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OCR transcription for search; preserved printed pages are authoritative

# Chapter 700 Examination of Applications

701
Statutory Authority for Examination

702
Requisites of the Application
702.01
Obviously Informal Cases

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

705
Patentability Reports

705.01
Instructions re Patentability Reports

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

705.01 (b)
Sequence of Examination

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

705.01 (d)
Duplicate Prints of Drawings

705.01 (e)
Limitation as to Use

705.01 (f)
Interviews With Applicants

706
Rejection of Claims

706.01
Contrasted With Objections

706.02
Rejection on Prior Art

506.02 (a)
Establishing "Well Known" Prior Art

706.03 Rejections Not Based on Prior Art

706.03 (a)
Nonstatutory Subject Matter

706.03 (b)

Barred by Atomic Energy Act
Functional

706.03 (c)

706.03 (d)

Vague and Indefinite

706.03 (e)

Product by Process

706.03 (f)

Incomplete

706.03 (g)

Prolix

706.03 (h)

Nonstatutory Claim

706.03 (1)

Aggregation

706.03 (j)
Old Combination

706.03 (k)

Duplicate Claims; Double Patenting

706.03(1)
Mutiplicity

706.03 (m)
Nonelected Inventions

706.03 (n)
Correspondence of Claim and Disclosure

706.03 (0)
New Matter

706.03 (p)

No Utility

706.03 (q)
Obvious Method

706.03 (r)

Mere Function of Machine

706.03 (s)
Statutory Bar

706.03 (t)

Other Assigned Application

706.03 (u)
Disclaimer

706.03 (v)

After Interference or Public Use Proceed-
ing

706.03 ( w)
Res Judicata

706.03 (x)
Reissue

708.03 (y )
Improper Markush

706.03 (z)
Undue Breadth

706.04
Rejection of Previously Allowed Claim

706.05
Rejection After Allowance of Application

706.06

Rejection of Claims Copied from Patent

706.07
Final Rejection

706.07 (a)
When Proper on Second Action

706.07 (b)
When Proper on First Action

706.07 (c)
Premature

706.07 (d )
Withdrawal of Premature

706.07 (e) Withdrawal of Final Rejection, General

707
Examiner's Letter or Action

707.01
Primary Examiner Indicates Action for New
Assistant

707.01 (a)
Partial Signatory Authority

Actions which Require the Personal Attention
707.02
of the Primary Examiner

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

707.04
Initial Sentence
707.05
Citation of References

707.05 (a)
Copies of Cited References Provided by
Reference Order Center

707.05 (b)
References Cited By Applicant

707.05 (c)
Grouped at Beginning of Letter

707.05 (đ)
Reference Cited in Subsequent Actions

707.05(e)
Data Used in Citing References

707.05(f)
Effective Dates of Declassified Printed
Matter

707.05 (g)
Incorrect Citation of References

707.06
Citation of Decisions, Orders, Memorandums

and Notices

707.07
Completeness and Clarity

707.07 (a)
Action on Formal Matters

707.07 (b)
Requiring New Oath

707.07 (c)
Draftsman's Requirement

707.07 (đ)
Language To Be Used in Rejections

707.07 (e)
Note All Outstanding Requirements

707.07 (f)
Answer All Material Traversed

707.07(g) Piecemeal Examination

707.07 (h)
Notify of Inaccuracies in Amendment

707.07 (1)
Each Claim To Be Mentioned in Each
Letter

707.07 (j)
State When Claims Are Allowable

707.07 (k)
Numbering Paragraphs

707.08
Review and Initialing by Assistant Examiner

707.09
Signing by Primary or Other Authorized
Examiner

707.10
Entry

707.11

Date

707.12

Mailing

707.13
Returned Office Action

708
Order of Examination

708.01
List of Special Cases

708.02
Petition to Make Special

708.03
Examiner Tenders His Resignation

709
Suspension of Action

709.01
Overlapping Applications by Same Applicant
or owned by Same Assignee

709.02
Actions Following Correspondence under Rule
202

710
Period for Response

710.01 Statutory Period

710.01 (a) Statutory Period : How Computed

# MANUAL OF PATENT EXAMINING PROCEDURE

710.02 Shortened Statutory Period and Time Limit
Actions

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

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

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

710.02 (e)
Extension of Time

710.04
Two Periods Running

710.04 (a)
Copying Patent Claims

710.05 Period Ending on Saturday, Sunday or Holi-
day

710.06 Miscellaneous Factors Determining Date

711
Abandonment

711.01
Express or Formal Abandonment

711.02 Failure to Take Required Action During Statu-
tory Period

711.02 (a)
Insufficiency of Response

711.02 (b)
Special Situations Involving Abandonment

711.02(c) Termination of Proceedings

711.03 Reconsideration of Holding of Abandonment
Revival

711.03 (a)

711.03(b)

Holding Based on Insufficiency of Response
Holding Based on Failure to Respond With-
in Period

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

711.03 (d)
Examiner's Statement on Petition Relat-
ing to Abandonment

711.04 Disposition of Abandoned Applications

711.04 (a)
Pulling and Forwarding

711.04(b) Ordering Abandoned Files

711.05
Letter of Abandonment Received After Appli-
cation is Allowed

711.06
Abstracts, Abbreviatures and Defensive Pub-
lications

711.06 (a)
Use of Abstracts, Abbreviatures and De-
sive Publications as References

712 Abandonment for Failure to Pay Issue Fee (For-
feiture)

713
Interviews

713.01
General Policy, How Conducted

713.02
Interviews Prior to First Official Action

713.03
Interviews for "Sounding Out" Examiner Not
Permitted

713.04
Substance of Interview Must Be Made of
Record

713.05
Interviews Prohibited or Granted, Special
Situations

713.06
No Inter Partes Questions Discussed Ex Parte

713.07
Exposure of Other Cases

713.08
Demonstration, Exhibits, Models

713.09
Finally Rejected Application

713.10
Interview Preceding Filing Amendment Under
Rule 312

714
Amendments, Applicant's Actions

714.01
Signatures to Amendments

714.01 (a)
Unsigned or Improperly Signed Amend-
ment

714.01 (b)
Unsigned or Improperly Signed Amend-

ment, Disposal of

714.01(c)
Signed by Attorney Not of Record

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

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

714.03
Amendments Not Fully Responsive, Action to
Be Taken

714.04

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

714.05

Examiner Should Immediately Inspect

714.06

Amendments Sent to Wrong Group

714.07

Amendments Not in Permanent Ink

714.08

Telegraphic Amendment

714.00
Amendments Before First Office Action

714.10
Claims Added in Excess of Filing Fee

714.11
Amendment Filed During Interference Pro-
ceedings

714.12
Amendments After Final Rejection or Action
714.13
Amendments After Final Rejection or Action,
Procedure Followed

714.14

Amendments After Allowance of All Claims

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

714.16
Amendment After Notice of Allowance, Rule
312

714.16(a)
Copied Patent Claims

714.16(b)
Filed with a Motion Under Rule 231

714.16(c)
Additional Claims

714.16(₫)
Handling

714.16 (e)
Entry in Part

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

714.18
Entry of Amendments

714.19
List of Amendments, Entry Denied

714.20
List of Amendments Entered in Part

714.21
Amendments Inadvertently Entered, No Legal
Effect

714.22
Entry of Amendments, Directions for

714.23

Entry of Amendments, Directions for, Defec-
tive

714.24
Amendment of Amendment

714.25
Discourtesy of Applicant or Attorney

715
Swearing Back of Reference Affidavit Under
Rule 131

715.01
Reference Claims Foreign Filing Date

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

715.01 (b)
Reference and Application have Common
Assignee

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

715.02
General Rule as to Generic Claims

715.03
Exceptions and Practice Relative to Chemical
Cases

715.04
Who May Make Affidavit

715.05
Patent Claiming Same Invention

715.06
Affidavit Under Rule 131 Must Be Removed
Before Interference

715.07 Facts and Documentary Evidence

715.07(a) Diligence

715.07 (b) Interference Testimony Sometimes Used

715.07(c) Acts Relied Upon Must Have Been Car-
ried Out in This Country

715.07(d) Disposition of Exhibits

715.08 Passed Upon By Primary Examiner

715.09 Seasonable Presentation

716 Affidavits Traversing Rejections, Rule 132
717 File Wrapper

717.01 Papers in File Wrapper

717.01(a) Arrangement of Papers in File Wrapper

717.01(b) Prints

717.02 Date Entered on File Wrapper

717.02(a) Statutory Period Ends On Sunday or Holi-
day

717.02(b) Name or Residence of Inventor or Title
Changed

717.03 Classification During Examination

717.04 Index of Claims

717.05 Field of Search

717.06 Foreign Filing Dates

717.07 Related Applications

## '01 Statutory Authority for Examina- tion

35 U.S.C. 131. The Commissioner shall cause an ex-
amination to be made of the application and the alleged
new invention ; and if on such examination it appears
that the applicant is entitled to a patent under the law.
the Commissioner shall issue a patent therefor.

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

## 702 Requisites of the Application

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

## 702.01 Obviously Informal Cases

When an application is reached for its first
action and it is then discovered to be imprac-
tical to give a complete action on the merits
because of the paucity of disclosure, the fol.
lowing procedure may be followed: (1) A
reasonable search should be made of the in-
vention so far as it can be understood from the
disclosure, objects of invention and claims and
any apparently pertinent art cited : (2) Infor-
malities noted by Application Branch and de-
ficiencies in the drawing should be pointed out

by means of attachments to the Examiner's let-
ter (see 707.07(a) ) ; (3) A requirement should
be made that the specification be revised to con-
form to idiomatic English and United States
practice; (4) The claims should be rejected as
failing to define the invention in the manner
required by 35 U.S.C. 112 if they are informal.
A blanket rejection is usually sufficient.

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

Applicants should make every effort to follow
U.S. practices and terminology when preparing
a case for filing. If this has not been done, a
prompt amendment should be made, avoiding
the introduction of new matter, but putting the
case in proper form.

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

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

The pamphlet "General Information Con-
cerning Patents" may be sent to an applicant
handling his own case when the Examiner
deems it advisable.

## 704 Search

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

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

## PREVIOUS EXAMINER'S SEARCH

When an examiner is assigned to act on an
application which has received one or more ac-
tions by some other examiner, full faith and
credit should be given to the search and action
of the previous examiner unless there is a clear
error in the previous action or knowledge of
other prior art. In general the second Exam-
mer should not take an entirely new ap-
proach to the case or attempt to reorient the
point of view of the previous Examiner. or
make a new search in the mere hope of finding
something. See 717.05.

### 705 Patentability Reports

Where an application, properly assigned to
one examining group, is found to contain one
or more claims per se classifiable in one or more
other groups, which claims are not divisible
inter se or from the claims which govern classi-
fication of the application in the first group, the
application may be referred to the other group
or groups concerned for a report as to the pat-
entability of certain designated claims. This
report will be known as a Patentability Report
(P.R.) and will be signed by the Primary Ex-
aminer in the reporting group.

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

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

## 705.01 Instructions re Patentability Reports

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

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

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

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

The Examiner preparing the Patentability
Report will be entitled to receive an explana-

tion of the disclosure from the Examiner to
whom the case is assigned to avoid duplication
of work. If the Primary Examiner in a re-
porting group is of the opinion that a Pat-
entability Report is not in order, he should so
advise the Primary Examiner in the forward-
ing group.

## DISAGREEMENT AS TO CLASSIFICATION

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

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

## DISAGREEMENT ON PATENTABILITY REPORT

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

### APPEAL, TAKEN

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

## 705.01(b) Sequence of Examination

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

705.01(e)

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

If the Supervisory Primary Examiners are of
the opinion that a different sequence of search
is expedient, the order of search should be corre-
spondingly modified.

## 705.01(c) Counting and Recording P.R.'s [R-16]

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

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

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

# 705.01(d) Duplicate Prints of Draw- ings

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

When a case that has had Patentability Re-
port prosecution is passed for issue or becomes
abandoned, NOTIFICATION of this fact will
AT ONCE be given by the group having
jurisdiction of the case to each group that
submitted a P.R. The Examiner of each such
reporting group will note the date of allow-
ance or abandonment on his duplicate set of
prints. At such time as these prints become
of no value to the reporting group, they may
be destroyed.

# 705.01 (e) Limitation as to Use [R- 16]

The above outlined Patentability Report
practice is not obligatory and should be re-
sorted to only where it will save total examiner

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

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

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

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

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

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

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

In view of these conditions which are ex-
pected to prevail for some time to come, it is
felt to be in the best interests of the Of-
fice to suspend the present Patentability Re-
port practice. Where it can be shown, however,
that a Patentability Report will save total
examiner time, exceptions may be permitted
with the approval of the Group Manager
of the group to which the application is as-

705.01(f)

# MANUAL OF PATENT EXAMINING PROCEDURE

signed. The "Approved" stamp should be im-
pressed on the memorandum requesting the
P.R.

## 705.01 (f) Interviews With Applicants

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

## 706 Rejection of Claims [R-16]

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

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

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

The standards of patentability applied in the
examination of claims must be the same
throughout the Office. In every art, whether it
be considered "complex," "newly developed,"
"crowded," or "competitive," all of the require-
ments for patentability (e.g., novelty, useful-
ness and unobviousness, as provided in 35 U.S.C.
101, 102, and 103) must be met before a claim is
allowed. The mere fact that a claim recites in
detail all of the features of an invention (i.e., is
a "picture" claim) is never, in itself, justifica-
tion for the allowance of such a claim.

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

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

Rule 112. Reexamination and reconsideration. After
response by applicant (rule 111) the application will
be reexamined and reconsidered, and the applicant will
be notified if claims are rejected, or objections or re-
quirements made, in the same manner as after the first
examination. Applicant may respond to such Office ac-
tion, in the same manner provided in rule 111, with or
without amendment, but any amendments after the
second Office action must ordinarily be restricted to
the rejection or to the objections or requirements made,
and the application will be again considered, and so on
repeatedly, unless the examiner has indicated that the
action is final.

### 706.01 Contrasted With Objection

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

An example of a matter of form as to which
objection is made is dependency of a claim on &
rejected claim, if the dependent claim is other-
wise allowable. See 608.01 (n).

### 706.02 Rejection on Prior Art [R- 16]

By far the most frequent ground of rejection
is on the ground of unpatentability in view of
the prior art, that is, that the claimed matter
is either not novel under 35 U.S.C. 102, or else
it is obvious under 35 U.S.C. 103. The lan-
guage to be used in rejecting claims should be
unequivocal. See 707.07 (d.).

Prior art rejections should ordinarly be con-
fined strictly to the best available art. Excep-
tions may properly be made, e.g., (1) where the
propriety of a 35 U.S.C. 102 rejection depends
on a particular interpretation of a claim; (2)

where a claim is met only in terms by a refer-
ence which does not disclose the inventive con-
cept involved; or (3) where the most pertinent
reference seems likely to be antedated by a Rule
131 affidavit. Such rejections should be backed
up by the best other art rejections available.
Merely cumulative rejections; i.e., those which
would clearly fall if the primary rejection were
not sustained, should be avoided.

A U.S. patent may be a reference against an
application even though the patent date is af-

ter the filing date of the application, pro-
vided that the filing date of the patent is
prior to the filing date of the application.
It is proper to use such a patent as a basic
or an auxiliary reference and such patents
may be used together as basic and auxiliary ref-
erences. This doctrine arose in Alexander Mil-
burn Co. v. Davis-Bournonville Co .. 1926 C.D.
303: 344 O.G. 817; and was enacted into law
by 35 U.S.C. 102(e). It was held appli-
cable to rejections under 35 U.S.C. 103 by the

U.S. Supreme Court in Hazeltine Research, Inc.
et al. v. Brenner, 147 U.S.P.Q. 429 (1965).

For the proper way to cite a patent granted
after the filing of the application in which it
is being cited, see 707.05(e). [R-18]

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

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

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

## 706.03 Rejections Not Based on Prior Art [R-18]

The primary object of the examination of an
application is to determine whether or not the
claims define a patentable advance over the
prior art. This consideration should not be
relegated to a secondary position while undue
emphasis is given to non-prior art or "technical"
rejections. Effort in examining should be con-
centrated on truly essential matters, minimizing
or eliminating effort on technical rejections
which are not really critical. Where a major
technical rejection is proper (e.g., lack of proper
disclosure, undue breadth, utility. etc.) such re-
jection should be stated with a full development
of the reasons rather than by a mere conclusion
coupled with some stereotyped expression.

Generally speaking, the inchision of (1)
negative limitations and (2) alternative ex-
pressions, provided that the alternatively ex-
pressed elements are basically equivalents for
the purpose of the invention, are permitted if no
uncertainty or ambiguity with respect to the
question of scope or breadth of the claim is
presented.

The Examiner has the responsibility to make
sure the wording of the claims is sufficiently de-
finite to reasonably determine the scope. It is
applicant's responsibility to select proper word.

ing of the claim, except to the extent that the
selection of words makes the claims indefinite.
Under no circumstances should a claim be re-
jected merely because the Examiner prefers a
different choice of wording.

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

### 706.03(a) Nonstatutory Subject Mat- ter

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

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

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

### PRINTED MATTER

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

#### NATURALLY OCCURRING ARTICLE

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

##### METHOD OF DOING BUSINESS

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

##### SCIENTIFIC PRINCIPLE

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

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

706.03 (b)

706.03(b) Barred by Atomic Energy
Act [R-18]

A limitation on what can be patented is im-
posed by the Atomic Energy Act of 1954. Sec-
tion 151 (a) (42 U.S.C. 2181a) thereof reads in
part as follows :

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

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

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

All applications received in the Patent Office
are sent to Licensing and Review for screening
by Group 220 personnel, under Rule 14(c). in
order for the Commissioner to fulfill his respon-
sibilities under Section 151(d) (42 U.S.C.
2181d) of the Atomic Energy Act. Papers sub-
sequently added must be inspected promptly by
the Examiner when received to determine
whether the application has been amended to
relate to atomic energy and those so related must
be promptly forwarded to Licensing and Re-
view.

All rejections based upon Sections 151 (a)
(42 U.S.C. 2181a). 152 (42 U.S.C. 2182), and
155 (42 U.S.C. 2185) of the Atomic Energy
Act must be made only by Group 220 personnel.

###### 706.03(c) Functional

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

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

The specification shall contain a written description
of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art
to which it pertains, or with which it is most nearly

connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor of
carrying out his invention.

The specification shall conclude with one or more
claims particularly pointing out and distinctly claim-
ing the subject matter which the applicant regards as
his invention. A claim may be written in independent
or dependent form, and if in dependent form, it shall
be construed to include all the limitations of the claim
incorporated by reference into the dependent claim.

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

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

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

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

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

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

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

###### 706.03(d) Vague and Indefinite

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

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

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

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

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

Still another way in which a claim can be in-
definite is where a non sequitur occurs. For
example, a claim is inferential and therefore
indefinite when it recites "said lever" and there
was no earlier reference or no antecedent in
the claim to a lever. An indirect limitation
also affords a ground of rejection as indefinite.
If a "lever" is set forth and, later in the claim,
"said aluminum lever" is recited, the claim is
rejected as indefinite. [R-16]

## 706.03(e) Product by Process

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

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

## 706.03(f) Incomplete

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

## 706.03(g) Prolix

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

## 706.03 (h) Nonstatutory Claim [R- 16]

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

Such a claim can be rejected as follows:

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

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

## 706.03(i) Aggregation

Rejections on the ground of aggregation
should be based upon a lack of cooperation be-
tween the elements of the claim. Many deci-
sions and some legal writers extend the term
to include old and exhausted combinations
(706.03(j)). Confusion as to what is meant

706.03(j)

can be avoided by treating all claims which in-
clude more than one element as combinations
(patentable or unpatentable) if there is actual
cooperation between the elements, and as ag-
gregations if there is no cooperation.

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

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

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

## 706.03(j) Old Combination [R-16]

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

A rejection on the ground of old combination
should be made whenever proper. Whether
subcombination claims have been presented or
allowed in the same application, or whether
other grounds for rejection of the combination
claims exist, are not determinative of the pro-
priety of this rejection. The rejection is proper
when a single reference discloses broadly a com-
bination of the same elements functionally co-
operating in substantially the same manner to
produce substantially the same results as that
of the claimed combination. Ex parte Silver-
stein, 125 U.S.P.Q. 238 (Bd. App.). The fact
that an applicant has improved one element of
a combination which may be per se patentable
does not entitle him to a claim to the improved
element in combination with old elements where
the elements perform no new function in the
claimed combination. In re Hall, 41 C.C.P.A.
759.

Example : An improved (specifically recited)
carburetor claimed in combination with a gaso-
line engine. A reference is cited which shows
a carburetor combined with a gasoline engine.
This shows the broad combination to be old.
Both in the reference and in the claimed com-
bination, the cooperation between the carbu-
retor and engine is the same and the end result
is the same. The claimed combination is an
improvement over the prior art only because
of the improved carburetor. The carburetor

has separate status, since entire subclasses are
devoted to carburetors, claimed as such. A
reference is preferably cited to show the sepa-
rate status and development. (See 904.01 (d) .)

Old combination rejections ordinarily are
based on 35 U.S.C. 112 (failure to point out the
invention). The rejection should make it clear
exactly what the combination is and why it is
thought that any improved element does not
modify the action of the combination. A sug-
gested form for use in making an old combina-
tion rejection is as follows:

"Claim 1 is rejected under 35 U.S.C. 112 as
being drawn to the old combination of a bell,
a battery and a switch connected in series by
wire conductors. This combination is shown
to be old by the patent to Jones which discloses
broadly the same elements funtionally inter-
related in the same manner to produce substan-
tially the same results. The combination of
claim 1 differs from that shown in Jones in
setting forth a specific construction of the bat-
tery itself. Since the latter does not modify
the action of the other elements recited in the
claim in any material manner, no new combina-
tion is seen to exist. In re Hall, 100 U.S.P.Q.
46; 41 C.C.P.A. 759; 208 F. 2d 370; 680 O.G. 5."

## 706.03(k) Duplicate Claims: Double Patenting [R-16]

Inasmuch as a patent is supposed to be lim-
ited to only one invention or, at most, several
closely related indivisible inventions, limiting
an application to a single claim, or a single
claim to each of the related inventions might
appear to be logical as well as convenient.
However, court decisions have confirmed ap-
plicant's right to restate (i.e., by plural claim-
ing) his invention in a reasonable number of
ways. Indeed, a mere difference in scope be-
tween claims has been held to be enough.

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

"Claim 54 is not patentable over claim 51
and claims 53, 55 and 56 are not patentable
over claim 50 in view of Comstock, No. 590,657.
which shows that it is old to employ an engine-
casing in tools of this character. The claims
held patentable are considered as fully cover-
ing applicant's invention, and applicant can-

not be permitted to multiply his claims by
presenting alleged combinations which distin-
guish from the real invention only by including
elements which are old in the art and perform
no new function."

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

Situations related to that given above are as
follows:

Where there is a common assignee for two
or more applications by different inventors, and
the applications contain conflicting claims, see
305 and 804.03.

# DOUBLE PATENTING

Where there are conflicting claims in differ-
ent applications of the same inventor, one of
which is assigned, see 304.

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

APPLICATION FILED UNDER 35 U.S.C. 121

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

missioner ruled that a requirement for restric-
tion should not be made in an application claim-
ing more than five species if the Examiner is of
the opinion that the various species are obri-
ously unpatentable over one another. [R-20]

## 706.03(1) Multiplicity [R-20]

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

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

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

If a rejection on multiplicity is in order the
Examiner should make a telephone call explain-
ing that the claims are unduly multiplied and
will be rejected on that ground. He should
request selection of a specified number of claims
for purposes of examination.

If time for consideration is requested arrange-
ments should be made for a second telephone
call. preferably within three working days.

When claims are selected. a formal multi-
plicity rejection is made, including a complete
record of the telephone interview, followed by
an action on the selected claims.

When applicant refuses to comply with the
telephone request, a formal multiplicity rejec-
tion is made. No reference should be made to
the unsuccessful telephone call.

The applicant's response to a formal multi-
plicity rejection of the Examiner, to be com-
plete, must either :

1\. Reduce the number of claims presented to
those selected previously by telephone, or if no
previous selection has been made to a number
not exceeding the number specified by the Ex-
aminer in the Office action, thus overcoming the
rejection based upon the ground of multiplicity.
or

2\. In the event of a traverse of said rejection,
applicant, besides specifically pointing out the
supposed errors of the multiplicity rejection is
required to confirm his selection previously
made by telephone, or if no previous selection
has been made, select certain claims for purpose
of examination. the number of which is not
greater than the number specified by the
Examiner.

If the rejection on multiplicity is adhered to.
all claims retained will be included in such
rejection and the selected claims only will be
additionally examined on their merits. This
procedure preserves applicant's right to have
the rejection on multiplicity reviewed by the
Board of Appeals.

See also 608.01 (p) and 715.03.

## 706.03(z) Undue Breadth

In mechanical cases, broad claims may prop-
erly be supported by a single form of an ap-

706.04

paratus or structure. In re Vickers et al., 1944
C.D.324; 564 O.G. 174.

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

## 706.04 Rejection of Previously Al- lowed Claims

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

Great care should be exercised in authorizing
such a rejection. See Ex parte Grier, 1923
C.D. 27; 309 O.G. 223; Ex parte Hay, 1909
C.D. 18; 139 O.G. 197.

PREVIOUS ACTION BY DIFFERENT EXAMINER

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

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

## 706.05 Rejection After Allowance of Application

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

For rejection of claims in an allowed case
which has failed to make the date of a senior

application in correspondence under Rule 202,
see 1101.01 (i).

## 706.06 Rejection of Claims Copied From Patent

See 1101.02(f).

### 706.07 Final Rejection

Rule 119. Final rejection or action. (a) On the
second or any subsequent examination or considera-
tion, the rejection or other action may be made final,
whereupon applicant's response is limited to appeal in
the case of rejection of any claim (rule 191) or to
amendment as specified in rule 116. Petition may be
taken to the Commissioner in the case of objections
or requirements not involved in the rejection of any
claim (rule 181). Response to a final rejection or
action must include cancellation of, or appeal from the
rejection of, each claim so rejected and, if any claim
stands allowed, compliance with any requirement or
objection as to form.

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

Before final rejection is in order a clear issue
should be developed between the Examiner and
applicant. To bring the prosecution to as
speedy conclusion as possible and at the same
time to deal justly by both the applicant and
the public, the invention as disclosed and
claimed should be thoroughly searched in the
first action and the references fully applied;
and in response to this action the applicant
should amend with a view to avoiding all the
grounds of rejection and objection. Switching
from one subject matter to another in the
claims presented by applicant in successive
amendments, or from one set of references to
another by the Examiner in rejecting in suc-
cessive actions claims of substantially the same
subject matter, will alike tend to defeat at-
taining the goal of reaching a clearly defined
issue for an early termination; i.e., either an
allowance of the case or a final rejection.

While the Rules no longer give to an appli-
cant the right to "amend as often as the Ex-
aminer presents new references or reasons for
rejection", present practice does not sanction
hasty and ill-considered final rejections. The
applicant who is seeking to define his invention
in claims that will give him the patent protec-
tion to which he is justly entitled should re-
ceive the cooperation of the Examiner to that
end, and not be prematurely cut off in the

706.07

prosecution of his case. But the applicant
who dallies in the prosecution of his case, re-
sorting to technical or other obvious subter-
fuges in order to keep the application pending
before the Primary Examiner, can no longer
find a refuge in the Rules to ward off a final
rejection.

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

706.07(e)

public that prosecution of a case be confined to
as few actions as is consistent with a thorough
consideration of its merits.

Neither the statutes nor the Rules of Practice
confer any right on an applicant to an extended
prosecution. Ex parte Hoogendam, 1939 C.D.
3; 499 O.G. 3.

### STATEMENT OF GROUNDS

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

However, where a single previous Office ac-
tion contains a complete statement of a ground
of rejection, the final rejection may refer to
such a statement and also should include a re-
buttal of any arguments raised in the appli-
cant's response. If appeal is taken in such a
case, the Examiner's Answer should contain a
complete statement of the Examiner's position.

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

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

The Office action first page form POL-326
should be used in all Office actions up to and
including final rejections.

For amendments filed after final rejection.
see sections 714.12 and 714.13. [R-20]

## 706.07(a) Final Rejection, When Proper on Second Action [R-20]

Due to the change in practice as affecting
final rejections, older decisions on questions of
prematureness of final rejection or admission of
subsequent amendments do not necessarily re-
flect present practice. Under present practice.
second actions on the merits shall be final, except
where the Examiner introduces a new ground
of rejection not necessitated by amendment of
the application by applicant, e.g., a rejection of
any claim not amended by applicant where that
rejection relies on newly cited art.

See section 809.02(a) for actions which indi-
cate generic claims not allowable.

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

are clearly open to rejection on grounds of
record.

706.07(b) Final Rejection, When
Proper on First Action
[R-20]

The claims of a new application may be finally
rejected in the first Office action in those situa-
tions where (1) the new application is a con-
tinuing application of, or a substitute for, an
earlier application, and (2) all claims of the new
application (a) are drawn to the same invention
claimed in the earlier application, and (b)
would have been properly finally rejected on the
art of record in the next Office action if they
had been entered in the earlier application. A
first action final rejection in a continuation-in-
part application is not proper where any claim
includes subject matter not present in the parent
case.

## 706.07(c) Final Rejection, Prema- ture

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

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

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

## 706.07(e) Withdrawal of Final Re- jection, General [R-20]

See sections 714.12 and 714.13, Amendments
after final rejection.

Once a final rejection that is not premature
has been entered in a case, however, it should
not be withdrawn at the applicant's request ex-
cept on the showing of Rule 116. This does
not mean that no further amendment or argu-
ment will be considered. An amendment that
will place the case either in condition for al-
lowance or in better form for appeal may be
admitted. Also, amendments complying with
objections or requirements as to form are to be
permitted after final action in accordance with
Rule 116(a). While the Office will continue
rigorous enforcement of Rule 116, citation of
new art by the Examiner in a final rejection

707

will obviate further showing under Rule 116 (b)
for any amendment necessitated by the new art.

The Examiner may withdraw the rejection of
finally rejected claims. If new facts or reasons
are presented such as to convince the Examiner
that the previously rejected claims are in fact
allowable, then the final rejection should be
withdrawn. Occasionally, the finality of a re-
jection may be withdrawn in order to apply a
new ground of rejection.

Although it is permissible to withdraw a final
rejection for the purpose of entering a new
ground of rejection, this practice is to be limited
to situations where a new reference either fully
meets at least one claim or meets it except for
differences which are shown to be completely
obvious. Normally, the previous rejection
should be withdrawn with respect to the claim
or claims involved.

The practice should not be used for applica-
tion of subsidiary references, or of cumulative
references, or of references which are merely
considered to be better than those of record.
Furthermore, the practice should not be used
for entering new non-reference or so-called "for-
mal" grounds of rejection such as those under
35 U.S.C. 112.

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

## 707 Examiner's Letter or Action

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

## 707.01 Primary Examiner Indicates Action for New Assistant [R- 20]

After the search has been completed, action
is taken in the light of the references found.
Where the Assistant Examiner has been in the
Office but a short time, it is the duty of the
Primary Examiner to go into the case thor-
oughly. The usual procedure is for the As-
sistant Examiner to explain the invention and
discuss the references which he regards as most
pertinent. The Primary Examiner may indi-
cate the action to be taken, whether restriction
or election of species is to be required, or
whether the claims are to be considered on
their merits. If action on the merits is to be
given, he may indicate how the references are
to be applied in cases where the claim is to be

rejected, or authorize allowance if it is not met
in the references and no further field of search
is known.

## 707.01 (a) Partial Signatory Authority [R-20]

Examiners who are delegated partial signa-
tory authority are expected to sign their own
actions with the exception of the following
actions which require the signature of the Pri-
mary Examiner :

Allowances
Quayle actions
Final rejections

Actions on amendments submitted after final
rejection
Examiners' answers on appeal

Interference declarations or modifications

Decisions on interference motions

Actions suggesting claims for interference
purposes

Actions involving copied patent claims
(section 1101.02(f))

Requests for jurisdiction for interference
purposes

Actions reopening prosecution
Requests for withdrawal from issue

Rule 312 amendments

Rejection of previously allowed claim

Final holding of abandonment for insufficient
response

Actions based on affidavit evidence (Rules 131
and 132)

Suspension of Examiner's action
Reissue cases (decision on reissue oath)
Requests for an extension of time
Examiner's amendments

Restriction requirements

707.02 Actions Which Require the
Attention of the Primary
Examiner [R-20]

There are some questions which existing prac-
tice requires the Primary Examiner to be per-
sonally responsible for. The following actions
fall in this category :

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

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

Final rejection.

Initiating an interference (section 1101.01
(c) ).

First request for extension of time (section
710.02 (e)).

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

# EXAMINATION OF APPLICATIONS

Decisions on - interference motions under
Rule 231; also, actions taken under Rule 237
(1105.02 to 1105.05).

Rejection of a previously allowed claim
(706.04).

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

Classification of allowed cases (903.07).

Holding of abandonment for insufficient
response.

Suspension of Examiner's action (Rule 103).

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

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

Requirements for restriction (803.01).

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

All Examiner's Answers on appeal (Rule
193). Note also 1208.01 where a new ground
of rejection or objection is raised, or a new refer-
ence is cited, in the Answer.

Decision on reissue oath.

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

Initial review of streamlined continuation
cases (201.07).

For a list of actions that are to be submitted
to the Group Directors, see 1003, 1004, and 1005.
[R-17]

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

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

The Supervisory Primary Examiners are ex-
pected to personally consider every application
which is up for the third official action with a
view to finally concluding its prosecution.

Any case that has been pending five years
should be carefully studied by the Supervisory
Primary Examiner and every effort made to
terminate its prosecution. In order to accom-
plish this result, the case is to be considered
"special" by the Examiner.

### 707.04 Initial Sentence

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

Preliminary amendment in a new case
should be acknowledged by adding some sen-
tence such as "Amendment filed (date) has
been received" following the initial sentence.
It should be noted, however, that in cases filed
before October 25, 1965 in which claims in excess

of the number supported by the filing fee are
presented before the first official action in the
case, action is given only on the claims originally
presented and applicant advised accordingly.

### 707.05 Citation of References [R-17]

During the examination of an application the
Examiner cites appropriate prior art which is
nearest to the subject matter defined in the
claims.

All allowed applications should contain a
citation of the prior art for printing in the
patent. Only in rare instances involving
pioneer inventions, such as new chemical com-
pounds, would it be appropriate to send a case
to issue with no art cited. On the allowance
of a continuation application where references
have been cited during the prosecution of the
parent application, no additional citation of the
prior art is necessary. See 1302.12.

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

# 707.05 (a) Copies of Cited References Provided by Reference Or- der Center

Copies of cited references (except as noted!
below) are automatically furnished without
charge to applicant together with the Office ac-
tion in which they are cited. Copies of the cited
references are also placed in the application file
for use by the Examiner during the prosecution.

Copies of references which are cited at the
time of allowance, in Ex parte Quayle actions,
and by applicant in accordance with 707.05 (b)
and 708.02 are not furnished to applicant with
the Office action. Additionally, the practice of
furnishing, automatically and without charge,

copies of references cited in continuation appli-
cations if they had been previously cited in the
parent application has been discontinued. In
the rare instance where no art is cited in a con-
tinuation application, all the references cited
during the prosecution of the parent application
will be listed at allowance for printing in the
patent. Other continuing applications, includ-
ing continuation-in-part and divisional applica-
tions, are not affected by this change.

This service is furnished by the Reference
Order Center (R.O.C.) which is in charge of
(1) ordering copies of the cited U.S. patents;
(2) microfilming foreign and other references
supplied by the examiner; (3) mailing the ac-
tion with one copy of each cited reference; and
(4) promptly returning to the appropriate
Group the foreign and "other references", and
(5) after mailing, returning to the Group the
ribbon copy of the mailed action together with
a copy of each reference to be placed in the ap-
plication file.

To assist in providing this service, the Ex-
aminer should :

(a) Write the citation of the references on
3-part form PO-892, "Notice of References
Cited". (The rest of the action is written as
heretofore.)

(b) Place the original copy of PO-892 in the
file wrapper and give to the clerk with the com-
pleted office action for counting and typing as
usual.

(c) Write the application serial number on
the plastic index tab of a special folder. Insert
into the folder the two carbon copies of PO-
892 together with any Foreign and Other Ref-
erences cited in the action. (Do not enclose any
U.S. patents.)

(d) Place the folder in the "Out Box for
R.O.C."

Form PO-892 is completed, and the folder
prepared and forwarded to R.O.C. in all cases
in which a reference is to be provided, regard-
less of the type reference cited.

Foreign and Other References are copied and
returned to the Art Unit within 48 hours. If
it is not feasible to release such a reference from
the Art Unit, the Examiner should have two
copies made. These copies must be clearly
marked as such. Both copies are inserted into
the folder for forwarding to R.O.C.

If one copy of a reference is to be used for
two or more actions simultaneously, the folders
involved must be fastened together with an
explanatory note on top.

If Special Handling is desired, a "special"
sticker should be attached to the top of the
folder.

Jumbo U.S. Patents will be furnished to the
applicant, but will not be placed in the appli-

707.05(c)

cation file. A tab card stamped "Jumbo Patent"
will be inserted in the file to account for the
missing reference.

Detailed instructions regarding the above
outlined procedure, and the procedure to be fol-
lowed in correcting an Office action prior to
mailing are found in Chapter 400 of the Manual
of Clerical Procedures. [R-21]

# 707.05(b) References Cited By Appli- cant [R-21]

Applicants, attorneys and agents are hereby
advised that it is considered to be not only
proper but highly desirable that they inform
the Patent Office, in a separate paper prior to
the first Office action, of any prior patent or
printed publication which, in their opinion, may
be helpful to the Office in its examination of the
application. It is not the intention of the Pat-
ent Office to rely on such citations as a substi-
tute for all or any part of the official search, nor
as an admission by the applicant or attorney
that the cited art is anticipatory of any claim or
should form a basis for a rejection thereof. The
object in requesting a citation by the applicant
or attorney of prior art known to him is to pro-
vide a check on the official search and also to
facilitate such search in that an Examiner who
is advised of prior art of a given degree of perti-
nence before beginning his search does not need
to spend time in considering art which is ob-
viously less pertinent, but which he would have
been required to consider if he were starting
without such advice. The Patent Office, if it uses
such art, will not rely in any way on the fact that
it was cited by the applicant or attorney, but will
treat it in exactly the same manner as art dis-
covered in the official search. It is definitely to
the applicant's advantage to have all pertinent
art of record. Any citation should be selective
and should avoid unnecessary duplication or
the inclusion of art of comparatively little
relevance.

Prior art cited by applicants, attorneys, or
agents prior to the first Office action, will be
fully considered by the Examiner, will be part
of the official record, and will be included in
the list of references cited in the patented file
and in the printed patent provided :

(a) the number of references cited is limited
to not more than five separate items, unless a
satisfactory explanation is given as to why
more than five citations are necessary ;

(b) one copy of each of the cited references
is submitted ;

(c) a detailed discussion of the references,
pointing out with the particularity required by
Rule 111 (b) and (c), the manner in which the

claimed subject matter distinguishes over the
references, is submitted.

Where applicant's citations of prior art are
submitted in accordance with the above pro-
cedures, they will be incorporated in the Ex-
aminer's list of reference citations. The Exam-
iner when preparing the action, will fill out
form PO-892 as usual with the following ex-
ceptions. The Examiner . will enter the sub-
mitted citations in the appropriate columns,
omitting the class and subclass. For references
other than patents, the Examiner will apply a
heading entitled "Applicant's Non-Pat. Cita-
tions" on form PO 892 ahead of the citation
data of the publication. In actions where no
references are to be provided (Allowance, Ex
parte Quayle, only applicant submitted refer-
ences relied upon), the Examiner will list the
submitted citations as usual with class and sub-
class on form PO-892. Since the file record will
indicate the presence of the submitted citations,
the Examiner does not have to point out in the
action the reasons for the citation of those refer-
ences not relied upon.

Reference Order Section (R.O.S.) will not
furnish copies of any patent for which the class
and subclass have been omitted on form
PO-892, or of any publication cited under the
heading "Applicant's Non-Pat. Citations."

References cited by applicants, attorneys, or
agents under the "Special" Examining Proce-
dure for certain new applications (section
708.02) will be included in the list of references
cited in the patented file and printed patent.

Where applicant's submitted citations do not
comply with the above procedures, the paper
containing the citations will not be entered in
the file. The Examiner will not notify applicant
of non-compliance. The references will be cited
only if relied upon by the Examiner in his ac-
tion. Applicant will not be permitted to with-
draw the paper containing the improperly sub-
mitted citations from the application file.

All references appearing in Office actions will
be listed in the patent under a single heading
entitled "References Cited".

See section 1302.12.

# 707.05(c) Order of Listing [R-21]

In citing references for the first time, the
identifying data of the citation should be
placed on form PO-892 "Notice of References
Cited", a copy of which will be attached to the
typed action. No distinction is to be made be-
tween references on which a claim is rejected and
those formerly referred to as "pertinent". With
the exception of applicant submitted citations
( sections 707.05(b) and 708.02), the pertinent

707.05(d)

features of references which are not used as a
basis for rejection, shall be pointed out briefly.

All U.S. patents (including reissues, designs,
etc.) are to be listed in strict numerical order.

Foreign patents and published applications
are to be listed, alphabetically arranged by
country, with those from each country in numer-
ical order under the , heading "Foreign
References".

Other references are then listed, alphabeti-
cally arranged by author (by title, if no author
is given). See section 707.05 (e).

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

Where an applicant in an amendatory paper
refers to a reference which is subsequently
relied upon by the Examiner, such reference
shall be cited by the Examiner in the usual
manner.

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

Rule 107 (sections 707.05 and 901.05 (a)) re-
quires the Examiner to give certain data when
citing references. The patent number, patent
date, name of the patentee, class and subclass
(except applicant submitted citations), and the
filing date, if appropriate, must be given in the
citation of U.S. patents. See section 901.04 for
details concerning the various series of U.S.
patents and how to cite them. Note that patents
of the X-Series (dated prior to July 4, 1836)
are not to be cited by number. Some U.S. patents
issued in 1861 have two numbers thereon. The
larger number should be cited.

If the patent date of a U.S. patent is after
and the effective filing date of the patent is
before the effective U.S. filing date of the ap-
plication, the filing date of the patent must be
set forth along with the citation of the patent.
This calls attention to the fact that the par-
ticular patent relied on is a reference because
of its filing date and not its patent date. Simi-
larly, when the reference is a continuation-in-
part of an earlier-filed application which dis-
closes the anticipatory matter and it is neces-
sary to go back to the earlier filing date, the
fact that the subject matter relied upon was
originally disclosed on that date in the first
application should be stated.

In the rare instance where no art is cited in a
continuation application, all the references cited
during the prosecution of the parent application
will be listed at allowance for printing in the
patent. See section 707.05 (a).

# CROSS-REFERENCES

Official cross-references should be marked
"X" and unofficial cross-references "uxr."

In citing U.S. patents an unofficial classifica-
tion is enclosed in parentheses, for example
"(96-24 F uxr)". Where only a portion of the
classification is unofficial, it alone is enclosed, as
in the citation 266-41(A) X. At the time of
allowance, when preparing the list of references
cited by the Examiner, the typist omits all par-
enthetically designated classification data.

## FOREIGN PATENTS AND PUBLISHED APPLICATIONS

In citing foreign patents, the patent number,
citation date, name of the country, name of the
patentee, and class and subclass (except appli-
cant submitted citations), must be given.

In actions where references are furnished, and
(1) less than the entire disclosure is relied upon,
the sheet and page numbers specifically relied
upon and the total number of sheets of drawing
and pages of specification must be included
(except applicant submitted citations) ; (2) the
entire disclosure is relied upon, the total number
of sheets and pages are not included, and the
appropriate columns on PO-892 are left blank.

In actions where no references are furnished,
the total number of sheets and pages should be
included except for applicant submitted cita-
tions.

Publications such as German allowed ap-
plications and Belgian and Netherlands printed
specifications should be similarly handled. If
the total number of sheets and pages in any
publication to be furnished (other than U.S.
patents) exceeds 15, the authorizing signa-
ture of the Supervisory Primary Examiner on
PO-892 is required. Applicants who desire a
copy of the complete foreign patent or of the
portion not "relied on" must order it in the
usual manner.

See section 901.05 (a) for a chart in which
foreign language terms indicative of foreign
patent and publication dates to be cited are
listed. Foreign language terms indicating
printed applications, which are to be cited as
publications, are keyed to footnote (3) of said
chart.

# PUBLICATIONS

See section 711.06 (a) for citation of abstracts,
abbreviatures and defensive publications. See
section 901.06(c) for citation of Alien Property
Custodian publications.

In citing a publication, sufficient information
should be given to determine the identity and
facilitate the location of the publication. The
data required by Rule 107 (section 707.05) with

707.05(e)

the specific pages relied on identified together
with the SCIENTIFIC LIBRARY call num-
ber will suffice. The call number appears on the
"spine" of the book if the book is thick enough
and, in any event, on the back of the title page.
Books on interlibrary loan will be marked

with the call number of the other library, of
course. THIS NUMBER SHOULD NOT BE
CITED. If the copy relied upon is located
only in the Group making the action (there
may be no call number), the additional infor-
mation, "Copy in Group
should be given.

# EXAMINATION OF APPLICATIONS

707.05 (g)

Examples of nonpatent bibliographical cita-
tions:
Winslow, C. E. A. Fresh Air and Ventila-
tion. N.Y., E. P. Dutton, 1926. p. 97-112.
TH7653.W5.

Singer, T. E. R. Information and Communi-
cation Practice in Industry. N.Y., Reinhold,
1958. Chapter 8, p. 157-165, by J. F. Smith,
Patent Searching. T175.S5.

Machinery's Handbook, 16th ed. N.Y., In-
dustrial Press, 1959. p. 1526-1527. T.J151.M3
1959.

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

Hine, J. S. Physical Organic Chemistry.
N.Y., McGraw-Hill, 1956, p. 81. QD476.H5.

Noyes, W. A., Jr. A Climate for Basic Chem-
ical Research. In Chem. & Eng. News. 38(42) :
p. 91-95. Oct. 17, 1960. TP1.1418.

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

If the original publication is located outside
the Office, the Examiner should immediately
order a photocopy of at least the portion relied
upon and indicate the class and subclass in
which it will be filed. The Office action MUST
designate this class and subclass.

Whenever, in citing references anywhere in
the application file the titles of periodicals are
abbreviated, the abbreviations of titles used in
Chemical Abstracts and printed in the list of
periodicals abstracted by Chemical Abstracts
should be adopted with the following excep-
tions: (1) the abbreviation for the Berichte der
deutschen chemischen Gesellschaft should be
Ber. Deut. Chem. rather than Ber., and (2)
where a country or city of origin is a necessary
part of a complete identification, the country or
city of origin should be added in parentheses;
e.g., J. Soc. Chem. Ind. (London).

## 707.05(f) Effective Dates of Declassi- fied Printed Matter [R- 21]

In using declassified material as references
there are usually two pertinent dates to be con-
sidered, namely, the printing date and the pub-
lication date. The printing date in some in-
stances will appear on the material and may be
considered as that date when the material was
prepared for limited distribution. The publi-
cation date is the date of release when the ma-
terial was made available to the public. See Ex

parte Harris et al., 70 USPQ 439. If the date
of release does not appear on the material, this
date may be determined by reference to the
Office of Technical Services, Department of
Commerce.

In the use of any of the above noted mate-
rial as an anticipatory publication, the date of
release following declassification is the effec-
tive date of publication within the meaning
of the statute.

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

## 707.05(g) Incorrect Citation of Ref- erences [R-21]

Where an error in citation of a reference is
brought to the attention of the Office by appli-
cant, a letter correcting the error and restarting
the previous period for response, together with
a correct copy of the reference, is sent to appli-
cant. Where the error is discovered by the Ex-
aminer, applicant is also notified and the period
for response restarted. In either case, the Ex-
aminer is directed to correct the error, in ink.
in the paper in which the error appears, and
place his initials on the margin of such paper.
together with a notation of the paper number
of the action in which the citation has been cor-
rectly given. See section 710.06.

Form POL-316 is used to correct an erro-
neous citation or an erroneously furnished
reference. Clerical instructions are outlined in
the Manual of Clerical Procedures, section
410.C (2) and (3).

In any case otherwise ready for issue, in
which the erroneous citation has not been for-
mally corrected in an official paper, the Ex-
aminer is directed to correct the citation on an
Examiner's Amendment form POL-37.

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

To correct a citation prior to mailing, either
before or after sending the typed action to
Reference Order Section ( R.O.S.), see the Man
ual of Clerical Procedures, Sec. 410.0 (1).

707.06
707.06
Citation of Decisions, Ordera,
Memorandums a n d Notices
[R-21]

In citing court decisions, the U.S., C.C.P.A.
or Federal Reporter citation should be given
in addition to the USPQ citation, when it is
convenient to do so.

The citation of manuscript decisions which
are not available to the public should be
avoided.

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

Decisions found only in patented files should
be cited only when there is no published deci-
sion on the same point.

When a Commissioner's Order. Notice or
Memorandum not yet incorporated into this
manual is cited in any official action, the date of
the order, notice or memorandum should be
given. Where appropriate other data, such as
a specific issue of the Journal of the Patent
Office Society or of the Official Gazette in which
the same may be found, should also be given.

# 707.07 Completeness and Clarity [R-21]

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

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

of his specification with art-accepted termi-
nology before further action is made.

A suitable form for this action is as follows:

"A preliminary examination of this appli-
cation indicates that the following terminol-
ogy (or properties or units of test data, etc)
. . . which appear (s) at page (s) ... of the
specification is (are) so different from those
generally accepted in the art to which this
invention pertains that it is difficult or impos-
sible to make a reliable search.

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

A SHORTENED STATUTORY PE-
RIOD FOR RESPONSE TO THIS AC-
TION IS SET TO EXPIRE 30 DAYS
FROM THE DATE OF THIS LETTER."

707.07(a) Complete Action on Formal
Matters [R-21]

Forms are placed in informal applications
listing informalities noted by the Draftsman
(Form PO-948) and the Head of the Applica-
tion Branch (Form PO-152). Each of these
forms comprises an original for the file record
and two copies to be mailed to applicant as a
part of the Examiner's action. They are spe-
cifically referred to as attachments to the letter
and are marked with its paper number. In
every instance where these forms are to be used
they should be mailed with the Examiner's first
letter. and any additional formal requirements
which the Examiner desires to make should be
included in the first letter.

When any formal requirement is made in an
Examiner's action, that action should, in all
cases where it indicates allowable subject mat-
ter, call attention to Rule 111 (b) and state that
a complete response must either comply with
all formal requirements or specifically traverse
each requirement not complied with.

707.07(b) Requiring New Oath
[R-21]

See section 602.02.

707.07(c) Draftsman's Requirement
[R-21]

See section 707.07 (a) ; also sections 608.02
(a), (e), (s).

707.07(d) Language To Be Used In
Rejecting Claims [R-16]

Where's claim is refused for any reason re-
lating to the merits thereof it should be "re-
jected" and the ground of rejection fully and
clearly stated, and the word "reject" must be
used. The Examiner should designate the
statutory basis for any ground of rejection by
express reference to a section of 35 U.S.C. in the
opening sentence of each ground of rejection.
If the claim is rejected as too broad, the reason
for so holding should be given; if rejected as
indefinite the Examiner should point out where-
in the indefiniteness resides; or if rejected as in-
complete, the element or elements lacking should
be specified, or the applicant be otherwise ad-
vised as to what the claim requires to render it
complete.

In general, the most usual ground of rejec-
tion is based on prior art under either 35 U.S.C.
102 or 35 U.S.C. 103.

## 35 U.S.C. 102 (ANTICIPATION OR LACK OF NOVELTY)

The distinction between rejections based on
35 U.S.C. 102 and those based on 35 U.S.C. 103
should be kept in mind. Under the former, the
claim is anticipated by the reference. No ques-
tion of obviousness is present. It may be ad-
visable to identify a particular part of the ref-
erence to support the rejection. If not, the
expression "rejected under 35 U.S.C. 102 as
clearly anticipated by" is appropriate.

# 35 U.S.C. 103 (OBVIOUSNESS)

In contrast, 35 U.S.C. 103 authorizes a rejec-
tion where to meet the claim, it is necessary to
modify a single reference or to combine it with
one or more others. After indicating that the
rejection is under 35 U.S.C. 103, there should
be set forth (1) the difference or differences in
the claim over the applied reference (s), (2) the
proposed modification of the applied refer-
ence (s) necessary to arrive at the claimed sub-
ject matter, and (3) an explanation why such
proposed modification would be obvious.

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

The Examiner should, as a part of the first
Office action on the merits, identify any claims
which he judges, as presently advised, to be
allowable and/or should suggest any way in
which he considers that rejected claims may be
amended to make them allowable. If the Ex-
aminer does not do this, then by implication it
will be understood by the applicant or his attor-
ney or agent that in the Examiner's opinion, as
presently advised, there appears to be no allow-
able claim nor anything patentable in the sub-
ject matter to which the claims are directed.

## IMPROPERLY EXPRESSED REJECTIONS

An omnibus rejection of the claim "on the
references and for the reasons of record" is
stereotyped and usually not informative and
should therefore be avoided. This is especially
true where certain claims have been rejected
on one ground and other claims on another
ground.

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

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

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

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

### 707.07 (f) Answer All Material Trav- ersed

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

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

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

ANSWERING ASSERTED ADVANTAGES

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

If it is the Examiner's considered opinion
that the asserted advantages are without sig-
nificance in determining patentability of the
rejected claims, he should state the reasons for
his position in the record, preferably in the
action following the assertion or argument
relative to such advantages. By so doing the
Applicant will know that the asserted ad-
vantages have actually been considered by the
Examiner and, if appeal is taken, the Board of
Appeals will also be advised.

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

# 707.07(g) Piecemeal Examination [R-16]

Piecemeal examination should be avoided
as much as possible. The Examiner ordi-
narily should reject each claim on all valid
grounds available, avoiding, however, undue
multiplication of references. (See 904.02.)
Major technical rejections on grounds such as
aggregation, lack of proper disclosure, undue
breadth, serious indefiniteness and res judicata
should be applied where appropriate even
though there may be a seemingly sufficient re-
jection on the basis of prior art. Where a major
technical rejection is proper, it should be stated
with a full development of reasons rather than
by a mere conclusion coupled with some stereo-
typed expression.

In cases where there exists a sound rejection
on the basis of prior art which discloses the
"heart" of the invention (as distinguished from
prior art which merely meets the terms of the
claims), secondary rejections on minor technical

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

Some situations exist where examination of an
application appears best accomplished by limit-
ing action on the claims thereof to a particular
issue. These situations include the following:

(1) Where an application is too informal for
a complete action on the merits; see 702.01;

(2) Where there is an undue multiplicity of
claims, and there has been no successful tele-
phone request for election of a limited number
of claims for full examination; see 706.03(1) ;

(3) Where there is a misjoinder of inven-
tions and there has been no successful telephone
request for election ; see 803, 806.02, 812.01;

(4) Where the disclosure is directed to per-
petual motion; note ex parte Payne, 1904 C.D.
42; 108 O.G. 1049.

However, in such cases, the best prior art readily
available should be cited and its pertinancy
pointed out without specifically applying it to
the claims.

On the other hand, a rejection on the grounds
of res judicata, no prima facie showing for re-
issue, new matter, or inoperativeness (not
involving perpetual motion) should be accom-
plished by rejection on all other available
grounds.

707.07(h) Notify of Inaccuracies in
Amendment

See 714.23.

707.07 (i) Each Claim To Be Men-
tioned in Each Letter [R-
16]

In every letter each claim should be men-
tioned by number, and its treatment or status
given. Since a claim retains its original nu-
meral throughout the prosecution of the case,
its history through successive actions is thus
easily traceable. Each action should conclude
with a summary of rejected, allowed and can-
celled claims.

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

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

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

# 707.12

707.07(j) State When Claims Are Al- 707.07(k) Numbering Paragraphs
lowable [R-20]

## INVENTOR FILED APPLICATIONS

When, during the examination of a pro se
case, it becomes apparent to the Examiner that
there is patentable subject matter disclosed in
the application, he shall draft one or more
claims for the applicant and indicate in his
action that such claims would be allowed if in-
corporated in the application by amendment.

This practice will expedite prosecution and
offer a service to individual inventors not repre-
sented by a registered patent attorney or agent.
Although this practice may be desirable and
is permissible in any case where deemed appro-
priate by the Examiner, it will be expected to
be applied in all cases where it is apparent that
the applicant is unfamiliar with the proper pre-
paration and prosecution of patent applications.

### ALLOWABLE EXCEPT AS TO FORM

When an application discloses patentable
subject matter and it is apparent from the
claims and the applicant's arguments that the
claims are intended to be directed to such
patentable subject matter, but the claims in
their present form cannot be allowed because
of defects in form or omission of a limitation,
the Examiner should not stop with a bare ob-
jection or rejection of the claims. The Exami-
ner's action should be constructive in nature
and when possible he should offer a definite
suggestion for correction. Further, an Exam-
iner's suggestion of allowable subject matter
may justify his indicating the possible desira-
bility of an interview to accelerate early agree-
ment on allowable claims.

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

If a claim is otherwise allowable but is de-
pendent on a cancelled claim or on a rejected
claim, the Office action should state that the
claim would be allowable if rewritten in inde-
pendent form.

## EARLY ALLOWANCE OF CLAIMS

Where the Examiner is satisfied that the
prior art has been fully developed and some of
the claims are clearly allowable, he should not
delay the allowance of such claims.

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

## 707.08 Reviewing and Initialing by As- sistant Examiner

The full surname of the Examiner who pre
pares the Office action will. in all cases, be typed
below the action on the left side. The telephone
number below this should be called if the case
is to be discussed or an interview arranged.
After the action is typed, the Examiner who
prepared the action reviews it for correctness.
If this Examiner does not have the authority
to sign the action, he should initial the action
above the typed name, and forward to the au-
thorized signatory Examiner for signing.

## 707.09 Signing by Primary or Other Authorized Examiner

Although only the original is signed, the word
"Examiner" and the stamped name of the signer
should appear on the original and copies.

## 707.10 Entry [R-16]

The original, signed by the authorized Ex-
aminer, is the copy which is placed in the file
wrapper. The character of the action, its paper
number and the date of mailing are entered in
black ink on the outside of the file wrapper
under "Contents".

## 707.11 Date

The date should not be typed when the
letter is written, but should be stamped on all
copies of the letter after it has been signed
by the authorized signatory Examiner and the
copies are about to be mailed.

## 707.12 Mailing [R-20]

In cases where no references are to be pro-
vided by Reference Order Section (R.O.S.), the
copies are mailed by the Group after the orig-
inal, initialed by the Assistant Examiner and
signed by the authorized signatory Examiner,
has been placed in the file.

In cases where cited references are to be pro-
vided, the original and copies after signing are
forwarded by the clerk to Reference Order Sec-
tion (R.O.S.) for mailing. The file with a copy
of the action is retained in the Group. After
the copies are mailed by R.O.S., the original is
returned for placement in the file.

## 707.13 Returned Office Action

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

If the Office is not finally successful in de-
livering the letter, it is placed, with the en-
velope, in the file wrapper. If the period dat-
ing from the remailing elapses with no com-
munication from applicant, the case is for-
warded to the Abandoned Files Unit.

708 Order of Examination [R-20]

Rule 101. Order of examination. (a) Applications
filed in the Patent Office and accepted as complete ap-
plications (rules 53 and 55) are assigned for examina-
tion to the respective examining divisions having the
classes of inventions to which the applications relate.
Applications shall be taken up for examination by the
examiner to whom they have been assigned in the or-
der in which they have been filed except for those appli-
cations in which the Office has accepted a request
under Rule 189.

(b) Applications which have been acted upon by
the examiner, and which have been placed by the ap-
plicant in condition for further action by the examiner
(amended applications) shall be taken up for action
in such order as shall be determined by the Commis-
sioner.

Each Examiner will give priority to that ap-
plication in his docket, whether amended or new,
which has the oldest effective U.S. filing date.
Except as rare circumstances may justify Group
Directors in granting individual exceptions,
this basic policy applies to all applications.

Whether a given application has an effective
U.S. filing date earlier than its actual filing
date is determined by whether the disclosure of
a parent case adequately supports any claim or
claims of the later case. Examiners are respon-
sible for making this determination. If at any
time an Examiner determines that the "effective
filing date" status of any application differs
from what the records show, he should so inform
the Clerk of Group, who should promptly
amend the records to show the correct status,
with the date of correction.

The new order of examination for each Ex-
aminer will continue top priority for those spe-
cial cases having a fixed 30 or 60-day due date,
such as Examiner's Answers and Decisions on
Motions. Most other cases still remaining in the
"special" category (for example, reissues, inter-
ference cases, cases made special by petition,
cases ready for final conclusion, etc.) will con-
tinue in this category, with the first effective
U.S. filing date among them normally control-
ling priority.

Action on those applications in which the
Office has accepted a request under Rule 139 is
suspended for the entire pendency, except for
purposes relating to interference proceedings
under Rule 201(b) initiated within (5) five
years of the earliest effective U.S. filing date.

## 708.01 List of Special Cases [R-16]

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

(b) Applications wherein the inventions are deemed
of peculiar importance to some branch of the public
service and the head of some department of the Gov-
ernment requests immediate action for that reason, may
be advanced for examination.

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

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

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

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

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

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

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

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

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

(e) A case, once taken up for action by an
Examiner according to its effective filing date,
should be treated as special by any Examiner,
Art Unit or Group to which it may subsequently
be transferred; exemplary situations include
new cases transferred as the result of a tele-
phone election and cases transferred as the re-
sult of a timely response to any official action.

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

(g) Cases ready for allowance, or ready for
allowance except as to formal matters.

(h) Cases which are in condition for final
rejection.

(i) Cases pending more than five years,
including those which, by relation to a prior
United States application, have an effective
pendency of more than five years. See
707.02(a)

See also 714.13 and 1207.

## 708.02 Petition to Make Special [R- 18]

As noted in 708.01, certain cases may be ad-
vanced for examination out of turn as a result of
a petition to make special. The categories of
such special cases are noted below.

## MANUFACTURE OR INFRINGEMENT

Petitions to make special may be based on
actual infringement or on prospective manu-
facture which is being delayed for lack of some
assurance of patent protection. Showings sup-
porting specific facts must be made. For de-
tails see the Patent Office publication dated
July, 1968, entitled "Petitions To Make Appli-
cations Special." Copies of this publication
are available in the office of the First Assistant
Commissioner.

## AGE OR ILL HEALTH

Petitions to make special may be based on a
showing that applicant is 65 or more years of
age or that his state of health is such that he
might not be available to assist in the prosecu-
tion of the application if it were to run its
normal course.

## CONTINUING APPLICATION

Petitions to make special a continuing appli-
cation may be based on an allegation that the
application contains only claims which have
been held allowable in an earlier case or claims
differing therefrom only in matters of form
or by immaterial terminology. The Examiner
is requested to make a report stating whether
the allegation in the petition is correct and
including a list of the references over which
the claims were allowed, unless such references
have been listed in the petition. If, in the
opinion of the Examiner, the claims in the ap-
plication do not qualify it for special status
as above noted, but he is able to determine from
inspection that the application is allowable in
matters of substance or that the claims are oth-
erwise such as would, by reason of the previous
prosecution, be clearly subject to immediate
final action, he should report the fact.

SPECIAL EXAMINING PROCEDURE FOR CERTAIN
NEW APPLICATIONS-ACCELERATED EXAMINA-
TION

A new application may be granted special
status provided that applicant (and this term
includes applicant's attorney or agent) concur-

rently submits a written petition to make special
wherein he:

(a) Presents all claims directed to a single
invention or if the Office determines that all the
claims presented are not obviously directed to
a single invention will make an election without
traverse as a prerequisite to the grant of special
status.

The election may be made by applicant at the
time of filing the petition for special status.
Should applicant fail to include an election with
the original papers or petition and the Office
determines that a requirement should be made,
the established telephone restriction practice
will be followed.

If otherwise proper, examination on the
merits will proceed on claims drawn to the
elected invention.

If applicant refuses to make an election with-
out traverse, the application will not be further
examined at that time. The petition will be
denied on the ground that the claims are not
directed to a single invention, and the applica-
tion will await action in its regular turn.

Divisional applications directed to the non-
elected inventions will not automatically be
given special status based on papers filed with
the petition in the parent case. Each such
application must meet on its own all require-
ments for the new special status.

(b) Submits a statement that a pre-examina-
tion search was made, and specifying whether
by the inventor, attorney, professional search-
ers, etc., and listing the field of search by class
and subclass, publication, chemical abstracts.
foreign patents, etc.

(c) Submits one copy each of the references
deemed most closely related to the subject mat-
ter encompassed by the claims.

(d) Submits a detailed discussion of the ref-
erences, which discussion points out, with the
particularity required by Rule 111 (b) and (c),
how the claimed subject matter is distinguish-
able over the references. Where applicant indi-
cates an intention of overcoming one of the ref-
erences by affidavit under Rule 131, the affidavit
must be submitted before the application is
taken up for action, but in no event later than
one month after request for special status.

In those instances where the request for this
special status does not meet all the prerequisites
set forth above, applicant will be notified and
the defects in the request will be stated. The
application will remain in the status of a new
application awaiting action in its regular turn.
In those instances where a request is defective
in one or more respects, applicant will be given
one opportunity to perfect the request. If per
fected, the request will then be granted.

Once a request has been granted, prosecution

will proceed according to the procedure set
forth below; there is no provision for "with-
drawal" from this special status.

Following is the special examining proce-
dure:

1\. The new application, having been granted
special status as a result of compliance with the
requirements set out above will be taken up by
the Examiner before all other categories of ap-
plications except those clearly in condition for
allowance and those with set time limits, such as
Examiner's Answers, Decisions on Motions, etc.,
and will be given a complete first action which
will include all essential matters of merit as to
all claims. The Examiner's search will be re-
stricted to the subject matter encompassed by
the claims. A first action rejection will set a
three-month shortened period for response.

2\. During the three-month period for re-
sponse, applicant is encouraged to arrange for
an interview with the Examiner in order to re-
solve, with finality, as many issues as possible.
In order to afford the Examiner time for reflec-
tive consideration before the interview, appli-
cant or his representative should cause to be
placed in the hands of the Examiner at least one
working day prior to the interview, a copy
(clearly denoted as such) of the amendment
that he proposes to file in response to the Exam-
iner's action. Such a paper will not become a
part of the file, but will form a basis for discus-
sion at the interview.

3\. Subsequent to the interview, or responsive
to the Examiner's first action if no interview
was had, applicant will file his "record" re-
sponse. The response at this stage, to be proper,
must be restricted to the rejections, objections,
and requirements made. Any amendment
which would require broadening the search field
will be treated as not a proper response.

4\. The Examiner will, within one month from
the date of receipt of applicant's formal re-
sponse, take up the application for final dispo-
sition. This disposition will constitute either a
final action which terminates with the setting
of a three-month period for response, or a no-
tice of allowance. The Examiner's response to
any amendment submitted after final rejection
should be prompt and by way of forms 327, 303
or 309, by passing the case to issue, or by an
Examiner's Answer should applicant choose to
file an appeal brief at this time. Of course,
where relatively minor issues or deficiencies
might be easily resolved, the Examiner may
use the telephone to inform the applicant of
such.

5\. A personal interview after final Office ac-
tion will not be permitted unless requested by
the Examiner. However, telephonic interviews
will be permitted where appropriate for the

purpose of correcting any minor matters which
remain outstanding.

HANDLING OF PETITIONS TO MAKE SPECIAL

Each petition to make special, regardless of
the ground upon which the petition is based and
the nature of the decision, is placed of record
in the application file, together with the decision
thereon. The Office that rules on a petition
is responsible for properly entering that peti-
tion and the resulting decision in the file record.
The petition, with any attached papers and sup-
porting affidavits, will be given a single paper
number and so entered in the "Contents" of the
file. The decision will be accorded a separate
paper number and similarly entered. To in-
sure entries in the "Contents" in proper order,
the Clerk in the Examining Group will make
certain that all papers prior to a petition have
been entered and/or listed in the application file
before forwarding it for consideration of the
petition. [R-20]

## 708.03 Examiner Tenders His Resig- nation

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

If the Examiner has considerable experience
in his particular art. it is also advantageous
to the Office if he indicates (in pencil ) in the
file wrappers of cases in his docket, the field
of search or other pertinent data that he con-
siders appropriate.

## 709 Suspension of Action [R-20]

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

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

(c) Action by the examiner may be suspended by
order of the Commissioner in the case of applications
owned by the United States whenever publication of the
invention by the granting of a patent thereon might be
detrimental to the public safety or defense, at the re-
quest of the appropriate department or agency.

(d) Action on applications in which the Office has
accepted a request filed under Rule 139 will be sus-
pended for the entire pendency of these applications

except for purposes relating to proceedings under Rule
201 (b).

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

Paragraph (b) of the Rule provides for a
suspension of Office action by the Examiner on
his own initiative, as in sections 709.01 and
1101.01 (i). Paragraph (d) is used in the De-
fensive Publication Program described in sec-
tion 711.06.

## 709.01 Overlapping Applications by Same Applicant or Owned by Same Assignee [R-20]

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

Because of this where one of several appli-
cations of the same inventor or assignee which
contain overlapping claims gets into an inter-
ference it was formerly the practice to suspend
action by the Office on the applications not in
the interference in accordance with Ex parte
McCormick, 1904 C.D. 575; 113 O.G. 2508.

Now, partly in view of In re Seebach, 1937
C.D. 495; 484 O.G. 503 the prosecution of all
the cases not in the interference is required to
be carried as far as possible, by treating as
prior art the counts of the interference and by
rejections forcing the drawing of proper lines
of division. See section 1111.03.

## 709.02 Actions Following Correspond- ence Under Rule 202 [R-20]

See section 1101.01 (i).

## 710 Period for Response [R-20]

35 U.S.C. 133. Time for proscouting application.
Upon failure of the applicant to prosecute the appli-
cation within six months after any action therein, of
which notice has been given or mailed to the applicant.
or within such shorter time, not less than thirty days,
as fixed by the Commissioner in such action, the appli-
ration shall be regarded as abandoned by the parties
thereto, unless it be shown to the satisfaction of the
Commisioner that such delay was unavoidable.

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

710.01 Statutory Period [R -- 20]

Extract from Rule 185. (a) If an applicant fails to
prosecute his application within six months after the
date when the last official notice of any action by the
Office was mailed to him, or within such shorter time
as may be fixed (rule 136), the application will become
abandoned.

The maximum statutory period for response
to an Office action is six months, 35 U.S.C. 133.
Shortened periods are currently used in prac-
tically all cases, see section 710.02 (b).

# 710.01 (a) Statutory Period, How Computed [R-17]

The actual time taken for response is com-
puted from the day of the mailing of the Office
action to the date of receipt by the Office of
applicant's response. No cognizance is taken
of fractions of a day and applicant's response
is due on the corresponding day of the month
six months or any lesser number of months
specified after the Office action.

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

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

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

710.02 Shortened Statutory Period
and Time Limit Actions
[R-20]

Extract from Rule 136. Time less than six months.
(a) An applicant may be required to prosecute his
application in a shorter time than six months. but not
less than thirty days, whenever such shorter time is
deemed necessary or expedient. Unless the applicant is
notified in writing that response is required in less than
six months, the maximum period of six months is
allowed.

Under Rule 136 (35 U.S.C. 133) an appli-
cant may be required to respond in a shorter
period then six months, not less than 30 days,
whenever it is deemed "necessary or expendi-
ent". Some conditions deemed "necessary or
expedient" are listed in section 710.02 (b).

In other situations, for example, the rejection
of a copied patent claim, the Examiner may
require applicant to respond on or before &
specified date. These are known as time limit
actions and are established under authority of
35 U.S.C. 6. Some situations in which time
limits are set are noted in section 710.02(c).
The time limit requirement should be typed in
capital letters where required.

An indication of a shortened time for reply
should appear prominently on the first page
of all copies of actions in which a shortened
time for reply has been set so that a person
merely scanning the action can easily see it.

710.02(b) Shortened Statutory Pc-
riod: Situations in Which
Used [R-20]

Under the authority given him by 35 U.S.C.
133 the Commissioner has directed the Exam-
iners to set a shortened period for response to
every action. The length of the shortened stat-
utory period to be used depends on the type
of response required. Some specific cases of
shortened statutory period for response to be
given are:

THIRTY DAYS
Sec.

Requirement for restriction or
election of species-no claim re-
jected
814

To file express abandonment
drawings transferred
608. 02(1)
Two MONTHS
Sec.

Winning party in terminated in-
terference to reply to unan-
swered Office action
1109.01

Where, after the termination of an inter-
ference proceeding, the application of the
winning party contains an unanswered Office
action, final rejection or any other action, the
Primary Examiner notifies the applicant of
this fact. In this case response to the Office
action is required within a shortened statutory
period running from the date of such notice.
See Ex parte Peterson, 1941 C.D. 8; 525 O.G. 3.
Ex parte Quayle

When an application is in condition for
allowance, except as to matters of form, such
as correction of drawings or specification, a
new oath, etc., the case will be considered

710.02 (d)

special and prompt action taken to require cor-
rection of formal matters. Such action should
include an indication on first page form letter
POL 326 that prosecution on the merits is
closed in accordance with the decision in Ee
parte Quayle, 1935 C.D. 11; 453 O.G. 213. A
two month shortened statutory period for re-
sponse should be set.

Sec.

Multiplicity rejection-no other
rejection

706.03 (1)

## THREE MONTHS

To respond to any Office action on the merits.
PERIOD FOR RESPONSE RESTARTED
Sec.
Incorrect citation by Examiner -- re-
gardless of time remaining in
original period
710.06

The above periods may be changed under
special, rarely occurring circumstances.

There are other periods for response set.
forth in the Rules of Practice. For example,
applicant will still have 60 days (not two
months) to respond to a new ground of re-
jection in the Examiner's Answer ( Rule 193).

A shortened statutory period may not be
less than 30 days.

# 710.02(c) Time-Limit Actions: Sit- uations in Which Used [R-20]

As stated in section 710.02, 35 U.S.C. 6 pro-
vides authority for the Commissioner to estab-
lish rules and regulations for the conduct of
proceedings in the Patent Office. Among the
Rules are certain situations in which the
Examiner sets a time limit within which some
specified action should be taken by applicant.
Some situations in which a time limit is set are :

(a) A portion of Rule 203 (b) provides that
in suggesting claims for interference :

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

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

(b) Rule 206(b) provides :

Rule 206 (b). Where the examiner is of the opinion
that none of the claims can be made, he shall reject the
copied claims stating in his action 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. 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.

See section 1101.02(f).

(e) When applicant's action is not fully re-
responsive to the Office action, the Examiner
may give applicant one month or the remainder
of the set statutory period, whichever is longer,
to complete his response. See Rule 135 (c)
which reads as follows:

Rule 135(c). When action by the applicant is a
bona fide attempt to advance the case to final action,
and is substantially a complete response to the exam-
iner's action, but consideration of some matter or com-
pliance with some requirement has been inadvertently
omitted, opportunity to explain and supply the omis-
sion may be given before the question of abandonment
is considered.

See section 714.03.

(d) In applications filed on or after October
25, 1965, applicant is given one month or the
remainder of the set statutory period, which-
ever is longer, to remit any additional fees re-
quired for the submission of an amendment in
response to an Office action.

See sections 607 and 714.03.

(e) To ratify or otherwise correct an un-
signed amendment, applicant is given one
month or the remainder of the set statutory
period, whichever is longer.

See section 714.01 (b).

(f) Where application is otherwise allowable
but contains a traverse of a requirement to re-
strict, one month is given to cancel claims to
nonelected invention or species or take other
appropriate action. See Rules 141, 144, and
sections 809.02(c) and 821.01.

(g) If there is a defect in the format of a
streamlined continuation application which can
be corrected, applicant is given one month to
correct the defect.

See section 201.07.

# 710.02(d) Difference Between Short- ened Statutory and Time- Limit Periods [R-20]

The distinction between a limited time for
reply and a shortened statutory period under
Rule 136 should not be lost sight of. The pen-
alty attaching to failure to reply within the
time limit ( from the suggestion of claims or the
rejection of copied patent claims) is loss of the
subject matter involved on the doctrine of dis-
claimer. A rejection on the ground of dis-
claimer is appealable. On the other hand, a
complete failure to respond within the set stat-
ntory period results in abandonment of the
entire application. This is not appealable, but
a petition to revive may be granted if the delay

710.02 (e)

# MANUAL OF PATENT EXAMINING PROCEDURE

was unavoidable. Further, where applicant re-
sponds a day or two after the time limit, this
may be excused by the Examiner if satisfac-
torily explained; but a response one day late
in a case carrying a shortened statutory period
under Rule 136, no matter what the excuse,
results in abandonment : however, if asked for
in advance extension of the period may be
granted by the Examiner, provided the exten-
sion does not go beyond the six months' period
from the date of the Office action. See also
section 1101.02 (f).

## 710.02(e) Extension of Time [R- 21]

Extract from Rule 196. (b) The time for reply, when
a time less than six months has been set. will be ex-
tended only for good and sufficient cause, and for a
reasonable time specified. Any request for such ex-
tension must be filled on or before the day on which
action by the applicant is due, but in no case will the
mere filing of the request effect any extension. Only
one extension may be granted by the primary examiner
in his discretion; any further extension must be ap-
proved by the Commissioner. In no case can any ex-
tension carry the date on which response to an action
is due beyond six months from the date of the action.

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

Compare, however, Rule 135(c) and section
714.03.

Any request under Rule 136(b) for extension
of time must state a reason in support thereof;
under the present policy the application of the
Rule will entail only a limited evaluation of the
stated reason.

This liberality will not apply to

(1) any requests for more than one-month
extension, and

(2) second and subsequent requests for ex-
tension of time.

All first requests for extension of time regard-
less of the number of months involved will be
decided by the Primary Examiner. All re-
quests subsequent to the first request for exten -
sion of time to respond to an office action will
be forwarded to the Group Director for action.

If a request for extension of time is filed in
duplicate and accompanied by a stamped re-
turn-addressed envelope, the Office will indicate
the action taken on the duplicate and return it
promptly in the envelope. Utilization of this

procedure is optional on the part of applicant.

In implementing this procedure, the action
taken on the request should be noted on the
original and on the copy which is to be returned.
The notation on the original, which becomes a
part of the file record, should be signed by the
person granting or denying the extension, and
the name and title of that person should also
appear in the notation on the copy which is
returned to the person requesting the extension.

When the request is granted, no further ac-
tion is necessary; when it is denied, a formal
letter of denial, giving the reason for denial,
should be forwarded promptly after the mail-
ing of the duplicate.

Request for extension of time may be made by
hand delivery of a duplicate copy of a request
which has been filed. Prompt consideration is
given and the action taken communicated to
applicant at the earliest practicable time; if an
attorney's copy as well as the duplicate copy is
submitted, it is sufficient to merely indicate on
both copies that the extension will be granted
if the request is timely filed.

If the request for extension is not presented
in duplicate, the applicant should be advised
promptly by way of form letter POL-327 re-
garding action taken on the request so that the
file record will be complete.

The filing of a timely first response to a final
rejection having a shortened statutory period for
response is construed as including a request to
extend the shortened statutory period an addi-
tional month even if previous extensions have
been granted, but in no case to exceed six months
from the date of the final action. (See section
¥14.13.)

# 710.04 Two Periods Running [R- 20]

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

# 710.04(a) Copying Patent Claims [R-20]

Where, in an application in which there is an
unanswered rejection of record, claims are
copied from a patent and all of these claims
are rejected there results a situation where two
different periods for response are running
against the application. One period, the first,

is the regular statutory period of the unan-
swered rejection of record, the other period is
the limited period set for response to the re-
jection (either first or final), established under
Rule 206. The date of the last unanswered
Office action on the claims other than the
copied patent claims is the controlling date of
the statutory period. (Ex parte Milton, 164
Ms. 1. 1, 63 USPQ 132 and Ex parte Nelson,
164 Ms. D. 361, 26 J.P.O.S. 564.) See also
section 1101.02 (f).

## 710.05 Period Ending on Saturday, Sunday or Holiday [R-20]

35 U.S.O. 21. Day for taking action falling on Satur-
day, Sunday, or holiday. When the day, or the last
day. for taking any action or paying any fee in the
United States Patent Office falls on Saturday, Sunday.
or a holiday within the District of Columbia, the ac-
tion may be taken, or the fee paid, on the next succeed-
ing secular or business day.

Rule 7. Times for taking action ; expiration on Satur-
day, Sunday, or holiday. Whenever periods of time
are specified in these rules in days, calendar days are
Intended. When the day, or the last day, fixed by stat-
ute or by or under these rules for taking any action or
paying any fee in the Patent Office falls on Saturday.
Sunday, or on a holiday within the District of Colum-
bia, the action may be taken, or the fee paid, on the
next succeeding day which is not a Saturday, Sunday.
or a holiday. See rule 204 for time for appeal or for
commencing civil action.

The holidays in the District of Columbia
are: New Year's Day, January 1; Washing-
ton's Birthday, February 22; Memorial Day.
May 30; Independence Day, July 4; Labor
Day (first Monday in September) ; Veterans'
Day, November 11; Thanksgiving Day ( fourth
Thursday in November) ; Christmas Day, De-
cember 25; Inauguration Day (January 20,
every four years). Whenever a holiday falls
on a Sunday, the following day (Monday) is
also a holiday. Ex. Order 10,358: 17 F.R. 5269.
When a holiday falls on a Saturday, the
preceding day, Friday, is considered to be a holi-
day within the District of Columbia and the
Patent Office will be closed for business on that
day (5 U.S.C. 6103). Accordingly, any action
or fee due on such a holiday Friday or Saturday
is to be considered timely if the action is taken,
or the fee paid, on the next succeeding day which
is not a Saturday, Sunday or a holiday.

When an amendment is filed a day or two
later than the expiration of the period fixed by
statute, care should be taken to ascertain
whether the last day of that period was Satur-
day, Sunday or a holiday in the District of
Columbia, and if so, whether the amendment
was filed or the fee paid on the next succeed-

ing day which is not a Saturday, Sunday or a
holiday.

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

710.06 Miscellaneous Factors Deter-
mining Date [R-20]

Where the citation of a reference is incorrect
and this error is called to the attention of the
Office before the expiration of the period for
response, a new period for response starts from
the date of the Office letter giving the correct
citation. The previous period is restarted re-
gardless of the time remaining. See section
707.05(g) for the manner of correcting the rec-
ord where there has been an erroneous citation.

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

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

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

### 711 Abandonment [R-20]

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

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

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

(d) Prompt ratification or filing of a correctly afgned
copy may be accepted in case of an unsigned or im-
properly signed paper. (See rule 7.)

Rule 138. Hepress abandonment. An application may
be expressly abandoned by filling in the Patent Office a
written declaration of abandonment, algned by the ap-
plicant himself and the assignee of record, If any, and
identifying the application. Except as provided in
Rule 262 an application may also be expressly aban-
doned by filling a written declaration of abandonment
signed by the attorney or agent of record.

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

An abandoned application, in accordance
with Rules 135 and 138, is one which is re-
moved from the Office docket of pending cases
through :

1\. formal abandonment

a. by the applicant, himself (acquiesced in
by the assignee if there be one), or

b. by the attorney or agent of record (in-
cluding an associate attorney or agent ap-
pointed by the principal attorney or agent
and whose power is of record) ; or

2\. failure of applicant to take appropriate
action within a specified time at some stage in
the prosecution of the case.

Where an applicant, himself, formally aban-
dons an application and there is a corporate as-
signee, the acquiescence must be made through
an officer whose official position is indicated.
See section 608.02(1).

See section 712 for abandonment for failure
to pay issue fee.

# 711.01 Express or Formal Abandon- ment [R-20]

Applications may be expressly abandoned
as provided for in Rule 138. When a letter
expressly abandoning an application (not in
issue) is received, the Examiner should
acknowledge receipt thereof, indicate whether
it does or does not comply with the require-
ments of Rule 138.

If it does comply, the Examiner should re-
spond by using form POL-327 and by checking
the appropriate boxes which indicate that the
letter is in compliance with Rule 138 and that
the application is being forwarded to the
Abandoned Files Unit. The Examiner's signa-
ture may appear at the bottom of the form. If
such a letter does not comply with the require-
ments of Rule 138, a fully explanatory letter
should be sent.

In view of the doctrine set forth in Ex parte
Lasscell, 1884 C.D. 66; 29 O.G. 861, an amend-

ment canceling all of the claims, even though
said amendment is signed by the applicant
himself and the assignee, is not an express
abandonment. Such an amendment is ro-
garded as non-responsive and should not be
entered, and applicant should be notified as
explained in section 714.03, 714.05. But see
section 608.02(1) for situation where applica-
tion is abandoned along with transfer of draw-
ings to a new application.

AFTER NOTICE OF ALLOWANCE

Letters of abandonment of allowed applica-
tions are acknowledged by the Issue and
Gazette Branch.

Rule 313 provides that an allowed applica-
tion will not be withdrawn from issue except by
approval of the Commissioner, and that after
the first portion of the issue fee has been paid
and the patent to be issued has received its date
and number, it will not be withdrawn for any
reason except mistake on the part of the Office,
or because of fraud or illegality in the applica-
tion, or for interference. In cases where the
second paragraph of Rule 313 precludes giving
effect to an express abandonment, the appropri-
ate remedy is a petition under Rule 183, show-
ing an extraordinary situation where justice re-
quires suspension of Rule 313.

The Defensive Publication Program is set
forth in section 711.06.

# 711.02 Failure To Take Required Ac- tion During Statutory Period [R-20]

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

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

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

Abandonment by entire failure to respond
presents no problems.

Nor is there ordinarily any particular diffi-
culty when an amendment reaches the Office
(not the Group) after the expiration of the
statutory period. The case is abandoned and
the remedy is to petition to revive it. The Ex-
aminer should notify the applicant or attorney
at once that the application has been aban-
doned by using form letter POL-327. The
proper boxes on the form should be checked

711.02(a)

# EXAMINATION OF APPLICATION

and the blanks for the dates of the proposed
amendment and the Office action completed.
The late amendment is endorsed on the file
wrapper but not formally entered. (See sec-
tion 714.17.)

To pass on questions of abandonment, it is
essential that the Examiner know the dates
that mark the beginning and end of the statu-
tory period under varying situations. Appli-
cant's response must reach the Office within the
set statutory period for reply dating from the

mailing of the Office letter. See sections 710
to 710.06.)

# 711.02(a) Insufficiency of Response [R-20]

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

711.03(c)

## 711.02(b) Special Situations Involv- ing Abandonment

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

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

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

3\. Likewise it may become abandoned
through dismissal of appeal to C.C.P.A. or
civil action, where there was not filed prior to
such dismissal an amendment putting the case
in condition for issue or fully responsive to the
Board's decision. Failure to perfect an ap-
peal as required by CCPA Rule 25. See 1215.05
and 1216.01.

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

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

## 711.02(c) Termination of Proceed- ings [R-16]

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

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

1\. When the issue fee is not paid and the ap-
plication is abandoned for failure to pay the
issue fee, proceedings are terminated as of the
date the issue fee was due and the application is
the same as if it were abandoned on that date
(but if the issue fee is later accepted, on petition,
the application is in a sense revived). See 712.

2\. If an application is in interference involv-
ing all the claims present in the application as
counts and the application loses the interfer-
ence as to all the claims, then proceedings on
that application are terminated as of the date

appeal or review by civil action was due if no
appeal or civil action was filed.

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

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

## 711.03 Reconsideration of Holding of Abandonment; Revival

When advised of the abandonment of his
application, applicant may either ask for recon-
sideration of such holding, if he disagrees with
it on the basis that there is no abandonment in
fact; or petition for revival under Rule 137.

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

Applicant may deny that his response was
incomplete.

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

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

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

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

## 711.03(c) Petitions Relating to Aban- donment

Rule 137. Revival of abandoned application. An ap-
plication abandoned for failure to prosecute may be
revived as a pending application if it is shown to the
satisfaction of the Commissioner that the delay was

711.03(d)

## MANUAL OF PATENT KKAMINING PROCEDURE

unavoidable. A petition to zevire an abandoned ap-
plication must be accompanied by a verified showing
of the causes of the delay, by the proposed response
unless it has been previousis filed, and by the petition
tea.

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

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

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

See 712 for a petition for late payment of the
issue fee.

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

ON PETITION TO REVIVE

When an application is received by the Ex-
aminer accompanied by both the petition to
revive and the accompanying form (POL-
269), the Examiner will complete the report
form which will then be forwarded to the
Commissioner. No communication will be sent
to the applicant by the Examiner and no credit
will be given for an action.

### ON PETITION TO SET ASIDE EXAMINER'S HOLDING

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

## 711.04 Disposition of Abandoned Ap- plications

Detract from Rule 14. Abandoned applications may
be destroyed after twenty years from their filing date,

except those to which particular attention has been
called and which have been marked for preservation.
Abandoned applications will not be returned.

As explained in 1802.07, a retention label is
used to indicate applications not to be de-
stroyed.

## 711.04(a) Pulling and Forwarding

The files and drawings of abandoned applica-
tions are pulled and forwarded to the Aban-
doned Files Unit on a bi-weekly basis in ac-
cordance with the chart in Section 505.E(1) of
the Manual of Clerical Procedure.

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

## 711.04(b) Ordering Abandoned Files

Abandoned files may be ordered by Ex-
aminers by sending (through the Messenger
Service) a completed Form PO-125 to the
Abandoned Files Unit. The name and art unit
of the individual Examiner ordering the file
should appear on the form and the file will be
sent to him through the Messenger Service.

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

EXPEDITED SERVICE

Examiners may expedite service by ordering
abandoned files by telephone.

## 711.05 Letter of Abandonment Re- ceived After Application Is Allowed [R-16]

Receipt of a letter of abandonment while an
application is allowed, is acknowledged by the
Issue and Gazette Branch.

An express abandonment arriving after the
issue fee has been paid and the patent to issue
has received its date and number will not be
accepted without a showing of one of the rea-
sons indicated in the second paragraph of Rule
313, or else a showing under Rule 183 justifying
suspension of Rule 318.

## 711.06 Abstracts, Abbreviatures and Defensive Publications [R-20]

### ABSTRACTS

Abstracts were prepared in accordance with
the Notice of January 25, 1949, 619 O.G. 258.
Each abstract includes a summary of the dis-
closure of the abandoned application, and in ap-
plications having drawings, a figure of the
drawing. The publication of such abstracts was
discontinued in 1953.

### ABBREVIATURES

Abbreviatures were prepared in accordance
with the procedure indicated in the Notice of
October 13, 1964, 808 O.G. 1. Each abbrevia-
ture contains a specific portion of the disclos-
ure of the abandoned application, preferably
a detailed representative claim, and, in applica-
tions having drawings, a figure of the drawing.
The publication of such abbreviatures was dis-
continued in 1965.

### DEFENSIVE PUBLICATIONS

Rule 159. Waiver of patent rights. An applicant may
waive his rights to an enforceable patent based on a
pending patent application by filing in the Patent Office
a written waiver of patent rights, a consent to the pub-
lication of an abstract, an authorization to open the
complete application to inspection by the general pub-
lic, and a declaration of abandonment signed by the
applicant and the assignee of record or by the attorney
or agent of record.

#### A. Defensive Publication Program

An applicant may request to have an abstract
of the technical disclosure of his application
published as a defensive publication abstract
under Rule 139. The request must be filed while
the application awaits Office action and no later
than 8 months from the earliest effective U.S.
filing date of the application. However, any
pending application awaiting the first Office ac-
tion may be included in the program without
regard to its filing date. The application is laid
open for public inspection and the applicant
provisionally abandons the application, retain-
ing his rights to an interference for a limited
period of five years from the earliest effective
U.S. filing date.

The defensive publication of an application
precludes a continuing application (divisional,
continuation-in-part, or continuation) filed un-
der 35 U.S.C. 120 from being entitled to the
benefit of the filing date of the defensively pub-
lished application unless the continuing appli-
cation is filed within thirty (30) months after
the earliest effective U.S. filing date. Where a
similar application is filed after expiration of

the thirty (30) month period, the application
is examined, but it may not claim the benefit of
the earlier filing date of the defensive publica-
tion application. The 'Examiner should require
the cancellation of any claim or statement in-
tended to obtain the benefit of the earlier filing
date in such cases, objecting to its inclusion on
the ground of estoppel.

The denial or approval of a request for defen-
sive publication is made by the Supervisory
Primary Examiner.

An application having therein a request for
defensive publication is taken up special by the
Examiner, and if acceptable, the application is
processed promptly for publication of the
abstract and opening of the application to the
public. A request for defensive publication can-
not be withdrawn after it has been accepted by
the Office.

No fee is required for the defensive publica-
tion of an application.

The Defensive Publication Abstract and a
selected figure of the drawing, if any, are pub-
lished in the O.G. Defensive Publication Search
Copies, containing the defensive publication
abstract and suitable drawings, if any, are pro-
vided for the application file, the Public Search
Room and the Examiner's search files.

The defensive publication application files
are maintained in the Record Room after
publication.

##### B. Requirements for a Statement Requesting Defensive Publication

An application may be considered for defen-
sive publication provided applicant files a
request under Rule 139 agreeing to the condi-
tions for defensive publication. The statement
requesting publication should : (1) be signed by
the assignee of record, or by the attorney or
agent of record, or by the applicant and the as-
signee of record, if any; (2) request the Com-
missioner to publish an abstract of the disclosure
in the O.G .; (3) authorize the Commissioner to
lay open to public inspection the complete ap-
plication upon publication of the abstract in the
O.G .; (+) expressly abandon the application to
take effect 5 years from the earliest U.S. effec-
tive filing date of said application unless inter-
ference proceedings have been initiated within
that period; and (5) waive all rights to an en-
forceable patent based on said application as
well as on any continuing application filed more
than 30 months after the earliest effective U.S.
filing date of said application.

C. Requirements for Defensive Publication
The Examiner should scan the disclosure of
the application to the extent necessary to deter-

mine whether it is suitable for publication and
he also should ascertain that the abstract and
the selected figure of the drawing, if any, ade-
quately reflect the technical disclosure. The ab-
stract should be entitled "Defensive Publication
Abstract" and may contain up to 200 words and
be an expanded version of the abstract required
under Rule 72(b).

The request for defensive publication is disap-
proved by the Examiner if (1) there is some in-
formality in the application or drawings, (2)
the requirements of the statement requesting de-
fensive publication as described in B above have
not been met, or (3) the subject matter of the
application is not considered suitable for publi-
cation because : (a) it involves national security ;
(b) it is considered advertising, frivolous, scan-
dalous, lacking utility, or against public policy,
etc., or (c) the disclosure is clearly anticipated
by readily available art, and publication would
not add anything to the fund of public knowl-
edge (matters of patentability are generally
not considered and no search is made).

If there are defects in the request for de-
fensive publication which cannot be corrected
by Examiners Amendment, the Examiner
should notify applicant in writing, usually
giving the reasons for disapproval and indi-
cating how corrections may be made. Appli-
cant is given a period of one (1) month within
which to make the necessary corrections. Fail-
ure to correct a defect as required results in non-
acceptance for defensive publication, and in
resumption of the prosecution of the applica-
tion by the Office in its regular turn.

In those instances, however, where the sub-
ject matter is not suitable for publication, the
request may be disapproved by the Examiner
without explanation. Under these circum-
stances, the Examiner's letter is first submitted
to the Group Director for approval.

Petition may be taken to the Commissioner
from the disapproval of a request for defen-
sive publication.

Where the request is apparently fatally de-
fective and involves subject matter not con-
sidered suitable for publication, for example.
advertising, frivolous, lacking utility, etc., or is
clearly anticipated by readily available art.
the Examiner should generally examine the
application and prepare a complete Office ac-
tion when notifying applicant.

##### D. Formal Requirements of a Defensive Publication Application

Correction is required by the Examiner of
informalities listed by the Application Branch
and by the Draftsman before approval of the
request for defensive publication. Informali-

ties of the drawing are listed on the Notice of
Informal Patent Drawings and defects of the
application are noted on the Notice of Informal
Patent Application. A letter notifying an ap-
plicant of the informalities in a request for de-
fensive publication should end with the follow-
ing paragraphs:

"The request for defensive publication has
not been approved in view of the noted infor-
malities. APPLICANT IS GIVEN ONE (1)
MONTH WITHIN WHICH TO MAKE THE
CORRECTIONS NECESSARY FOR PUB-
LICATION.

Failure to respond within the set period will
result in resumption of the prosecution of the
application in the normal manner."

Where the heading "Defensive Publication
Abstract" has been omitted, it is inserted by
Examiner's Amendment, as are other correc-
tions to the abstract. The Examiner has the au-
thority to add to the abstract reference numerals
of the figure selected for the O.G., and to
designate a figure of the drawing for printing
in the O.G., or to change the selection made
by applicant by Examiner's Amendment.

Informalities noted by the Draftsman on the
Notice of Informal Patent Drawings should be
corrected where appropriate and should be
handled as follows: The Examiner notes in pen-
cil in the left margin of the drawing the num-
ber of the figure selected for defensive publica-
tion in the O.G. and returns the drawing with
the file to the Draftsman for further considera-
tion in view of the request under Rule 139.
Although the selected figure itself must meet all
the drawing standards, the Draftsman may
waive requirements as to the remaining figures
which need be formal only to the extent of
being sufficiently clear for reproduction. The
Draftsman will note on the drawing and all
copies of the Notice of Informal Patent Draw-
ings "Approved for Defensive Publication
Only". (If the application is later passed to
issue, all drawing informalities must be cor-
rected ). If the drawing correction requires
authority from the applicant, the Examiner
notifies him in writing that the request under
Rule 139 is disapproved until authorization for
correction is received.

##### E. Preparation of an Application for Defensive Publication

After determining that the application is
acceptable for defensive publication the Exam-
iner indicates which papers, if any, are to be
entered. Amendments accompanying the request
are not entered until approved by the Examiner.
If filed after receipt of the request, amend-
ments will be placed in the file, but will not be

entered unless the subject matter of the amend-
ment is in response to a requirement by the
Examiner.

The designated spaces on the face of the file
jacket for class, subclass, claim for foreign
priority and prior United States application
data are appropriately completed.

The Defensive Publication Retention Label
identifies Defensive Publication Applications
only and is affixed by the Examiner in the space
on the file jacket reserved for the retention label.
Issue and Gazette Branch complete the date of
publishing and O.G. citation of the Defensive
Publication Retention Label.

In the spaces titled "Prep. for Issue" and
"Examined and Passed for Issue" the word
"Issue" is changed to-Def. Publ .- by the Ex-
aminer before signing. (The clerk's signature
is not necessary).

The "blue issue" slip is used on defensive
publication applications and is completed in the
usual manner except that in the space desig-
nated for the Patent Number the Examiner
writes "Defensive Publication". Cross refer-
ences are designated only in those subclasses
where the Examiner believes the subject matter
will be of significant interest to warrant it.

With respect to the drawings the procedure
is the same as for allowance and the Examiner
fills in the appropriate spaces on the left mar-
gin, in the Draftsman's "AApproved" stamp
area.

### F. Citation of Frior Art in a Defensive Publication Application

Since the defensive publication procedure
makes the disclosure of an application avail-
able to the public, usually before it or any con-
tinuing application is patented, citation of
prior art under Rule 291 by any person or party
is accepted for consideration in the event ex-
amination is subsequently conducted. Such ci-
tation is endorsed on the file jacket "Contents"
by the Record Room, for the convenience of
the Examiner when preparing the applica-
tion or a continuing application of such an
application for allowance.

### G. Defensive Publication Application Interferences

During the five year period from its earliest
U.S. effective filing date, interferences may
be declared between defensive publication ap-
plications and other applications and/or pat-
ents in accordance with existing interference
rules and procedures.

When making the interference search, the
Examiner inspects the prints or brief cards
of those ' defensive publication applications

which have not become abandoned. Where the
claims of a defensive publication application
recite substantially the same subject matter
as the allowed claims, the allowed claims should
be suggested for interference purposes to the
defensive publication application if these
claims would be allowable therein.

Abandonment of a defensive publication ap-
plication will be stayed during the period be-
ginning with the suggestion of claims or the
filing of claims copied from a patent and end-
ing with the termination of the interference
proceedings or the mailing of a decision re-
fusing the interference.

Termination of the interference in favor of
the defensive publication application would
render the express abandonment ineffective but
would not result in the issuance of an enforce-
able patent. The Examiner cancels by Exam-
iner's Amendment all the claims in the case
except those awarded to applicant and sends the
case to issue. The Notice of Allowance in these
cases will be accompanied by a statement in-
forming the applicant that when the issue
fee is remitted, a disclaimer of the entire term
of the patent to be granted, must be included
in accordance with 35 U.S.C. 253.

711.06(a) Citation and Use of Ab-
stracts, Abbreviatures and
Defensive Publications as
References [R-17]

It is important that abstracts, abbreviatures
and defensive publications (O.G. Defensive
Publication and Defensive Publication Search
Copy) be referred to as publications and not
as patents or applications. These printed pub-
lications are cited as prior art under 35 U.S.C.
102(a) or 102(b) effective from the date of
publication in the Official Gazette.

An application or portion thereof from which
an abstract, abbreviature or defensive publica-
tion has been prepared, in the sense that the
application is evidence of prior knowledge, may
be used as a reference under 35 U.S.C. 102(a).
effective from the actual date of filing in the
United States.

These publications may be used alone or in
combination with other prior art in rejecting
claims under 35 U.S.C. 102 and 103.

Abstracts, Abbreviatures and Defensive Pub-
lications are listed with Other References in the
citation thereof as follows:

(a) Abstracts and Abbreviatures
Brown, (abstract or abbreviature) of Serial
No.
filed
published
in
O.G.
on
(list classification).

(b) The O.G. defensive publication

Jones, Def. Pub, of Serial No.

filed
published in

O.G.
en
(list classi-
fication).

(c) Search Copy defensive publication ; (where
a disclosure relied on is in the Search Copy
but not in the O.G. publication)

Jones, Def. Pub. Search Copy of Serial

filed
pub-
No.

O.G.
on
lished in
(list classification).

(d) Applications or designated portions thereof
abstracts, abbreviatures and defensive pub-
lications

Jones, Application Serial No.

filed
laid open to public in-

as noted at
spection on
O.G.
(portion of appli-
cation relied on) (list classification) .

#### 712 Abandonment for Failure To Pay Issue Fee [R-17]

Rule 316. Application abandoned for failure to pay
issue fee. (a) If the fee specified in the notice of al-
lowance is not paid within three months from the date
of the notice the application will be regarded as aban-
doned. Such an abandoned application will not be
considered as pending before the Patent Office.

(b) If the issue fee or portion thereof specified in the
notice of allowance is not timely paid but is submitted.
with the fee for delayed payment, within three months
of its due date with a verified showing of sufficient
cause for the late payment, it may be accepted by the
Commissioner as though no abandonment had ever
occurred.

Rule 317. Delayed payment of balance of the issue
fec; lapsed patents. Any remaining balance of the
issue fee is to be paid within three months from the
date of notice thereof and, if not paid, the patent lapses
at the termination of the three-month period. If this
balance is not timely paid but is submitted, with the
fee for delayed payment, within three months of its
due date with a verified showing of sufficient cause for
the late payment, it may be accepted by the Commis-
sioner as though no lapse had ever occurred.

An application abandoned by reason of fail-
ure to pay the issue fee was formerly referred to
as a forfeited application.

When the three months' period within which
the issue fee might have been paid has expired,
the file is returned by the Issue and Gazette
Branch to the Examining Group. Certain cler-

ical operations are performed and the file and
drawing are forwarded to the Abandoned Files
Unit. When the issue fee is not paid and the
application is abandoned, proceedings are ter-
minated as of the date the issue fee was due.
The application is abandoned on that date (but
if the issue fee is later accepted, on petition, the
application is in a sense revived). During the
three month period following such abandon-
ment, it is possible to petition the Commissioner
to have the application issued as a patent. Such
petition must be supported by a verified show-
ing of sufficient cause for the late payment, and
accompanied by the proper issue fee and the fee
for late payment. If such a petition accom-
panied by the required fees is not filed within
the three month period following the abandon-
ment (six months after the date of the notice of
allowance) and granted, such abandoned appli-
cation cannot be revived. In this respect an
abandoned application that has passed through
the six months' period indicated in Rule 316
differs in status from an application that has be-
come abandoned under the provisions of Rules
135 and 136 in that the latter may be revived
under the provisions of Rule 137.

#### 713 Interviews

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

## 713.01 General Policy, How Con- ducted [R-17]

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

Interviews are permissible on any working
day except during periods of overtime work.

An interview should normally be arranged
for in advance, as by letter, telegram or phone
call, in order to insure that the Primary Exam-
iner and/or the Examiner in charge of the ap-
plication will be present in the Office. When a
second Art Unit is involved (Patentability Re-
port), the availability of the second Examiner
should also be checked. (See 705.01(f).) An

713.01

appointment for interview once arranged
should be kept. Many applicants and attorneys
plan trips to Washington in reliance upon such
appointments. When, after an appointment has
been made, circumstances compel the absence
of the examiner or examiners necessary to an
effective interview, the other party should be
notified immediately so that substitute arrange-
ments may be made. When a telephone call is
made to an Examiner and it becomes evident
that a lengthy discussion will ensue or that the
Examiner needs time to restudy the situation,
the call should be terminated with an agree-
ment that the Examiner will call back at a speci-
fied time. Such a call and all other calls origi-
nated by the Examiner may be handled through
the FTS ( Federal Telecommunications System)
even though a collect call had been authorized.
It is helpful if amendments include the complete
telephone number with area code and extension.
preferably near the signature of the writer.
The unexpected appearance of an attorney or
applicant requesting an interview without any
previous notice to the Examiner may well jus-
tify his refusal of the interview at that time,
particularly in an involved case. An Examin-
er's suggestion of allowable subject matter may
justify his indicating the possibility of an in-
terview to accelerate early agreement on allow-
able claims.

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

The Examiner should not hesitate to state, if
such be the case, that claims presented for con-
sideration at the interview require further
search and study. Nor should the Examiner
hesitate to conclude an interview when it ap-
pears that no common ground can be reached
nor when it becomes apparent that the appli-
cation requires further amendment or an addi-
tional action by the Examiner.

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

During an interview with an applicant who
is prosecuting his own case and is not familiar
with Office procedure the Examiner may make
suggestions that will advance the prosecution

of this case: this lies wholly within his discre-
tion. Too much time, however, should not be
allowed for such interviews.

To offset any increased rigor of prosecution
(under the procedure effective July 1, 1964),
Examiners may grant one interview after final
rejection. See 713.09.

Where the response to a first complete action
includes a request for an interview or a tele-
phone consultation to be initiated by the exam-
iner, or where an out-of-town attorney under
similar circumstances requests that the exam-
iner defer taking any further action on the case
until the attorney's next visit to Washington
(provided such visit is not beyond the date
when the Office action would normally be
given), the examiner, as soon as he has consid-
ered the effect of the response, should grant
such request if it appears that the interview or
consultation would result in expediting the case
to a final action.

Where agreement is reached as a result of an
interview, applicant's representative should be
advised that an amendment pursuant to the
agreement should be promptly submitted. If
the amendment prepares the case for final ac-
tion, the examiner should take the case up as
special. If not, the case should await its turn.

Consideration of a filed amendment may be
had by hand delivery of a duplicate copy of said
amendment.

Early communication of the results of the
consideration should be made to applicant; if
requested, indicate on attorney's copy any agree-
ment ; initial and date both copies.

Although entry of amendatory matter usu-
ally requires actual presence of the original
paper, examiner and clerical processing should
proceed as far as practicable based on the dupli-
cate copy. The extent of processing will depend
on each amendment.

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

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

# 713.02 Interviews Prior to First Offi- cial Action

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

SEARCHING IN GROUP

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

# EXPOUNDING PATENT LAW

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

## 713.03 Interview for "Sounding Out" Examiner Not Permitted

Interviews that are solely for the purpose of
"sounding out" the Examiner, as by a local at-
torney acting for an out-of-town attorney,
should not be permitted when it is apparent that
any agreement that would be reached is condi-
tional upon being satisfactory to the principal
attorney.

# 713.04 Substance of Interview Must Be Made of Record

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

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

This is further brought out by the following
Rule :

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

To insure that any mutually acceptable con-
clusions reached at an interview are understood
by both parties, a memorandum summarizing

these conclusions and the significance of any
exhibits considered or demonstrations made
should be prepared in duplicate and signed by
both parties to the interview, and a copy should
be retained by each. The copy retained by the
examiner will be kept in the application file
until prosecution is completed. Such proce-
dure will not, however, relieve applicant of his
responsibility under the second paragraph of
Rule 133.

In those cases where an interview is had but
no agreement is reached, the examiner should
place an informal memorandum in the file to
this effect. The memorandum should be suffi-
ciently complete to make clear to others the
issues resolved and/or discussed in the inter-
view.

Some Examiners prepare, for their own in-
formation, informal notes setting forth what
occurred at the interview. These informal
notes do not become an official part of the
record. A convenient arrangement is to make
the notes on 4 by 6 cards which may be re-
tained with the file wrapper by means of the
slits in the flap. All notes should be removed
from the file at the time of allowance.

The memoranda discussed above are not an
official part of the record, and should be re-
moved from the file if and when the case is
passed to issue.

EXAMINER TO CHECK FOR ACCURACY

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

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

# 713.05 Interviews Prohibited or Granted, Special Situations

Saturday interviews, see 713.01.

Except in unusual situations, no interview is
permitted after the brief on appeal is filed or
after a case has been passed to issue.

# EXAMINATION OF APPLICATIONS

713.05

An interview may be appropriate before ap-
plicant's first response when the Examiner has
suggested that allowable subject matter is
present or where it will assist applicant in judg-
ing the propriety of continuing the prosecution.

Patent Office employees are forbidden to hold
either oral or written communication with a

disbarred attorney regarding an application
unless it be one in which said attorney is the
applicant. See 105.

Interviews are frequently requested by per-
sons whose credentials are of such informal
character that there is serious question as to
whether such persons are entitled to any infor-

mation under the provisions of Rule 14. In
general, interviews are not granted to anyone
who lacks proper authority from the applicant
or attorney of record in the form of a paper
on file in the case. A. MERE POWER TO
INSPECT IS NOT SUFFICIENT AU-
THORITY FOR GRANTING AN INTER-
VIEW INVOLVING THE MERITS OF
THE APPLICATION.

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

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

Interviews normally should not be granted
unless the requesting party has authority to
bind the principal concerned.

The availability of personal interviews in the
"Conference Period", which is the time between
the filing of applicant's thorough first response
and a concluding action by the examiner, for at-
torneys resident or frequently in Washington
is obvious. For others more remote, telephone
interviews may prove valuable. However, pres-
ent Office policy places great emphasis on tele-
phone interviews initiated by the Examiner.
For this reason, it is no longer deemed neces-
sary for an attorney to request a telephone
interview as specified in the old Optimum Ex-
amining Procedure memos. See 408.

The Examiner, by making a telephone call,
may be able to suggest minor, probably quickly
acceptable changes which would result in
allowance. If there are major questions or
suggestions, the call might state them concisely,
and suggest a further telephone or personal
interview, at a prearranged later time, giving
applicant more time for consideration before
discussing the points raised.

For an interview with an examiner who does
not have negotiation authority, arrangements
should always include an examiner who does
have such authority, and who has familiarized
himself with the case, so that authoritative
agreement may be reached at the time of the
interview.

# GROUPED INTERVIEWS

For attorneys remote from Washington who
prefer personal interviews, the grouped inter-

view practice is effective. The cases they wish
to discuss may include some applications which
will not be up for action for many months. If
in any such case there is a prearranged inter-
view, with agreement to file a prompt supple-
mental amendment putting the case as nearly
as may be in condition for concluding action,
prompt filing of the supplemental amendment
gives the case special status, and brings it up
for immediate special action.

# 713.06 No Inter Partes Questions Dis- cussed Ex Parte

The Examiner may not discuss inter partes
questions es parte with any of the interested
parties. For this reason, the telephone number
of the Examiner should not be typed on Deci-
sions on Motions or any other interference
papers. See 1111.01.

## 713.07 Exposure of Other Cases

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

## 713.08 Demonstration, Exhibits, Models

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

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

## 713.09 Finally Rejected Application

Normally, one interview after final rejection
is permitted. However, the intended purpose
and content of the interview must be presented
briefly, either orally or in writing. With the
approval of the Primary Examiner, an inter-
view may be granted if the Examiner is con-
vinced that disposal or clarification for appeal

may be accomplished with only nominal further
consideration. Interviews merely to restate
arguments of record or to discuss now limita-
tions which would require more than nominal
reconsideration or new search should be denied.
See 714.18.

713.10 Interview Preceding Filing
Amendment Under Rule 312

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

Requests for interviews on cases already
passed to issue should be granted only with
specific approval of the Group Manager upon
a showing in writing of extraordinary circum-
stances.

## 714 Amendments, Applicant's Action

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

See also sections 1207 and 1211.

### NO APPEAL FILED

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

(1) the claims, if amended as proposed, would
not avoid any of the rejections set forth in the
last Office action, and thus the amendment
would not place the case in condition for allow-
ance or in better condition for appeal,

(2) the claims, if amended as proposed,
would avoid the rejection on indefiniteness but
would not avoid the rejection on the references.
The amendment will be entered upon the filing
of an appeal,

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

(4) since the amendment presents additional
claims without canceling any finally rejected
claims it is not considered as placing the applica-
tion in better condition for appeal; Ex parte
Wirt, 1905 C.D. 247 : 117 O.G. 599.

Applicant should be notified, if it is a fact,
that certain portions of the amendment would
be acceptable as placing some of the claims in
better form for appeal or comply with objec-
tions or requirements as to form, if a separate
paper were filed containing only such amend-
ments. Similarly, if the proposed amendment
to some of the claims would render them allow-
able, applicant should be so informed. This is
helpful in assuring the filing of a brief con-
sistent with the claims as amended. A state-
ment that the final rejection stands and that the
statutory period runs from the date of the final
rejection is also in order.

Form letter POL-303 should be used to
acknowledge receipt of the first response only

from applicant after final rejection where such
response is also prior to filing of a notice of
appeal. Form letter POL 309 should be used
to notify applicant of non-entry or disposition
of: (1) a second or subsequent response after
final rejection but before appeal and (2) any
response with or after appeal. These forms
have been devised to advise applicant of the
disposition of the proposed amendments to the
claims and of the effect of any argument or af-
fidavit not placing the applicantion in condition
for allowance or which could not be made al-
lowable by a telephone call to clear up minor
matters.

If no appeal has been filed within the statu-
tory period for response and no amendment has
been submitted to make the case allowable or
which can be entered in part (see 714.20), the
case stands abandoned.

## FINAL ACTION AND PRE-APPEAL

The prosecution of an application before the
examiner should ordinarily be concluded with
the final action. However, one personal inter-
view and one written response by applicant may
be entertained after such final action if circum-
stances warrant. Thus, only one request by ap-
plicant for a personal interview after final
should be granted, but in exceptional circum-
stances, a second personal interview may be
initiated by the Examiner if in his judgment
this would materially assist in placing the ap-
plication in condition for allowance.

Any amendments submitted under Rule 116
(a) and Rule 116(b) for purposes of appeal
should be presented in the first response after
final action and will be considered; if any
amendments are submitted after the Examiner's
reply to such first response, they should be re-
fused entry as not warranted at this stage of
prosecution, even though such amendments
allegedly present rejected claims in better condi-

tion for appeal. (See 1207.) Similarly, no affi-
davit should be considered if presented later
than with the first response after final unless a
showing is made under Rule 116(b). How-
ever, if an affidavit is presented with or as a first
response after final and prior to a Notice of
Appeal it should be entered and considered
without requiring a showing under Rule 116(b).

The practice will be continued of advising
applicant by means of the recently introduced
form letter (POL-303) as to the disposition of
proposed amendments to the claims and as to
the effect of any argument or affidavit sub-
mitted in the first response after final action.

If a response subsequent to the first response
after final action is received before appeal and
which on its face clearly places the application
in condition for allowance, it should be entered
and a notice of allowability (POL-327)
promptly sent to applicant ; if such subsequent
response does not on its face place the applica-
tion in condition for allowance, it should not
be considered further (unless, in the examiner's
judgment, there are only minor matters which
could be readily cleared up in a telephone inter-
view leading to a notice of allowance) and
should be refused entry. A form letter (POL-
309) will be used for notification that such
subsequent responses do not place the applica-
tion in condition for allowance.

The first request for extension of the short-
ened statutory period for reply after final ac-
tion, under Rule 136(b), will be considered by
the Primary Examiner; petitions for further
extensions will be decided by the Group
Director.

It should be noted that, under Rule 181 (f),
the filing of a Rule 181 petition will not stay
the period for reply to an Examiner's action
which may be running against an application.
See section 1207 for appeal and post-appeal
procedure.

714.16

# 714.14 Amendments After Allowance of All Claims [R-21]

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

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

See section 607 for additional fee require-
ments.

## 714.15 Amendment Received in Ex- amining Group After Mailing of Notice of Allowance [R- 21]

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

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

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

After an applicant has been notified that the
claims are all allowable, further prosecution of
the merits of the case is a matter of grace and
not of right (Ex parte Quayle, 1935 C.D. 11;
453 O.G. 213). To this extent the practice

affecting the status of an amendment received
in the Office on the date of mailing the notice
of allowance, as set forth in Ex parte Miller,
1922 C.D. 36; 305 O.G. 419, is modified.

## 714.16 Amendment After Notice of Allowance, Rule 312 [R-21]

Rule 312. Amendments after allowance. Amendments
after the notice of allowance of an application will
not be permitted as a matter of right. However, such
amendments may be made if filed not later than the
date the issue fee is paid, on the recommendation of
the primary examiner, approved by the Commissioner,
without withdrawing the case from issue.

The Commissioner has delegated the ap-
proval of such recommendation to the Group
Directors.

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

After the Notice of Allowance has been
mailed, the application is technically no longer
under the jurisdiction of the Primary Ex-
aminer. He can however, make Examiner's
Amendments (See section 1302.04) and has au-
thority to enter Order 3311 amendments submit-
ted after Notice of Allowance of an application
which embody merely the correction of formal
matters in the specification or drawing, or for-
mal matters in a claim without changing the
scope thereof, or the cancellation of claims from
the application, without forwarding to the
Group Director for approval.

Amendments other than these require ap-
proval by the Group Director. He also
establishes Group policy with respect to the
treatment of Order 3311 amendments directed
to trivial informalities which seldom affect sig-
nificantly the vital formal requirements of any
patent : namely. (1) that its disclosure be ade-
quately clear, and (2) that any invention pres-
ent be defined with sufficient clarity to form an
adequate basis for an enforceable contract.

Consideration of an amendment under Rule
312 cannot be demanded as a matter of right.
Prosecution of a case should be conducted be-
fore, and thus be complete including editorial
revision of the specification and claims at the
time of the Notice of Allowance. However.
where amendments of the type noted are shown
(1) to be needed for proper disclosure or pro-
tection of the invention, and (2) to require no
substantial amount of additional work on the
part of the Office, they may be considered and,
if proper, entry may be recommended by the
Primary Examiner.

The requirements of Rule 111 (c) (section
714.02) with respect to pointing out the patent-
able novelty of any claim sought to be added or

714.16(a)

amended, apply in the case of an amendment
under Rule 312, as in ordinary amendments.
See sections 718.04 and 713.10 regarding inter-
views. As to amendments affecting the dis-
closure, the scope of any claim or that add a
claim, the remarks accompanying the amend-
ment must fully and clearly state the reasons on
which reliance is placed to show : (1) why the
amendment is needed; (2) why the proposed
amended or new claims require no additional
search or examination; (3) why the claims are
patentable and, (4) why they were not earlier
presented.

NOT To BE USED FOR CONTINUED PROSECUTION

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

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

See sections 607 and 714.16 (c) for additional
fee requirements.

## 714.16(a) Amendments Under Rule 312, Copied Patent Claims [R-21]

See section 1101.02(g) for the procedure to
be followed when an amendment is received
after notice of allowance which includes one or
more claims copied or substantially copied from
a patent.

The entry of the copied patent claims is not
a matter of right. See section 714.19 item (4).
See sections 607 and 714.16(c) for additional
fee requirements.

# 714.16(b) Amendment Under Rule 312 Filed With a Motion Under Rule 231 [R-21]

Where an amendment filed with a motion
under Rule 231 (a) (3) applies to a case in issue,

the amendment is not entered unless and until
the motion has been granted. See section
1105.03.

# 714.16(c) Amendment Under Rule 312, Additional Claims [R-21]

If the application was filed on or after Octo-
ber 25, 1965, and the amendment under Rule 312
adds claims (total and independent) in excess
of the number previously paid for, additional
fees are required. The amendment is not con-
sidered by the Examiner unless accompained by
the full fee required. See section 607 and 35
U.S.C. 41.

# 714.16(d) Amendments Under Rule 312, Handling [R-21]

AMENDMENTS NOT UNDER ORDER 3311

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

The amendment is PROMPTLY considered
by the Examiner who indicates whether or not
its entry is recommended by writing "Enter-
312", "Do Not Enter" or "Enter In Part"
thereon.

If the amendment is favorably considered, it
is entered and a notice of entry (POL-271) is
prepared. No "Entry Recommended under
Rule 312" stamp is required on the amendment.
or on the notice of entry in view of the use of
form (POL-271). The Primary Examiner
indicates his recommendation by stamping and
signing his name on the notice of entry form
(POL-271).

If the Examiner's recommendation is com-
pletely adverse, a report giving the reasons for
non-entry is typed on the notice of disapproval
(POL-271) and signed by the Primary Exam-
iner.

# 714.18

The Sle, drawing, and unmailed notices
are forwarded to the Group Director for con-
sideration, approval, and mailing.

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

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

See sections 607 and 714.16 (c) for additional
fee requirements.

# AMENDMENTS UNDER ORDER 3311

The Examiner indicates approval of amend-
ments concerning merely formal matters by
writing "Enter-3311" thereon. Such amend-
ments do not require submission to the Group
Director prior to entry. See section 714.16. The
notice of entry ( POL-271) is date stamped and
mailed by the Examining Group. If such
amendments are disapproved either in whole or
in part, they are handled like those not under
Order 3311.

# 714.16(e) Amendments Under Rule 312, Entry in Part [R-2]]

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

The Examiner should then submit a report
(POL-271) recommending the entry of the ac-
ceptable portion of the amendment and the non-
entry of the remaining portion together with
his reasons therefore. The claims entered
should be indicated by number in this report.

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

If the application was filed on or after Octo-
ber 25, 1965, entry in part is not recommended
unless the full additional fee required, if
any, accompanies the amendment. See sections
607 and 714.16 (c).

# 714.17 Amendment Filed After the Pe- riod for Response Has Expired [R-21]

When an application is not prosecuted
within the period set for response and thereafter

an amendment is filed, such amendment shall
be endorsed on the file wrapper of the applies-
tion, but not formally entered. The Examiner
shall immediately notify the applicant, by
form letter POL-327, that the amendment was
not filed within the time period and therefore
cannot be entered and that the application is
abandoned. See section 711.02.

# 714.18 Entry of Amendments [R- 21]

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

All amendments received in the clerical sec-
tions are processed and with the applications
delivered to the Supervisory Primary Examiner
for his review and distribution to the Examiners.

Every mail delivery should be carefully
screened to remove all amendments responding
to a final action in which a time period is run-
ning against the applicant. Such amendments
should be processed within the next 24 hours.

The purpose of this procedure is to ensure
uniform and prompt treatment by the Exam-
iners of all cases where the applicant is await-
ing a reply to a proposed amendment after final
action. By having all of these cases pass over
the Supervisory Primary Examiner's desk, he
will be made aware of the need for any special
treatment, if the situation so warrants. For
example, the Supervisory Primary Examiner
will know whether or not the Examiner in each
case is on extended leave or otherwise incapable
of moving the case within the required time
periods (5 or 3 days; see section 714.13). In
cases of this type, the applicant should receive
a Patent Office communication in sufficient time
to adequately consider his next action if the case
is not allowed. Consequently, the clerical han-
dling will continue to be special when these
cases are returned by the Examiners to the
clerical sections.

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

When several amendments are made in an ap-
plication on the same day no particular order
as to the hour of the receipt or the mailing of
the amendments can be assumed, but considera -

tion of the case must be given as far as pos-
sible as though all the papers filed were a com-
posite single paper.

After entry of the amendment the applica-
tion is "up for action." It is placed on the
Examiner's desk, and he is responsible for its
proper disposal. The Examiner should imme-
diately inspect the amendment as set forth in
section 714.05. After inspection if no immediate
or special action is required, the application
awaits re-examination in regular order.

Amendments or other papers filed in cases
before the Law Examiner should be promptly
forwarded to him.

# 714.19 List of Amendments, Entry Denied [R-21]

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

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

(a) All claims have been allowed,

(b) All claims have been finally rejected ( for
exceptions see sections 714.12, 714.13, and
714.20(4) ),

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

3\. A patent claim suggested by the Ex-
aminer and not presented within the time
limit set or a reasonable extension thereof.
unless entry is authorized by the Commis-
sioner. See section 1101.02(f).

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

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

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

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

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

9\. An amendment in a case no longer within
the Examiner's jurisdiction with certain ex-

ceptions in applications in issue, except on ap-
proval of the Commissioner. See section 714.16.

10\. Amendments to the drawing held by the
Examiner to contain new matter are not en-
tered until the question of new matter is set-
tled. This practice of non-entry because of
alleged new matter, however, does not apply
in the case of amendments to the specification
and claims.

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

12\. Amendments not in permanent ink.
Amendments on so-called "easily erasable
paper." See section 714.07.

13\. In an application filed before October 25,
1965, an amendment filed before the first ac-
tion increasing the number of claims when the
total of claims would be in excess of those sup-
ported by the filing fee. See section 714.10.

14\. In an application filed on or after October
25, 1965, an amendment presenting claims (total
and independent) in excess of the number pre-
viously paid for, and

(a) not accompanied by any portion of the
fee required, or

(b) prior to the first Office action or not in
response to an Office action, and not accom-
pained by the full fee required, or

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

# 714.20 List of Amendments Entered in Part [R-21]

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

(1) An "amendment" presenting an un-
called-for and unnecessary substitute specifica-
tion along with amendatory matter, as amend-
ments to claims or new claims, should be
entered in part, rather than refused entry in
toto. The substitute specification should be
denied entry and so marked, while the rest of

the paper should be entered. The case as thus
amended is acted on when reached in its turn,
the applicant being advised that the substitute
specification has not been required and is not
necessary and therefore has not been entered,
and that any desired changes in the original
specification must be made by specific amend-
ments. See also Rule 125, and section 608.01 (q).

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

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

(3) In a case having some claims allowed
and others finally rejected, where an amend-
ment is received at or near the close of the
statutory period cancelling the finally rejected
claims and presenting one or more new ones
which the Examiner cannot allow, the amend-
ment, after the statutory period has ended, is
entered to the extent only of cancelling the
finally rejected claims. Of course, if any of
the new claims were, in the Examiner's opin-

714.23

ion, patentable, they too would be entered.
The applicant is notified that the new claims
which are held unpatentable have not been
admitted, and at the same time the case is
passed for issue. This procedure applies only
where there has been no appeal.

(4) Where all of the claims are under final
rejection and the amendment cancels these
claims and presents new ones, only some of
which are deemed allowable by the Examiner,
the same practice is followed as indicated in
(3), assuming no appeal has been taken.

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

(6) In an amendment accompanying a mo-
tion granted only in part, the amendment is en-
tered only to the extent that the motion was
granted. See 1108.

NOTE: The Examiner writes "Enter" in ink
and his initials in the left margin opposite the
enterable portions. [R-16]

714.21 Amendments Inadvertently En-
tered, No Legal Effect [R-16]

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

If it is to be retained in the file an amendatory
paper, even though not entered, should be given
a paper number and listed on the file wrapper
with the notation "Not Entered". See Rule 3,
714.25, for an instance of a paper which may
be returned.

# 714.22 Entry of Amendments, Direc- tions for [R-16]

Rule 121. Manner of making amendments. (a) Eras-
ures, additions, insertions, or alterations of the Office
file of papers and records must not be physically
entered by the applicant. Amendments to the applica-
tion (excluding the claims) are made by filing a paper
(which should conform to Rule 52), directing or re-
questing that specified amendments be made. The ex-
act word or words to be stricken out or inserted by said

amendment must be specified and the precise point
indicated where the deletion or insertion is to be made.

(b) Except as otherwise provided herein, a particu-
lar claim may be amended only by directions to cancel
or by rewriting such claim with underlining below the
word or words added and brackets around the word or
words deleted. The rewriting of a claim in this form
will be construed as directing the cancellation of the
original claim; however, the original claim number
followed by the parenthetical word "amended" must
be used for the rewritten claim. If a previously re-
written claim is rewritten, underlining and bracketing
will be applied in reference to the previously rewritten
claim with the parenthetical expression "twice
amended," "three times amended," etc., following the
original claim number.

(c) A particular claim may be amended in the man-
ner indicated for the application in Rule 121 (a) to the
extent of corrections in spelling, punctuation, and typo-
graphical errors. Additional amendments in this
manner will be admitted provided the changes are
limited to (1) deletions and/or (2) the addition of no
more than five words in any one claim. Any amendment
submitted with instructions to amend particular claims
but failing to conform to the provisions of paragraphs
(b) and (e) may be considered non-responsive and
treated accordingly.

(d) Where underlining or brackets are intended to
appear in the printed patent or are properly part of the
claimed material and not intended as symbolic of
changes in the particular claim, amendment by rewrit-
ing in accordance with paragraph (b) above shall be
prohibited.

(e) In reissue applications, both the descriptive por-
tion and the claims are to be amended as specified in
paragraph (s) above.

The term "brackets" set forth in Rule 121
means angular brackets, thus: [ ]. It does
not encompass and is to be distinguished from
parentheses ( ). Any amendment using par-
entheses to indicate cancelled matter in a claim
rewritten under Rule 121(b) may be held non-
responsive in accordance with Rule 121 (c).

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

The directions for the entry of an amend-
ment may be defective, as, inaccuracy in the
line designated, or lack of precision where the
word to which the amendment is directed oc-
curs more than once in the specified line. If it
is clear from the context what is the correct
place of entry, the amendatory paper will be
properly amended in the examining group,
and notation thereof, initialed in ink by the Ex-
aminer, who will assume full responsibility for
the change. will be made on the margin of the
amendatory paper. In the next Office action
the applicant should be informed of this altera-
tion in his amendatory paper and the entry of

the amendment as thus amended. He will also
be informed of the nonentry of an amendment
where defective directions and context leave
doubt as to the intent of applicant.

714.24 Amendment of Amendment

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

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

714.25 Discourtesy of Applicant or At-
torney

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

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

# 715 Swearing Back of Reference-Affi- davit Under Rule 131 [R-16]

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

(b) The showing of facts shall be such, in charac-
ter and weight, as to establish reduction to practice
prior to the effective date of the reference, or concep-
tion of the invention prior to the effective date of the

reference coupled with due diligence from said date to
a subsequent redaction to practice or to the thing at
the application. Original exhibits of drawings or ree-
ords, or photocopies theroof, mast accompany and form
part of the affidavit or their absence satisfactorily
explained.

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

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

Affidavits under Rule 181 may be used :

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

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

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

(1) Where reference publication date is
more than one year back of applicant's effective
filing date. Such a reference is a "statutory
bar".

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

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

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

(5) Where the reference is a prior U.S. pat-
ent to the same entity, claiming the same inven-
tion, the question involved is one of "double
patenting.'

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

Should it be established that the portion of
the patent disclosure relied on as the reference
was introduced into the patent application by
amendment and as such was new matter, the
date to be overcome by the affidavit is the date
of the amendment. In re Willien et al., 1985
C.D. 229; 454 O.G. 535.

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

## 715.01 Reference Claims Foreign Fil- ing Date

The effective date of a United States Patent
for use as a prior art reference is not affected
by the foreign filing date to which the patentee
may be entitled under 35 U.S.C. 119. In re
Hilmer, 833 O.G. 13, 149 USPQ 480 (CCPA
1966) ; Lily et al. v. Brenner, 153 USPQ 95
(C.A.D.C. 1967). The reference patent is effec-
tive as of the date the application for it was filed

in the United States (35 U.S.C. 102(e) and
103). Hazeltine Research, Inc. et al. v. Bren-
ner, 824 O.G. 8 (U.S. Supreme Court 1965).

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

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

716.06

# 715.01 (b) Reference and Application Have Common Assignee

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

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

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

## CO-AUTHORSHIP

Where the applicant is one of the co-authors
of a publication, cited against his application,
he is not required to file an affidavit under
Rule 131. The publication may be removed
as a reference by filing a disclaiming affidavit
of the other authors. Ex parte Hirschler, 110
U.S.P.Q. 384.

### 715.02 General Rule as to Generic Claims

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

# 715.03 Practice Relative to Chemical Cases

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

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

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

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

# MARKUSH TYPE GENUS CLAIM

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

## 715.04 Who May Make Affidavit

A. The Inventor.

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

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

## 715.05 Patent Claiming Same Inven- tion

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

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

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

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

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

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

## 715.07 Facts and Documentary Evi- dence

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

1\. As shown in attached sketches.

2\. As shown in attached blueprints.

3\. As indicated by accompanying model.

4\. As shown in attached photographs.

5\. As shown in reproductions of notebook
entries.

6\. If verbal disclosures were made instead
of the above, supporting statements by the wit-
ness will be acceptable.

7\. If the dates of the exhibits have been
removed or blocked off, the matter of dates can
be taken care of in the body of the oath.

The dates in the oath may be the actual dates
or, if the applicant does not desire to disclose
his actual dates, he may merely allege that the
acts referred to occurred prior to a specified
date.

A general allegation that the invention was
completed prior to the date of the reference is
not sufficient. Ex parte Saunders, 1883 C.D.
23; 23 O.G. 1224.

"If the applicant made sketches he should so
state, and produce and describe them; if the
sketches were made and lost, and their contents
remembered, they should be reproduced and
furnished in place of the originals. The same
course should be pursued if the disclosure was
by means of models. If neither sketches nor
models are relied upon, but it is claimed that
verbal disclosures, sufficiently clear to indicate
definite conception of the invention, were made
the witness should state as nearly as possible
the language used in imparting knowledge of
the invention to others." Ex parte Donovan,
1890 C.D. 109: 52 O.G. 309.

The affidavit must state FACTS and pro-
duce such documentary evidence and exhibits

in support thereof as are available to show
conception and completion of invention IN
THIS COUNTRY, the conception at least be-
ing at a date prior to the effective date of the
reference. Where there has not been reduction
to practice prior to the date of the reference,
the applicant must show diligence in the com-
pletion of his invention from a time just prior
to the date of the reference continuously up to
the date of an actual reduction to practice or
up to the date of filing of his application,
which constitutes a constructive reduction to
practice. Rule 131. In this connection, note
the following:

A conception of an invention, evidenced by
disclosure, drawings, and even a model, is not
a complete invention under the patent laws,
and confers no rights on an inventor, and has
no effect on a subsequently granted patent to
another, UNLESS HE FOLLOWS IT WITH
REASONABLE DILIGENCE BY SOME
OTHER ACT, such as an actual reduction to
practice or filing an application for a patent.
Automatic Weighing Mach. Co. v. Pneumatic
Scale Corp., Limited, 1909 C.D. 498: 139 O.G.
991.

Conception is the mental part of the inven-
tive act, but it must be capable of proof, as by
drawings, complete disclosure to another per-
son, etc. In Mergenthaler v. Scudder, 1897
C.D. 724; 81 O.G. 1417, it was established that
conception is more than a mere vague idea of
how to solve a problem; the means themselves
and their interaction must be comprehended
also.

The facts to be established under Rule 131
are similar to those to be proved in interfer-
ence. The difference lies in the way in which
the evidence is presented. If applicant dis-
agrees with a holding that the facts are in-
sufficient to overcome the rejection, his remedy
is by appeal from the continued rejection.

## 715.07(a) Diligence

Where conception occurs prior to the date of
the reference, but reduction to practice is after-
ward it is not enough merely to allege that ap-
plicant had been diligent. Ex parte Hunter,
1889 C.D. 218; 49 O.G. 733.

What is meant by diligence is brought out in
Christie v. Seybold, 1893 C.D. 515; 64 O.G.
1650. In patent law, an inventor is either dili-
gent at a given time or he is not diligent; there
are no degrees of diligence. A man may be
diligent within the meaning of the patent law
when he is doing nothing, if his lack of activity
is excused.

Note, however, that only diligence before re-
duction to practice is a material consideration.
The "lapse of time between the completion or
reduction to practice of an invention and the
filing of an application thereon" (Ex parte
Merz, 75 U.S.P.Q. 296) is not relevant to a
Rule 131 affidavit.

## 715.07(b) Interference Testimony

### Sometimes Used

In place of an affidavit the testimony of the
applicant in an interference may be sometimes
used to antedate a reference in lieu of a Rule 131
affidavit.

The part of the testimony to form the basis
of priority over the reference should be pointed
out. Ex parte Bowyer, 1939 C.D. 5; 505
O.G. 759.

## 715.07(c) Acts Relied Upon Must Have Been Carried Out in This Country

The affidavit must contain an allegation that
the acts relied upon to establish the date prior
to the reference were carried out in this country.
See 35 U.S.C. 104.

# 715.07(d) Disposition of Exhibits Submitted as Evidence to Support Facts

Exhibits, such as those filed as part of an
affidavit under Rule 131, that are too bulky to
be placed in the application file are retained in
the Examining Group until the case is finally
disposed of. When the case goes to issue (or
abandonment ) the exhibits are sent to the Model
and Receiving Room, notation to this effect
being made on the margin of the affidavit. See
608.03 (a).

# 715.08 Passed Upon by Primary Ex- aminer [R-19]

The question of sufficiency of affidavits under
Rule 131 should be reviewed and decided by a
Primary Examiner.

# 715.09 Seasonable Presentation [R-19]

Affidavits under Rule 131 must be seasonably
presented. Ex parte Berg, 1906 C.D. 36; 120
O.G. 903: Ex parte Romunder, 1910 C.D. 121:
157 O.G. 209; Ex parte Hale, 49 U.S.P.Q. 209:
Ex parte Bowyer, 1939 C.D. 5: 505 O.G. 759.

For affidavits under Rule 131 filed after ap-
peal see Rule 195 and section 1212.

# 716 Affidavits Traversing Rejections, Rule 132 [R-19]

Rule 132. Affidavita traversing grounds of rejection.
When any claim of an application is rejected on ref-
erence to a domestic patent which substantially shows
or describes but does not claim the invention, or on
reference to a foreign patent, or to a printed publi-
cation, or to facts within the personal knowledge of
an employee of the Office, or when rejected upon a
mode or capability of operation attributed to a refer-
ence, or because the alleged invention is held to be
inoperative or lacking in utility, or frivolous or in-
jurious to public health or morals, affidavits traversing
these references or objections may be received.

NOTE THAT RULE 132 IS NOT APPLI-
CABLE TO A REJECTION BASED ON A
U.S. PATENT WHICH CLAIMS THE RE-
JECTED INVENTION.

It is the responsibility of the Primary Ex-
aminer to personally review and decide whether
affidavits submitted under Rule 132 for the pur-
pose of traversing grounds of rejection, are re-
sponsive to the rejection and present sufficient
facts to overcome the rejection.

This rule sets forth the general policy of the
Office consistently followed for a long period
of time of receiving affidavits evidence tra-
versing rejections or objections, Ex parte
Gresselin, 1896 C.D. 39; 76 O.G. 1573. The enu-
meration of rejections in the rule is merely exem-
plary. All affidavits presented which do not
fall within or under other specific rules are to
be treated or considered as falling under this
rule.

Certain legal principles and standards have
been established respecting affidavit evidence.
Some are applicable to all affidavits, while
others are applicable only to particular types
of affidavits, as indicated below. The critical
factors and standards are summarized as an
aid or guide to the examiners in evaluating such
affidavits. Affidavits timely filed (i.e. before
final action or appeal) should be acknowledged
and commented upon in the action following
filing. See Sec. 707.02. If an affidavit is filed
later and entered (See Rule 195) similar action
should be taken.

The following criteria are applicable to all
affidavits submitted under this rule :

(1) Affidavits must be timely or seasonably
filed (i.e. before final rejection or appeal) to be
entitled to consideration. In re Rothermel et
al., 1960 C.D. 204: 755 O.G. 621. Affidavits
not timely filed must meet the requirements of
Rule 195.

(2) Affidavits must set forth facts, not merely
conclusions. In re Pike et al., 1950 C.D. 105;

633 O.G. 680. The facts presented in the aff-
davits must be pertinent to the rejection. In
re Renstrom 1949 C.D. 306; 624 O.G. 5. Other-
wise, the affidavits have no probative value.

(3) Affidavits should be scrutinized closely
and the facts presented weighed with care.
The affiant's interest is a factor which may be
considered, but the affidavit cannot be disre-
garded solely for that reason. In re McKenna
et al., 1953 C.D. 251; 674 O.G. 9; Bullard &
Co. v. Coe 1945 C.D. 13: 573 O.G. 547.

Rule 132 affidavits may be classified in five
groups, and such affidavits must conform, in
addition, to the established criteria and stand-
ards for the group into which they fall. These
groups and the applicable standards are:

## COMPARATIVE TESTS OR RESULTS

Affidavits comparing applicant's results with
those of the prior art must relate to the ref-
erence relied upon and not other prior art --
Blanchard v. Ooms 1946 C.D. 22; 585 O.G.
175 -, and the comparison must be with disclo-
sure identical (not similar) with that of the
reference. In re Tatincloux 1956 C.D. 102: 702
O.G. 964. Otherwise, the affidavits have no
probative value.

Where the comparison is not identical with
the reference disclosure, deviations therefrom
should be explained-in re Finley, 1949 C.D.
284; 624 O.G .262-and if not explained should
be noted and evaluated, and if significant, ex-
planation should be required. In re Arm-
strong 1960 C.D. 422: 759 O.G. 4. Otherwise,
the affidavits may be entitled to little weight.

Where the comparison shows unexpected re-
sults or advantages, it should be compared with
the application disclosure, since recitals of the
specification are controlling. Abbott v. Coe,
1940 C.D. 13; 512 O.G. 3. In re Rossi 1957
C.D. 130; 717 O.G. 214. Advantages not dis-
closed carry little or no weight in establishing
patentability.

Affidavits setting forth advantages and as-
serting that despite familiarity with the art.
the claimed subject matter was not obvious to
affiants, do not afford evidence of non-obvious-
ness, where the advantages relied upon are
merely those which would result from follow-
ing the teaching of the prior art. In re Hen-
rich 1959 C.D. 353: 747 O.G. 793.

## OPERABILITY OF APPLICANT'S DISCLOSURE

Since it is the Examiner's duty to pass upon
the operativeness of any invention which he is
called upon to examine he is free to express
his opinion on that question so long as he
gives reasons for his holding with clarity and

completeness. Therefore, he need not support
every rejection on inoperativeness with refer-
ences of affidavits. In re Quattlebaum 84
U.S.P.Q. 383.

Affidavits attempting to show that the struc-
ture deemed inoperative was seen in operation
by persons who vouch for its operability, are
insufficient. In re Perrigo, 1931 C.D. 512, 411
O.G. 644.

Where the invention involved is of such a
nature that it cannot be tested by known sci-
entific principles, theoretical arguments in af-
fidavit form are unacceptable, and the only
satisfactory manner of overcoming the rejec-
tion is to demonstrate the operability by con-
struction and operation of the invention.
Buck v. Ooms 1947 C.D. 33; 602 O.G. 177. In
re Chilowsky 1956 C.D. 155: 704 O.G. 213.

### INOPERABILITY OF REFERENCES

Since every patent is presumed valid (35
[T.S.C. 282), and since that presumption in-
cludes the presumption of operability -- Metro-
politan Eng. Co. v. Coe 1935 C.D. 54; 455 O.G.
3-Examiners should not express any opinion
on the operability of a patent. Therefore af-
fidavits attacking the operability of a patent
cited as a reference, though entitled to consid-
eration, should be treated, not as conclusive of
the factual matter presented, but rather as an
expression of opinion by an expert in the art.
In re Berry, 137 U.S.P.Q. 353. See also In
re Lurelle Guild 1953 C.D. 310: 677 O.G. 5.
Opinion affidavits need not be given any weight.
In re Pierce 1930 C.D. 34; 390 O.G. 265: In
re Reid 1950 C.D. 194; 635 O.G. 694.

Further, since in a patent it is presumed that
a process if used by one skilled in the art will
produce the product or result described therein,
such presumption is not overcome by a mere
showing that it is possible to operate within
the disclosure without obtaining the alleged
product. It is to be presumed also that skilled
workers would as a matter of course, if they
do not immediately obtain desired results, make
certain experiments and adaptations, within
the skill of the competent worker. The fail-
ures of experimenters who have no interest in
succeeding should not be accorded great weight.
Bullard v. Coe 1945 C.D. 13: 573 O.G. 547:
In re Michalek 1947 C.D. 458: 604 O.G. 223:
In re Reid 1950 C.D. 194: 635 O.G. 694.

Where the affidavit presented asserts inop-
crability in some features of the patent as to
which it was not relied upon, the matter is of
no concern. In re Wagner, 1939 C.D. 581: 407
O.G. 1041.

Where the affidavit asserts inoperability of
the process disclosed in the reference for pro-

## EXAMINATION OF APPLICATIONS

ducing the claimed product, which product is
fully disclosed in the reference, the matter is
of no concern. In re Attwood 1958 C.D. 204;
730 O.G. 790.

Where the affidavit presented asserts that the
reference relied upon is inoperative, it is ele-
mentary that the claims presented by appli-
cant must distinguish from the alleged in-
operative reference disclosure; therefore the
matter is of no concern. In re Crecelius 1937
C.D. 112: 474 O.G. 465. In re Perrine 1940
C.D. 465: 519 O.G. 520. In re Crosby 1947
C.D. 35: 595 O.G. 5.

Affidavit by patentee that he did not intend
his device to be used as claimed by applicant is
immaterial. In re Pio 1955 C.D. 59; 691 O.G.
454.

# COMMERCIAL SUCCESS

Affidavits submitting evidence of commercial
success can have no bearing in a case where
the patentability over the prior art is not in
doubt. In re Jewett et al 1957 C.D. 420; 724
O.G. 225. In re Troutman, 1960 C.D. 308;
757 O.G. 556.

Affidavits showing commercial success of a
structure not related to the claimed subject
matter has neither significance nor pertinence.
In re Kulieke 1960 C.D. 281; 756 O.G. 288.

Affidavits which attribute commercial suc-
cess to the invention "described and claimed"
or other equivalent indefinite language have
little or no evidenciary value. In re Troutman
1960 C.D. 308; 757 O.G. 556.

Where affidavits show commercial success it
must appear that such success resulted from
the invention as claimed. In re Hollingsworth
1958 C.D. 210; 730 O.G. 282. Otherwise the
affidavit showing is non-pertinent.

# SUFFICIENCY OF DISCLOSURE

Affidavits presented to show that the disclo-
sure of an application is sufficient to one skilled
in the art are not acceptable to establish facts
which the specification itself should recite. In
re Smyth 1951 C.D. 449; 651 O.G. 5.

Affidavits purporting to explain the disclo-
sure or to interpret the disclosure of a pending
application are usually not considered. In re
Oppenaner 1944 C.D. 557: 568 O.G. 393.

# 717 File Wrapper

## 717.01 Papers in File Wrapper [R-19]

Full details for processing file wrapper paper-
are given in the Manual of Clerical Procedures.

Papers that do not become a permanent part of
the record should not be entered on the "Con-
tents" of the file wrapper (jacket ). No paper
legally entered on the "Contents" should ever
be withdrawn or returned to applicant without
special authority of the Commissioner. Cer-
tain oaths executed abroad are returned but a
copy is retained in the file. See 604.04 (a).

# 717.01 (a) Arrangement of Papers in File Wrapper [R-19]

Until revision for allowance, the specifica-
tion, amendments and all other communications
from applicant are fastened to the left side (cen-
ter fold) of the file wrapper. They are in in-
verse chronological order: that is, the commu-
nication with the latest "Mail Room" date is on
top. A similar arrangement is followed on the
right side, where Office actions and other com-
munications from the Office are fastened, ex-
cept that the print is always kept on top for
the convenience of the Examiner.

Where amendments are submitted in dupli-
cate. the carbon copy is destroyed except where
the duplicate is received within the time pe-
riod for response and the original is late. In
this latter situation both copies are placed in
the file. The "original" (ribbon copy) is en-
tered with reference made to the carbon copy.

If a receipt of any paper filed in the Patent
Office is desired, it may be obtained by enclosing
with the paper a self-addressed post card iden-
tifying the paper. The Patent Office will stamp
the receipt date on the card and place it in the
outgoing mail.

The identifying data on the card should be
so complete as to match the paper with the ap-
plication or other document to which it is to be
associated. For example, the document should
be identified by the applicant's name (s), Serial
No., filing date, appeal number, interference
number, etc., and the paper should be identified
by specifying the type thereof, namely, affidavit,
amendment, appeal, application papers, brief.
drawings, fees, motions, supplemental oath or
declaration, petition, etc.

When papers for more than one document are
filed under a single cover a return addressed post
card should be attached to the paper for each
document for which a receipt is desired.

# 717.01(b) Prints [R-19]

The prints of the drawing are fastened in-
side the file wrapper by the Application
Branch, and shall always be kept on top. A

717.02

# MANUAL OF PATENT EXAMINING PROCEDURE

paper number is assigned by the Clerk of the
Group.

The prints shall always be kept on top of
the papers on the right of the file wrapper.

All prints and inked sketches subsequently
filed to be part of the record should be en-
dorsed with the date of their receipt in the
office and given their appropriate paper num-
ber.

## 717.02 Data Entered on File Wrapper [R-19]

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