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OCR transcription for search; preserved printed pages are authoritative

# Chapter 1100

1101
Preliminaries to an Interference

1101.01
Between Applications

1101.01 (a)
In Different Divisions

1101.01 (b)
Common Ownership

1101.01 (c)
The Interference Search

1101.01 (d)
Correspondence Under Rule 202

1101.01 (e)
How Conducted

1101.01 (f)
Not an Action on the Case

1101.01 (g)
When and When Not Needed

1101.01 (h)
Approval or Disapproval by Law Exami-
ner

1101.01 (1)

Failure of Junior Party to Overcome
Filing Date of Senior Party

1101.01 (j)
Suggestion of Claims

1101.01 (k)
Conflicting Parties Have Same Attorney
1101.01 (1)
Action To Be Made at Time of Suggest-
ing Claims

1101.01 (m)
Time Limit Set for Making Suggested
Claims

1101.01 (n)

Suggested Claims Made After Statutory
Period Running Against Case

1101.01 (0)

Application in Issue or in Interference

1101.02
With a Patent

1101.02 (a)

Copying Claims From a Patent

1101.02 (b)

Examiner Cites Patent Having Filing
Date Later Than That of Application
Difference Between Copying Patent
Claims and Suggesting Claims of an
Application

1101.02 (d)
Copied Patent Claims Not Identified

1101.02 (e)
Making of Patent Claims Not a Response
to Last Office Action

1101.02 (f)
Rejection of Copied Patent Claims

1101.02 (g)
After Prosecution of Application Is Closed
or Application Is Allowed

1101.03
Removing of Affidavits Before Interference
1102
Preparation of Interference Papers and Decla-
ration

1102.01
Preparation of Papers

1102.01 (a)
Letter to Examiner of Interferences

1102.01 (b)
Letters to Parties

1102.01 (c)
Interference Brief Card

1102.02
Declaration of Interference

1103

Suspension of Ex Parte Prosecution

1104
Jurisdiction of Interference

1105

Interference Matters Requiring Decision by
Primary Examiner

1105.01
Briefs and Hearings on Motion

1105.02.
Decision on Motion To Dissolve

1105.03

Decision on Motion to Amend or to Add or
Substitute an Application

1105.04
Decision on Motion Relating to Burden of
Proof

# Interference

1105.05
Dissolution on Primary Examiner's Own
Motion

1105.06
Form of Decision Letter

1105.07
Petition for Reconsideration

1106
Redeclaration and Additional Interferences

1106.01
After Decision on Motion

1106.02
By Addition of New Party

1107
Examiner's Entry in Interference File Subse-
quent to Interference

1108
Entry of Amendments Filed in Connection With
Motions

1109
Action After Award of Priority

1109.01
The Winning Party

1109.02
The Losing Party

1110
Action After Dissolution

1111
Miscellaneous

1111.01
Interviews

1111.02
Record in Each Interference Complete

1111.03
Overlapping Applications

1111.04
"Secrecy Order" Cases

1111.05
Amendments Filed During Interference

1111.06
Notice in File Relating to Motion Under Rule
234

1111.07
Conversion of Application From Joint to Sole
or Sole to Joint

1111.08
Reissue During Interference

1111.09
Suit Under 35 U.S.C. 146

1111.10
Benefit of Foreign Filing Date

1111.11
Patentability Reports

1111.12
Certified Copies of Part of an Application

1111.13
Consultation With Examiner of Interferences

1112
Letter Forms Used in Interferences

1112.01
To Law Examiner

1112.02
Suggesting Claims

1112.03
Same Attorney or Agent

1112.04
Requesting Withdrawal From Issue

1112.05
Declaration

1112.05(a)
Letter to Examiner of Interferences

1112.05(b)
Declaration Where One Party Has Two
Applications

1112.05(c)
Letter to Each Party

1112.06
Requests for Jurisdiction

1112.06 (a)
Requesting Jurisdiction of Application

1112.06 (b)
Requesting Jurisdiction of Interference

1112.07
Withdrawal of Interference

1112.08
Primary Examiner Initiates Dissolution

1112.09
Redeclaration

1112.09 (a)
Redeclaration After Decision on Motion

1112.09 (b)
Letter to Examiner of Interferences

1112.09 (c)
Letter to Retained Party

1112.09(d)
Letter to New Party

1112.09 (e)
Adding a Party (No Testimony Taken)

1112.09 (f)
Letter to Examiner of Interferences

1101.02 (c)

1101

1112.09 (g)
Letter to Original Party

1112.09 (h)
Letter to New Party

1112.09 (i)

Adding a Party (Testimony Taken)

1112.09 (j)
Letter to Examiner of Interferences

1112.09 (k)
Letter to Original Party

1112.09 (1)
Letter to New Party

1112.09 (m)
Conversion of Application During Inter-
ference

1112.09 (n)
Letter to Examiner of Interferences

1112.09(0)
Letter to Resulting Sole Party

1112.09 (p)
Letter to Other Party

1112.09 (q)
Changing Sole to Joint, Letter to Result-
ing Joint Parties

1112.09 (r)
Changing Sole to Joint, Letter to Other
Party

1112.09 (s)
Letter in Application Refused Conversion

1112.09 (t)
Letter to Patent Interference Examiner
1112.10 Denying Entry of Amendment Seeking Fur-
ther Interference

The interference practice is based on 35
U.S.C. 135 here set forth :

35 U.S.C. 135. Interferences. Whenever an appli-
cation 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 applicants, or applicant and
patentee, as the case may be. The question of pri-
ority of invention shall be determined by a board of
patent interferences .(consisting of three examiners
of interferences) whose decision, if adverse to the
claim of an applicant, shall constitute the final re-
fusal by the Patent Office of the claims involved, and
the Commissioner may issue a patent to the applicant
who is adjudged the prior inventor. A final judgment
adverse to a patentee from which no appeal or other
review has been or can be taken or had shall con-
stitute cancellation of the claims involved from the
patent, and notice thereof shall be endorsed on copies
of the patent thereafter distributed by the Patent
Office.

A claim which is the same as, or for the same or
substantially the same subject matter as, a claim of
an issued patent may not be made in any application
unless such a claim is made prior to one year from
the date on which the patent was granted.

Rule 201 sets forth the definition of an in-
terference and is here reproduced.

Rule 201. Definition, when declared. (a) An inter-
ference is a proceeding instituted for the purpose of
determining the question of priority of invention be-
tween two or more parties claiming substantially the
same patentable invention and may be instituted as
soon as it is determined that common patentable sub-
ject matter is claimed in a plurality of applications
or in an application and a patent.

(b) An interference will be declared between pend-
ing applications for patent or for reissue of different
parties when such applications contain claims for sub-

stantially the same invention which are allowable in
the application of each party, and interferences will
also be declared between pending applications for pat-
ent, or for reissue, and unexpired original or reissued
patents, of different parties, when such applications
and patents contain claims for substantially the same
invention which are allowable in all of the applica-
tions involved, in accordance with the provisions of
these rules.

(c) Interferences will not be declared, nor contin-
ued, between applications or applications and patents
owned by the same party unless good cause is shown
therefor. The parties shall make known any and all
right, title and interest affecting the ownership of
any application or patent involved or essential to the
proceedings, not recorded in the Patent Office, when
an interference is declared, and of changes in such
right, title, or interest, made after the declaration of
the interference and before the expiration of the time
prescribed for seeking review of the decision in the
interference.

## 1101 Preliminaries to an Interference

An interference is often an expensive and
time-consuming proceeding. Yet, it is neces-
sary to determine priority when two applicants
before the Office are claiming the same subject
matter and their filing dates are close enough
together that there is a reasonable possibility
that the first applicant to file is not the first
inventor.

The greatest care must therefore be exer-
cised both in the search for interfering appli-
cations and in the determination of the ques-
tion as to whether an interference should be
declared. Also the claims in recently issued
patents, especially those used as references
against the application claims, should be con-
sidered for possible interference.

The question of the propriety of initiating
an interference in any given case is affected by
so many factors that a discussion of them here
is impracticable. Some circumstances which
render an interference unnecessary are herein-
after noted, but each instance must be carefully
considered if serious errors are to be avoided.

In determining whether an interference ex-
ists a claim should be given the broadest inter-
pretation which it reasonably will support,
bearing in mind the following general princi-
ples :

(a) The interpretation should not be
strained.

(b) Express limitations in the claim should
not be ignored nor should limitations be read
therein to meet the exigencies of a particular
situation.

( )

(

applicable in interferences, i.e., no application
should be placed in interference unless it dis-
closes clearly the structure called for by the
count and the fact that it discloses equivalent
structure is no ground for placing it in inter-
ference.

(d) Before a claim (unless it is a patented
claim) is made the count of an interference
it should be allowable and in good form. No
pending claim which is indefinite, ambiguous
or otherwise defective should be made the count
of an interference.

(e) A claim copied from a patent, if am-
biguous, should be interpreted in the light of
the patent in which it originated.

(f) If doubts exist as to whether there is an
interference, an interference should not be de-
clared.

## 1101.01 Between Applications

Where two or more application are found to
be claiming the same patentable invention they
may be put in interference, dependent on the
status of the respective cases and the difference
between their filing dates. However, effective
November 29, 1961, no interference should be
declared which does not involve either a patent
or an application which, apart from the inter-
ference, is in condition for allowance, unless
there are unsual circumstances which justify
such action, and then only after submission to
and approval by a Supervisory Examiner.
(Basis: Notice of November 29, 1961.)

Before taking any steps looking to the for-
mation of an interference, it is very essential
that the Examiner 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 readable upon the disclosure of each
party and allowable in each application.

It is to be noted that while the claims of two
or more applicants may vary in scope and in
immaterial details, yet if directed to the same
invention, an interference exists. But mere dis-
closure by an applicant of an invention which
he is not claiming does not afford a ground for
suggesting to that applicant claims for the said
invention copied from another application that
is claiming the invention. The intention of the
parties to claim the same patentable invention,
as expressed in the summary of the invention or
elsewhere in the disclosure, or in the claims, is
an essential in every instance.

When the subject matter found to be allow-
able in one application is disclosed and claimed
in another application, but the claims therein
to such subject matter are either nonelected or
subject to election, the question of interference
should be considered. The requirement of Rule

201(b) that the conflicting applications shall
contain claims for substantially the same in-
vention which are allowable in each application
should be interpreted as meaning generally
that the conflicting claimed subject matter is
sufficiently supported in each application and
is patentable to each applicant over the prior
art. The statutory requirement of first inven-
torship is of transcendent importance and every
effort should be made to avoid the improvident
issuance of a patent when there is an adverse
claimant.

Following are illustrative situations where
the examiner should take action toward insti-
tuting interference, including correspondence
under Rule 202, if necessary :

A. Application filed with claims to divisible
inventions I and II. Before action requiring
restriction is made, examiner discovers another
case having allowed claims to invention I.

The situation is not altered by the fact that
a requirement for restriction had actually been
made but had not been responded to. Nor is
the situation materially different if an election
of noninterfering subject matter had been made
without traverse but no action given on the
merits of the elected invention.

B. Application filed with claims to divisible
inventions I and II and in response to a re-
quirement for restriction, applicant traverses
the same and elects invention I. Examiner
gives an action on the merits of I. Examiner
subsequently finds an application to another
containing allowed claims to invention II and
which is ready for issue.

The situation is not altered by the fact that
the election is made without traverse and the
nonelected claims possibly cancelled.

C. Application filed with generic claims and
claimed species a, b, c, d, and e. Generic claims
rejected and election of a single species required.
Applicant elects species a but continues to urge
allowability of generic claims. Examiner finds
another application claiming species b which
is ready for issue.

The allowability of generic claims in the first
case is not a condition precedent to setting up
interference.

D. Application filed with generic claims and
claims to five species and other species disclosed
but not specifically claimed. Examiner finds
another application the disclosure and claims
of which are restricted to one of the unclaimed
species and have been found allowable.

The prosecution of generic claims is taken as
indicative of an intention to cover all species
disclosed which come under the generic claim.

In all the above situations, the applicant has
shown an intention to claim the subject matter
which is actually being claimed in another ap-

## 1101.01 (a)

plication. These are to be distinguished from
situations where a distinct invention is claimed
in one application but merely disclosed in an-
other application without evidence of an intent
to claim the same. The question of interference
should not be considered in the latter instance.
However, if the application disclosing but not
claiming the invention is senior, and the junior
application is ready for issue, the matter should
be discussed with the Group Supervisor to de-
termine the action to be taken. (Basis: Memo-
randum of August 5, 1949.)

## 1101.01 (a) In Different Groups

An interference between applications as-
signed to different groups is declared by the
group where the controlling interfering claim
would be classified. After correspondence un-
der Rule 202, if necessary, appropriate trans-
fer of one of the applications is made. After
termination of the interference, further trans-
fer may be necessary depending upon the out-
come.

## 1101.01 (b) Common Ownership

Where applications by different inventors but
of common ownership claim the same subject
matter or subject matter that is not patentably
different :-

I. Interference therebetween is normally not
instituted since there is no conflict of interest.
Elimination of conflicting claims from all ex-
cept one case should usually be required, Rule
78(b). The common assignee must determine
the application in which the conflicting claims
are properly placed. Treatment by rejection
is set forth in Section 305.02 (a).

II. Where an interference with a third party
is found to exist, the owner should be required
to elect which one of the applications shall be
placed in interference.

Whenever a common assignee of applications
by different inventors is called upon to eliminate
conflicting claims from all except one applica-
tion under the provisions of Rule 78 (b), a copy
of the Office action making this requirement
must be sent directly to each of the applicants.

Whenever a common assignee is required un-
der Rule 201(c) to elect one of the conflicting
applications owned by him for purpose of inter-
ference with a third party, a copy of the Office
action making this requirement must be sent to
the applicants in each of the commonly assigned
applications. (Basis : Notice of March 1, 1962.)

## 1101.01 (c) The Interference Search

The search for interfering applications must
not be limited to the class or subclass in which
it is classified, but must be extended to all classes

in or out of the Examining Group which it has
been necessary to search in the examination of
the application. (Basis: Notice of August 2,
1909.)

Moreover, the possibility of the existence of
interfering applications should be kept in mind
throughout the prosecution. Where the Ex-
aminer at any time finds that two or more ap-
plications are claiming the same invention and
he does not deem it expedient to institute inter-
ference proceedings at that time, he should
make a record of the possible interference as,
on the face of the file wrapper in the space
reserved for class and subclass designation.
His notations, however, if made on the file
wrapper or drawings, must not be such as to
give any hint to the applicants, who may in-
spect their own applications at any time, of
the date or identity of a supposedly interfer-
ing application. Serial numbers or filing dates
of conflicting applications must never be placed
upon drawings or file wrappers. A book of
"Prospective Interferences" should be main-
tained containing complete data concerning
possible interferences and the page and line of
this book should be referred to on the respective
file wrappers or drawings. For future refer-
ence, this book may include notes as to why
prospective interferences were not declared.

In determining whether an interference ex-
ists, the Primary Examiner must 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 202
(Basis: Order 2687).

"The appropriate Director should be con-
sulted if it is believed that the circumstances
justify an interference between applications
neither of which is ready for allowance."

# 1101.01 (d) Correspondence U n d e r Rule 202

Correspondence under Rule 202 may be
necessary.

Rule 202. Preparation for interference between ap-
plications; preliminary inquiry of junior applicant.
In order to ascertain whether any question of pri-
ority arises between applications which appear to in-
terfere 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 char-
acter of the earliest fact or act, susceptible of proof,
which can be relied upon to establish conception of the
invention under consideration for the purpose of es-
tablishing priority of invention. The statement filed
in compliance with this rule will be retained by the
Patent Office separate from the application file and if
an interference is declared will be opened simultane-

ously with the preliminary statement of the party fil-
ing the same. In case the junior applicant makes no
reply within the time specified, not less than thirty
days, or if the earliest date alleged is subsequent to the
filing date of the senior party, the interference ordi-
narily will not be declared.

Under Rule 202 the Commissioner may re-
quire an applicant 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 considera-
tion." Such affidavit does not become a part of
the record in the application, nor does any cor-
respondence relative thereto. The affidavit,
however, will become a part of the interference
record, if an interference is formed.

# 1101.01(e) Correspondence Under Rule 202, How Con- ducted

The Rule 202 correspondence is conducted by
the Law Examiner on receipt from the Pri-
mary Examiner of notice of the proposed inter-
ference set forth in a letter modeled after the
form found under "Letter Forms Used in In-
terferences" (1112.01).

This letter and a carbon copy thereof, both
signed by the Primary Examiner, together
with the files are forwarded to the Law Exam-
iner. The files, however, are not retained by
the Law Examiner, but are returned to the
examining division where they are held sepa-
rate from other files while the correspondence
is being conducted.

In preparing cases for submission to the Law
Examiner and in subsequent treatment 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 as indicated
on the form.

(2) It should be stated which of the applica-
tions, if any, is ready for allowance.

(3) If an application is a division or con-
tinuation of an earlier one, this fact should be
stated. If it is a continuation-in-part, this
should be indicated along with a statement
whether or not the application is entitled to the
benefit of the filing date of the earlier applica-
tion for the conflicting subject matter.

(4) If two or more applications are owned
by the same assignee, or are presented by the
same attorney, it should be so stated.

(5) Only the broadest claim proposed for
interference or, if various aspects of an inven-
tion are claimed, the broadest claim to each
feature, need be identified but if the claims are

not present in either of the applications, a pro-
posed count should be set out in this letter. "See
the second form letter in 1112.01.

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

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

(8) Letters of submission should be in dupli-
cate. (Basis: Notice of April 18, 1919.)

# 1101.01(f) Correspondence Under Rule 202, Not an Action on the Case

Correspondence under Rule 202 is not an
action on the case. Hence, it cannot serve to
extend the statutory period if the case is await-
ing action by the applicant.

1101.01 (g) Correspondence Under
Rule 202, When and
When Not Needed

Ordinarily where there is a difference be-
tween the effective U.S. filing dates of applica-
tions of the senior and junior parties of about
six months to two years the Law Examiner
will require from the junior party a verified
statement relating to his date of conception.
(Extract from Notice of April 18, 1919.)

The following cases need not be submitted
to the Law Examiner :

(1) Where any junior applicant may be en-
titled to a foreign filing date at least as early
as the senior applicant's filing date in this
country.

(2) Where any junior applicant is entitled
to a filing date in this country which is within
a six month period prior to or after the senior
applicant's filing date. (Basis : Order 2750.)

In general it may be stated that this cor-
respondence is confined to those cases having a
difference in effective U.S. filing dates within
the range of six months to two years. By "ef-
fective" filing date is meant the U.S. filing date
to which the application is entitled, i. e., its
own filing date if it be an "original" applica-
tion, or the filing date of a parent applica-
tion, as in the case of a "divisional" or "con-
tinuation" or "continuation-in-part" applica-
tion (and the parent application discloses the
conflicting subject matter).

Exceptions to the above general rule are the
following: (a) If the invention is of simple
character, thereby requiring but a short time to
be perfected, correspondence is usually not had

if the senior party's case is ready for issue, and
the difference in dates exceeds one year.
(b) Where the senior party's case is not ready
for issue, or where the junior party's claims
would form the counts of the interference, or
where the embodiments of the invention in the
two applications are substantially identical,
correspondence is had even though the differ-
ence in dates exceeds two years.

In other cases where the senior party's appli-
cation is ready for issue and the difference in
effective filing dates exceeds two years, or if it
be a simple case, one year, it is assumed that
there is no question of priority involved and
the senior application is forthwith sent to issue.

In cases involving design applications where
the senior application has a filing date six
months prior to that of the junior party, and is
allowable, send the senior application to issue
without correspondence under Rule 202.

In summary, correspondence under Rule 202
is not had in the following cases:

(1) Where the effective date of the senior
party is less than six months prior to the date
to which another case is entitled, as by its own
filing date or that of a prior application of
which the instant case is a division, continua-
tion, or continuation-in-part (conflicting sub-
ject matter is disclosed in parent application),
including situations where there are three or
more applications claiming the same invention
and the oldest two are less than six months
apart in effective filing dates.

(2) Where any junior applicant has an
available foreign filing date at least as early as
the U.S. filing date of the senior applicant.

(3) Where there is a difference in effective
U.S. filing dates of more than two years (or
in a simple case, one year), and the application
of the senior party is ready for issue unless
(a) the claims of the junior party would consti-
tute the counts of the interference or (b) the
disclosures of the claimed invention in the two
cases are substantially identical.

(4) Where one of the parties to the prospec-
tive interference is a patentee. If the applica-
tion is junior to the effective date of the patent,
an affidavit under Rule 204 is required unless
there is an affidavit under Rule 131 in the ap-
plication of the junior party showing a date of
completion of the invention or a conception
date coupled with diligence that is earlier than
the effective filing date of the senior party.

Where the case falls into category (1) or
(2), steps are promptly taken to declare an
interference and this is true also as to (4) un-
less a Rule 204 affidavit is required. If the case
falls in the principal portion of category (3),
the senior application is passed to issue, it be-
ing assumed that there is no question of prior-

ity to be determined; but if the senior party's
application is not ready for issue or if condi-
tions (a) or (b) of category (3) obtains, then
correspondence under Rule 202 is conducted.

1101.01 (h) Correspondence Under
Rule 202, Approval or
Disapproval by Law Ex-
aminer

The Law Examiner will stamp the letters
from the Examiner either "Approved" or "Dis-
approved," 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 202 fails to antedate the fil-
ing date of the senior applicant, the Law Ex-
aminer disapproves the proposed interference
and the Examiner then follows the procedure
outlined in the next section. When a "Disap-
proved" letter is returned to the examining
division it is accompanied by a note to be at-
tached to the senior party's case requesting the
Issue and Gazette Branch to return the case to
the Law Examiner after the notice of allow-
ance is sent.

Where the junior party, as required by Rule
202, 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 claims and the Examiner
may then proceed with the preparation of the
cases for interference.

## SEALING STATEMENT

When an interference is to be declared in-
volving applications which had previously been
submitted to the Law Examiner for corre-
spondence under Rule 202, before forwarding
the files to the Interference Division, the Ex-
aminer should ascertain from the Law Exam-
iner if any such statement has been filed and,
if so, seal this statement and forward it with
the files to the Interference Division. (Basis:
Order 3380.)

The oath under Rule 202 becomes a part of
the interference file in contradistinction to the
application file as in the case of an affidavit
under Rule 131 or Rule 204 but, like them, is
subject to inspection on the opening of the pre-
liminary statements.

When the formation of an interference be-
tween two parties is necessary, all other appli-
cants claiming the contested invention should
be placed in the interference irrespective of
their filing dates or of any dates alleged under
Rule 202, provided there is no statutory bar to.

the allowance of the claims in the other appli-
cations.

1101.01(i)
Correspondence Under
Rule 202, Failure of Jun-
ior Party To Overcome
Filing Date of Senior
Party

If the earliest date alleged by a junior party
in his affidavit under Rule 202 fails to overcome
the filing date of the senior party and if the in-
terference is not to be declared (note that an
interference might be necessary for other rea-
sons), the senior party's application will be
sent to issue as speedily as possible and the con-
flicting claims of the junior applicant will be
rejected on the patent when granted. A short-
ened period for response may be set in the
senior party's case. (See 710.02(b).)

After the senior applicant's application has
been passed for issue, the application is sent
to the Law Examiner by the Issue and Gazette
Branch in accordance with a note to that effect
attached to the application 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 dis-
closure then being available as prior art in
treating the claims of the junior application.
The examiner may make a supplemental action
on the junior applicant's case when the senior
applicant's patent issues.

### INTERIM PROCEDURE

In the meantime the junior party's applica-
tion will be treated in accordance with the
following :

Where a junior party after correspondence
under Rule 202 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:

In view of Rule 202, action on this case (or
on claims 1, 2, 4, etc., indicating the conflict-
ing claims and claims not patentable over the
senior party's case) is suspended for six
months to determine whether an interference
will be declared (unless these claims are can-
celed). At the end of the six months appli-
cant should call up the case for action.

The letter should include the usual action on
the remaining claims in the case, indicating
what, if any, claims are allowable. (Basis:
Order 2913.)

If the Examiner's letter is a suspension of
action on the entire case, the case should be

noted on the Examiner's calendar at the date
marking the end of the six months period and
on the Docket Clerk's cards and, if applicant
does not call up the case, the Examiner should
do so unless the senior party's patent will soon
issue, since there is no period for response run-
ning against the applicant and the case should
not be permitted to remain indefinitely among
the files in the examining division.

It sometimes happens that the application of
the junior party is not amended and nothing
else occurs to bring it to the attention of the
Examiner, and that the patent to the senior
party issues and is not promptly cited to the
junior party. This works an unnecessary hard-
ship upon the junior applicant and the Office
should make every effort to give him action in
view of this reference at the earliest possible
date. To this end, the Examiner should keep
informed as to the progress of the senior appli-
cation and cite the patent with appropriate
comment to the junior applicant immediately
after its issue. (Basis: Notice of February 15,
1921.)

If, at the end of the six months' suspension,
it appears likely that the senior application will
be passed to issue within the next six months,
action on the conflicting claims and claims not
patentable over the senior party's case should
again be suspended for a period of six months.
Of course, if the first suspension was directed
to certain claims only and the usual action was
given on other claims, it is necessary for the ap-
plicant to make such response as is required to
the action on the other claims.

If, at the end of the first six months' suspen-
sion, there is no likelihood of the senior party's
application being put in condition for allow-
ance within the next six months and the only
unsettled question in the junior party's case is
the disposition of the claims on which action
was suspended, then the interference should be
declared.

If the junior application is in issue when the
interference is discovered and, in correspond-
ence under Rule 202, the junior applicant fails
to make the date of the senior party, the junior
application should be withdrawn from issue
(see "Letter Forms Used in Interferences,"
1112.04) and a letter sent informing him that
the interfering claim or claims and claims not
patentable over the senior party's case cannot
be allowed him as his date of invention in-
dicates he is not the first inventor. Action
should be suspended for six months, the Exam-
iner noting the expiration date on his calendar
and advising applicant to call the case up for
action at the end of the six months. There-
after, procedure should be as above.

1101.01(j)

#### 1101.01(j) Suggestion of Claims

Rule 203. Preparation for interference between ap-
plications; suggestion of claims for interference. (a)
Before the declaration of interference, it must be de-
termined that there is common patentable subject mat-
ter in the cases of the respective parties, patentable
to each of the respective parties, subject to the deter-
mination of the question of priority. Claims in the
same language, to form the counts of the interfer-
ence, must be present or be presented, in each appli-
cation.

(b) When the claims of two or more applications
differ in phraseology, but relate to substantially the
same patentable subject matter, the examiner shall,
if it has been determined that an interference should
be declared, suggest to the parties such claims as are
necessary to cover the common invention in the same
language. The parties to whom the claims are sug-
gested will be required to make those claims (i. e., pre-
sent the suggested claims in their applications by
amendment) within a specified time, not less than 30
days, in order that an interference may be declared.
The failure or refusal of any applicant to make any
claim suggested within the time specified, shall be
taken without further action as a disclaimer of the
invention covered by that claim unless the time be
extended.

(c) The suggestion of claims for purpose of inter-
ference will not stay the period for response to an
Office action which may be running against an appli-
cation, unless the claims are made by the applicant
within the time specified for making the claims.

(d) When an applicant presents a claim in his ap-
plication (not suggested by the examiner as specified
in this rule) which is copied from some other appli-
cation, either for purpose of interference or otherwise,
he must so state, at the time he presents the claim and
identify the other application.

Although the subject of suggesting claims is
treated in detail at this point in the discussion
of a prospective interference between applica-
tions, some of the practice here outlined is also
applicable to a prospective interference with a
patent.

If the applications contain identical claims
covering the entire interfering subject matter
the Examiner proceeds under Rule 207 to form
the interference; otherwise, proper claims must
be suggested to some or all of the parties.

It should be noted at this point that if an
applicant copies a claim from another appli-
cation without suggestion by the Examiner,
Rule 203(d) requires him to "so state, at the
time he presents the claim and identify the
other application."

The question of what claims to suggest to the
interfering applications is one of great im-
portance, and failure to suggest such claims as

will define clearly the matter in issue leads to
confusion and to prolongation of the contest.

While it is much to be desired that the claims
suggested (which are to form the issue of the
interference) should be claims already present
in one or the other of the applications, yet if
claims cannot be found in the applications
which satisfactorily express the issue it may be
necessary to frame a claim or claims reading on
all the applications and clearly expressing the
interfering subject matter and suggest it or
them to all parties.

It is not necessary that all the claims of each
party that read on the other party's case be sug-
gested. This would lead in some instances to
a needless multiplication of counts of the issue
and a consequent complication of the proceed-
ings to no good purpose. The counts of the
issue should be patentably different. The test
in an interference for patentably distinct counts
is not whether they may appear in the same
patent but whether they differ sufficiently to
sustain separate patents. In general, the broad-
est patentable claim which is allowable in each
case should be used as the interference count
and additional claims should not be suggested
unless they meet the foregoing test as to pat-
entable distinction. The same precaution
should be observed in the declaration of com-
panion interferences involving several common
parties. Claims not patentably different from
counts of the issue are rejected in the applica-
tion of the defeated party after termination of
the interference.

The claims to form the issue of the interfer-
ence are suggested to all parties who have not
already made those claims. (See "Letter Forms
Used in Interferences," 1112.02.)

# 1101.01 (k) Suggestion of Claims, Conflicting Parties Have Same Attorney

Rule 208. Conflicting parties having same attorney.
Whenever it shall be found that two or more parties
whose interests appear to be in conflict are represented
by the same attorney or agent, the examiner shall
notify each of said principal parties and the attorney
or agent of this fact, and shall also call the matter
to the attention of the Commissioner. If conflicting
interests exist, the same attorney or agent or his asso-
ciates will not be recognized to represent either of the
parties whose interests are in conflict without the
consent of the other party or in the absence of special
circumstances requiring such representation, in fur-
ther proceedings before the Patent Office involving the
matter or application or patent in which the conflict-
ing interests exist.

This notification should be given to both par-
ties at the time claims are suggested even

though claims are suggested to only one party.
Notation of the persons to whom this letter is
mailed should be made on all copies. (See
"Letter Forms Used in Interferences," 1112.03.)
The attention of the Commissioner is not called
to the fact that two conflicting parties have the
same attorney until an actual interference is
set up and then it is done by notifying the
Examiner of Interferences as explained in
1102.01 (b).

## 1101.01(1) Suggestion of Claims, Ac- tion To Be Made at Time of Suggesting Claims

At the same time that the claims are sug-
gested an action is made on each of the applica-
tions that are up for action by the Examiner,
whether they be new or amended cases. In this
way possible motions under Rules 233 and 234
may be forestalled. That is, the action on the
new or amended case may bring to light pat-
entable claims that should be included as
counts of the interference, and, on the other
hand, the rejection of unpatentable claims will
serve to indicate to the opposing parties the
position of the Examiner with respect to such
claims.

The Examiner is required to inform each
applicant when the interference is declared
what claims in his application are unpatentable
over the issue. There would seem to be no ob-
jection to, and many advantages in, giving this
information when suggesting claims.

Where in 'a letter suggesting claims to an
applicant for interference, the Examiner states
that none of the claims in the case is patentable
over the claims suggested, this statement does
not constitute a formal rejection of the claims,
so that after the expiration of the period fixed
for presenting the suggested claims, if no
amendment has been filed, the Examiner should
make a definite action on the claims then in
the application.

## 1101.01(m) Suggestion of Claims, Time Limit Set for Mak- ing Suggested Claims

Where claims are suggested for interference,
a limited period determined by the Examiner,
not less than 30 days, is set for reply. See
710.02(c).

Should any one of the applicants fail to
make the claim or claims suggested to him,
within the time specified, all his claims not pat-
entable thereover are rejected on the ground
that he has disclaimed the invention to which
they are directed. If applicant makes the sug-

gested claims later they will be rejected on the
same ground unless the delay is satisfactorily
explained. (706.03(u).)

1101.01 (n) Suggestion of Claims,
Suggested Claims Made
After Statutory Period
Running Against Case

If claims are suggested in an application near
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 thus made within the specified time, the
case becomes abandoned in the absence of a
responsive amendment filed within the six
months' period. Rule 203 (c).

## 1101.01(o) Suggestion of Claims, Application in Issue or in Interference

An application will not be withdrawn from
issue for the purpose of suggesting claims for
an interference. When an application is pend-
ing before the Examiner which contains one or
more claims, which may be made in a case in
issue, the Examiner may write a letter suggest-
ing 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 entered
and the interference declared. Such letters
must be submitted to the Supervisory Exam-
iner. If the suggested claims are not copied in
the application in issue, it may be necessary to
withdraw it from issue for the purpose of re-
jecting other claims on the implied disclaimer
resulting from the failure to copy the suggested
claims, using form at 1112.04.

When the Examiner suggests one or more
claims appearing in a case in issue to an appli-
cant whose case is pending before him, the case
in issue will not be withdrawn for the purpose
of interference unless the suggested claims
shall be made in the pending application with-
in the time specified by the Examiner. The
letter suggesting claims should be submitted to
the Supervisory Examiner for approval.

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

claims may be made, proper steps may be taken
to prevent the final fee from being applied.
(Basis : Order 1365.)

The Examiner should borrow the allowed ap-
plication from the Issue and Gazette Branch
and hold the file until the claims are made or
the time limit expires. This avoids any pos-
sible issuance of the application as a patent
should the final fee be paid. To further insure
against the issuance of the application, the
Examiner may pencil in the blank space fol-
lowing "Final Fee" on the file jacket the ini-
tialled request: "Defer for interference."
The final fee is not applied to such an applica-
tion until the following procedure is carried
out.

When notified that the final fee has been re-
ceived, the Examiner shall prepare a memo to
the Issue and Gazette Branch requesting that
issue of the patent be deferred for a period of
90 days due to a possible interference. This
allows a period of 60 days to complete any
action needed. At the end of this 60 day
period, the application must either be released
to the Issue and Gazette Branch or be with-
drawn from issue, using form at 1112.04.

When an application is found having claims
to be suggested to other applications already
involved in interference, to form another inter-
ference, the Primary Examiner requests juris-
diction of the last named applications. To this
end a separate letter (see form at 1112.06 (a)),
addressed to the Commissioner is written for
each file, referring only to that file, and is
placed therein. This letter goes to the Super-
visory Examiner for his approval. In case the
application is to be added to the existing inter-
ference, the Primary Examiner requests juris-
diction of the interference. In this case, form
at 1112.06 (b) is used. This is addressed to the
Examiner of Interferences.

# 1101.02 With a Patent

Rules 204, 205 and 206 quoted below deal
with interference involving patents.

Rule 204. Interference with a patent; afdavit by
junior applicant. (a) The fact that one of the parties
has already obtained a patent will not prevent an inter-
ference. Although the Commissioner has no power to
cancel a patent, he may grant another patent for the
same invention to a person who, in the interference,
proves himself to be the prior inventor.

(b) When the filing date or effective filing date of
an applicant is subsequent to the filing date of a
patentee, the applicant, before an interference will be
declared, shall file an affidavit that he made the inven-
tion in controversy in this country, before the filing
date of the patentee, or that his acts in this country
with respect to the invention were sufficient under the

law to establish priority of invention relative to the
filing date of the patentee; and, when required, the
applicant shall file an affidavit (of the nature speci-
fied in rule 131) setting forth facts which would prima
facie entitle him to an award of priority relative to
the filing date of the patentee.

As a patentee may not alter his claims (ex-
cept by reissue) an applicant must make one
or more claims of the patent or a claim cor-
responding substantially to a claim of the pat-
ent and differing therefrom by an immaterial
variation or by the exclusion of an immaterial
limitation to invoke an interference as stated in
Rule 205.

Where a patent claim must be modified, the
count of the interference should be the broader
claim as between the patentee and the applicant.
Thus, if an immaterial limitation is excluded,
the count of the interference should be a copy
of the modified patent claim as made in the
application following the practice as explained
in Bonine v. Bliss, 1919 C.D. 75; 265 O.G. 306.
(Basis: Notice of October 3, 1962.)

For the practice to be followed where an in-
terference in fact exists between a patent and
an application but, because of overlapping nu-
merical ranges or differences in Markush
groups, for instance, priority cannot be prop-
erly determined on the basis of a patent claim,
see the following Notice :

. It has been found that the practice set forth
in Ex parte Card and Card, 112 O.G. 499, 1904
C.D. 383, does not adequately take care of all
situations where there is an interference in fact
between a patent and an application but there
are obstacles to the applicant making the exact
patent claim.

In those cases where the claim of the patent
contains an immaterial limitation which can
be wholly eliminated or suitably modified so as
to broaden the claim, the practice set forth in
Ex parte Card and Card should continue to be
followed.

A. In some cases, the disclosure in the appli-
cation, although for the same generic invention
in fact as the patent claim, is somewhat nar-
rower than the claim of the patent. Under such
circumstances, the applicant should be per-
mitted to copy the claim of the patent as exactly
as possible, modifying it only by substituting
language based upon his own narrower disclos-
ure for the limitation in the patent claim which
he can not make. In declaring the interference,
the exact patent claim should be used as the
count of the interference and it should be indi-
cated that the claim in the application corre-
sponds substantially to the interference count.

Examples of the practice outlined in the pre-
ceding paragraph :

I. PATENT CLAIMS A RANGE OF 10 TO 90.

Application discloses a range of 20 to 80,
there being no distinction in substance between
the two ranges.

Application may be permitted to copy the pat-
ent claim, modifying it by substituting his
range of 20 to 80 for the range of 10 to 90 in
the patent claim.

Interference should be declared with the ex-
act patent claim as the count and it should be
indicated that the claim in the application
corresponds substantially to the interference
count.

## II. PATENT CLAIMS A MARKUSH GROUP OF 6 MEMBERS.

Application discloses a Markush group of 5
of the same 6 members, there being no distinc-
tion in substance between the two groups.

Applicant may be permitted to copy the pat-
ent claim, modifying it by substituting his
5-member group for the 6-member group in
the patent claim.

Interference should be declared with the ex-
act patent claim as the count and it should be
indicated that the claim in the application cor-
responds substantially to the interference count.

₿. In some cases, the disclosure in the ap-
plication, although for the same invention in
fact as the patent claim, is somewhat broader
than the claim of the patent. Under such cir-
cumstances, in initially declaring the interfer-
ence the applicant should be required to make
the exact patent claim and the interference
should be declared on that claim. However, if
the applicant presents and prosecutes a motion
to substitute a broader count and, in connec-
tion with such a motion, makes a satisfactory
showing, as by demonstrating that his best
evidence lies outside the exact limit of the
patent claim, the applicant may be permitted
to substitute a count wherein language based
upon his slightly broader disclosure replaces
the corresponding limitation in the patent
claim. In redeclaring the interference, the
application claim should be used as the count
of the interference and it should be indicated
that the claim in the patent corresponds sub-
stantially to the interference count.

Examples of the practice outlined in the pre-
ceding paragraph :

### I. PATENT CLAIMS A RANGE OF 20 TO 80.

Application discloses a range of 10 to 90,
there being no distinction in substance between
the two ranges.

Applicant should be required initially to
copy the exact patent claim.

Interference should be declared initially with
the exact patent claim as the count.

If, in connection with a motion to substitute,
the applicant makes a satisfactory showing of
the necessity for including the ranges of 10 to
20 and 80 to 90 in the interference count, he
may be permitted to present the patent claim
modified by substituting his range of 10 to 90
for the range of 20 to 80 in the patent claim.

Interference should be redeclared with the
application claim as the count and it should be

indicated that the claim in the patent corre-
sponds substantially to the interference count.

II. PATENT CLAIMS A MARKUSH GROUP OF 5
MEMBERS.

Application discloses a Markush group of 6
members, including the 5 claimed in the pat-
ent, there being no distinction in substance be-
tween the two groups.

Applicant should be required initially to
copy the exact patent claim.

Interference should be declared initially with
the exact patent claim as the count.

If, in connection with a motion to substitute,
the applicant makes a satisfactory showing of
the necessity for including the sixth member
in the interference count, he may be permitted
to present the patent claim modified by substi-
tuting his 6-member group for the 5-member
group in the patent claim.

Interference should be redeclared with the
application claim as the count and it should be
indicated that the claim in the patent corre-
sponds substantially to the interference count.

C. Some cases may include aspects of both
A and B, above. Such cases should be appro-
priately treated by the same general principles
outlined above.

Examples of cases involving mixed aspects :
I. PATENT CLAIMS A RANGE OF 10 TO 80.

Application discloses a range of 20 to 90,
there being no distinction in substance between
the two ranges.

(a) Initially, applicant may be permitted to
copy the patent claim, modifying it by sub-
stituting the range of 20 to 80 for the range
of 10 to 80 in the patent claim.

Interference should be initially declared with
the exact patent claim as the count and it
should be indicated that the claim in the ap-
plication corresponds substantially to the in-
terference count.

(b) If, in connection with a motion to sub-
stitute, the applicant makes a satisfactory
showing of the necessity for including the
range of 80 to 90 in the interference count, he
may be permitted to present the patent claim
modified by submitting his range of 20 to 90
for the range of 10 to 80 in the patent claim.

Interference should be redeclared with a
count covering the range of 10 to 90 and it
should be indicated that both the claim in the
patent and the claim in the application cor-
respond substantially to the interference count.

II. PATENT CLAIMS A MARKUSH GROUP OF 6
MEMBERS.

Application discloses a Markush group of 5
of the same 6 members, plus another member

not claimed in the patent, there being no dis-
tinction in substance between the two groups.

(a) Initially, applicant may be permitted to
copy the patent claim, modifying it by sub-
stituting the 5 members of the patent claim
which he discloses for the 6-member group in
the patent claim.

Interference should be declared initially with
the exact patent claim as the count and it
should be indicated that the claim in the appli-
cation corresponds substantially to the inter-
ference count.

(b) If, in connection with a motion to sub-
stitute, the applicant makes a satisfactory
showing of the necessity for including his addi-
tional member of the group, he may be per-
mitted to present the patent claim modified by
substituting the 6-member group which he dis-
closes for the 6-member group in the patent
claim.

Interference should be redeclared with a
count including in a Markush group all 7
members claimed in the patent and disclosed
in the application and it should be indicated
that both the claim in the patent and the claim
in the application correspond substantially to
the interference count.

The practice outlined above should be re-
stricted to situations where the inventions
claimed in the patent and disclosed in the
application are clearly the same, so that there
is truly an interference in fact.

Until further notice, interferences declared
or redeclared in accordance with this practice
should be submitted to the Group Supervisory
Examiner.

All prior decisions, orders, and notices are
hereby overruled to the extent that they may
be inconsistent with the said practice. (No-
tice of April 5, 1954.)

Some cases may include aspects of both a
Card situation and those of an "A" or "B"
situation noted above. These cases should be
treated in accordance with the general prin-
ciples outlined in the foregoing notice.

For rejection of copied patent claims see
1101.02(f).

Rule 205. Interference with a patent ; copying claims
from patent. (a) Before an interference will be de-
clared with a patent, the applicant must present in his
application copies of all the claims of the patent which
also define his invention and such claims must be
patentable in the application. If claims cannot be
properly presented in his application owing to the
inclusion of an immaterial limitation or variation, an
interference may be declared after copying the claims
excluding such immaterial limitation or variation.

(b) Where an applicant presents a claim copied or
substantially copied from a patent, he must, at the
time he presents the claim, identify the patent, give

the number of the patented claim, and specifically
apply the terms of the copied claim to his own dis-
closure, unless the claim is copied in response to a
suggestion by the Office. The examiner will call to the
Commissioner's attention any instance of the filing of
an application or the presentation of an amendment
copying or substantially copying claims from a patent
without calling attention to that fact and identifying
the patent.

Rule 206. Interference with a patent; claims improp-
erly copied. (a) Where claims are copied from a
patent and the examiner is of the opinion that the
applicant can make only some of the claims so copied,
he shall notify the applicant to that effect, state why
he is of the opinion the applicant cannot make the
other claims and state further that the interference
will be promptly declared. The applicant may pro-
ceed under rule 233, if he desires to further contest
his right to make the claims not included in the decla-
ration of the interference.

(b) Where the examiner is of the opinion that none
of the claims can be made, he shall state in his ac-
tion why the applicant cannot make the claims and
set a time limit, not less than 30 days, for reply. If,
after response by the applicant, the rejection is made
final, a similar time limit shall be set for appeal. Fail-
ure to respond or appeal, as the case may be, within
the time fixed will in the absence of a satisfactory
showing, be deemed a disclaimer of the invention
claimed.

When an interference with a patent is pro-
posed it should be ascertained before any steps
are taken whether there is common ownership.
A title report must be placed in the patented
file when the papers for an interference be-
tween an application and a patent are for-
warded. To this end the Examiner, before
initiating an interference involving a patent,
should refer the patented file to the Assign-
ment Branch for notation as to ownership.

### PATENT IN DIFFERENT GROUP

Where claims are copied from a patent clas-
sified in another group, the propriety of de-
claring the interference (if any) is decided by
and the interference is declared by the group
where the copied claims would be classi-
fied. In such a case, it may be necessary to
transfer the application, including the draw-
ings, temporarily to the group which will
declare the interference. A print of the draw-
ings should be made and filed in the group
originally having jurisdiction of the applica-
tion in place of the original drawings. "When
claims are copied from a plurality of patents
classified in different groups, the question
of which group should declare the interfer-
ences should be resolved by agreement be-
tween the Examiners of the groups con-
cerned, possibly in consultation with the
Directors involved.

(

### 1101.02 (a) Copying Claims From a Patent

A large proportion of interferences with a
patent arise through the initiative of an appli-
cant in copying claims of a patent which has
come to his attention through citation in an
Office action or otherwise.

If, in copying a claim from a patent an error
is introduced by the applicant, the Examiner
should correct applicant's claim to correspond
to the patent claim. A notation should be added
to his letter (POL 76) stating that the correc-
tion has been made.

However, in some instances the Examiner ob-
serves that certain claims of a patent can be
made in a pending application and, if the patent
is not a statutory bar, he must take steps to avoid
the issuance of a second patent claiming the
same invention without an interference. The
practice set forth hereinbelow applies when an
issued patent and a pending application are not
commonly assigned. If there is a common as-
signment, a rejection as outlined in 305 should
be made if an attempt is made to claim in the
pending application the same invention as is
claimed in the patent.

A patent claiming the same invention as that
being claimed in an application can be over-
come only through interference proceedings.
Where the effective filing date of the applica-
tion is prior to that of the patented application,
no oath is required. Otherwise the applicant
must submit an affidavit that he made the in-
vention prior to the filing date of the patent,
even though there was copendency between
the two applications. The affidavit may be
made by persons other than applicant. Cf.
715.04. It is within the discretion of the Ex-
aminer to require the same showing of facts in
an affidavit under Rule 204 as is required in an
affidavit under Rule 131. This discretion should
be governed by the circumstances of the case,
such as the difference in filing dates, complexity
of the invention, etc. However, in all cases
where claims are copied from a patent, and the
applicant's effective filing date is more than
thirty days later than the patentee's filing date,
the Examiner, before declaring an interference,
shall require applicant to file an affidavit setting
forth sufficient facts to make out a prima facie
case for priority relative to the filing date of
the patentee. (Basis: Notice of April 30, 1963.)

If the filing date of the patent precedes the
filing date of the application and the patent is
not a statutory bar against the application, the
claims of the application should be rejected on
the patent. If it appears that the applicant is
claiming the same invention as is claimed in the
patent and that the applicant is able to make

one or more claims of the patent, a statement
should be included in the rejection that the
patent cannot be overcome by an affidavit under
Rule 131 but only through interference proceed-
ings. Note, however, 35 U.S.C. 135, 2d par.
and section 1101.02(f). If the applicant con-
troverts this statement and presents an affidavit
under Rule 131, the case should be considered
special, one claim of the patent which the ap-
plicant clearly can make should be selected, and
an action should be made refusing to accept the
affidavit under Rule 131 and requiring the ap-
plicant to make the selected claim as well as any
other claims of the patent which he believes find
support in his application. If necessary, the
applicant should be required to file the affidavit
and showing required by Rule 204. A time limit
for response should be set under Rule 203. In
any case where an applicant attempts to over-
come a patent by means of affidavit under Rule
131, even though the Examiner has not made a
rejection on the ground that the same invention
is claimed in the patent, the claims of the patent
should be examined and, if applicant is claiming
the same invention as is claimed in the patent
and can make one or more of claims of the pat-
ent, the affidavit under Rule 131 should be re-
fused, and an action such as outlined in the
preceding part of this paragraph should be
made. If necessary, the requirements of Rule
204 should be specified and a time limit for re-
sponse should be set under Rule 203.

1101.02(b) Copying Claims From a Pat-
ent, Examiner Cites Patent
Having Filing Date Later
Than That of Application

If a patent, having a filing date later than
the filing date of an application, discloses the
same subject matter as disclosed in that ap-
plication and if the application claims the same
invention as that claimed in the patent so that a
second patent could not be granted without in-
terference proceedings, the patent should be
cited and one claim of the patent which appli-
cant clearly can make should be selected and the
applicant should be required to make the se-
lected claim as well as any other claims of the
patent which he believes find support in his ap-
plication. No affidavit under Rule 204 is re-
quired but a time limit for copying the claim
should be set under Rule 203.

If an application claims an invention pat-
entably different from that claimed in a pat-
ent, which discloses the same subject matter as
that disclosed in the application but which has
a filing date later than the filing date of the
application, so that a distinct patent could be
granted to the applicant without interference

proceedings, the patent should be only cited to
the applicant. Thus, it is left to the applicant
to determine whether he wishes to and can
copy the claims of the patent.

1101.02(c) Copying Claims From a
Patent, Difference Be-
tween Copying Patent
Claims and Suggesting
Claims of an Application

The practice of an applicant copying claims
from a patent differs from the practice of sug-
gesting claims for a prospective interference
involving only applications in the following
respects :

(1) No correspondence under Rule 202 is
conducted with a junior applicant who is to
become involved in an interference with a pat-
ent but, instead, an affidavit under Rule 204
is required.

(2) When a question of possible interfer-
ence with a patent arises, the patent should be
cited, whereas no information concerning the
source of the claim should be revealed when
a claim is suggested for a prospective inter-
ference involving only applications.

(3) All claims of a patent which an appli-
cant can make should be copied.

(4) Claims copied by an applicant from a pat-
ent may differ from the patent claims by the
exclusion of an immaterial limitation or vari-
ation which the applicant cannot make, where-
as claims suggested for an interference between
applications must be identical in all cases.

# 1101.02(d) Copying Claims From a Patent, Copied Patent Claims Not Identified

If an attorney or agent presents a claim
copied or substantially copied from a patent
without indicating its origin he may be deemed
to be seeking, obviously improperly, to obtain
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 205 (b) therefore requires the Examiner
to "call to the Commissioner's attention any
instance of the filing of an application or the
presentation of an amendment copying or sub-
stantially copying claims from a patent with-
out calling attention to the fact and identify-
ing the patent."

1101.02(e)
Copying Claims From a
Patent, Making of Patent
Claims Not a Response to
Last Office Action

The making of claims from a patent when
not required by the Office does not constitute a
response to the last Office action and does not
operate to stay the running of the statutory pe-
riod dating from the unanswered Office action.

The declaration of an interference based on
such claims before the expiration of the stat-
utory period, by operation of Rule 212 stays
the running of the statutory period.

# 1101.02(f) Copying Claims From a Patent, Rejection of Copied Patent Claims

## REJECTION NOT APPLICABLE TO PATENT

When claims from a patent are made, the
application is taken up at once and the Exam-
iner may reject such claims in the application
if the ground of rejection is not also applica-
ble in the case of the patent. Examples of
such a ground of rejection are insufficient dis-
closure in the application, a reference whose
date is junior to that of the patent, or because
the claims copied from a patent are barred to
applicant by the second paragraph of 35 U.S.C.
135, which reads:

"A claim which is the same as, or for the same
or substantially the same subject matter as, a
claim of an issued patent may not be made in
any application unless such a claim is made
prior to one year from the date on which the
patent was granted."

It should be noted that an applicant is per-
mitted to copy a patent claim outside the year
period if he has been claiming substantially
the same subject matter within the year limit.
See Thompson v. Hamilton, 1946 C.D. 70, 585
O.G. 177; In re Frey, 1950 C.D. 362, 639 O.G.
5; Andrews v. Wickenden, 1952 C.D. 176, 659
O.G. 305; In re Tanke et al., 1954 C.D. 212;
687 O.G. 677; Emerson v. Beach, 1955 C.D. 34;
691 O.G. 170; Rieser v. Williams, 118 U.S.P.Q.
96; Stalego et al. v. Haymes et al., 120 U.S.P.Q.
473.

As is pointed out in Rule 206, where more
than one claim is copied from a patent, and
the Examiner holds that one or more of them
are not patentable to applicant and at least
one other is, the Examiner should at once set
up the interference on the claim or claims con-
sidered patentable to applicant, rejecting the
others, leaving it to applicant to proceed under
Rule 233 in the event that he does not acquiesce

in the Examiner's ruling as to the rejected
claims.

Where all the claims copied from a patent
are rejected on a ground not applicable to the
patentee the Examiner sets a time limit for
reply, not less than thirty days, and all subse-
quent actions, including action of the Board
on appeal, are special in order that the inter-
ference may be declared as promptly as pos-
sible. Failure to respond or appeal, as the
case may be, within the time fixed, will, in the
absence of a satisfactory showing, be deemed a
disclaimer of the invention claimed.

While the time limit for an appeal from the
final rejection of a copied patent claim is usu-
ally set under the provisions of Rule 206, where
the remainder of the case is ready for final
action, it may be advisable to set a shortened
statutory period for the entire case in accord-
ance with Rule 136.

The distinction between a limited time for
reply under Rule 206 and a shortened statutory
period under Rule 136 should not be lost sight
of. The penalty resulting from failure to reply
within the time limit under Rule 206 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
136) results in abandonment of the entire ap-
plication. That is not appealable. Further, a
belated response after the time limit set in ac-
cordance with Rule 206 may be entered by the
Examiner, if the delay is satisfactorily ex-
plained (except that the approval of the Com-
missioner is required where the situation de-
scribed in the next paragraph below exists) ; but
one day late under Rule 136 period, no matter
what the excuse, results in abandonment. How-
ever, if asked for in advance, one extension of
either period may be granted by the Examiner,
provided that extension does not go beyond the
six months' period.

## COPIED OUTSIDE TIME LIMIT

Where a patent claim is suggested to an
applicant by the Examiner for the purpose of
establishing an interference and is not copied
within the time limit set or a reasonable ex-
tension thereof, an amendment presenting it
thereafter will not be entered without the ap-
proval of the Commissioner. (Basis: Notice
of September 27, 1933.)

The rejection of copied patent claims some-
times creates a situation where two different
periods for response are running against the
application-one, 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 final) of the
patent claims. This condition should be
avoided where possible as by setting a short-

ened period for the entire case, but where un-
avoidable, it should be emphasized in the Ex-
aminer's letter.

In this connection it is to be noted that a reply
to a rejection or an appeal from the final rejec-
tion of the patent claims will not stay the run-
ning of the regular statutory period if there be
an unanswered Office action in the case at the
time of reply or appeal, nor does such reply or
appeal relieve the Examiner from the duty of
acting on the case if up for action, when reached
in its regular order.

Where an Office action is such as requires the
setting of a time limit for response to or ap-
peal from that action or a portion thereof, the
Examiner should note at the end of the letter
the date when the time limit period ends and
also the date when the statutory period ends.
(Basis: Notice of June 29, 1938.) See 710.04.

# REJECTION APPLICABLE TO PATENT AND APPLICATION

If the ground of rejection is applicable to
both the claims in the application and the claims
in the patent, any letter including the rejection
must have the approval of the appropriate Di-
rector. However, if an interference would be
proper except for such ground of rejection, the
interference nevertheless may be declared.

Under these circumstances the Primary Ex-
aminer should prepare a letter addressed to the
Patent Interference Examiner in accordance
with the provisions of Rule 237 (a) and Section
1105.05 employing the form letter of Section
1112.08. Copies of this letter should be made
for transmission to each of the parties. He
should obtain the approval of the appropriate
Director on the letter and forward said letter
and the copies to the Patent Interference Ex-
aminer with the declaration papers.

Compliance with this procedure will permit
notification to the parties, at the time of set-
ting the motion period, of the Examiner's mo-
tion under Rule 237 (a) and of the parties'
rights to be heard on this motion at a hearing
before the Primary Examiner. Promptness of
action by the Examiner is important as noti-
fication to the parties early in the motion pe-
riod will permit a hearing on the Examiner's
proposal to dissolve under Rules 237 (a) to be
included with hearings on motions.

If such a reference is discovered while an
interference involving a patent is before the
Examiner for his decision on motions, he
should proceed under Rule 237(a), last sen-
tence. If the reference is discovered after de-
cision on motions has been rendered, the Ex-
aminer proceeds in accordance with Rule 237
(a) and Section 1105.05 of the Manual. The
Director's approval must be obtained before
forwarding the form letter of Sec. 1112.08 and

1101.02(g)

# MANUAL OF PATENT EXAMINING PROCEDURE

before mailing the decision on motion. (Basis:
Notice of March 15, 1950.)

The decision on such a motion should avoid
any comment on the patentability of the claims
already granted to the patentee. See Noxon
v. Halpert, 128 U.S.P.Q. 481.

1101.02(g)
Copying Claims From a
Patent, After Prosecution
of Application Is Closed
or Application Is Allowed

An amendment presenting a patent claim in
an application not in issue is usually admitted
and promptly acted on. However, if the case
had been closed to further prosecution as by
final rejection or allowance of all of the claims,
or by appeal, such amendment is not entered as a
matter of right. Where the prosecution of the
application is closed and the copied patent
claims relate to an invention distinct from that
claimed in the application, entry of the amend-
ment may be denied. (Ex parte Shohan, 1941
C.D. 1; 522 O.G. 501.) Admission of the
amendment may very properly be denied in a
closed application, if prima facie, the claims are
not supported by applicant's disclosure. An
applicant may not have recourse to asserting a
patent claim which he has no right to make as
a means to reopen or prolong the prosecution
of his case. See 714.19(4).

## AFTER NOTICE OF ALLOWANCE

When an amendment which includes one or
more claims copied or substantially copied from
a patent is received after the Notice of Allow-
ance and the Examiner finds one or more of the
claims patentable to the applicant and an inter-
ference to exist, he should prepare a letter [see
Letter Form 1112.04], requesting that the appli-
cation be withdrawn from issue for the purpose
of interference. This letter, which should des-
ignate the claims to be involved, should be sent
to the Group Supervisor and then forwarded,
together with the file and the proposed amend-
ment, to the appropriate Director.

When an amendment is received after Notice
of Allowance, which includes one or more claims
copied or substantially copied from a patent

and the Examiner finds basis for refusing the
interference on any ground he should make an
oral report to the Group Supervisor of the rea-
sons for refusing the requested interference.
Notification to applicant is made on Form
POL-105 if the entire amendment is refused or
on Form POL-103 if a portion of the amend-
ment (including all the copied claims) is re-
fused. The following or equivalent language
should be employed to express the adverse rec-
ommendation as to the entry of the copied or
substantially copied patent claims :

"Entry of claims
is not recom-
mended because (brief statement of basic rea-
sons for refusing interference). Therefore
withdrawal of the application from issue is not
deemed necessary." " (Basis: Notice of Decem-
ber 9, 1943 and January 6, 1953.)

## 1101.03 Removing of Affidavits Be- fore Interference

Where there is of record in the file an affi-
davit under Rule 204 making a showing of facts,
the affidavit should be sealed in an envelope and
the envelope properly labeled as to its contents
before sending the file to the Interference Divi-
sion. Affidavits under Rule 131 should be
similarly treated. These envelopes should be
retained in the examining group during the in-
terference. (Basis : Notice of October 15, 1940.)
This is also done when there are such affi-
davits in the parent applications (not patents)
of any application involved in the interference.

Any correspondence under Rule 202 should
be obtained from the Law Examiner, sealed, and
forwarded with the other papers to the Inter-
ference Division.

Affidavits under Rules 131 and 204, as well
as an affidavit under Rule 202 (which never be-
comes a paper in the application file) are avail-
able for inspection by an opposing party to an
interference when the preliminary statements
are opened. Ferris v. Tuttle, 1940 C.D. 5; 521
O.G. 523. (Basis: Notice of October 15, 1940.)

The now opened affidavits filed under Rules
131 and 204 may then be returned to the appli-
cation files and the affidavits filed under Rule
202 filed in the interference jacket.

(

## 1102 Preparation of Interference Papers and Declaration

The rules pertinent to this subject are set
forth in Rule 207 quoted below and in Rule 209
in 1102.02.

Rule 207. Preparation of interference notices and
statements. (a) When an interference is found to
exist and the applications are in condition therefor,
the primary examiner shall forward the files to the
examiners of interferences, together with notices of
interference to be sent to all the parties (as specified
in rule 209) disclosing the name and residence of each
party and those of his attorney or agent, and of any
assignee, and, if any party be a patentee, the date and
number of the patent. The notices shall also specify
the issue of the interference, which shall be clearly and
concisely defined in only as many counts as may be
necessary to define the interfering subject matter (but
in the case of an interference with a patent all the
claims of the patent which can be made by the appli-
cant should constitute the counts), and shall indicate
the claim or claims of the respective cases correspond-
ing to the count or counts. If the application or patent
of a party included in the interference is a division
or continuation of a prior application and the exami-
ner has determined that it is entitled to the filing date
of such prior application, the notice to such party shall
so state.

(b) The primary examiner shall also forward a
statement for the examiners of interferences disclos-
ing the applications involved in interference, fully
identified, arranged in the inverse chronological order
of the filing of the completed applications, and also dis-
closing the count or counts in issue and the ordinals of
the corresponding claims, the name and residence of
any assignee, and the names and addresses of . . .
attorneys or agents, . . . .

## 1102.01 Preparation of Papers

The procedure to be followed in setting up
an interference is set forth in Rule 207.
Further information is given in the following
sections, and in In re Redeclaration of Inter-
ferences, Nos. 49,635; 49,636; 49,866; 1926 C.D.
75; 350 O.G. 3. The forms used by the Exam-
iner in setting up an interference give the
details of all letters to be written.

"In declaring or redeclaring an interference
the following should be borne in mind :

(1) That no party should be made junior as
to some counts and senior as to others, but that
two interferences should be set up making the
party with two applications junior in one in-
terference and senior in the other.

(2) That no interference should be declared
in which each party to the interference is not
involved on every count.

(3) That where an applicant puts identical
claims in two applications by virtue of one of
which he will be the senior party and of the
other the junior the later application should be
placed directly 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 into the interference as evidence." (In
re Redeclaration of Interference Nos. 49,635;
49,636; 49,866; 1926 C.D. 75; 350 O.G. 3.)

Briefly, in preparing cases for interference,
Forms PO-221, POL-76, and PO-222 should
be filled out.

Any correspondence under Rule 202 should
be obtained from the Law Examiner, sealed,
and forwarded with the other papers. Affida-
vits under Rule 131 and those affidavits under
Rule 204 which reveal facts of the nature of
those included in an affidavit under Rule 131
should be removed from application (not pat-
ent) files, sealed, and retained in the examining
division until called for or until the interfer-
ence is terminated. See 1101.03. This same
practice obtains in the case of affidavits of this
nature in earlier applications which have been
referred to in the declaration papers. And, if
a patent is involved in the interference, a re-
cent title report on the patent should be for-
warded with the other papers.

To make the practice in declaring interfer-
ences uniform the procedure to be followed is
set forth below :

## 1102.01 (a) Letter to Examiner of Interferences

The letter to the Examiner of Interferences
is written upon the blank (Form PO-221) for
that purpose. See 1112.05(a). This letter
should contain, first the information as to the
parties required by the rules, the parties being
arranged in inverse chronological order of fil-
ing of the applications directly involved in the
interference, second, the counts of the inter-
ference, and third, a table showing the relation-
ship of the counts with the respective claims
made by the parties. For example, in an inter-
ference involving X, Y, and Z, in which Z is
the senior party and Y junior to both X and Z:

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

Counts :

x ☒

(Basis: Order 1514.)

## 1102.01(a)

Reference is made to a divisional or con-
tinuation application only if the Primary Ex-
aminer considers that the earlier application
clearly supports all the counts. If there is any
doubt upon this question, no reference should
be made to an earlier application, the matter
being left for determination upon motion to
shift the burden of proof. (Basis: Notice of
April 22, 1922.)

If the case in interference is a division or
continuation of an earlier application, the par-
ent application should be completely identified
by application number and filing date and in-
cluding a patent number and date if it has
matured into a patent. Also, if the parent
application is, in turn, a division or continu-
ation of a still earlier application, the earlier
application should also be completely identi-
fied and its relationship stated. This proce-
dure should be followed to the point where the
earliest effective U.S. filing date of each party
with respect to all the counts in issue has been
given. Ignore any earlier application of which
the case in interference is a continuation-in-
part.

The letter to the Examiner of Interferences
should not include any reference to foreign
filing dates, even though the Examiner may
have acted favorably on a request under Sec. 1
of Public Law 690. (See 1111.10.)

If a reissue application or patent is involved
in an interference, complete information con-
cerning it should be given on Form PO-221,
including reissue patent number and date, re-
issue application number and filing date, orig-
inal patent number and date, and original
application number and filing date.

In preparing the papers for an interference
which involves a patent, the numeral of the
patent claim should be used rather than the
original numeral of that claim when the pat-
ent was a pending application. The interfer-
ence is between the application which has cop-
ied the patent claim and the patent-not the
patented application (Rule 201) ; and the in-
terference papers should be prepared accord-
ingly. Observance of this practice is impor-
tant, 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 and endorsed
on copies of the patent.

(Basis: Notice of November 1, 1943.)

In an interference involving a patent, if the
Primary Examiner discovers a reference which,
in his opinion, renders a count obviously un-
patentable, action should be taken in accord-
ance with Section 1101.02(f).

If the interference counts are claims of the
patent modified to be broader than the cor-

responding patent claims, the word "modified"
or "substantially" should appear in parenthe-
ses after the corresponding claim numbers of
the patent in the table of claims. In other
situations where exactly corresponding claims
are not present in the applications and patent
considered to be interfering, see Notice of
April 5, 1954 set forth in Section 1101.02 .as
to the proper designation of the relationship
of the claims to the counts. If an application
was merely in issue and did not become a pat-
ent, the original claim numbers of the appli-
cation, prior to revision for issue, should be
used.

The letter to the Examiner of Interferences
(Form PO-221) must include copies of the
counts. In setting up an interference involv-
ing a patent, the patent claims which consti-
tute the counts need not be typed out but may
be cut out of a soft copy of the patent and
attached at the appropriate place on the Dec-
laration Letter by means of paste or other
adhesive.

A certificate of correction in a patent should
not be overlooked. For the best practice in
interference between applications, dependent
counts should be avoided and each count should
be independent. This avoids confusion in lan-
guage 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 de-
pendent on the count corresponding to the
claim on which the dependent claim is founded.
In the rare instance where a dependent claim
is the sole count of an interference and the
basic claim is not included, the count should be
copied as a dependent claim and immediately
thereunder, in brackets, the basic claim should
be copied.

If an interference is declared as the result
of a decision on motions under Rules 233 and
234 in a prior interference, a statement should
be added to Form PO-221 to the following
effect :

"This interference is declared as the result
of the Primary Examiner's decision on mo-
tions in Interference No.
"

This insures against the setting of a new
motion period in the newly declared interfer-
ence. (See Rule 233(e), last sentence.)

The counts should be checked against the
original claims and the words "counts com-
pared" placed at the end of the letter to the
Examiner of Interferences as evidence that the
copies of the counts had been compared with
the original claims. (Basis: Order 1537.)

It is not necessary to list any attorney on
the interference declaration sheet other than

1102.01 (b)

the one to whom correspondence is to be ad-
dressed. If parties to an interference have the
same attorney, the attention of the Examiner
of Interferences should be called to this as set
forth in 1102.01 (b).

## 1102.01(b) Letters to Parties

The letters to the different parties are writ-
ten upon the blanks for that purpose. See
Letter Form at 1112.05(c). After the printed
matter upon said blank, there shall appear
first, the ordinals of the claims of the appli-
cation corresponding to the counts of the inter-
ference, second, the information pertaining to
the other parties, as required by the rules, ar-
ranged strictly in accordance with alphabetical
order, and third, the counts and claims of the
parties tabulated strictly in accordance with
alphabetical order. For example, after the
identification of the counts, the letter to X
would read :

(a) The interference involves your applica-
tion above identified, and

(b). An application filed by Y, of 282 Broad-
way, New York, whose attorney is
\>
of
and whose assignee is
,
of

(c) An application (patent) filed by Z, of
1205 Chestnut Street, Philadelphia, Pennsyl-
vania, whose attorney is
of
?
and whose assignee is
of

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

Counts :

(Basis : Order 1514.)

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

First and foremost, the letters to the parties
must never include the serial numbers or filing
dates of opposing applications or reveal the
relative order of filing of the respective appli-
cations. If the interference involves a patent,
the letter to any opposing party includes com-
plete information concerning the patent, since
this is public information which is available to
anyone and the applicant knows the patent
from which he copied claims. No statement
as to parent applications of the patent should
be made.

In filling out Form POL-76 the blanks to
the right of the address box should be com-
pletely filled out.

If an application or patent of a party is a
division or continuation of a prior application
and the Examiner has determined that the
party is entitled to the filing date of the prior
application, the Examiner should, in addition
to including that information on Form PO-
221, inform the party of that fact in the letter
which is sent to him, as by including a nota-
tion to the following effect :

"Your application (or patent), above iden-
tified, is a division (or continuation) of Serial
No.

filed
(see Rule 207(a) )."
Ignore any earlier application of which the
case in interference is a continuation-in-part.

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

## OTHER DETAILS

The interference number and date for filing
the preliminary statement must be left blank.

The counts of the interference are ordinarily
not copied in the letters to the parties unless a
particular party's case does not include an ex-
act copy of the interference counts. Thus, if
the interference count is a modified claim of a
patent the letter to the patentee must include a
copy of the count. ( (Notice of January 2,
1947, Revised.) Similarly, if the interference
count is a dependent claim of a patent rewrit-
ten as an independent claim, the rewritten
claim should be copied in the letter to the
patentee. Also, if the entry of a particular
amendment in a party's case is in doubt, the
interference notice to that party should indi-
cate whether the count is in the form as
amended or prior to the amendment or the
exact count may be copied in that party's letter.

The attention of the Examiners is called to
the decisions in Votey v. Wuest v. Doman, 1904
C.D. 323; 111 O.G. 1627 and Earl v. Love, 1909
C.D. 56; 140 O.G. 1209 in which it is held that
when an interference is declared involving a
patentee and the Examiner is of the opinion
that the application or applications contain
claims not patentably different from the issue
of the interference, he should append to the
letter to the applicant a statement that such
claims, specifying them by number, will be
held subject to the decision in the interference.
The reason for making such statement applies
equally well to an interference involving only
applications.

The practice announced in these decisions
should be followed. Such a statement gives
the parties notice as to what claims the Ex-
aminer considers unpatentable over the issue,
it avoids the liability of granting claims to
the losing party which are not patentable over
the issue, but which are not included therein,

1102.01 (c)

and will probably lessen the motions under
Rule 233. (Basis : Notice of May 11, 1917.)

When parties to an interference have the
same attorney this fact should be stated at the
bottom of each interference notice. In the
case of conflicting applications it is a repetition
of information given at the time of suggesting
claims; but where the interference is between
a patent and an application, such information
has not heretofore been given. This matter
should also be called to the attention of the
Examiner of Interferences, in accordance with
the following notice:

In carrying out the provisions of Rule 208,
Examiners, when forwarding interference no-
tices and statements to the Examiners of In-
terferences, will call their attention to cases
in which two of the parties are represented by
the same attorney, in lieu of calling the mat-
ter directly to the attention of the Commis-
sioner. The Examiner of Interferences when
mailing out the notices to the parties and their
attorney will advise the parties and the attor-
ney that the attorney will not be recognized
further as representing either party in the in-
terference or in the interfering cases unless he
shows that he is entitled to continue to repre-
sent either or both parties as provided by Rule
208. The Examiner of Interferences will also
call to the attention of the parties and the at-
torney the requirement of the second sentence
of Rule 201(c). (Basis: Notice of April 14,
1949.)

In no case should a letter with the exception
of the letter to the Examiner of Interferences
be dated. All letters except that to the Exam-
iner of Interferences should contain the words
"Forwarded to the Examiner of Interferences
from Div.
(date)
"
at the upper left-hand corner, and it should be
stated on all copies that a copy has been sent
to the patentee and, if the patent has been
assigned, to the assignee.

All the letters, both those for the files and
those to be mailed are forwarded as required
by the rules, the originals separate from the
files, and the carbon copies to be mailed pref-
erably attached to their respective envelopes,
but, in no case to be folded or placed within
the envelopes. (Basis: Order 1514.)

## 1102.01(c) The Interference Brief Card

Interference brief cards Form No. PO-222
are placed in the files of the respective parties.
The names only of the other interfering par-
ties arranged strictly in alphabetical order
shall be inserted after "Interference with."

The patent number, if any, should be inserted
after its corresponding serial number.

## 1102.02 Declaration of Interference

Rule 209. Declaration of interference; mailing of
notices. (a) When the notices of interference are in
proper form, an examiner of interferences shall assign
a number to the interference and add to the notices a
designation of the time within which the preliminary
statements required by rule 215 must be filed, and shall,
pro forma, institute and declare the interference by
forwarding the notices to the several parties to the pro-
ceeding.

(b) The notices of interference shall be forwarded
by the examiner of interferences to all the parties, in
care of their attorneys or agents ; a copy of the notices
will also be sent to the patentees in person and, if
the patent in interference has been assigned, to the
assignees.

(c) When the notices sent in the interest of a
patent are returned to the Office undelivered, or when
one of the parties resides abroad and his agent in the
United States is unknown, additional notice may be
given by publication in the Official Gazette for such
period of time as the Commissioner may direct.

The papers necessary in declaring an inter-
ference having been prepared (see 1102 to
1102.01 (c) ) in the examining division are sent
to the Interference Section of the Docket
Branch, the Examiner filing in his own divi-
sion a copy of the letter to the Examiner of
Interferences.

In the Interference Section of the Docket
Branch the interference is given a number and
the files and letters are inspected to ascertain
whether the issues between the parties have
been clearly defined, and whether they are
otherwise correct. If the notices are ambigu-
ous or are defective in any material point, the
objections are transmitted to the Primary Ex-
aminer, who shall promptly notify the Ex-
aminer of Interferences of his decision to
amend or not to amend them. In case of a
material disagreement between the Examiner
of Interferences and the primary examiner,
the points of difference shall be referred to the
Commissioner for decision.

When all the papers are correct, the Exam-
iner of Interferences, under the provisions of
Rule 209, adds to the notices a designation of
the time within which the preliminary state-
ments required by Rule 215 must be filed and
pro forma institutes and declares the interfer-
ence by mailing the notices to the several par-
ties to the proceeding. After the notices are
mailed, the application and interference files
are kept in the Docket Branch, where the files
and interference letters are put in an envelope
or box with full data of the interference placed

;

on said envelope or box. These data are also
recorded in a card index. The date set for
filing the preliminary statements is noted on
the interference envelope or box and in the
interference register.

If an application that has been made special
by the Commissioner becomes involved in an
interference, the interference will be made spe-
cial, provided the prosecution of such appli-
cation has been diligent on the part of the
applicant. See 708.01.

## 1103 Suspension of Ex Parte Prosecu- tion

Rule 212. Supension of ex parte prosecution. On
declaration of the interference, ex parte prosecution
of an application is suspended, and amendments and
other papers received during the pendency of the in-
terference will not be entered or considered without
the consent of the Commissioner, except as provided
by these rules. Proposed amendments directed toward
the declaration of an interference with another party
will be considered to the extent necessary. Ex parte
prosecution as to specified matters may be continued
concurrently with the interference, on order from or
with the consent of the Commissioner.

The treatment of amendments filed during
an interference is considered in detail in sec-
tions 1108 and 1111.05.

For treatment of other applications by the
same inventor or assignee having overlapping
claims with the application being put into in-
terference see 709.01 and 1111.03.

## 1104 Jurisdiction of Interference

Rule 211. Jurisdiction of interference. Upon the in-
stitution and declaration of the interference, as pro-
vided in rule 209, the examiners of interferences will
take jurisdiction of the same, which will then become
a contested case.

The primary examiner will retain jurisdiction of the
case until the declaration of interference is made. See
rule 237 (b):

The declaration of interference is made when
the Examiner of Interferences mails the letters
forwarded to him by the Primary Examiner.
The interference is thus technically pending
before the Examiner of Interferences from the
date on which the letters are mailed. However,
the files of the various applicants are not
opened to the inspection of their opponents
until the time for filing preliminary statements
has expired and the statements are approved,
or an order to show cause is issued.

During the period from the mailing of the
notices until the receipt and approval of the
preliminary statements and the ensuing open-

ing up of the files to the opposing parties, the
interference may be withdrawn at the discre-
tion of the Primary Examiner if he discovers
facts that existed at the time the notices were
mailed that would have forestalled declaration
of the interference, such as a reference for the
interference claims applicable to one or to
both parties (Rule 237(b) ).

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 with-
drawal 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 acts upon the
applications as though no interference had
been declared. For form see 1112.07.

Throughout the interference, the interfer-
ence papers and application files involved are
in the keeping of the Docket Branch except
at such times as hearings on motions, final
hearings, appeals, etc., when they are tempo-
rarily in possession of the tribunal before whom
the particular question is pending.

If, independent of that interference, action
as to one or more of the applications becomes
necessary, the Examiner requests jurisdiction
of the necessary file or files from the Commis-
sioner but first forwards the letter (or letters)
to the Supervisory Examiner for approval.
See 1111.05 and Form at 1112.06(a).

If, after the interference has passed the pro-
forma stage, action by the Primary Examiner
becomes necessary relative to the entire inter-
ferences, he requests jurisdiction of the inter-
ference from the Examiner of Interferences,
forwarding the request through the Docket
Branch. See form at 1112.06 (b).

The Examiner never asks jurisdiction of a
patent file, but merely borrows it if needed, as,
where the patent is to be involved in a new
interference.

## 1105 Matters Requiring Decision by Primary Examiner During Inter- ference

An interference may be enlarged or dimin-
ished both as to counts and applications in-
volved, or may be entirely dissolved, by actions
taken under Rule 232 "Motions to dissolve",
Rule 233 "Motions to amend", Rule 234 "Mo-
tions to include another application" and Rule
237 "Dissolution on motion of examiner". The
burden of proof may be shifted by action taken
under Rule 235 "Motions relating to burden of
proof". Decisions on questions arising under
these rules are made under the personal super-

vision of the Primary Examiner or the Exam-
iner in charge of the division.

Examiners should not consider ex parte,
when raised by an applicant, questions which
are pending before the Office in inter partes
proceedings involving the same applicant or
party in interest. See 1111.01.

If a motion under Rules 232 through 235 is
filed, it is examined by the Examiner of Inter-
ferences who, if he finds it to be proper in
form, will set it for hearing before the Pri-
mary Examiner.

A copy of the Interference Examiner's let-
ter to the parties setting the motion for hearing
is sent to the examining division wherein the
interference originated. The Examiner in
charge, Clerk, Typist, or other responsible per-
son in the division is requested to sign a re-
ceipt for this notice of hearing. It then
becomes the responsibility of the Primary
Examiner and the Clerk of the division to see
that the hearing date is not overlooked, since
no other notice is given before the hearing.
Prior to the time of the hearing the complete
file of the interference should be obtained
from the Docket Branch and the Primary Ex-
aminer or the Examiner in charge of the divi-
sion and the assistant in charge of the case
must be present for the hearing at the set
time and place. If their attendance at the
indicated time is not feasible 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 notice.

It is advisable to examine the motions which
will be heard at least several days prior to the
hearing in order to review the subject matter
of the interference and to become familiar
with the motions which are to be heard.

Occasionally the entire subject matter of the
interference has been transferred to another
division between the time of declaring the in-
terference and the time of hearing the motion.
If this has occurred, after the second division
has agreed to take the case, Interference Sec-
tion of the Docket Branch should be notified
so that appropriate changes may be made on
their records. Also, the notice of the motion
hearing should be returned to the Examiner
of Interferences so that it may be forwarded
to the new division and the receipt therefor
signed.

A further reason for examining the motions
prior to the hearing is that it may be desirable
to utilize Patentability Report procedure in
deciding the motions. If this is the case, the
concurrence of the reporting division in the
procedure should be secured as soon as possible

so that it may be determined whether it is
advisable to have the Examiner in charge of
the reporting division and his assistant attend
the hearing.

## 1105.01 Briefs and Hearings on Motion

Rule 236. Hearing and determination of motions.
(a) The motions specified must contain a full state-
ment of the grounds therefor, and any briefs or memo-
randa in support thereof or in opposition thereto shall,
except as hereinafter provided, be filed in the Patent
Office not less than ten days prior to the date of hear-
ing and, if not so filed, consideration thereof may be
refused.

(b) If, in the opinion of an examiner of interfer-
ences, such motions, and motions of a similar char-
acter, be in proper form, they will be set for hearing
before the primary examiner, due notice of the day
of hearing being given by the Office to all parties. Ap-
pearance at the hearing is not required; any party
may waive oral hearing and, in lieu of appearance
at the hearing, file a reply brief no later than three
days following the date of the hearing provided he has
filed the principal brief referred to in paragraph (a).
If, in the opinion of the examiner of interferences,
the motion be not in proper form or if it be not
brought within the time specified and no satisfactory
reason given for the delay, it will not be considered
and the parties will be so notified. Consideration of
matters raised by motion which can be considered at
final hearing may, as directed by the Commissioner,
be deferred to final hearing.

(c) Setting a motion brought under the provisions
of rules 231 to 235 for hearing will act as a stay of
proceedings pending the determination of the motion.

(d) In the determination of a motion to dissolve
an interference between an application and a patent,
the prior art of record in the patent file may be re-
ferred to for the purpose of construing the issue.

Concerning briefs on motions, Rule 236(a)
requires that any briefs in support of or in op-
position to a motion shall "be filed in the Pat-
ent Office not less than ten days prior to the
date of hearing". If a party opposes the ad-
dition of counts under Rules 233 and 234 "in
view of prior patents or publications, full no-
tice of such patents or publications, applying
them to the proposed counts, must be given to
all parties at least twenty days prior to the
date of hearing" (Rule 233(c)). Under Rule
236 (b) "any party may waive oral hearing
and, in lieu of appearance at the hearing, file
a reply brief no later than three days follow-
ing the date of the hearing provided he has
filed the principal brief referred to in para-
graph (a)." Accordingly, if all parties were
not represented at the hearing, the Examiner

(

should, before deciding the motions, be certain
that he has received any reply briefs which
may have been filed.

Rule 244 states that in oral hearings on mo-
tions, the moving parties shall have the right
to make the opening 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
opening and closing arguments, the total time
available for each party is only one-half hour
and that time must be so apportioned 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 manner and, prior to the initial argu-
ments, 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 set for hearing
by the Interference Examiner and matters re-
lating thereto, as, for example, a motion to
strike a brief on one of those motions. No
party has a right to be heard on a motion
which was dismissed or deferred to final hear-
ing 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 232 through
235 or notice under Rule 233(c), but failed to
do so.

## 1105.02 Decision on Motion To Dis- solve Under Rule 232

Rule 232. Motions to dissolve. (a) Motions to dis-
solve an interference may be brought on the ground
(1) that there has been such informality in declaring
the same as will preclude the proper determination of
the question of priority of invention, or (2) that the
claims forming the counts of the interference are not
patentable, or are not patentable to a particular appli-
cant, while being patentable to another party, or (8)
that a particular party has no right to make the claim,
or (4) that there is no interference in fact if the inter-
ference involves a design or plant patent or application,
or if the interference involves a patent, a claim of
which has been copied in modified form.

(b) When one of the parties to the interference is
a patentee, no motion to dissolve may be brought by any
party on the ground that the subject matter of a count
is unpatentable to all parties or is unpatentable to the
patentee, except that a motion to dissolve as to the
patentee may be brought which is limited to such mat-
ters as may be considered at final hearing (rule 258).

(c) Motions to dissolve on the ground that the counts
are unpatentable, or are unpatentable to the party
bringing the motion, must be accompanied by a pro-
posed amendment to the application of the moving
party canceling the claims forming the counts of the
interference, which amendment shall be entered by the
primary examiner to the extent the motion is not
denied, after the interference is terminated.

The Primary Examiner hears and decides
motions to dissolve as to some or all of the
counts. One or more parties may thus be en-
tirely eliminated from the interference as a
result of a decision on a Rule 232 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 request-
ing reconsideration has expired, while the in-
terference as to the remaining parties contin-
ues. The ex parte action then taken in each
rejected application should conform to the
practice set forth hereinafter under the head-
ing "Action After Dissolution" (1110). See
1302.12 with respect to listing references dis-
cussed in motion decisions.

It should be noted that if all the parties
agree upon the same ground for dissolution,
which ground will subsequently be the basis
for rejection of the interference count to one
or more parties, the interference should be dis-
solved pro forma upon that ground, without
regard to the merits of the matter. This agree-
ment among all parties may be expressed in the
motion papers, in the briefs, or orally at the
hearing. See Buchli v. Rasmussen, 339 O.G.
223; 1925 C.D. 75, and Tilden v. Snodgrass,
1923 C.D. 30; 309 O.G. 477 and Gelder v.
Henry, 77 U.S.P.Q. 223.

. Affidavits relating to the disclosure of a
party's application as, for example, on the
matter of operativeness or right to make,
should not be considered but affidavits relat-
ing to the prior art may be considered by anal-
ogy to Rule 132.

If there is considerable doubt as to whether
or not a party's application is operative and
it appears that testimony on the matter may
be useful to resolve the doubt, a motion to
dissolve may be denied so that the interference
may continue and testimony taken on the point.
See Bowditch v. Todd, 1920 C.D. 27; 980 O.G.
792 and Pierce v. Tripp v. Powers, 1923 C.D.
69 at 72, 316 O.G. 3.

Where the effective date of a patent or pub-
lication is (which is not a statutory bar) ante-
dated by the effective filing dates or the alle-
gations in the preliminary statements of all
parties, then the anticipatory effect of that
patent or publication need not be considered
by the Examiner at this time, but the refer-

ence should be considered if at least one party
fails to antedate its effective date by his own
filing date or the allegations in his prelimi-
nary statement. See Forsyth v. Richards, 1905
C.D. 115; 115 O.G. 1327 and Simons v. Dun-
lop, 103 U.S.P.Q. 237. A party's assertion
that the date alleged in his preliminary state-
ment antedates the effective date of a patent or
publication should be considered authorization
for the Primary Examiner to inspect his state-
ment but it must be promptly resealed against
inspection by any opposing party and no ref-
erence must be made to the exact dates of
invention alleged therein beyond the mere
statement that the date of the patent or pub-
lication is antedated by the allegations in the
preliminary statement.

In deciding motions under Rule 232 the Ex-
aminer should not be misled by citation of
decisions of the Court of Customs and Patent
Appeals to the effect that only priority and
matters ancillary thereto will be considered
and that patentability of the counts will not
be considered. These court decisions relate
only to the final determination of priority,
after the interference has passed the motion
stage; in the ordinary case a motion to dis-
solve may attack the patentability of the count
and need not be limited to matters which are
ancillary to priority.

## 1105.03 Decision on Motion To Amend or To Add or Sub- stitute Other Application Un- der Rules 233 and 234

Rule 233. Motions to amend. (a) 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 205). If the claims are not
already in the application of the moving party, the
motion must be accompanied by a proposed amend-
ment adding the claims to the application. The pre-
liminary statement for the proposed counts may be
required before the motion is considered.

(b) Such motions must, if possible, be made within
the time set, but if a motion to disolve the interference
has been brought by another party, such motions may
be made within thirty days from the filing of the
motion to dissolve. In case of action by the primary
examiner under rule 237(a), such motions may be
made within thirty days from the date of the primary
examiner's decision on motion wherein an action under
rule 237(a) was incorporated or the date of the com-
munication giving notice to the parties of the proposed
dissolution of the interference.

notice of such patents or publications, applying them
to the proposed counts, must be given to all parties at
least twenty days prior to the date of the hearing.

(d) The proposed claims must be indicated to be
patentable in the opinion of the moving party in each
of the applications involved in the motion and must,
unless they stand allowed, be distinguished 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 where-
in they differ materially from each other and why each
proposed count is necessary to the interference. The
proposed claims must also be applied to the disclosure
of each application involved in the motion, except as
to an application in which the claims already appear
and the claims identified as originating therein.

(e) On the granting of such motion and the adop-
tion of the claims by the other parties within a time
specified, and after the expiration of the time for filing
any new preliminary statements, the primary exam-
îner shall redeclare the interference or shall declare
such other interferences as may be necessary to include
said claims. A preliminary statement as to the added
claims need not be filed if a party states he intends to
rely on the original statement and such a declaration
as to added claims need not be signed or sworn to by
the inventor in person. A second motion period will
not be set and subsequent motions with respect to
such matters as could have been raised during the
motion period will not be considered.

Rule 234. Motion to include another application.
(a) Any party to an interference may bring a motion
to add (subject to the provisions of rule 201 (e) ) or
substitute any other application owned by him, as to
the existing issue; or to include any other application
or patent owned by him as to any subject matter dis-
closed in his application or patent involved in the
interference and in an opposing party's application or
patent in the interference which should be made the
basis of interference between himself and such other
party.

(b) Such motions are subject to the same condi-
tions and the procedure in connection therewith is the
same, so far as applicable, as set forth in rule 233 for
motions to amend.

Motions by the interfering parties may be
made under Rules 233 and 234 to add counts
to the interference and also to add or substi-
tute other applications owned by them. It
should be noted that, if the Examiner grants
a motion under Rule 233 and/or Rule 234, he
sets a time for the nonmoving parties to pre-
sent the allowed proposed counts in their ap-
plications, if necessary, and also sets a time
for all parties to file preliminary statements
as to the allowed proposed counts. An illus-
trative form for these requirements is given at
1105.06. If the claims are made by all parties
within the time limit set, the interference is

1
;

reformed or a new interference is declared by
the Primary Examiner.

If a motion under Rule 234 relates to an ap-
plication in issue, the application should be
withdrawn from issue only if the date set for
hearing the motion is close to or subsequent to
the ultimate date for paying the final fee. For
form see 1112.04.

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

It will be noted that Rule 234 does not spec-
ify that a party to the interference may bring
a motion to include an application or patent
owned by him as to subject matter, in addition
to the existing issue, which is not disclosed
both in his application or patent already in
the interference and in an opposing party's
application or patent in the interference. Con-
sequently the failure to bring such a motion
will not be considered by the Examiner to re-
sult in an estoppel against any party to an
interference as to subject matter not disclosed
in his case in the interference. On the other
hand, if such a motion is brought during the
motion period, secrecy as to the application
named therein is deemed to have been waived,
access thereto is given to the opposing parties
and the motion may be set for hearing by the
Patent Interference Examiner; if so set, it will
be considered and decided by the Primary Ex-
aminer without regard to the question of
whether the moving party's case already in
the interference discloses the subject matter of
the proposed claims.

# CONCURRENCE OF ALL PARTIES

Contrary to the practice which obtains when
all parties agree upon the same ground for
dissolution under Rule 232, the concurrence of
all parties in a motion under Rules 233 or 234
does not result in the automatic granting of
the motion. The mere agreement of the par-
ties that certain proposed counts are patenta-
ble does not relieve the Examiner of his duty
to determine independently whether the pro-
posed counts are patentable and allowable in
the applications 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 pur-
pose if necessary. However, if the decision
includes a new ground for holding a proposed

count unpatentable, the Examiner should state
that reconsideration or rehearing may be re-
quested within the time specified in Rule 244
(c). (Basis: Notice of May 29, 1937.)

Also, care should be exercised in deciding
motions under Rules 233 and 234 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
additional interferences are likewise patentably
distinct from the counts of the first interfer-
ence and from each other. This practice is not
followed when the counts are claims of a pat-
ent, since all the patent claims which an ap-
plicant can properly make must be included
as counts of the interference. The phrase
"patentably distinct," as used herein, means
sufficiently distinct to support separate patents
in the event of a split award of priority.

Affidavits are occasionally offered in support
of or in opposition to motions under Rules 233
and 234. The practice here is the same as in
the case of affidavits concerning Rule 232 mo-
tions, that is, affidavits relating to disclosure of
a party's application as, for example, on the
matter of operativeness or right to make,
should not be considered, but affidavits relat-
ing to the prior art may be considered by anal-
ogy to Rule 132.

If a motion under Rule 233 or 234 is denied
on the basis of a reference which is not a stat-
utory bar, the decision may be modified and
the motion granted upon the filing of proper
affidavits under Rule 131 in the application
file of the party involved. These affidavits
should not be opened to the inspection of op-
posing parties and no reference should be made
to the dates of invention set forth therein
other than the mere statement that the effec-
tive date of the reference has been overcome.
As in the case of other affidavits under Rule
131, they remain sealed until the preliminary
statements are opened.

## 1105.04 Decision on Motion Relating to Burden of Proof Under Rule 235

Rule 235. Motions relating to burden of proof. Any
party may bring a motion to shift the burden of proof
on the ground that he is entitled to the benefit of the
filing date of an earlier domestic or foreign applica-
tion, or on the ground that an opposing party is not
entitled to the benefit of an earlier application of which
he has been given the benefit in the declaration. (See
rule 224.)

The Primary Examiner also decides motions
relating to burden of proof under Rule 235.

598332 0-61 ----- 18

If there is doubt whether an earlier appli-
cation discloses the invention involved in the
interference, there being a reasonable ground
for denying the party's right to it, a party
should not be given the earlier record date.
The denial of a motion to shift the burden of
proof does not deprive a party of the benefit
of the earlier application upon which the mo-
tion was based. He may have the matter re-
viewed at final hearing (Rule 258) and he may
introduce that application as part of his evi-
dence to be subject to argument by all parties
and to be considered by the Board of Patent
Interferences. See Greenawalt v. Mark, 1904
C.D. 352; 111 O.G. 2224.

In deciding a motion of this nature, it is
usually advisable first to determine exactly
which counts will be involved in the final re-
declaration of the interference. The practice
in deciding the motion under Rule 235 should
then follow that set forth in the case of In re
Redeclaration of Interferences Nos. 49,635;
49,636; 49,866; 1926 C.D. 75; 350 O.G. 3. In
accordance with the last stated case, no party
in an interference should be made junior as to
some counts and senior as to others. There-
fore, if, in considering a motion under Rule
235, it is found that the moving party is enti-
tled to the benefit of an earlier filed applica-
tion as to some counts but not as to other
counts in the same interference, the motion
should be denied.

In accordance with present practice an ear-
lier filed, allowable application disclosing a
single species (including chemical composi-
tions) is a constructive reduction to practice
of a count expressing the genus provided con-
tinuity of disclosure has been maintained be-
tween the earlier application and the involved
application either by copendency or by a chain
of successively copending applications. Where
such an application is a constructive reduction
to practice, the benefit of its filing date may
be obtained by a junior party by a motion to
shift the burden of proof. See McBurney v.
Jones, 104 U.S.P.Q. 115; Den Beste v. Martin,
1958 C.D. 178, 729 O.G. 724; Fried et al. v.
Murray et al., 1959 C.D. 311, 746 O.G. 563.

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 last to file unless all the counts of the
interference read upon an earlier application
which antedates that of the other party.

For proving of foreign filing for "Normal"
Priority see 201.14, 201.15 and for the determi-
nation of rights under Public Law 690 see
201.16.

# 1105.05 Dissolution on Primary Ex- aminer's Own Motion Under Rule 237

Rule 237. Dissolution on motion of examiner. (a) If,
during the pendency of an interference, a reference
or other reason be found which, in the opinion of the
primary examiner, renders all or part of the counts
unpatentable, the attention of the examiners of inter-
ferences shall be called thereto unless the interference
is before the primary examiner for determination of a
motion. The interference may be suspended and re-
ferred to the primary examiner for his determination
of the question of patentability, in which case the
interference shall be dissolved or continued in accord-
ance with such determination. The consideration of
such reference or reason by the primary examiner
shall be inter partes as in the case of a motion to dis-
solve. If such reference or reason be found while the
interference is before the primary examiner for de-
termination of a motion, decision thereon may be in-
corporated 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. (See rule 226.)

(b) Prior to the approval of the preliminary state-
ments and notification of the parties thereof (rule 236),
an interference may be withdrawn at the request. of
the primary examiner, in which event the interference
shall be considered as not having been declared.

Rule 237 covers dissolution of an interfer-
ence on the Primary Examiner's own motion
if he discovers a reference or other reason
which renders all or part of the counts unpat-
entable. Three procedures are available under
this rule:

First, prior to the approval of the prelimi-
nary statements the interference may be with-
drawn. This is accomplished by a letter from
the Primary Examiner to the Examiner of In-
terferences requesting that the interference be
withdrawn. 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 appli-
cations as though no interference had been
declared. Form at 1112.07. Basis: Rule
237 (b).

Second, if the Primary Examiner finds a
reference or other reason 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
matter "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 237).
This same practice obtains when the Primary

(
:

Examiner discovers a new reason for holding
counts proposed under Rules 233 or 234 unpat-
entable. Under this practice, the Primary Ex-
aminer should state that reconsideration or
rehearing may be requested within the time
specified in Rule 244 (c). (Notice of May 29,
1937, Revised.)

Third, if the Primary Examiner finds a ref-
erence or other reason for terminating the in-
terference in whole or in part after the prelim-
inary statements have been approved but not
while the interference is before him for deter-
mination of a motion, he should call the atten-
tion of the Examiner of Interferences to the
matter. The Primary Examiner should include
in his letter to the Interference Examiner a
statement applying the reference or reason to
each of the counts of the interference which he
deems unpatentable and should forward with
the original signed letter a copy thereof for
each of the parties of the interference. Form at
1112.08. (Notice of June 14, 1938, Revised.)

Where a party authorizes the Primary Ex-
aminer to inspect his preliminary statement, ef-
fect may be given thereto in considering the
applicability of a reference to the count under
Rule 237. See 1105.02.

The Interference Examiner may suspend the
interference and refer the case to the Primary
Examiner for his determination of the question
of patentability, which is inter partes as in the
case of a motion to dissolve under Rule 232.
Briefs may be filed as in the case of a motion
under Rule 232 and a hearing will be set. De-
cision is prepared and mailed by the Primary
Examiner as in the case of a motion to dis-
solve.

In cases involving a patent and an appli-
cation where the Primary Examiner raises the
question of patentability of the count, atten-
tion is directed to Noxon v. Halpert, 128
U.S.P.Q. 481.

If, in an interference involving two or more
applications, a reference is brought to the at-
tention of the Examiner by one of the parties
to the interference, that fact should be made
of record by the Examiner in his letter to the
Examiner of Interferences under Rule 237.

If, in an interference involving an applica-
tion and a patent, the applicant calls attention
to a reference which he states anticipates the
issue of the interference, the Examiner of In-
terferences will forthwith dissolve the inter-
ference, and the Primary Examiner will there-
upon reject the claim or claims to the applicant
on his own admission of nonpatentability with-
out commenting on the pertinency of the refer-
ence. Such applicant is of course also estopped
from claiming subject matter not patentable

over the issue. A reference cited by the pat-
entee will be ignored. A reference newly dis-
covered by the Primary Examiner is treated
in accordance with 1101.02(f), Notice of March
15, 1950.

## 1105.06 Form of Decision Letter

In order to reduce the pendency of applica-
tions involved in interference proceedings, Pri-
mary Examiners are directed to render deci-
sions on motions within sixty days of the date
of hearing. (Basis: Notice of October 23,
1952.)

The decision is prepared on Form POL-78,
with carbon copies for the parties on Form
POL-78a. Sufficient carbon copies are pre-
pared so that each party or his attorney or
agent as indicated on the back of the inter-
ference file may be mailed a copy. At the
right of the address box should be typed the
identification consisting of the interference
number and the last names of the parties, jun-
iormost first. For example: Interference No.
68.561, Smith v. Jones v. Brown.

The decision should be divided into three
parts, the heading, the body, and the sum-
mary. The heading should commence with a
concise statement of each motion which has been
set, for hearing. For example:

The party Brown moves to dissolve on
the grounds :

(1) that the counts (or counts 1 and 2)
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 is estopped to
make the counts.

The party Jones moves to add proposed
counts 6, 7, and 8 to the issue.

The party Smith moves to shift the bur-
den of proof.

Next should appear a brief description of
the invention at issue in general terms, fol-
lowed by copies of a representative count or
counts and proposed counts. Patent claims
which constitute counts need not be typed out
but may be cut out of a soft copy of the patent
and securely mounted at the appropriate place
by means of paste or other adhesive. The ref-
erences cited in the motions may then be listed,
particularly those relied upon by the Examiner
in his decision.

In the body of the decision each motion
which has been set for hearing should be dis-
cussed 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 Patent Interferences at final hear-

ings and by the Court of Customs and Patent
Appeals on appeal, whereas decisions on mat-
ters of patentability over prior art are not sub-
ject to inter partes review. Each motion which
has been set for hearing must be decided on
its merits, except that when a motion to dis-
solve is granted only the one point resulting
in dissolution need be decided if detailed deci-
sion on other matters is unduly burdensome.

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 dis-
posed of succinctly. The grounds for the de-
cision should be stated clearly. It is usually
advisable to make the decision on a motion re-
lating to burden of proof last, after motions
under Rules 232, 233, and 234 have been dis-
posed of, since it is easiest to determine burden
of proof after the counts finally admitted to
the interference have been decided upon.

The summary should state the action taken
on 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 fil-
ing preliminary statements as to any allowed
proposed counts. For example :

Brown's motions to dissolve as to counts
1 and 2 is granted on grounds 1 and 2 and
is denied on ground 3.

Jones' motion under Rule 233 is granted
as to proposed counts 6 and 7 and is denied
as to proposed count 8.

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

Should the parties Smith and Brown
desire to contest priority as to proposed
counts 6 and 7, they should assert them by
amendment to their respective applications
on or before
and failure to so
assert them within the time allowed will be
taken as a disclaimer of the subject matter
thereof.

On or before
the statements
demanded by Rules 215 et seg. with respect
to proposed counts 6 and 7 must be filed in
a sealed envelope bearing the name of the
party filing it and the number and title of
the interference. See also Rule 233(e),
second sentence.

No appeal (Rule 244(d) ).

The time periods fixed in the decision for
copying allowed proposed counts and for filing
preliminary statements should ordinarily be

the same and a period of thirty days should
suffice in most cases. However, where mailing
time is materially longer, as to the West Coast
or foreign countries, or when an attorney and
inventor are widely separated, this time may
be increased to as much as sixty days.

Decisions under Rules 232 through 235 and
237 are signed, dated, and mailed by the Pri-
mary Examiner in the same way as ex parte
case.

The Clerk of the division makes the entry
of the decision in the interference file on the
next vacant line of the index. 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 motions
have been denied, or "Granted and Denied" if
some motions have been granted and others
denied. If a date for copying allowed pro-
posed counts and for filing preliminary state-
ments has been set, this should also be indi-
cated at the end of the line by "Amdt. and
Statement due
" Appropriate en-
tries should be made on the interference brief
in the section entitled "Decisions on Motion"
(Form PO-222) in each case involved in the
interference. 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 Pri-
mary Examiner.

# AFTER MAILING

Immediately upon mailing a decision under
Rules 232 through 235 and 237 the Examiner
should forward the complete interference file
to the Interference Division, where special fa-
cilities are maintained to insure that the in-
terference is promptly called up for the next
step, which may be a redeclaration or the tak-
ing of testimony. The complete interference
file will be returned to the Examiner for re-
declaration at the proper time if such action
is necessary. (Basis: Notice of January 11,
1935.)

# 1105.07 Petition for Reconsideration of Decision

Any petition for reconsideration, rehearing,
or modification must be filed within twenty
days from the date of the decision (Rule 244
(c)) and, unless this time has been extended
(see Rule 245), any such petition filed more
than twenty days after the date of the deci-
sion should be dismissed.

In the case of requests for reconsideration,
decisions thereon should be rendered within
thirty days of the filing of such requests. (Ex-
tract from Notice of October 23, 1952.)

Action on a petition for reconsideration, re-
hearing, or modification is similar to the orig-
inal decision and is likewise signed, dated, and
mailed by the Primary Examiner. Appro-
priate entry should be made on the index of .
the interference file and the complete interfer-
ence file should be forwarded immediately to
the Interference Division.

# 1106 Redeclaration of Interferences and Additional Interferences

## 1106.01 After Decision on Motion

Various procedures are necessary after de-
cision on a motion. The following general
rules may be stated :

(1). If the total result of the motion decision
consists 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 pa-
per deleting counts or parties and is likewise
adequate notice of the shifting of the burden
of proof. Where there is no motion decision
or other record in the interference, as when
jurisdiction of the interference had been re-
quested in order to declare an interference be-
tween a new party and the interferants as to
some but not all of the counts, it will be nec-
essary to redeclare the interference. For this
last purpose the forms at 1112.09(b) and
1112.09(c), suitably modified, may be used.
See 1106.02.

(2) If the motion decision results in any
addition or substitution of parties or applica-
tions or the addition or substitution of counts,
then redeclaration is necessary. If redecla-
ration is necessary, the information falling
within category (1) should also be included
in the redeclaration papers. The old counts
should retain their old numbers for ease of
identification.

(3) In redeclaring an interference the letter
to the Examiner of Interferences should be
written on a long (8" x 121/2") plain sheet of
paper and should include in detail all perti-
nent information and data relating to the
redeclaration. Added or substituted counts
should be copied. For form see 1112.09 (b).

(4) In redeclaring an interference the let-
ters to the parties should give all proper in-
formation relating to the redeclaration, omit-
ting, however, all serial numbers of opposing
applications. Parties should be arranged in al-
phabetical order. Although this precaution

may appear to be unnecessary because the par-
ties already have complete information con-
cerning the opposing cases, yet it is essential
that it be observed because a third party may
properly have access to one of the application
files and must not be given any information
relative to the other application involved in
the interference. New counts need not be cop-
ied in the letters to the parties except under
such circumstances as would necessitate copy-
ing the counts in original declaration letters
to the parties. The letters to the parties should
be prepared on Form POL-90 with the same
number of carbon copies as the original decla-
ration papers. Properly addressed envelopes
must be provided. Forms at 1112.09(c) and
1112.09 (d).

(5) Redeclaration papers must never be
mailed by the examining division but must
always be forwarded, along with the complete
interference file, to the Interference Division.

When the time arrives for redeclaring an
interference or declaring a new interference as
the result of a motion decision, the Interfer-
ence Examiner will forward to the Primary
Examiner through the Docket Branch, the
complete file of the interference. If the al-
lowed proposed counts have 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, within the time set, to make the claims
which are to be added to the interference is-
sue, the Examiner puts a statement to that
ecect in a letter to the Examiner of Interfer-
ences.

In some instances it may be necessary to de-
clare a new interference as the result of a de-
cision on motions. In such cases a statement
should be added to the letter to the Examiner
of Interferences (Form PO-221) in the new
interference to the following effect:

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

## 1106.02 By Addition of New Party by Examiner

Rule 238 states the procedure to be followed
when the Examiner finds, or there is filed, other
or new applications interfering as to some or
as to all of the counts. The procedure when
any testimony has been taken differs consid-
erably from the procedure when no testimony
has been taken, and this distinction must be
observed. Forms at 1112.09 (e) to 1112.09(1).

If no testimony has been taken and the addi-
tional application interferes as to all counts,
the Examiner requests jurisdiction of the in-
terference 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 interference
omitting the counts made by the proposed
new party, using the forms at 1112.09(b) and
1112.09 (c) suitably modified, and forms an-
other 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 let-
ters 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 interference.

### 1107 Examiner's Entry in Interference File Subsequent to Interference

An interference is terminated either by dis-
solution or by an award of priority to one of
the parties. In either case the interference is
returned with the entire record to the Exam-
iner 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 in the
interference file on the next vacant line that
the decision has been noted, such as by the
words "Decision Noted" and initialed by him.
The interference file is returned to the Docket
Branch when the examiner is through with it.
The Docket Branch will see that such note has
been made and initialed before filing away the
interference record. (Basis: Order No. 1883.)

### 1108 Entry of Amendments Filed in Connection With Motions

This section is limited to the disposition of
amendments filed in connection with motions
in an application involved in interference, after
the interference has terminated.

The manner of treating other amendments
which are filed in an application during the
course of the interference, is discussed in a
separate section . (1111.05).

Rule 232(c) reads as follows:

(c) Motions to dissolve on the ground that the
counts are unpatentable, or are unpatentable 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
interference, which amendment shall be entered by the
primary examiner to the extent the motion is not
denied, after the interference is terminated.

An amendment accompanying a motion un-
der Rule 232 is placed in the application file

but is not entered while the interference con-
tinues. After the interference has been ter-
minated, this amendment is entered "to the ex-
tent the motion is not denied." Any portion of
the amendment corresponding to a denied por-
tion of the Rule 232 motion is not entered and
it is so indicated by striking out the portion in
pencil.

#### RULE 233

Under Rule 233 an applicant is required to
submit with his motion as a separate paper an
amendment embodying the proposed claims if
the claims are not already in his application.
This amendment is not entered at that time
but is placed in the application file.

If the motion under Rule 233 is granted the
amendment is entered at the time of preparing
redeclaration papers. If the motion is not
granted, the amendment, though left in the
file, is not entered and is so marked.

If the motion under Rule 233 is granted in
part and denied in other part, only so much
of the amendment as is covered in the grant of
the motion is entered, the remaining part be-
ing marked "not entered" in pencil as in the
treatment of an amendment under Rule 232
that is only partly acceptable. (See Rule 266.)

In each instance the applicant is informed of
the disposition of the amendment in the first
action in the case following the termination of
the interference. If the case is otherwise ready
for issue, applicant is notified that the appli-
cation is allowable and the Notice of Allowance
will be sent in due course, that prosecution is
closed and to what extent the amendment has
been entered.

As a corollary to this practice, it follows
that where prosecution of the winning appli-
cation had been closed prior to the declaration
of the interference, as by being in condition for
issue, that application may not be reopened to
further prosecution following the interference,
even though additional claims had been pre-
sented under Rule 233. The interference pro-
ceeding was not such an Office action as re-
lieved the case from its condition as subject
to the doctrine of Ex parte Quayle, 1935 C.D.
11; 453 O.G. 213. (Basis: Circular of Feb-
ruary 20, 1936.)

It should be noted at this point that, under
the provisions of Rule 262(d), 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 ac-
tion as a direction to cancel the claims involved
from the application of the party making the
same.

## 1109 Action After Award of Priority

Under 35 U.S.C. 135, the Commissioner may
at once issue a patent to the applicant who is
adjudged by the Board of Patent Interferences
to be the prior inventor, without waiting for
appeal by any loser. However, in ordinary
cases it is the policy of the Office not to issue a
patent to the winning party during the period
within which appeal may be taken to the Court
of Customs and Patent Appeals, or during the
pendency of such appeal. Therefore, the files
are not returned to the examining division un-
til after the termination of the appeal period,
or the termination of the appeal, as the case
may be. Jurisdiction of the Examiner is auto-
matically restored with the return of the files,
and the cases of all parties are subject to such
ex parte action as their respective conditions
may require, even though, where no appeal to
the Court of Customs and Patent Appeals, was
filed the losing party to the interference may
file a suit under 35 U.S.C. 146. The date when
the priority decision becomes final does not
mark the beginning of a statutory period for
response by the applicant. See Ex parte Peter-
son, 1941 C.D. 8, 525 O.G. 3.

If an application had been withdrawn from
issue for interference and is again passed to
issue, a notation "Re-examined and passed for
issue" is placed on the file wrapper together
with a new signature of the Primary Exam-
iner in the box provided for this purpose.
Such a notation will be relied upon by the
Issue and Gazette Branch as showing that the
application is intended to be passed for issue
and make it possible to screen out those appli-
cations which are mistakenly forwarded to the
Issue and Gazette Branch during the pendency
of the interference.

See 1302.12 with respect to listing references
discussed in motion decisions.

## 1109.01 The Winning Party

The winning party may be sent to issue de-
spite the filing of a suit under 35 U.S.C. 146
by his opponent.

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 un-
answered amendment, or if the rejection stand-
ing against the claims at the time the interfer-
ence was formed was overcome by reason of
the award of priority, as an interference in-
volving the application and a patent which
formed the basis of the rejection, the Exam-
iner forthwith takes the application 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. See 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 if the Office action
had closed the prosecution before the Exam-
iner. (See Notice of April 14, 1941, 710.02(b).)

The winning party, if the prosecution of his
case had not been closed, generally may be
allowed additional and broader claims to the
common patentable subject matter. ( Note,
however, In re Hoover Co., Etc., 1943 C.D.
338; 553 O.G. 365.) Having won the interfer-
ence, he is not denied anything he was in pos-
session of prior to the interference, nor has he
acquired any additional rights as a result of
the interference. His case thus stands as it was
prior to the interference. If the application
was under final rejection as to some of its
claims at the time the interference was formed,
the institution of the interference acted to sus-
pend, but not to vacate, the final rejection.
After termination of the interference a letter
is written the applicant, as in the case of any
other action unanswered at the time the inter-
ference was instituted, setting a shortened pe-
riod (with the approval of the Supervisory
Examiner) within which to file an appeal or
cancel the finally rejected claims.

## 1109.02 The Losing Party

The application of each of the losing parties
following an interference terminated by a judg-
ment of priority is 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 abandonment of the
invention filed by the losing applicant, such
disclaimer, concession of priority, or abandon-
ment of the invention operates "without fur-
ther action as a direction to cancel the claims
involved from the application of the party
making the same" (Rule 262(d)). Abandon-
ment of the contest has a similar result. See
1110. The interference counts thus disclaimed,
conceded, or abandoned are accordingly can-
celled 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 para-
graph, the claims corresponding to the inter-
ference counts in the application of the losing
party should be treated in accordance with

Rule 265, which provides that such claims
"stand finally disposed of without further ac-
tion by the examiner and are not open to fur-
ther ex parte prosecution." Accordingly, a
pencil line should be drawn through the claims
as to which a judgment of priority adverse to
applicant has been rendered, and the words
"Rule 265" should be written in the margin to
indicate the reason for the pencil line. If these
claims have not been cancelled by the applicant
and the case is otherwise ready for issue, these
notations should be replaced by a line in red
ink and the words "Rule 265" in red ink before
passing the case to issue, and the applicant
notified of the cancellation by an Examiner's
Amendment. If an action is necessary in the
application after the interference, the applicant
should be informed that "Claims (designated
by numerals), as to which a judgment of pri-
ority adverse to applicant has been rendered,
stand finally disposed of in accordance with
Rule 265."

If, as the result of one or both of the two
preceding paragraphs all the claims in the ap-
plication are eliminated, a letter should be
written informing the applicant that all the
claims in his case have been disposed of, indi-
cating the circumstances, that no claims remain
subject to prosecution, and that the application
will be sent to the abandoned files with the
next group of abandoned applications. Pro-
ceedings are terminated as of the date appeal
or review by civil action was due if no appeal
or civil action was filed.

Except as noted in the next paragraph (judg-
ment based solely on ancillary matters), any
remaining claims in each defeated party's case
should be reviewed in connection with the win-
ning party's disclosure. Any claim in a losing
party's case not patentable over the winning
party's disclosure, either by itself or in con-
junction with art, should be rejected. Where
the winning party is an applicant, reference
should be made only to the application of
the winning party in Interference
(Name)

but the serial number or the filing date
of the other case should not be included in the
No.
Office Action. However, a losing applicant
may avoid a rejection based on unclaimed dis-
closure of a winning patentee. When notice
is received of the filing of a suit under 35
U.S.C. 146, further action is withheld on the
application of the party filing the suit. No let-
ter to that effect need be sent.

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, even though the award of
priority was to the junior party, are not sub-

ject to rejection on the ground of estoppel,
through failure to move under Rule 233 or on
the disclosure of the junior party as prior art
(Rule 257).

If the losing party's case was under rejection
at the time the interference was declared, such
rejection is ordinarily repeated (either in full
or by reference to the previous action) and, in
addition, rejections as unpatentable over the
issue, unpatentable over the winning party's
disclosure, or any other suitable rejections are
made. If it was under final rejection or ready
for issue, his right to reopen the prosecution is
restricted to subject matter related to the is-
sue of the interference.

Where the losing party failed to get a copy
of his opponent's drawing or specification dur-
ing the interference, he may order a copy
thereof to enable him to respond to a rejection
based on the successful party's disclosure. Such
order is referred to the Chief of the Docket
Branch who has authority to approve orders of
this nature.

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

It may be added that rejection on estoppel
through failure to move under Rules 233 and
234 may apply where the interference termi-
nates in a judgment of priority as well as
where it is ended by dissolution. See 1110.
However, Rule 234 now limits the doctrine of
estoppel to subject matter in the cases involved
in the interference. See 1105.03.

## 1110 Action After Dissolution

After dissolution of an interference any
amendments which accompanied motions to
dissolve are entered to the extent that the mo-
tions were not denied. See 1108. See 1302.12
with respect to listing references discussed in
motion decisions. If the grounds for dissolu-
tion are also applicable to the non-moving par-
ties, e.g., unpatentability of the subject matter
of the interference, the Examiner should, on
the return of the files to his division, reject in
each of the applications of the non-moving
parties the claims corresponding to the counts
of the interference on the grounds stated in
the decision. It is proper to refer to the "ap-
plication of __________ , an adverse party in
Interference
(Name)
" but neither the serial
number nor the filing date of such application
should be included in the Office Action.
No.

If an application was in condition for allow-
ance or appeal prior to the declaration of the
interference, the matter of reopening the prose-
cution after dissolution of the interference
should be treated in the same general manner
as after an award of priority. (See 1109.01
and 1109.02.)

# 1110.01 Action after Dissolution-By Termination Paper Filed Un- der Rule 262 (b)

Dissolution of an interference on the basis of
an abandonment of the contest operates as a
direction to cancel the involved claims from
that party's application (Rule 262(d) ).

If all the claims in an application are elim-
inated in accordance with the practice de-
scribed in the foregoing paragraphs, see the
fourth paragraph of 1109.02 for the action to
be taken.

Rule 262(b) reads in part :

Upon the filing of such abandonment of the contest
or of the application, the interference shall be dissolved
as to that party, but such dissolution shall in subse-
quent proceedings have the same effect with respect to
the party filing the same as an adverse award of
priority.

Under these circumstances, it should be noted
that, pursuant to the last sentence of Rule
262 (b), supra, the party who abandons the con-
test or the application stands on the same foot-
ing as the losing party referred to in Section
1109.02.

## 1110.02 Action After Dissolution Un- der Rule 232 or 237

If, following the dissolution of the interfer-
ence under these circumstances, any junior
party files claims that might have been included
in the issue of the interference such claims
should be rejected on the ground of estoppel.
The senior of the parties, in accordance with
Rule 257, is exempted from such rejection.
Where it is only the junior parties to the inter-
ference that have common subject matter addi-
tional to the subject matter of the interference,
the senior one of this subgroup is free to claim
this common subject matter. Rule 234 now
limits the doctrine of estoppel to subject matter
in the cases involved in the interference. See
1105.03.

## 1111 Miscellaneous

STIPULATIONS FOR EXTENSION OF TIME

The Patent Office normally will not prepare
and mail letters approving stipulations for ex-
tension of time in patent interferences includ-

ing periods set in decisions on motions. Unless
otherwise notified, the parties may assume that
stipulations have been approved as filed.

If the stipulation is approved, notation of
the new date or dates, will be endorsed on the
stipulation and entered on the interference file.
Such endorsement and entry will constitute the
official date or dates governing the conduct of
the interference.

In order to avoid confusion in connection
with this procedure, it is required that
stipulations specify particular calendar dates
(rather than a number of days) which are not
Saturdays, Sundays, or holidays.

If notification of the officially extended date
or dates is desired, stipulations should be ac-
companied by addressed and stamped cards
or by carbon copies of the stipulation with
addressed and stamped envelopes. The cards
or carbon copies will be stamped to indicate
approval and returned.

Every stipulation for extension of time must
be justified by "sufficient cause being shown for
such extension." (Rule 245) Stipulations lack-
ing adequate reasons will be subject to dis-
approval.

Formal letters may be written with respect
to stipulations under appropriate circum-
stances, as when a date for a hearing has been
specified which is unsatisfactory to the Office,
when a stipulation is defective, when it is de-
sired to give a warning concerning further ex-
tensions, or when a stipulation is approved only
in part or is disapproved. (Basis: Notice of
March 9, 1954.)

## 1111.01 Interviews

Where an interference is declared all ques-
tions involved therein are to be determined
inter partes. This includes not only the ques-
tion of priority of invention but all questions
relative to the right of each 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 admonished 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. (Basis:
Notice of March 2, 1935.)

## 1111.02 Record in Each Interference Complete

When there are two or more interferences
pending in this Office relating to the same sub-
ject matter, or in which substantially the same

applicants or patentees are parties thereto, in
order that the record of the proceedings in each
particular interference may be kept separate
and distinct, all motions and papers sought to
be filed therein must be titled in and relate only
to the particular interference to which they be-
long, and no motion or paper can be filed in any
interference which relates to or in which is
joined another interference or matter affecting
another interference.

The Examiners are also directed to file in
each interference a distinct and separate copy
of their actions, so that it will not be necessary
to examine the records of several interferences
to ascertain the status of a particular case.

This will not, however, apply to the testi-
mony. All papers filed in violation of this prac-
tice will be returned to the parties filing them.
(Basis: Order 453.)

## 1111.03 Overlapping Applications

Where one of several applications of the
same inventor or assignee which contain over-
lapping claims gets into an interference, the
prosecution of all the cases not in the interfer-
ence should be carried as far as possible, by
treating as prior art the counts of the inter-
ference and by insisting on proper lines of di-
vision or distinction between the applications.
In some instances suspension of action by the
Office cannot be avoided. See 709.01.

Where an application involved in interfer-
ence includes, in addition to the subject mat-
ter of the interference, a separate and divisible
invention, prosecution of the second invention
may be had during the pendency of the inter-
ference by filing a divisional application for
the second invention or by filing a divisional
application for the subject matter of the inter-
ference and moving to substitute the latter
divisional application for the application orig-
inally involved 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 application involved in the interference.

# 1111.04 "Secrecy Order" Cases

Applications having a secrecy order therein
are treated in the same manner as the other ap-
plications up to and including the declaration
of the interference (see 107). However, after
the time for filing preliminary statements has
passed the Examiner of Interferences suspends
proceedings until modification or rescission of
the secrecy order permits access by the parties
to the respective applications.

After the declaration of the interference the
applications involved are returned to the exam-

ining division for safekeeping. It is vitally
important that the Examiner of Interferences
be immediately notified of any modification or
rescission of the secrecy orders so that the in-
terference proceedings may be promptly re-
sumed, if proper.

# 1111.05 Amendments Filed During Interference

The disposition of amendments filed in con-
nection with motions in applications involved
in an interference, after the interference has
been terminated, is treated in a separate sec-
tion (1108). If the amendment is filed pur-
suant to a letter by the Primary Examiner,
after having gotten jurisdiction of the involved
application for the purpose of suggesting a
claim or claims for interference with another
party and for the purpose of declaring an
additional interference, the examiner enters
the amendment and takes the proper steps to
initiate the second interference.

# OTHER AMENDMENTS

When an amendment to an application in-
volved in an interference is received, the
Examiner inspects the amendment and, if nec-
essary, the application, to determine whether
or not the amendment affects the pending or
any prospective interference. If the amend-
ment is an ordinary one properly responsive
to the last regular ex parte action preceding
the declaration of the interference and does
not affect the pending or any prospective in-
terference, the amendment is marked in pencil
"not entered" and placed in the file, a corre-
sponding entry being endorsed in ink in the
contents column of the wrapper and on the
serial and docket cards. After the termina-
tion of the interference, the amendment may
be permanently entered and considered as in
the case of ordinary amendments filed during
the ex parte prosecution of the case. (Order
1759, Revised.)

When an amendment filed during interfer-
ence purports to put the application in condi-
tion for another interference either with a
pending application or with a patent, the Pri-
mary Examiner must personally consider the
amendment sufficiently to determine whether,
in fact, it does so. If it does, he obtains from
the Commissioner jurisdiction of the applica-
tion for the purpose of setting up the new
interference. The Examiner submits his re-
quest for jurisdiction to the Supervisory Ex-
aminer for approval, assuming of course that
the existing interference is still pending before
the Board of Patent Interferences. Form at
1112.06 (a).

If the amendment presents allowable claims
directed to an invention claimed in a patent or
in a pending application in issue or ready for
issue, the Examiner requests jurisdiction of the
file, as above, setting forth in his request the
reason why immediate jurisdiction of the file
is required by him, and when the file is re-
ceived, enters 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 applica-
tion in condition for interference with another
application not involved in the interference,
the amendment is placed in the file and marked
"not entered" and the applicant is informed
why it will not be now entered and acted upon.
See form at 1112.10. Where the amendment
copies claims of a patent not involved in the

interference and which the Examiner believes
are not patentable to the applicant, and where
the application is open to further ex parte
prosecution, jurisdiction of the file should be
obtained, the amendment entered and the
claims rejected, setting a time limit for re-
sponse. If reconsideration is requested and
rejection made final a time limit for appeal
should be set. Where the application at the
time of forming the interference was closed
to further ex parte prosecution and the dis-
closure of the application will, prima facie,
not support the copied patent claims or where
copied patent claims are drawn to a nonelected
invention, the amendment will not be entered
and the applicant will be so informed, giving
very briefly the reason for the nonentry of the
amendment. See Letter Form 1112.10.

## 1111.06 Notice of Rule 234 Motion Relating to Application Not Involved in Interference

Whenever a party in interference brings a
motion under Rule 234 affecting an applica-
tion not already included in the interference,
the Examiner of Interferences should at the
time of setting the motion for hearing send
the Primary Examiner a written notice of
such motion and the Primary Examiner should
place this notice in said application file. (Ba-
sis: Order 3244.)

The notice is sent to the Primary Exam-
iner at the time the parties are notified that
the Rule 234 motion is set for hearing. The
notice is customarily sent to the division which
declared the interference since the application
referred to in the motion is generally examined
in the same division. However, if the applica-
tion is not being examined in the same divi-
sion, then the correct division should be ascer-
tained and the notice forwarded to that
division.

This notice serves several useful and essen-
tial purposes, and due attention must be given
to it when it is received. First, the Examiner.
is cautioned by this notice not to consider es
parte, questions which are pending before the
Office in inter partes proceedings involving the
same applicant or party in interest. Second,
if the application which is the subject of the
motion is in issue and the last date for paying
the final fee will not permit determination of
the motion, it will be necessary to withdraw
the application from issue. Form at 1112.04.
Third, if the application contains an affidavit
under Rule 131, this must be sealed because
the opposing parties have access to the ap-
plication.

### 1111.07 Conversion of Application From Joint to Sole or Sole to Joint

Although, for simplicity, the subject of this
section is titled "Conversion of Application
from Joint to Sole or Sole to Joint," it in-
cludes all cases where an application is con-
verted to decrease or increase the number of
applicants. See 201.03.

If the conversion papers are filed before the
preliminary statements are approved and con-
version is sought at that time, the Primary
Examiner may request jurisdiction of the in-
terference for purpose of effecting the desired
conversion or jurisdiction of the interference
may be conferred on the Primary Examiner
on the Interference Examiner's own initiative.
In either event, the matter of effecting the con-
version is treated as an ex parte matter at this
stage and no papers are prepared for the inter-
ference file until the conversion is completed
and the interference is in condition for re-
declaration. If necessary at this time, an ex
parte letter may be written to the party seek-
ing conversion pointing out any curable de-
fects in the conversion papers and setting a
time limit, not less than 30 days, for response
before returning the interference to the Patent
Interference Examiner. Interviews, limited to
discussion of the conversion, may also be held
within this period. If after the expiration of
the period for response the Examiner is still of
the opinion that conversion is not proper, he
puts a statement to that effect in a letter to the
Patent Interference Examiner and returns the
interference file to him. See letter forms in
1112.09 (s) and 1112.09(t). After conversion
has been completed, the proper redeclaration
papers are prepared and forwarded to the In-
terference Division.

If conversion is attempted during the motion
period, the matter is treated as an inter partes
matter, subject to opposition, and the Interfer-
ence Examiner may transmit it to the Primary
Examiner for determination, inter partes. If
conversion is permitted at this stage, redeclara-
tion of the interference is necessary and the
proper papers for this purpose are forwarded
to the Interference Division.

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 transmit the matter to
the Primary Examiner for determination or
defer consideration thereof to final hearing for
determination by the Board of Patent Inter-
ferences. If transmitted to the Primary Ex-
aminer, the matter is treated as outlined in the

preceding paragraph. Forms for converting
a joint application to a sole are given at
1112.09(m) to 1112.09(p) and these forms
may be suitably modified to apply to the situ-
ation where an application with three or more
applicants is converted to a joint application
with a lesser number of applicants or where
an application is converted to increase the
number of applicants.

If conversion is attempted after the taking
of testimony has commenced, the Interference
Examiner will generally defer consideration
of the matter to final hearing for determina-
tion by the Board of Patent Interferences.

In any case where the Examiner must de-
cide the question of converting an application
he must, of course, determine whether the le-
gal requirements for such conversion have
been satisfied, just as in the ordinary ex parte
treatment of the matter.

A party may occasionally seek to substitute
an application with a lesser or greater number
of applicants for the application originally in-
volved in the interference. If this is at-
tempted before the preliminary statements are
approved, then the matter may be treated in
the same manner as an attempted conversion
at this stage. If substitution is attempted
during the motion period, then it should be
treated as a motion under Rule 234.

# 1111.08 Reissue Application Filed While Patent Is in Interfer- ence

Care should be taken that a reissue of a pat-
ent should not be granted while the patent is
involved in an interference without approval
of the Commissioner.

If an application for reissue of a patent is
filed while the patent is involved in interfer-
ence, that application must be called to the
attention of the Commissioner before any ac-
tion by the Examiner is taken thereon. (Ba-
sis: Order 3193.)

5
₡

Such an application should be promptly for-
warded to the Office of the Solicitor with
an appropriate memorandum. A letter with
titling relative to the interference is placed in
the interference file by the Commissioner and
copies thereof are placed in the reissue appli-
cation and mailed to the parties to the inter-
ference. This letter gives notice of the filing
of the reissue application and generally in-
cludes a paragraph'of the following nature:

The reissue application will be open to in-
spection by the opposing party during the in-
terference and may be separately prosecuted
during the interference, but will not be passed

to issue until the final determination of the
interference, except upon the approval of the
Commissioner.

# 1111.09 Suit Under 35 U.S.C. 146 by Losing Party

When a losing party to an interference gives
notice in his application that he has filed a
civil action under the provisions of 35 U.S.C.
146, relative to the interference, that notice
should be called to the attention of the Docket
Branch in order that a notation thereof can
be made on the index of the interference.
(Notice of January 29, 1930, Revised.)

When notice is received of the filing of a
suit under 35 U.S.C. 146, further action is
withheld on the application of the party filing
the suit. No letter to that effect need be sent.

## 1111.10 Benefit of Foreign Filing Date

If a request for the benefit of a foreign filing
date under 35 U.S.C. 119 or under Section 1
of Public Law 690 is filed while an applica-
tion is involved in interference, the papers are
to be placed in the application file in the same
manner as amendments received during inter-
ference, and appropriate action taken after the
termination of the interference.

A party is not given the benefit of a foreign
filing date in the original declaration of an
interference, even though favorable action had
been stated in previous ex parte prosecution.
The party having a foreign filing date may
therefore find it desirable or necessary to file a
motion to shift the burden of proof under
Rule 235 and the matter is then considered on
an inter partes basis.

# 1111.11 Patentability Reports

The question of Patentability Reports rarely
arises in interference proceedings but the
proper occasion therefor may occur in decid-
ing motions. If appropriate, Patentability
Report practice may be utilized in deciding
motions and the procedure should follow as
closely as possible the ex parte Patentability
Report practice.

# 1111.12 Certified Copies of Part of an Application

Rule 241. Copies of part of application. When an ap-
plication is involved in an interference in which a part
only of the invention is included in the issue, the ap-
plicant may file certified copies, one for the record and
one for each opposing party, of the part or parts of the

specification and drawings, and other papers in the
file, which exclude merely the noninterfering disclosure,
and such copies may be used in the proceedings in place
of the complete application.

The Primary Examiner certifies the copies
referred to in the preceding rule. This rule
applies to earlier applications relied upon by
a party as well as applications directly involved
in the interference.

Certification should be withheld if the party
requesting it does not order the number of copies
required by the rule. In order to be eligible for
certification, the partial copies must include the
file wrapper of the application, all of the orig-
inal specification, claims, and drawings which
bears directly or indirectly on the invention in-
volved in the interference, or is in any way
necessary to an understanding thereof, and also
all of the Office actions and amendatory papers
which fall in this category. Only separate, dis-
tinct, and independent matter which does not in
any way relate to the subject matter of the inter-
ference and is unnecessary to an understanding
thereof may be excluded from a copy under
Rule 241. Of course, affidavits under Rule 131
and amplified affidavits under Rule 204 of the
same character are not included in the Rule 241
copy. See Ex parte Donald W. Kaiser, 1952
C.D. 3; 661 O.G. 10. After the certified copies
have been prepared, the application is sealed
and is returned to the examining group to be
opened by the authority of the Primary Ex-
aminer only.

When the interference has terminated, any
copies under Rule 241 should be returned to the
Docket Branch, together with the interference
file, to be disposed of by the Docket Branch.
See 1107.

# 1111.13 Consultation With Interfer- ence Examiner

In doubtful cases, or where the practice ap-
pears to be obscure or confused, the Examiner
should consult with an interlocutory, Interfer-
ence Examiner, since the latter may be able to
suggest a course of action which will avoid con-
siderable difficulty in the future treatment of
the case.

# 1112 Letter Forms Used in Interfer- ences

It is obviously impossible to include forms
illustrative of every situation which may arise
in connection with an interference and this sec-
tion is necessarily limited to those forms which
are used most frequently in interference
practice.

For convenience in the preparation and for-
warding of the letter forms, under each title
the following information is given :

Form No. or type of paper for preparation of
form.

Number of copies to be prepared.

Person to whom papers are to be forwarded.
If papers are to be sent to the applicant,
patentee, or assignee, and there are joint appli-
cants or patentees or several assignees, copies
should be prepared for each of the joint appli-
cants or patentees and each of the several
assignees.

1112.01 Letter to Law Examiner Sub-
mitting Proposed Interfer-
ence for Correspondence
Under Rule 202

(Short (8" x 101/2") letterheads.)
(Original and carbon copy, both signed.)
(Forward both to Law Examiner.)
(Date.)

SIR: Conflict is found to exist between the
following applications and it is proposed to
suggest claims as indicated below :

268,554
J. L. Brown.

307,819, division of 203,503
T. A. Smith.
165,202
F. A. Jones.

The application of Jones is ready for allow-
ance. (If no application is ready for allow-
ance, indicate that fact.)

Respectfully,

Examiner.

GREEN,
Assistant Examiner.

Brown

Smith 10-18-83

Div. of

Jones

2-12-33

11-21-82

3-15-32

Yes

Yes 1

Yes

No 1

55.

Yes.

Yes

Yes.

Yes

No.

1 In using the above form, type the word "yes" opposite each
claim under the name of each applicant who can make the
claim and "no" under each who cannot.

OR
(Date.)

SIR: Conflict is found to exist between the
following applications and it is proposed to
suggest a claim as indicated below :

268,554 J. L. Brown Feb. 14, 1954
203,503 F. A. Jones Aug. 10, 1953

# 1112.02

The application of Jones is ready for allow-
ance.

Proposed count:

A sprayable hair-preparation comprising an
alcoholic solution of polyvinylpyrrolidone and
Freon.

Respectfully,

Examiner.

GREEN,
Assistant Examiner.

## 1112.02 Letter Suggesting Claims for Interference

(Form POL 90)

(Original for application file, carbon copy
for attorney or agent of record.)

(To be mailed by examining division)

The following claims, found allowable, are
suggested for purpose of interference. Appli-
cant should make same by __________ (allow
not less than 30 days) under the provisions of
Rule 203; failure to do so will be considered
a disclaimer of the subject matter involved :
(Copy claims, without numerals.)

Examiner.

## 1112.03 Same Attorney or Agent in Applications of Conflicting Interests

(Form POL 90)

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

(To be mailed by examining division)
Attention is called to the fact that the attor-
ney (or agent) in this case is also the attorney
(or agent) in an application of another party
and of different ownership claiming substan-
tially the same patentable invention as claimed
in the above identified application.

Examiner.

Copies to :
Applicant.
Assignee.

## 1112.04 Letter Requesting Withdrawal From Issue

(Short (8" x 101/2") letterhead or plain
paper.)

(Original for application file.)
(Forward to Supervisory Examiner.)

(Date)

Application of
John Doe
Serial No. 85,963
Washing Machine)
Filed Feb. 14, 1933)
Allowed Mar. 6, 1935)
Hon. Commissioner of Patents:

Withdrawal from Issue

SIR: It is requested that the above-entitled
application be withdrawn from issue for the
purpose of (a), (b), (c), (d), (e), (f), (see
below), or (other stated reason).

The final fee has not (or has) been paid,
Respectfully,

Examiner.

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

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

(d) Rejecting claims
(specify claims)
on the implied disclaimer resulting from
failure to make the claims suggested to him,
under Rule 203.

(e) Informing applicant that the claims
cannot be allowed him because correspondence
under Rule 202 has developed the fact that
applicant is not the first inventor of their
subject matter.

(f) Deciding a motion under Rule 234 in-
volving this application, the date set for hear-
ing the motion being subsequent to the ulti-
mate date for paying the final fee.

# 1112.05 Declaration Papers

1112.05(a) Letter to Examiner of
Interference

(Form PO-221)

(Original for interference file, carbon copy
may be prepared for retention in examining
division)
(Forward to Interference Division)

Prepared by properly filling in the blanks on
this form, setting forth all of the counts and
adding a table showing the relationship of the
counts to claims of the various parties omit
any attorneys except those designated to re-
ceive correspondence. The counts should be
checked against the original claims and the
words "Counts compared" placed at the end

of the letter to show that the counts had been
compared with the claims. See. 1102.01 (a).

1112.05(b) Declaration Papers
Where One of the Parties
Has Two Applications.
Both Junior or Both Sen-
ior (In Effective Filing
Dates) to the Other Party

In the letter to the Examiner of Interference
(Form PO-221) the complete information of
all applications should be given, designating
the two applications of the common inventor
by letter. "The tabulation of the counts should
be in the following form:

Counts :

Jones

Smith (A)

Smith

(B)

This same tabulation is copied in each of the
letters to the parties (Form POL-76), being
certain to arrange the parties in alphabetical
order. The identification "Case A" is added
to the right of the address box in the letter
(Form POL-76) for that application of Smith
and that letter, after the printed portion, reads
as follows:

Presented in claims 5 and 6 of this appli-
cation.

The identification "Case B" is added to the
right of the address box in the letter (Form
POL-76) for Smith's other application and
that letter, after the printed portion, reads as
follows:

Presented in claims 3 and 7 of this appli-
cation.

The letters to the parties must clearly indi-
cate that two Smith applications are involved
in the interference and any differences in the
two cases should be indicated.

## 1112.05(c) Letter to Each Party (In- terference Notice)

(Form POL-76)

(Original for application or patent file, carbon
copies in accordance with Rule 209(b))

Do not give serial number or filing date of any
other applicant

(Forward to Interference Division)

The interference number and date for filing
the preliminary statement will be filled in by
the Examiner of Interferences.

After printed matter reading, "The subject
matter involved in the interference is" con-
tinue as follows: presented in claims 8 and 10
of this application (or patent).

Your application, above identified, is a divi-
sion (or continuation) of Serial No.
(See Rule 207 (a).)
,
filed

(Typist: Ignore any earlier application of
which the involved application is a continua-
tion-in-part)

The interference involves your application
(or patent) above identified and applications
filed by :

(Typist: the first alphabetical name)

John Brown, of Akron, Ohio, whose Post
Office address is Municipal Building, Akron,
Ohio, whose attorney is Jas. Robb, 36 Euclid
Avenue, Cleveland, Ohio, whose associate at-
torney is Robert Horn, Press Building, Wash-
ington, D.C., and whose assignee is the Garden
Implement Company, of Cleveland, Ohio.

(Typist : the second alphabetical name)

Thomas Smith,
etc.

The relation of the counts of the interfer-
ence to the claims of the respective parties is
as follows :

Counts :

Brown

Smith

Taylor

(Typist: note alphabetical arrangement of
parties.)

Counts compared.

(Note paragraphs (A) (1) and (A) (2) below.)
Examiner.

Copies to:
(See Rule 209(b).)

(A) To party or parties not otherwise ready
for allowance add:

(1) "After termination of the interference
this application will be held subject to further
examination under Rule 266."

(2) "Claims
will be held subject to
rejection as unpatentable over the issue in the
event of an award of priority adverse to
applicant."

(B) To party ready for allowance, and if
applicable, add :

Paragraph (A) (2), above.

## 1112.06 Requests for Jurisdiction

1112.06(a)

# MANUAL OF PATENT EXAMINING PROCEDURE

## 1112.06(a) Request for Jurisdiction of Application Involved in Interference

(Short (8" x 101/2") Letterhead or plain
paper.)

(Original for application file.)
(Forward to Supervisory Examiner.)

This form is used when it is desired to take
action solely on an application involved in an
interference, without disturbing the existing
interference.

Application of
John Smith
Serial No. 85,963
Spraying Machine)
Filed Feb. 14, 1933)

(Date)

Request for Jurisdiction

Hon. Commissioner of Patents:

SIR: Jurisdiction of the above-entitled ap-
plication, now involved in Interference No.
44,444, Andrews 1 v. Smith,1 is requested for
the purpose of (a), (b), (c), (d), or (other
reason).

(State briefly any further necessary infor-
mation.)

Respectfully,

Examiner.

(a) Suggesting claims thereto for interfer-
ence with another party and of entering such
claims if made, and of declaring such addi-
tional interference.

(b) Entering an amendment which puts the
application in condition for another interfer-
ence, and of declaring such other interference.

(d) Entering and taking action on claims
copied from Patent No. ______ to ______ , with
which applicant requests an interference.

## 1112.06(b) Request for Jurisdiction of Interference

(Short (8" x 101/2") Letterhead or plain
paper.)

(Original for interference file.)
(Forward to Docket Branch.)

This form is used when it is desired to take
action in the interference which will result in
alteration of the existing interference.

Interference No. 45,678, Henry Brown v. John
Smith and Edward Green

### Request for Jurisdiction

Examiner of Interferences :

SIR: Jurisdiction of the above-entitled inter-
ference is requested for the purpose of (a),
(b), (c), or (other reason).
Respectfully,

Examiner.

(a) Adding, under the provisions of Rule
238, a new party who has made the claims
which are the issue of the above interference.

(May be used only prior to the taking of
testimony. If any testimony has been taken,
see Rule 238, and forms at 1112.09(j) to
1112.09 (1).)

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

(c) Converting the joint application of
Smith and Green to a sole application of
Smith (or substituting a sole application of
Smith for the joint application of Smith and
Green; or converting the sole application of
Smith to a joint application of Smith and
Green; or substituting a joint application of
Smith and Green for the sole application of
Smith).

(May be used only prior to the approval of
the preliminary statements. If conversion or
substitution is attempted at a later date see
1111.07.)

## 1112.07 Withdrawal of Interference Under Rule 237(b)

(Short (8" x 101/2") letterhead or plain
paper.)

(Original for interference file.)

(Forward to Docket Branch.)

This form may be used only prior to the ap-
proval of the preliminary statements and must
not be used thereafter. Thereafter proceed-
ings must be in accordance with Rule 237(a).
(See "Letter Forms Used in Interferences,"
1112.08.)

Interference No.

(Date.)
Henry Brown
v.
Withdrawal

John Smith
)

Examiner of Interferences :

SIR: The above identified interference, in
which preliminary statements have not been
approved, is hereby withdrawn in view of a

1 Note alphabetical arrangement.

newly discovered reference which anticipates
all the counts in issue.
Respectfully,

Examiner.

## 1112.08 Primary Examiner Initiating Dissolution of Interference Rule 237 (a)

(Short (8" x 101/2") letterhead or plain
paper.)

(Original for interference file, carbon copy
for each party.)

(Forward to Docket Branch.)

This form is to be used after the approval of
the preliminary statements (if preliminary
statements have not been approved, interfer-
ence should be withdrawn-see Rule 237 (b)
and form at 1112.07) and need not be used if
the interference is before the Primary Exam-
iner for determination of a motion.

(Date.)

Examiner of Interferences :

SIR: Under the provisions of Rule 237 your
attention is called to the following patents :

Chambers ___ 169, 520 Nov. 2, 1875 91-18
Meyers ______ 248, 764 Jan. 11, 1912 91-24

Counts 1 and 2 of Interference No. 45,678,
Brown v. Smith, are considered unpatentable
over either of these references.

(Apply the references to the affected counts
in sufficient detail to enable the parties to argue
the matter properly.)

Respectfully,

Examiner.

### PATENTEE INVOLVED

If one of the parties is a patentee, no refer-
ence should be made to the patent claims nor to
the fact that such claims correspond to the
counts. See 1101.02(f), last paragraph. How-
ever, this restriction does not apply to claims
of the application. Language such as the fol-
lowing is suggested : "Applicant's claims -
are considered fully met by (or unpatentable
over) the - reference." (Basis: Notice of
October 3, 1962.)

### 1112.09 Redeclaration

#### 1112.09(a) Redeclaring an Interfer- ence Pursuant to a Deci- sion on Motions

A greater variety of letters falls within this
category than any other group. It is impos-

sible to reproduce letter forms which will cover
every situation and it will therefore frequently
be necessary for the Examiner to compose his
own letters. In the following forms a rela-
tively complex redeclaration is illustrated, with
certain counts stricken out, other counts added,
an application substituted, and the burden of
proof shifted. Simpler redeclarations will ne-
cessitate deletion of portions of these forms;
more complex redeclarations will require longer
letters. The general rule should be observed
of giving the Examiner of Interferences com-
plete information in detail of any change in
the interference and giving the parties the same
information except that all reference to serial
numbers or relative filing dates must be
omitted.

#### 1112.09(b) Redeclaration After Deci- sion on Motion, Letter to Examiner of Interfer- ences

(Long (8" x 121/2") plain sheet.)

(Original for interference file, carbon copy
may be prepared for retention in examining
group.)

(Forward to Interference Division)

IN RE INTERFERENCE NO.
JONES V. BROWN V. SMITH

Examiner of Interferences:

SIR: Pursuant to the motion decision of the
Primary Examiner dated
(Date)
,

the above entitled interference is hereby rede-
clared as follows:

Count 2 is stricken out, and the following
counts are added :
Count 4 (Green's proposed count B) (Copy
count).

Count 5 (Smith's proposed count 9) (Copy
count).

The application of Thomas W. Green for a
Hand Plow, Serial No. 333,333, filed October
19, 1936 (division of Serial No. 222,222, filed
June 23, 1935, patented November 14, 1937, No.
2,142,794), whose Post Office address is Mu-
nicipal Building, Akron, Ohio, whose attorney
is Jas. Robb, 36 Euclid Avenue, Cleveland,
Ohio, whose associate attorney is Robert Horn,
Press Building, Washington, D.C., and whose
assignee is the Garden Implement Company,
of Cleveland, Ohio, is substituted for the ap-
plication of Brown formerly involved in the
interference.

In view of the granting of the motion to
shift the burden of proof by the party Jones,
the order of the parties is now Green v. Smith
v. Jones.

# 1112.09 (c)

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

Counts :

Green

Smith

Jones

Counts compared.

Examiner.

1112.09(c)
Redeclaration After Deci-
sion on Motion, Letter to
Each Retained Party
(Form POL 90)

(Original for application or patent files, car-
bon copies in accordance with Rule 209 (b))

(Forward to Interference Division)

Pursuant to the motion decision of the Pri-
mary Examiner dated
Interference
No.
is hereby redeclared as follows:
(Date)

Count 2 is stricken out, and counts 4 and 5,
which are presented in claims 19 and 20 (or 42
and 43 in the case of the other retained appli-
cation) of this application are added.

The application of Thomas W. Green, whose
Post Office address is Municipal Building,
Akron, Ohio, whose attorney is Jas. Robb, 36
Euclid Avenue, Cleveland, Ohio, whose asso-
ciate attorney is Robert Horn, Press Building,
Washington, D.C., and whose assignee is the
Garden Implement Company, of Cleveland,
Ohio, is substituted for the application of
Brown formerly involved in the interference.

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

Counts :

Green 1

Jones 1

Smith 1

1 Note alphabetical arrangement.

Counts compared.

Copies to :
(See Rule 209 (b).)

Examiner.

1112.09(d)
Redeclaration After Deci-
sion on Motion, Letter to
New Party
(Form POL 90)

(Original for application or patent file, carbon
copies in accordance with Rule 209(b))

# (Forward to Interference Division)

Pursuant to the motion decision of the Pri-
mary Examiner dated
your appli-
cation above identified is hereby substituted in
(Date)
Interference No.
for the application
of Brown formerly involved therein.

The subject matter of the interference is pre-
sented in claims 23, 25, 26, and 27 of this
application.

Your application, above identified, is a divi-
sion of Serial No. 222,222, filed June 23, 1935,
patented November 14, 1937, No. 2,142,794 (See
Rule 207 (a).)

The interference involves your application
above identified and applications filed by :

John Jones,1 whose Post Office address is
whose attorney is
,

whose associate attorney is

and
whose assignee is
William Smith 1
etc.
The relation of the counts of the interference
to the claims of the respective parties is as
follows:

Counts :

Green 1

Jones 1

Smith 1

Note alphabetical arrangement.

Counts compared.

Examiner.

Copies to :

(See Rule 209(b).)

An interference brief (Form PO-222) must
also be prepared for the application file of the
new party.

It is unnecessary to prepare a letter for the
party who is being eliminated from the inter-
ference, since the motion decision is adequate
notice to him and the entry on the interference
brief (Form PO-222) of his case indicates that
he was eliminated from the interference.

# INTERFERENCE

1112.09 (f)

## 1112.09(e) Adding a Party Under Rule 238, No Testimony Taken

If no testimony has been taken it is neces-
sary to first request the Examiner of Interfer-
ences for jurisdiction of the interference (see
1112.06(b)); thereafter the interference may
be redeclared as follows :

1112.09(f)
Adding a Party (No Testi-
mony Taken), Letter to
Examiner of Interfer-
ences

(Long (8'' x 121/2") plain sheet.)
(Original for interference file, carbon copy
may be prepared for retention in examining
group.)

(Forward to Interference Division)

Examiner of Interferences :

SIR: In accordance with the provisions of
Rule 238, the application of Andrew Jones,
Serial No.
filed
for
,
whose Post Office address is
whose
attorney is
and whose assignee is the
X.Y.Z. Company of
is hereby
added to the Interference Brown v. Smith,
declared March 5, 1936, No. 45,678.

The order of the parties is now as follows:
Jones v. Brown v. Smith.

The issue of the interference remains the
same.

The claims of the Jones application corre-
sponding to the issue are:

Counts :
Jones
1
3
4

Respectfully,

Examiner.

Counts compared.

1112.09(g)
Adding a Party (No Testi-
mony Taken), Letter to
Each Original Party

(Form POL 90)

(Original for application or patent file, carbon
copies in accordance with Rule 209(b))

(Forward to Interference Division)

In accordance with the provisions of Rule
238 the application 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 1 v.
Smith 1 to which you are a party. The claims
of the Jones application corresponding to the
issue are:

Counts :
Jones
1
3
2
4

The new party is given until

within which to file the preliminary statement
required by Rules 215 et seq.

The issue of the interference remains un-
changed.

Examiner.

Counts compared.
Copies to:

(See Rule 209 (b).)

1112.09(h)

Adding a Party (No Testi-
mony Taken), Letter to
New Party

(Form POL 90)

(Original for application or patent file, carbon
copies in accordance with Rule 209(b))
(Forward to Interference Division)

In accordance with the provisions of Rule
238 your case above identified is hereby added
to Interference No. 45,678 in which no testi-
mony has been taken.

The preliminary statement required by Rules
215 et seg. must be filed on or before

The subject matter of the interference is pre-
sented in claims 3 and 4 of this application.

The interference involves your case above
identified, and

The application filed by Henry Brown,1
whose Post Office address is
whose
attorney is
and whose
assignee is

The application filed by William Smith,1
etc.

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

Counts :

Brown 1

Jones 1 Smith 1

Examiner.

Counts compared.
Copies to:
(See Rule 209(b).)

1112.09(i)
Adding a Party Under
Rule 238, Testimony
Taken

If testimony has been taken, it is not nec-
essary for the examiner to first request juris-
diction of the interference and the forms used
are different, as follows:

1112.09(j)
Adding a Party (Testi-
mony Taken), Letter to
Examiner of Interferences

(Long (8" x 121/2") plain sheet)

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

1 Note alphabetical arrangement.

1112.09(j)

## 1112.09(k)

## (Forward to Interference Division)

Examiner of Interferences :

SIR: It is requested that the application of
Andrew Jones, Serial No.
filed
לי
for
whose Post Office address is
,
whose attorney is
and whose assignee
is the X.Y.Z. Company of
be added
to the interference of Brown v. Smith, de-
clared Jan. 5, 1936, No. 45,678, in which testi-
mony has been taken.

The order of the parties will then be as fol-
lows: Jones v. Brown v. Smith.

The issue of the interference remains un-
changed.

The claims of the Jones application corre-
sponding to the issue are:

Counts :
1

Jones
3

Respectfully,

Examiner.

Counts compared.

1112.09(k)
Adding a Party (Testi-
mony Taken), Letter to
Each Original Party

(Form POL 90)

(Original for application or patent file, carbon
copies in accordance with Rule 209(b))

(Forward to Interference Division)

An application for patent has been filed by
Andrew Jones, whose Post Office address is

whose attorney is
and
whose assignee is the X.Y.Z. Company of
claiming the subject matter of in-
terference No. 45,678; Brown 1 v. Smith,1 to
which you are a party. The claims of Jones'
application corresponding to the counts of the
issue are:

Counts :

Jones

1 Note alphabetical arrangement.

Written objections to the admission of the
above entitled application to the interference,
with proof of service on the proposed new
party as well as the present parties, will be
considered if filed on or before

The issue of the interference remains un-
changed.

Examiner.

Counts compared.
Copies to:
(See Rule 209 (b).)

1112.09(1)
Adding a Party (Testi-
mony Taken), Letter to
New Party
(Form POL 90)

(Original for application or patent file, car-
bon copies in accordance with Rule 209(b))
(Forward to Interference Division)

Your case, above identified, is adjudged to
interfere with others, hereinafter specified,
which are now involved in an Interference No.
45,678, in which testimony has been taken.

Written objections of the present parties to
your admission to the interference, with proof
of service upon you, will be considered if filed
on or before

The subject matter of the interference is pre-
sented in claims 3 and 4 of this application.
The parties to the interference are:

Henry Brown,1 whose Post Office address is
whose attorney is
whose
assignee is Roe Manufacturing Company of
and
John Smith 1
etc.
The relation of your claims and of the claims
of the parties to the counts of the issue is as
follows:

Counts :

Brown 1

Jones

1 Smith I

Counts compared.
Examiner.

Copies to :
(See Rule 209 (b).)

1112.09(m)
Conversion of Joint Ap-
plication to Sole During
Interference

The following letter forms, 1112.09(n) to
1112.09 (p), may be suitably modified to be
used in connection with other conversions de-
creasing or increasing the number of appli-
cants in an application.

## 1112.09(n) Letter to Examiner of Interferences

(Long (8" x 121/2") plain sheet.)
(Original for interference file.)
(Forward to Interference Division.)

1 Note alphabetical arrangement.

1112.09(s)

Examiner of Interferences:

SIR: Interference No. 74,819, Wheat and
Tomlin v. Butler, is hereby reformed by chang-
ing the party Wheat and Tomlin as joint in-
ventors to Wheat as sole inventor.

The counts remain the same.

Respectfully,

Examiner.

A similar letter is written when the conver-
sion is from sole to joint.

1112.09(o)
Changing Joint to Sole,
Letter to Resulting Sole
Party
(Form POL 90)

(Original for application file, carbon copies
in accordance with Rule 209(b))

(Forward to Interference Division)

The amendment with new oath and a dis-
claimer identifying this application as the sole
invention of Wheat formerly having status as
a joint inventor in the case, has been entered.

Interference No. 74,819, Butler 1 v. Wheat 1
and Tomlin, involving the above identified ap-
plication is hereby reformed, the party Wheat
and Tomlin being changed from Wheat and
Tomlin as joint inventors to Wheat as sole
inventor. The counts remain the same.

Copies to:
(See Rule 209(b).)

Examiner.

## 1112.09(p) Changing Joint to Sole, Letter to Other Party

(Form POL 90)

(Original for application or patent file, car-
bon copies in accordance with Rule 209(b))
(Forward to Interference Division)

Interference No. 74,819, Butler 1 v. Wheat 1
and Tomlin, involving the above identified ap-
plication is hereby reformed, the party Wheat
and Tomlin as joint inventors being changed
to Wheat as sole inventor.

The counts remain the same.

Copies to :
(See Rule 209(b).)

Examiner.

1112.09(q)
Changing Sole to Joint,
Letter to Resulting Joint
Parties

(Form POL 90)

(Original for application file, carbon copies in
accordance with Rule 209 (b).)

(Forward to Interference Division)

The papers converting the above identified
application from sole to joint have been
entered.

Interference No. 74,819, Butler 1 v. Tomlin,1
involving the above identified application is
hereby reformed, the party Tomlin as sole is
inventor being changed to Tomlin and Wheat
as joint inventors. The count remains the
same.

Copies to:

Examiner.

(See Rule 209 (b).).

1112.09(r)
Changing Sole to Joint,
Letter to Other Party
(Form POL 90)

(Original for application file, carbon copies in
accordance with Rule 209 (b).)

(Forward to Interference Division)

Interference No. 74,819, Butler 1 v. Tomlin,1
involving the above identified application is
hereby reformed, the party Tomlin as sole in-
ventor being changed to Tomlin and Wheat as
joint inventors. The count remains the same.

Copies to :

Examiner.

(See Rule 209(b).)

## 1112.09(s) Letter in Application Re- fused Conversion

(Form POL 90)

(Original for application file, carbon copies for
attorney or agent of record.)

(To be mailed by examining division)

Upon review of the Papers filed in support
of the requested conversion, it is found that
the showing made therein is insufficient to jus-
tify the granting of the request and effecting
the conversion. The showing is insufficient in
that-

1 Note alphabetical arrangement.

## 1112.09 (t)

The showing having been found to be in-
sufficient and the period for response to the
action mailed on
which set forth the
deficiencies in the originally filed conversion
papers, having expired, this interference will
be returned to the Patent Interference Exam-
iner at the expiration of twenty (20) days.
Review of the examiner's action may be had
by petition under Rule 181, but such review
must be sought if at all within this period.

Examiner.

## 1112.09(t) Letter to Patent Interfer- ence Examiner

(Short (8" x 101/2") letter head or plain
paper.)

(Original for application file and carbon copy
may be prepared for retention in
examining division)

(Forward to Interference Division)

SIR: The showing made in support of the
request for conversion of the application of
having been found to be insufficient
and the period for response to the action
therein mailed on
having expired, the
interference is herewith returned to the Patent

Interference Examiner for further proceedings
therein.
Respectfully,

Examiner.

(

## 1112.10 Letter Denying Entry of Amendment Seeking Further Interference

(With application or patent not involved in
present interference)
(Form POL 90)
(Original for application file and carbon copy
for attorney)

(To be mailed by examining division).
The amendment filed
has not now
been entered since it does not place the case in
condition for another interference.

(Follow .with appropriate paragraph, e.g.,
(a) or (b).)

(a) Applicant has no right to make claims
because (state reason briefly).
(Use where applicant cannot make claims for
interference with another application or where
applicant clearly cannot make claims of a
patent.).

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

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