual and, therefore,
Orders and Notices relating thereto remain in force.

Subsequent changes in practice and other revisions will be incorporated
in the form of substitute or additional pages for the Manual.

DAVID L. LADD
Commissioner.

NOVEMBER 15, 1961.

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## Acknowledgments

Preparation of the text of the Third Edition was directed by Ernest
A. Faller, Editor, under the supervision of Manuel C. Rosa, Director, Patent
Examining Operation.

The Supervisory Examiners, Isaac G. Stone, Norman H. Evans, Burn-
ham Yung Kwai, Sam Spintman, John S. Hull, Thomas F. Murphy, Harvey
E. Kauffman and George A. Gorecki took an active part in this work,
especially in rewriting Chapter 700.

Others who assisted were Pasquale J. Federico, Hyman B. Freehof,
Examiners-in-Chief; Joseph Schimmel, Deputy Solicitor; Samuel Levin,
La Verne L. Williams, Interference Examiners; and Florence A. Hoffman,
Division Clerk.

· Suggestions for improving the form and content of the Manual are
always welcome. They should be addressed to:

Commissioner of Patents,
Washington 25, D.C.

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## Contents

Page

Introduction

1

Chapter 100

Secrecy and Access

3

200

Types, Cross-Noting, and Status of Applications

7

300

Ownership and Assignment

21

400

Representative of Inventor or Owner

23

500

Receipt and Handling of Mail and Papers

31

600

Parts, Form and Content of Application

33

700

Examination of Applications

61

800

Restriction; Double Patenting

117

900

Prior Art, Classification, Search

137

1000

Petitions; Cases Submitted to Commissioner and Super-

159

visory Examiners.

1100

Interference

163

1200

Appeal

209

1300

Allowance and Issue

221

1400

Correction of Patent

229

1500

Design Patents.

235

1600

Plant Patents

239

1700

Miscellaneous

243

Appendix I

Table of Orders and Notices

247

Appendix II

List of Decisions Cited

253

Index

257

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## Introduction

## Constitutional Basis

The Constitution of the United States pro-
vides :

"ART. 1, SEC. 8. The Congress shall have
power . .. To promote the progress of science
and useful arts, by securing for limited times
to authors and inventors the exclusive right to
their respective writings and discoveries."

## Statutes

Pursuant to the foregoing provision of the
Constitution, Congress has passed a number of
statutes under which the Patent Office is or-
ganized and our patent system is established.
The provisions of the statutes can in no way
be changed or waived by the Patent Office.
Prior to January 1, 1953, the law relating to
patents consisted of various sections of the Re-
vised Statutes of 1874, derived from the Pat-
ent Act of 1870 and numerous amendatory and
additional acts. These statutes, as well as old
Title 35 of the United States Code, were com-
piled and reprinted several times prior to Jan-
uary 1, 1953, in a pamphlet entitled "Patent
Laws".

By an Act of Congress approved July 19,
1952, which came into effect on January 1,
1953, the patent laws were revised and codi-
fied. With certain exceptions applying to
applications filed and patents issued before
January 1, 1953, this law governs all cases in
the Patent Office. The patent law is Title 35
of the United States Code, which contains 95
sections numbered from 1 to 293, with gaps
in the numbering between various chapters of
the title. In referring to a particular section
of the new patent code the citation is given,
for example, as, 35 U.S.C. 31. The current
edition of the pamphlet "Patent Laws" re-
prints the patent code and some additional
statutes. The pamphlet also contains tables
showing where subject matter comparable to
present title 35 may be found in prior statutes,
and where subject matter of prior statutes will
be found in new title 35.

### Rules of Practice

One of the sections of the patent statute,
namely, 35 U.S.C. 6, authorizes the Commis-

sioner of Patents, subject to the approval of
the Secretary of Commerce, to establish regula-
tions, not inconsistent with law, for the con-
duct of proceedings in the Patent Office.
These regulations are set forth in a Patent
Office booklet entitled "Rules of Practice of the
United States Patent Office in Patent Cases".
The Rules of Practice have a long history,
going back to pamphlets of general informa-
tion to the public first issued in 1836. The
content has been determined by history, tra-
dition and other factors. Primarily the func-
tion of the Rules of Practice is to advise the
public of the regulations which have been
established in accordance with the statutes and
which must be followed before the Office. But
the Patent Office Rules of Practice have al-
ways additionally included, as numbered rules,
informational material, copies of sections of
the patent statutes, purely internal procedure,
and the like. It goes without saying that the
Rules of Practice govern the Examiners, as
well as applicants and their attorneys.

### Commissioner's Orders and Notices

From time to time, the Commissioner of
Patents has issued Orders and Notices relating
to various specific situations that have arisen
in operating the Patent Office. Notices and
circulars of information or instructions have
also been issued by the Supervisory Examiners
under authority of the Commissioner. Orders
and Notices have served various purposes in-
cluding directions to the examiners giving
them instruction, information, interpretations
and the like. Some may be for the informa-
tion of the public, advising what the Office will
do under specified circumstances.

## Decisions

In addition to the statutory regulations, the
actions taken by the Examiner in the examina-
tion of applications for patents are to a great
extent governed by decisions on prior cases.
Those dissatisfied with an Examiner's action
may have it reviewed. In general, it may be
stated that from that portion of the Exam-
iner's action pertaining to objections on formal
matters, a petition for review may be taken
to the Commissioner of Patents (1002) and

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## MANUAL OF PATENT EXAMINING PROCEDURE

from that portion of the Examiner's action
pertaining to the rejection of claims on the
merits, an appeal may be taken to the Board
of Appeals (1201). The distinction is set
forth in Rules 181 and 191. The decision of
the Commissioner on formal matters is final

but the decision of the Board of Appeals on
questions passed on by it may be carried to
the courts. See 1216. In citing decisions as
authority for his actions, the Examiner should
cite the decision in the manner set forth in
707.06.

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