1300

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1300 Allowance and Issue

1301
Substantially Allowable Case, Special

1302
Final Review and Preparation for Issue

1302.01
General Review of Disclosure

1302.02
Requirement for a Rewritten Specification

1302.03
Status Letter of Allowability, POL-327

1302.04
Examiner's Amendments and Changes

1302.04 (a)
Title of Invention

1302.04 (b)
Cancelation of Non-Statutory Claim

1302.04(c)
Cancellation of Claims to Non-Elected
Invention

1302.04 (d)
Cancellation of Claims Lost in Interfer-
ence

1302.04 (e)
Cancellation of Rejected Claims Follow-
ing Appeal

1302.04 (f)
Data of Copending Application Referred
to Should Be Brought up to Date

1302.04 (g)
Identification of Claims

1302.05
Correction of Drawing

1302.06
Prior Foreign Application

1302.07
Use of Retention Labels to Preserve Aban-
doned Companion Applications

1302.08
Interference Search

1302.09
Notations on File Wrapper

1302.10

Notations on Drawings and on Classification
(Issue) Slip

1302.11
Reference to Assignment Branch

1302.12
Listing of References

1302.13
Signing

1303
Notice of Allowance

1303.01
Amendment Received after Allowance

1303.02
Undelivered

1303.03
Not Withheld Due to Death of Inventor

1304
Withholding From Issue of "Secrecy Order"
Cases

1304.01
Amendments After D-10 Notice

1305

Jurisdiction

1306

Issue Fee

1307
Change in Classification of Cases Which are in
Issue

1308
Withdrawal From Issue

1308.01
Rejection After Allowance

1308.02
For Interference Purposes

1309
Issue of Patent

1303.01
"Printer Waiting" Cases

1309.02
Protest Against Issue

# 1301 Substantially Allowable Case, Special [R-24]

When an application is in condition for al-
lowance, except as to matters of form, the case
will be considered special and prompt action

taken to require correction of formal matters.
See § 710.02(b) paragraph (a).

# 1302 Final Review and Preparation for Issue

# 1302.01 General Review of Disclosure [R-24]

When an application is apparently ready for
allowance, it should be reviewed by the Ex-
aminer to make certain that the whole case
meets all formal requirements and particularly
that the brief summary of the invention and
the descriptive matter are confined to the in-
vention to which the allowed claims are di-
rected and that the language of the claims
finds clear support or antecedent basis in the
specification. Neglect to give due attention to
these matters may lead to confusion as to the
scope of the patent.

Frequently the invention as originally de-
scribed and claimed was of much greater scope
than that defined in the claims as allowed.
Some or much of the subject matter disclosed
may be entirely outside the bounds of the
claims accepted by the applicant. In such case
the Examiner should require the applicant to
modify his brief summary of the invention
and restrict his descriptive matter so as to be
in harmony with the claims. However valu-
able for reference purposes the Examiner may
consider the matter which is extraneous to the
claimed invention, patents should be confined
in their disclosures to the respective inventions
patented. (Rule 71.) Of course enough back-
ground should be included to make the inven-
tion clearly understandable. See §§ 608.01 (d)
and 608.01(e).

There should be clear support or antecedent
basis in the specification for the terminology
used in the claims. Usually the original claims
follow the nomenclature of the specification;
but sometimes in amending the claims or in
adding new claims, applicant employs terms
that do not appear in the specification. This
may result in uncertainty as to the interpreta-
tion to be given such terms. See § 601.01 (o).

Where a copending application is referred to
in the specification, the Examiner should as-
certain whether it has matured into a patent
or become abandoned and that fact or the pat-
ent number added to the specification.

<!-- PageFooter="Rev. 24, Apr. 1970" -->

<!-- PageBreak -->

<!-- PageHeader="1302.02" -->
<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

The claims should be renumbered as required
by Rule 126, and particular attention should
be given to claims dependent on previous
claims to see that the numbering is consistent.
See §§ 608.01 (j) and 608.01 (n).

The abstract should be checked for an ade-
quate and clear statement of the disclosure.
See § 608.01 (b).

The title should also be checked. It should
be as short and specific as possible. If a satis-
factory title is not supplied by the applicant,
the Examiner may change the title on or after
allowance. See §§ 606 and 606.01.

All pencil notes made by the Examiners
must be erased when the case is passed to issue.

The Mail Room receipt date of all amend-
ments should be reviewed to assure that they
were timely filed.

# 1302.02 Requirement for a Rewritten Specification [R-24]

Whenever interlineations or cancellations
have been made in the specification or amend-
ments which would lead to confusion and mis-
take, the Examiner should require the entire
portion of specification affected to be rewritten
before passing the case to issue. See Rule 125
in § 608.01 (q).

# 1302.03 Status Letter of Allowability, POL-327 [R-24]

Form POL-327 is used whenever an applica-
tion under final rejection has been placed in
condition for allowance as a result of a com-
munication from or an interview with applicant.

The date of the communication or interview
which resulted in the allowance and the name
of the person with whom the interview, if any,
was held should be included in the letter.

Immediately after determining that a POL
327 letter is necessary, the letter should be ef-
fected before preparing the application for
allowance. See § 714.13.

# 1302.04 Examiner's Amendments and Changes [R-24]

Except by formal amendment duly signed or
as hereinafter provided, no corrections, era-
sures, or interlineations may be made in the
body of written portions of the specification
or any other paper filed in the application for
patent. (See Rule 121.)

Correction of the following obvious errors
and omissions only may be made with pen by
the Examiner of the case who will then initial

the sheet margin and assume full responsibility
for the change. When correcting originally
filed papers, clean red ink must be used (not
blue or black ink).

1\. Misspelled words.

2\. Disagreement of a noun with its verb,

3\. Inconsistent "case" of a pronoun.

4\. Disagreement between a reference charac-
ter as used in the description and on the draw-
ing. The character may be corrected in the
description but only when the Examiner is
certain of the propriety of the change.

5\. Entry of "now Patent No. ____ " to iden-
tify a patent which has been granted on a
U.S. application referred to by Serial No. in
the specification.

6\. Other obvious minor grammatical errors
such as misplaced or omitted commas, improper
parentheses, quotation marks, etc.

7\. Obvious informalities in the application,
other than the ones noted above, or of purely
grammatical nature.

The fact that applicant is entitled under 35
U.S.C. 120 to an earlier U.S. effective filing
date is sometimes overlooked. To minimize
this possibility, the statement that, "This is a
division (continuation, continuation-in-part)
of Application Serial No. ____ , filed
"
should appear as the first sentence after the ab-
stract except in the case of design applications
where it should appear as set forth in § 1503.01.
Any such statements appearing elsewhere in the
specification should be relocated. The clerk in-
dicates the change for the printer in the appro-
priate margin when checking new applications
for matters of form.

Other obvious informalities in the applica-
tion may be corrected by the Examiner, but
such corrections must be by a formal Exam-
iner's Amendment, signed by the Primary Ex-
aminer, placed in the file, and a copy sent to
the applicant. The changes specified in the
amendment are entered by the clerk in the reg-
ular way.

The amendment or cancellation of claims by
formal Examiner's Amendment is permitted
when passing an application to issue where
these changes have been authorized by appli-
cant (or his representative) in a telephone or
personal interview. The Examiner's Amend-
ment should indicate that the changes were
authorized, the date and type (personal or
telephone) of interview, and with whom it was
held.

The Examiner's Amendment practice may be
used to make charges against deposit accounts
under special conditions. Such charges must
not exceed $50.00 for any one patent application.

An Examiner's Amendment can be used to
make a charge against a deposit account, pro-

<!-- PageFooter="Rev. 24, Apr. 1970" -->

<!-- PageBreak -->

<!-- PageHeader="ALLOWANCE AND ISSUE" -->
<!-- PageHeader="1302.04(f)" -->

vided prior approval is obtained from the
attorney or agent, in order to expedite the issu-
ance of a patent on an application otherwise
ready for allowance. When such an Exam-
iner's Amendment is prepared the prior ap-
proval is indicated by identification of the name
of the authorizing party, the date and type
(personal or telephone) or authorization, the
purpose for which the charge is made (drawing
correction, additional claims, etc.), and the de-
posit account number. Further identifying
data, if deemed necessary and requested by the
attorney, should also be included in the Exam-
iner's Amendment.

A change in the abstract may be made by
Examiner's Amendment.

Where a reference to the parent application
in an otherwise allowable Rule 147 divisional
case or streamlined continuation case has in-
advertently been omitted by the applicant, the
Examiner should insert the required reference
by Examiner's Amendment (see § 201.11).

References cited as being of interest by Ex-
aminers when passing an application to issue
will not be supplied to applicant. The refer-
ences will be cited as usual on form PO-892, a
copy of which will be attached to Examiner's
Amendment form POL-37.

Where an application is ready for issue ex-
cept for a slight defect in the drawing not
involving change in structure, the Examiner
will note in pencil on the drawing the addition
or alteration to be made. He will also prepare
an Examiner's Amendment indicating the
changes made and send the drawing to the
Draftsman for the required correction.

See also § 608.02(w).

No other changes may be made by any per-
son in any record of the Patent Office without
the written approval of the Commissioner of
Patents.

In reviewing the application all errors
should be carefully noted. It is not necessary
that the language be the best; it is, however,
essential that it be clear in meaning, and free
from errors in syntax. Any necessary Ex-
aminer's Amendment is usually made at the
time a case is being prepared for issue by the
Examiner. However, the need for such may
not be noted until after the proof of the patent
is read and the case is sent up to the Examiner
with a "printer waiting" slip (Form PO-97).
A copy of any formal Examiner's Amendment
is sent to applicant even if the application is
already in the printer's hands.

Examiners will not cancel claims on the basis
of an amendment which argues for certain
claims and, alternatively, purports to authorize

their cancellation by the Examiner if other
claims are allowed.

# 1302.04(a) Title of Invention [R-24]

Where the title of the invention is not spe-
cific to the invention as claimed, see § 606.01.

# 1302.04(b) Cancellation of Non-Stat- utory Claim [R-17]

When a case is otherwise in condition for
allowance the Examiner may cancel an obvi-
ously non-statutory claim such as one to "A
device substantially as shown and described."
Applicant should be notified of the cancella-
tion of the claim by an Examiner's Amend-
ment.

1302.04(c)
Cancellation of Claims to
Non-Elected Invention
[R-24]

See §§ 821.01 and 821.02.

1302.04(d)
Cancellation of Claim
Lost in Interference
[R-24]

See § 1109.02.

1302.04(e)
Cancellation of Rejected
Claims Following Appeal
[R-24]

See §§ 1214.06, 1215.03, and 1215.04.

1302.04(f)
Data of Copending Ap-
plication Referred to
Should Be Brought Up to
Date [R-17]

Where a patent application which is ready
for issue refers by serial number to a U.S.
application which has matured into a patent,
the Examiner is authorized to enter the patent
number without a formal Examiner's Amend-
ment. This entry should be in the following
form : "now Patent No.
This entry is to
be initialed in the margin by the Examiner to
fix responsibility for the same. The entry and
the initials should be in red ink.

If the application referred to has become
abandoned, the entry "and now abandoned"
should be made by a formal Examiner's
Amendment.

<!-- PageFooter="Rev. 24, Apr. 1970" -->

<!-- PageBreak -->

1302.04(g)

<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

## 1302.04(g) Identification of Claims [R-17]

To identify a claim, a formal Examiner's
Amendment should refer to it by the original
number and, if renumbered in the allowed ap-
plication, also by the new number.

## 1302.05 Correction of Drawing [R-24]

Where a case otherwise ready for issue re-
quires correction of the drawing, the Exam-
iner, before sending the file to the Draftsman,
should attach thereto a slip indicating that the
case is ready for allowance. Slight defects
may be corrected on the Examiner's initiative
as set forth in § 608.02(w) and a formal Ex-
aminer's Amendment prepared.

Correction of some slight defects may
be obviated, see § 608.02-"Waiving of
Corrections".

# 1302.06 Prior Foreign Application See § 201.14 (c) and 202.03.

1302.07 Use of Retention Labels To
Preserve Abandoned Com-
panion Applications [R-24]

Related applications referred to in patent
specifications are preserved from destruction
by a retention label (Form PO-150) which is
attached to the outside of the file wrapper. The
Final Review Clerk of the Group prepares such
a label for use as indicated below on each appli-
cation (which has not become a patent) which
is referred to in the specification or oath or
declaration of the application ready for allow-
ance (or in any Office letter therein).

If the case referred to is

Still pending :

Fill in and paste label on the face of the
pending file wrapper in the space provided.
Make no change in specification of the allow-
able application.

Abandoned for failure to pay issue fee:

If file has been forwarded to abandoned
files, fill in label and send it to Abandoned
Files for attachment to the wrapper. If not
forwarded treat the same as pending case. If
the period for filing a petition for delayed
payment has expired, make Examiner's
Amendment adding "now abandoned" in the
allowable application. If period has not ex-

pired, make no change in specification of the
allowable application.

Abandoned:

If file has been forwarded fill in label and
send it to Abandoned Files for attachment to
the wrapper. If not forwarded treat the
same as pending case. Make Examiner's
Amendment, adding "now abandoned" in the
allowable application.

Already patented :

No label is required. Insert patent num-
ber in specification if not already present.
Formal Examiner's Amendment not neces-
sary if this is only change.

In issue:

Fill in label. Make no change in the speci-
fication of the allowable application. Clip
the label to the Serial Register card of the
case in issue. If case in issue is abandoned or
is withdrawn from issue, it is returned to the
Group, where the Serial Register card is
pulled. The label is attached at this time.
If case in issue is patented. the label is de-
stroyed when the card is pulled.

Examiners are reminded that only one re-
tention label is necessary. Thus, if a retention
label is already present, it is sufficient to merely
add "et al." to the Serial Number cited thereon.

1302.08 Interference Search [R-24]

Assuming that the case is found ready for
issue, the Examiner makes an "interference
search" and notes the date and class and sub-
classes searched in the file wrapper. To do this,
he inspects all the pending prints and drawings
(or all the digests if the invention is not suscep-
tible of illustration ) in the relevant subclasses
of the class in which the application is classified,
and all other pertinent classes, whether in his
Group or elsewhere, in order to ascertain
whether any other applicant is claiming sub-
stantially the same subject matter as is being
allowed in the case in hand. When any of the
drawings or digests shows such a condition to be
likely, he examines the corresponding file.

If the search does not disclose any interfer-
ing application, the Examiner should prepare
the case for issue.

# 1302.09 Notations on File Wrapper [R-24]

The Examiner preparing the application for
issue fills out, in black ink, the appropriate
spaces on the face of the file wrapper.

To aid workers in the Printing Office and the
Issue and Gazette Branch, Examiners should

<!-- PageFooter="Rev. 24, Apr. 1970" -->

<!-- PageBreak -->

<!-- PageHeader="ALLOWANCE AND ISSUE" -->
<!-- PageHeader="1302.12" -->

write the class and subclass on the outside of the
file wrapper as carefully and legibly as possible.
Each numeral should be distinct and any deci-
mal point should be shown clearly and in its
proper position.

In all instances where the application con-
tains an abstract when sent to issue, the abstract
will be published in the Offical Gazette instead
of a claim. In these cases the Examiner should
strike through the words "Print claim (s)" on
the file wrapper. See § 608.01 (b).

In applications containing no abstract,
Examiners should ordinarily designate but one
claim on each invention to be published in the
Official Gazette in connection with each orig-
inal or reissued patent. The broadest claim
should be selected. When a plurality of in-
ventions are claimed in an application, addi-
tional claims to a maximum of five may be
designated for publication.

Spaces are provided on the file wrapper for
identifying data of a prior abandoned applica-
tion for which the instant application is a Sub-
stitute, and for the parent application (s) and
prior foreign application (s) meeting the re-
quirements of the Statutes.

The class and subclass and the name of the
Examiner which are written in pencil on the file
wrapper should correspond to the class and sub-
class in which the patent will issue and to the
name of the Examiner preparing the applica-
tion for issue.

See § 202.02 for notation as to parent or prior
U.S. application to be placed on file wrapper.

See § 202.03 for notation as to foreign patent
application to be placed on file wrapper.

See § 1302.13 for name of Examiner.

# 1302.10 Notations on Drawings and on Classification (Issue) Slip [R-24]

The class and subclass and the name of the
Assistant Examiner which have been written
in pencil in the upper lefthand corner of the
drawing should not be erased. See § 717.03.

On the margin of the first sheet of drawing.
the Examiner indicates in black ink in the spaces
provided by the Draftsman's stamp the figure
which he selects for printing in the Official
Gazette and also the final official classification
of the case. Ordinarily a single figure is
selected for printing. This figure should be
consistent with the portion of the application to
be printed in the Official Gazette. The numer-
als should fill as much of the space provided as
feasible.

If the selected figure is not on the first sheet,
the Examiner should indicate it also on the

sheet where it does appear. If there is no
figure illustrative of or helpful in understand-
ing the claimed invention, no figure need be
selected. "None" may be written after "O.G.
Fig." If, through inadvertence, the stamped
legend for O.G. Fig. and class and subclass
appears within the margin of the drawing, the
Examiner, should make the notations outside
of the margins.

The only date entered on the front of the
drawings is the date of mailing of the Notice
of Allowance, which is done by the Issue and
Gazette Branch. Under current practice, the
Clerk of the Examining Group does NOT
enter any date when the case is "sent to issue".
See $$ 903.07, 903.07 (b) and 903.09 for notation
to be applied to the Issue Classification Slip
(Form PO-270).

To ensure that both copies of the slip do not
become separated from the file, Examiners
should affix the entire unit set to the inside left
flap of the file wrapper by stapling it at the
upper right hand corner, using one staple only
in the space marked "cross references". It is
not necessary to remove the carbon paper.

The Allowed Files Unit of the Issue and
Gazette Branch remove the original for use by
Machine Operations Branch and leave the car-
bon copy in the file for use by the printer.

# 1302.11 Reference to Assignment Branch [R-24]

The practice of referring certain applications
to the Assignment Branch when passing them
to issue is no longer followed since title searches
are automatically made in all applications after
payment of the issue fee. See $ 303.

# 1302.12 Listing of References [R- 24]

All references which have been cited during
the prosecution, including those appearing in
Board of Appeals decisions, and those submitted
by applicant if they conform to the require-
ments set forth in §§ 707.05 (b) or 708.02. will
be printed in the patent.

At time of allowance, the Examiner may cite
pertinent art in an Examiner's Amendment.
Such pertinent art should be listed as usual on
form PO-892, a copy of which is attached to
the Examiner's Amendment form POL-37.
Such pertinent art is not sent to the applicant.
Such citation of art is important in the case of
continuing applications where significant prior
art is often of record in the parent case. In the
rare instance where no art is cited in a continua-
tion application, all the references cited during
the prosecution of the parent application will

<!-- PageFooter="Rev. 24, Apr. 1970" -->

<!-- PageBreak -->

<!-- PageHeader="1302.13" -->
<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

be listed at allowance for printing in the patent.
See §§ 707.05 and 707.05(a).

When preparing an application for allow-
ance, the "final review" clerk will verify that
there is at least one list of references (PO-892)
in the application. All lists of references are
maintained in the center section of the file wrap-
per with the first being on top.

In the first action after termination of an in-
terference, the Examiner should make of record
in each application all references not already of
record which were pertinent to any motions to
dissolve and which were discussed in the deci-
sion on motion.

In any case, otherwise ready for issue, in
which the erroneous citation has not been for-
mally corrected in an official paper, the Exam-
iner is directed to correct the citation by an
Examiner's Amendment. See § 707.05 (g).

Any new reference cited when the case is in
issue, under the practice of § 1308.01, should be
added by way of a PO-892.

All copies of references placed in the file
wrapper during prosecution, should be retained
therein, when forwarded to Issue and Gazette
Branch.

# 1302.13 Signing [R-18]

The Primary Examiner and the Assistant
Examiner involved in the allowance of an ap-
plication will print or stamp their names on
the file wrapper in place of their signatures.
Each Examiner shall place his initials after his
printed or stamped name. A Primary Exam-
iner who prepares an application for issue him-
self prints or stamps his name and initials the
file wrapper only in the "Primary Examiner"
space. A line should be drawn through the
"Assistant Examiner" box to make it clear that
the absence of a name in the box was not an
oversight.

Only the names of the Primary Examiner
and the Assistant Examiner appearing on the
face of the application file wrapper will be
listed in the printed patent.

# 1303 Notice of Allowance

The appropriate form of notice of allowance
is used and the mailing date appearing thereon
is stamped on the file wrapper by the Issue and
Gazette Branch.

# 1303.01 Amendment Received After Allowance [R-24]

If the amendment is filed under Rule 312,
see §§ 714.15 to 714.16(e). If the amendment

contains claims copied from a patent, see
§ 1101.02(g).

# 1303.02 Undelivered [R-24]

In case a notice of allowance is returned, and
a new notice is sent (see § 707.13), the date
of sending the notice must be changed in the file
to agree with the date of such remailing.

# 1303.03 Not Withheld Due to Death of Inventor [R-24]

The notice of allowance will not be withheld
due to death of the inventor if the executor or
administrator has not intervened. See
§ 409.01 (f).

# 1304 Withholding From Issue of "Se- crecy Order" Cases [R-24]

"Secrecy Order" cases are not sent to issue
even when all of the claims have been allowed.
Instead of mailing an ordinary notice of allow-
ance a D-10 Notice is sent. See § 107.02.

If the "Secrecy Order" in a case is with-
drawn after the D-10 notice is mailed, the case
should then be treated like an ordinary appli-
cation in condition for allowance.

# 1304.01 Amendments After D-10 No- tice [R-24]

For amendments received after D-10 Notice,
see § 107.02.

1305 Jurisdiction [R-24]

Jurisdiction of the application remains with
the Primary Examiner until the notice of allow-
ance is mailed by the Issue and Gazette Branch.
However, the Examiner may make Examiner's
amendments correcting obvious errors, as,
when brought to the attention of the Examiner
by the printer, and also may admit amend-
ments under Rule 312 which are confined to
matters of form in specification or claims, or
to the cancellation of a claim or claims. The
Examiner's action on other amendments under
Rule 312 consists of a recommendation to the
Commissioner.

To regain jurisdiction over the case, the Ex-
aminer must write a letter to the Commissioner
requesting it. See §§ 1112.04, 1308, and 1308.02.

Once the patent has been granted, the Patent
Office can take no action concerning it except
as provided in 35 U.S.C. 135 and 35 U.S.C. 251
through 256. See chapter 1400.

<!-- PageFooter="Rev. 24, Apr. 1970" -->

<!-- PageBreak -->

<!-- PageHeader="ALLOWANCE AND ISSUE" -->
<!-- PageHeader="1308.01" -->

# 1306 Issue Fee [R-24]

$5 U.S.C. 41 (a) 2. For issuing each original or re-
issue patent, except in design cases, $100; in addition,
$10 for each page (or portion thereof) of specification
as printed, and $2 for each sheet of drawing.

35 U.S.C. 151. If it appears that applicant is entitled
to a patent under the law, a written notice of allowance
of the application shall be given or mailed to the appli-
cant. The notice shall specify a sum, constituting the
issue fee or a portion thereof, which shall be paid with-
in three months thereafter.

Upon payment of this sum the patent shall issue, but
if payment is not timely made, the application shall be
regarded as abandoned.

Any remaining balance of the issue fee shall be paid
within three months from the sending of a notice there-
of, and, if not paid, the patent shall lapse at the ter-
mination of this three-month period. In calculating the
amount of a remaining balance, charges for a page or
less may be disregarded.

If any payment required by this section is not timely
made, but is submitted with the fee for delayed pay-
ment within three months after the due date and suffi-
cient cause is shown for the late payment, it may be
accepted by the Commissioner as though no abandon-
ment or lapse had ever occurred.

The Patent Office has discontinued the prac-
tice of estimating the number of printed pages
of specification in advance of printing. Instead,
a Minimum Issue Fee is due three months from
the date of the Notice of Allowance. The amount
of the Minimum Issue Fee is shown on the No-
tice of Allowance and consists of $100 plus $10
for the first page of printed specification plus
$2 for each sheet of drawing.

After the patent is printed, if an additional
fee is required, a Notice of Balance of Issue Fee
Due will be attached to the patent when mailed.
Failure to pay this balance within three months
from the date of the Notice thereof will result
in lapse of the patent. Under the authority of
35 U.S.C. 151, the charge is disregarded
WHERE ONLY ONE ADDITIONAL
PAGE OR LESS is involved. Thus, if the pat-
ent consists of two pages or less, no balance fee
is due. However, if the patent consists of three
pages, a Notice of Balance of Issue Fee Due for
$20 is mailed together with the original patent
grant. (A page consists of one side of a printed
sheet containing two columns or less.)

Applicants and their attorneys or agents are
urged to use the special fee transmittal forms
provided with the Notice of Allowance and the
Notice of Balance of Issue Fee Due when sub-
mitting their payments.

The payment of the balance of issue fee due
may be simplified by using a Patent Office De-
posit Account for such a fee. A statement, in
duplicate, at the time of payment of the mini-

mum issue fee, indicating that applicant's or
attorney's Deposit Account may be billed for the
balance of the issue fee will be considered as
sufficient authorization to make such a payment.

The above mentioned fees will not be accepted
from anyone other than the applicant, attorney,
agent or a party in interest as shown by the rec-
ords of the Patent Office.

# 1307 Change in Classification of Cases Which Are in Issue [R-24]

See § 903.07

# 1308 Withdrawal From Issue [R-24]

Rule 313. Withdrawal from issue. (a) After the
notice of allowance of an application is sent, the case
will not be withdrawn from issue except by approval
of the Commissioner, and if withdrawn for further
action on the part of the Office, a new notice of allow-
ance will be sent if the application is again allowed.

(b) When the issue fee or that portion thereof
specified in the notice of allowance has been paid, and
the patent to be issued has received its date and num-
ber, the application will not be withdrawn from issue
on account of any mistake or change of purpose of the
applicant, his attorney or his agent, nor for the purpose
of enabling the inventor to procure a foreign patent,
nor for any other reasons except mistake on the part
of the Office, or because of fraud or illegality in the
application, or for interference.

If the applicant wishes to have the case
withdrawn from issue, he must petition the
Commissioner. Withdrawal is permitted only
for the reasons stated in the rule. For with-
drawal procedure by Examiner see § 1308.02.

# 1308.01 Rejection After Allowance [R-24]

A claim noted as allowable shall thereafter
be rejected only with the approval of the Pri-
mary Examiner. Great care should be exer-
cized in authorizing such rejection. See
$ 706.04.

When a new reference is discovered, which
obviously is applicable to one or more of the
allowed claims in an application in issue, and
where a sufficient portion of the statutory pe-
riod for payment of the issue fee remains, the
Examiner is authorized to enter a letter in-
forming applicant of the proposal of request-
ing withdrawal from issue for the purpose of
rejecting the claim or claims as fully met by,
or obviously unpatentable over the new ref-
erence. The letter should apply the reference
in detail and should also set a time limit
(within such statutory period), within which

<!-- PageFooter="Rev. 24, Apr. 1970" -->

<!-- PageBreak -->

<!-- PageHeader="1308.02" -->
<!-- PageHeader="MANUAL OF PATENT EXAMINING PROCEDURE" -->

applicant may respond by way of argument
or amendment under Rule 312 to overcome the
reference and avoid the necessity for with-
drawal from issue. Such a letter, with the
reference and file, should be submitted to the
Group Director before mailing.

If insufficient time remains to carry out the
above, or if no response is received, or if a
response is filed and it fails to overcome the
reference, or if the above appears fruitless, a
letter is addressed to the Group Director, re-
questing that the application be withdrawn
from issue for the purpose of applying the new
reference. This letter should cite the refer-
ence, and, if need be, briefly state its applica-
tion. The letter should be submitted with the
reference and the file wrapper. Upon ap-
proval of this request, the letter is taken to the
Issue and Gazette Branch and the application
is stamped "Withdrawn" over the name stamp
and initials of the Primary Examiner. It is
then returned to the Group from which it came;
the withdrawal from the issue is entered on the
register, and the application is thus restored to
its former status as a pending application
awaiting action by the Examiner. The Exam-
iner at once writes a letter in the case stating
that the application has been withdrawn from
issue, citing the new reference, and rejecting the
claims met thereby.

The letter is given a paper number and
placed in the file.

If the Examiner's proposed action is not ap-
proved, the letter requesting withdrawal from
issue should not be placed in the file.

# 1308.02 For Interference Purposes [R-22]

It may be necessary to withdraw a case from
issue for reasons connected with an interfer-
ence. For the procedure to be followed see
§§ 1101.01 (o) and 1112.04.

# 1309 Issue of Patent [R-24]

The files of allowed cases (not patented files)
are kept in the Issue and Gazette Branch, ar-
ranged in the serial number order. When the
Issue fee is paid within the time allowed by
law, the file is given a patent number and date.
The file then goes to the Assignment Branch
for examination as to assignments after which
it is sent to the Government Printing Office
for printing of the specification. A bond
paper copy of the drawing and specification is
ribboned and sealed in the Issue and Gazette
Branch and finally signed.

# PATENT PRINTING PRIORITY

In view of the backlog of allowed cases wait-
ing to be printed, the applications placed in the
weekly formulation of an issue set aside for
printing will be selected according to the fol-
lowing priorities :

1\. Allowed cases which were made special
by the Commissioner (including those
under the New Special Examining Proce-
dure).

2\. Allowed cases that have a U.S. effective
filing date more than five years old.

3\. Allowed reissue applications.

4\. Allowed applications having an effective
filing date earlier than that required for
declaring an interference with a copending
application claiming the same subject
matter.

5\. Allowed application of a party involved
in a terminated interference.

6\. Allowed applications in which the appli-
cant has filed a request in the nature of a
petition setting forth his reasons for ad-
vancing the printing date.

7\. Allowed applications ready for printing
and not covered by any of the six preced-
ing categories. The selection of cases in
the involved category will be by chrono-
logical sequence based on the date the issue
fee was paid.

To ensure that any application falling
within the scope of the categories outlined
above and identified by numbers 1 to 5 receives
special treatment the Examiners should staple
on the file wrapper a tag entitled "Special in
Issue and Gazette Branch." The special tag,
PO-364, may be obtained from the Group
Clerk. The Examiner shall print directly on the
tag the recitation "In Issue and Gazette
Branch" and the appropriate printing category
outlined above. The application is then for-
warded to Issue and Gazette Branch in accord-
ance with existing procedures.

The personnel in Issue and Gazette Branch
will then set the tagged cases aside and make a
notation on all copies of the Notice of Allow-
ance to be mailed that further processing of
this application will be "special."

In cases falling in category No. 6, the request
must be filed after the Notice of Allowance has
been received and no later than the date the
issue fee is paid. The request must be directed
to the Head of the Issue and Gazette Branch.

35 U.S.C. 153. How issued. Patents shall be issued
in the name of the United States of America, under the
seal of the Patent Office, and shall be signed by the
Commissioner or have his signature placed thereon
and attested by an officer of the Patent Office desig-

<!-- PageFooter="Rev. 24, Apr. 1970" -->

<!-- PageBreak -->

<!-- PageHeader="ALLOWANCE AND ISSUE" -->

1309.02

nated by the Commissioner, and shall be recorded in
the Patent Office.

Various officials including the head of the
Issue and Gazette Branch have been designated
as attesting officer to attest to the name of the
Commissioner. The assistant head of the Issue
and Gazette Branch acts as attesting officer in
the absence or unavailability of the head of the
Branch.

# 1309.01 "Printer Waiting" Cases [R-24]

After printing of the specification the proof
is read by employees of the Government Print-
ing Office. Where apparent error is found, the
file with the proof is transmitted to the Exam-
iner, attention being called on an attached
"printer waiting" slip to the supposed errors.

All "printer waiting" cases must receive im-
mediate attention and be returned to the Issue
and Gazette Branch as soon as possible (pref-
erably within three hours).

If the Examiner concurs in the criticisms.
the errors should, if possible, be corrected in
clean red ink and initialed or be corrected by
Examiners' amendment. See § 1302.04.

If the required correction cannot be cured
by Examiner's amendment, the application
may have to be withdrawn from issue. This
may sometimes be avoided if the attorney or
his representative is telephoned immediately,
and the error is corrected by amendment under
Rule 312.

If the Examiner finds the specification cor-
rect as it stands, he endorses the slip to that
effect.

After correction or checking, the application
file and proof should be promptly returned to
the Issue and Gazette Branch.

1309.02
Protest Against Issue [R-
26]

Rule 291. Protests to the grant of a patent. The
patent statutes do not provide for opposition to the
grant of a patent on the part of the public. Protests
to the grant of a patent are ordinarily merely ac-
knowledged, and filed after being referred to the ex-
aminer having charge of the subject matter involved
for his information.

A party properly obtaining a knowledge of
an application pending in the Office may file a
protest against the issue of a patent upon it and
may therein call attention to any facts within
his knowledge which, in his opinion, would
make the grant of a patent improper. He does
not, however, thereby obtain the right to argue
the question before the tribunals of the Office.
The question of patentability has been uni-
formly looked upon as ex parte in character. It
is a question between the applicant and the
Office on behalf of the public, and no one mem-
ber of the public can be recognized as having
such an interest in the grant of a patent as to
entitle him to contest the matter any further
than to call attention to matters which he con-
siders bars. The Office will consider facts called
to its attention, but will not give the protestant
a hearing as a matter of right. Carey v. The New
Home Sewing Machine Co., 1901 C.D. 165; 97
O.G. 1171.

When a protest is filed against the issuance
of a patent the same shall, after consideration
by the Examiner, be forwarded to the Group
Director and shall not be entered in the file of
the application to which it refers.

<!-- PageFooter="Rev. 26, Oct. 1970" -->