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OCR transcription for search; preserved printed pages are authoritative

# Chapter 600 Parts, Form and Content of Application

## 601 Content of Application

601.02
Power of Attorney or Authorization of Agent

601.03
Change of Correspondence Address

602
Original Oath or Declaration

602.01
Oath Cannot Be Amended

602.02
New Oath or Substitute for Original

602.03
Defective Oath or Declaration

602.04
Foreign Executed Oath

602.04 (a) Foreign Executed Oath Is Ribboned to
Other Application Papers

602.05
Oath or Declaration Date of Execution

602.05(a) Oath In Division and Continuation Cases

603
Supplemental Oath or Declaration

603.01
Filed After Allowance

604
Administration or Execution of Oath

604.01
Seal

604.02
Venue

604.03
Notaries and Extent of Jurisdiction

604.03 (a) Notarial Powers of Some Military Officers

604.04
Consul

604.04 (a) Omission of Certificate

604.05
Consular Fee Stamp

604.06
By Attorney in Case

605
Applicant

605.01
Citizenship

605.02
Residence

605.03
Post Office Address

605.04
Signature and Name

605.04 (a) Single Signature Form

608.02 (g)

Illustration of Prior Art

605.04 (b) One Full Given Name Required

608.02 (h)

Additional, Duplicate, or Substitute

605.04 (c) Change of Name

608.02(1)

Transfer From Prior Application

605.04 (d) Unable To Write

608.02 (j)
Canceled Sheets to Divisional

608.02 (k)
Patented, to Reissue

608.02 (m)
Prints

608.02 (n)
Patentability Report Cases

608.02(0)
Dates Entered on Drawing

605.04 (h) Signature to Drawing

608.02 (p)
Correction of Drawings

605.05 Administrator, Executor or Other Legal Rep-
resentative

608.02(q)
Conditions Precedent to Amendment of
Drawing

605.05 (a) Signature of Legal Representative

608.02 (r)
Separate Letter to Draftsman

605.06 Filing by Other Than Inventor

608.02 (s)

Estimating Cost of Correcting Drawings

606 Title of Invention

608.02 (t)

Cancelation of Figures

606.01
Examiner May Require Change in Title

608.02 (u)

Changing Name of Attorney on Drawing
Forbidden

607.01 Fee Exempt

608.02(v)

Changes Which Require Sketches

607.02 Returnability of Fees

608.02 (w)

Changes Which May be Made by Exam-
iner's Amendment Without a Sketch

608.01 Specification

608.02 (x)

Disposition of Orders for Amendment of
Drawing

608.01 (a) Arrangement of Application

608.01 (b)
Abstract of the Disclosure

608.01 (c)
Background of the Invention

608.01 (d )
Brief Summary of Invention

608.01 (e)
Reservation Clauses Not Permitted

608.01 (f)
Brief Description of Drawings

608.01 (g)
Detailed Description of Invention
608.01 (h)
Mode of Operation of Invention
Claims

608.01 (i)

608.01 (j)
Numbering of Claims

608.01 (k)
Statutory Requirement of Claims

608.01 (1)
Original Claims

608.01 (m)
Form of Claims

608.01 (n)
Dependent Claims

608.01 (0)
Basis for Terminology in Description

608.01 (p)
Completeness

608.01 (q) Substitute or Rewritten Specification

608.01 (r) Derogatory Remarks About Prior Art

608.01 (s)
Restoration of Canceled Matter

608.01 (t)
Use in Subsequent Application

608.01 (u)
Of Formerly Filed Incomplete Application

608.01(v) Trademarks and Names Used in Trade

608.02
Drawing

608.02(a) New Drawing-When Required

608.02 (b) Informal Drawings

608.02 (c) Drawings or Print Kept in Examining Group

608.02 (d) Complete Illustration

608.02 (e)
Examiner Determines

608.02(f)

Modification

605.04(e) May Use Title With Signature

605.04 (f) Joint-Order of Names

605.04(g) When Name Is Corrected, Send to Applica-
tion Division

607 Filing Fee

608
Disclosure

608.02(y) Return of Drawing
608.03 Models, Exhibits, Specimens

608.03 (a) Handling of
608.04 New Matter

608.04(a) Matter Not in Original Specification, Claims
or Drawings

608.04 (b) By Preliminary Amendment

608.04(c) Review of Examiner's Holding

## 601 Content of Application [R-45]

Rule 51. General requisites of an application. Ap-
plications for patents must be made to the Commis-
sioner of Patents and Trademarks. A complete applica-
tion comprises :

(a) A specification, including a claim or claims,
see rules 71 to 77.

(b) An oath or declaration, see rules 65 and 68.

(d) The prescribed filing fee. (See 35 U.S.C. 41 for
filing fees.)

35 U.S.C. 111. Application for patent. Application
for patent shall be made by the inventor, except as
otherwise provided in this title, in writing to the Com-
missioner. Such application shall include: (1) a spec-
ification as prescribed by section 112 of this title ;
(2) a drawing as prescribed by section 113 of this
title; and (3) an oath by the applicant as prescribed
by section 115 of this title. The application must be
signed by the applicant and accompanied by the fee
required by law.

## GUIDELINES FOR DRAFTING A MODEL PATENT APPLICATION

The following guidelines illustrate the pre-
ferred layout and content for patent applica-
tions. These guidelines are suggested for the
applicant's use.

### Arrangement and Contents of the Specification

The following order of arrangement is pref-
erable in framing the specification and, except
for the title of the invention, each of the lettered
items should be preceded by the headings
indicated.

(a) Title of the Invention.

(b) Abstract of the Disclosure.

(d) Background of the Invention.

1\. Field of the Invention.

2\. Description of the Prior Art.

(e) Summary of the Invention.

(f) Brief Description of the Drawing.

(g) Description of the Preferred Embodi-
ment (s).

(h) Claim (s).

(a) Title of the Invention: (See rule 72 (a).)
The title of the invention should be placed at

the top of the first page of the specification. It
should be brief but technically accurate and
descriptive.

(b) Abstract of the Disclosure: (See rule
72(b), and § 608.01 (b).)

(d) Background of the Invention: The
specification should set forth the Background
of the Invention in two parts:

(1) Field of the Invention: A statement
of the field of art to which the invention
pertains. This statement may include a
paraphrasing of the applicable U.S.
patent classification definitions. The
statement should be directed to the sub-
ject matter of the claimed invention.

(2) Description of the Prior Art: A para-
graph (s) describing to the extent practi-
cal the state of the prior art known to
the applicant, including references to
specific prior art where appropriate.
Where applicable, the problems involved
in the prior art, which are solved by the
applicant's invention, should be indi-
cated.

(e) Summary: A brief summary or general
statement of the invention as set forth in rule
73. The summary is separate and distinct from
the abstract and is directed toward the inven-
tion rather than the disclosure as a whole. The
summary may point out the advantages of the
invention or how it solves problems previously
existent in the prior art (and preferably indi-
cated in the Background of the Invention). In
chemical cases it should point out in general
terms the utility of the invention. If possible,
the nature and gist of the invention or the
inventive concept should be set forth. Objects
of the invention should be treated briefly and
only to the extent that they contribute to an
understanding of the invention.

(f) Brief Description of the Drawing: A
reference to and brief description of the draw-
ing(s) as set forth in rule 74.

(g) Description of the Preferred Embodi-
ment (8) : A description of the preferred em-
bodiment(s) of the invention as required in
rule 71. The description should be as short and
specific as is necessary to adequately and
accurately describe the invention.

Where elements or groups of elements, com-
pounds, and processes, which are conventional
and generally widely known in the field to
which the invention pertains, form a part of
the invention described and their exact nature
or type is not necessary for an understanding
and use of the invention by a person skilled in
the art, they should not be described in detail.
However, where particularly complicated sub-

601.02

ject matter is involved or where the elements,
compounds, or processes may not be commonly
or widely known in the field, the specification
should refer to another patent or readily avail-
able publication which adequately describes
the subject matter.

(h) Claim (8) : (See rule 75.) A claim may
be typed with the various elements subdivided
in paragraph form. There may be plural inden-
tations to further segregate subcombinations
or related steps.

Reference characters corresponding to ele-
ments recited in the detailed description and
the drawings may be used in conjunction with
the recitation of the same element or group of
elements in the claims. The reference charac-
ters, however, should be enclosed within paren-
theses so as to avoid confusion with other num-
bers or characters which may appear in the
claims. The use of reference characters is to be
considered as having no effect on the scope of
the claims.

Claims should preferably be arranged in
order of scope so that the first claim presented
is the broadest. Where separate species are
claimed, the claims of like species should be
grouped together where possible and physically
separated by drawing a line between claims or
groups of claims. (Both of these provisions may
not be practical or possible where several species
claims depend from the same generic claim.)
Similarly, product and process claims should
be separately grouped. Such arrangements are
for the purpose of facilitating classification
and examination.

The form of claim required in rule 75(e) is
particularly adapted for the description of
improvement type inventions. It is to be con-
sidered a combination claim and should be
drafted with this thought in mind.

In drafting claims in accordance with rule
75(e), the preamble is to be considered to posi-
tively and clearly include all the elements or
steps recited therein as a part of the claimed
combination.

Oath or Declaration

(See rules 65 and 68.) Where one or more pre-
viously filed foreign applications are cited or
mentioned in the oath or declaration, complete
identifying data, including the application or
serial number as well as the country and date of
filing, should be provided.

THE APPLICATION

The specification and oath or declaration must
be in the English language and must be legibly
typewritten, written or printed in permanent

ink or its equivalent in quality. See rule 52 and
§ 608.01.

The parts of the application may be included
in a single document, and an approved single-
signature form may be used.

Determination of completeness of an appli-
cation is covered in § 506.

The specification and oath or declaration are
secured together in a file wrapper, bearing
appropriate identifying data including the
serial number and filing date (§ 717).

NOTE

Division applications § 201.06.

Continuation applications § 201.07.

Reissue applications § 1401.

Design applications, Chapter 1500.
Plant applications, Chapter 1600.

A model, exhibit or specimen is not required
as part of the application as filed, although it
may be required in the prosecution of the ap-
plication (rules 91-93, § 608.03) .

Rule 59. Papers of complete application not to be
returned. Papers in a complete application, including
the drawings, will not be returned for any purpose
whatever. If applicants have not preserved copies of
the papers, the Office will furnish copies at the usual
cost.

See, however, § 604.04 (a).

The Patent and Trademark Office has ini-
tiated a program for expediting newly filed ap-
plication papers through pre-examination steps.
This program requires the cooperation of appli-
cants in order to attain the desired result-a
reduction in processing time.

Therefore, all applicants are requested to
include a preliminary classification on newly
filed patent applications. The preliminary clas-
sification, preferably class and subclass designa-
tions, should be identified in the upper
right-hand corner of the letter of transmittal
accompanying the application papers, for ex-
ample "Proposed class 2, subclass 129."

This program is voluntary and the classifica-
tion submitted will be accepted as advisory in
nature. The final class and subclass assignment
remains the responsibility of the Office.

### 601.02 Power of Attorney or Author- ization of Agent [R-35]

The attorney's or agent's full post office ad-
dress (including ZIP code number) must be
given in every power of attorney or authority
of agent. The telephone number of the attorney
or agent should also be included in the power.
The prompt delivery of communications will
thereby be facilitated.

Usually a power of attorney or authorization
of agent is incorporated in the single signature
form. (See §§ 402 and 605.04 (a).)

# 601.03 Change of Correspondence Address [R-45]

Where an attorney or agent of record (or ap-
plicant, if he is prosecuting his application pro
se) changes his correspondence address, he is re-
sponsible for promptly notifying the Patent and
Trademark Office of his new correspondence ad-
dress (including Zip Code number). A separate
notification must be filed in each application
for which he is intended to receive communica-
tions from the Office. The notification should
also include his telephone number. See § 711.03
(c) for treatment of petitions to revive applica-
tions abandoned as a consequence of failure to
timely receive an Office action addressed to the
old correspondence address.

The notification required need take no partic-
ular form. However, it should be provided in
a manner calling attention to the fact that a
change of address is being made. Thus, the mere
inclusion, in a paper being filed for another
purpose, of an address which is different from
the previously provided correspondence address,
without mention of the fact that an address
change is being made would not ordinarily be
recognized or deemed as instructions to change
the address on the file record.

The above-delineated resposibility is addi-
tional to the separate obligation (see rule 347)
of a registered attorney or agent to notify the
Attorney's Roster of any change of his address
for entry on the register, by letter separate from
any notice of change of address filed in individ-
ual applications. That separate obligation is
not discharged by filing of the individual noti-
fications in each application as required by this
section.

## 602 Original Oath or Declaration [R-44]

35 U.S.C. 25. Declaration in lieu of oath

(a) The Commissioner may by rule prescribe that
any document to be filed in the Patent and Trademark
Office and which is required by any law, rule, or other
regulation to be under oath may be subscribed to by a
written declaration in such form as the Commissioner
may prescribe, such declaration to be in lieu of the
oath otherwise required.

(b) Whenever such written declaration is used, the
document must warn the declarant that willful false
statements and the like are punishable by fine or
imprisonment, or both (18 U.S.C. 1001).

35 U.S.C. 26. Effect of defective execution

Any document to be filled in the Patent and Trade-
mark Office and which is required by any law, rule, or
other regulation to be executed in a specified manner
may be provisionally accepted by the Commissioner
despite a defective execution, provided a properly ex-
ecuted document is submitted within such time as may
be prescribed.

35 U.S.C. 115. Oath of applicant

The applicant shall make oath that he believes him-
self to be the original and first inventor of the process,
machine, manufacture, or composition of matter, or
improvement thereof, for which he solicits a patent ;
and shall state of what country he is a citizen. Such
oath may be made before any person within the United
States authorized by law to administer oaths, or, when
made in a foreign country, before any diplomatic or
consular officer of the United States authorized to
administer oaths, or before any officer having an official
seal and authorized to administer oaths in the foreign
country in which the applicant may be, whose authority
shall be proved by certificate of a diplomatic or con-
sular officer of the United States, and such oath shall
be valid if it complies with the laws of the state or
country where made. When the application is made as
provided in this title by a person other than the
inventor, the oath may be so varied in form that it can
be made by him.

Rule 65. Statement of Applicant. (a) (1) The ap-
plicant, if the inventor, must state that he verily be-
Nieves himself to be the original and first inventor or
discoverer of the process, machine, manufacture, com-
position of matter, or improvement thereof, for which
he solicits a patent; that he does not know and does
not believe that the same was ever known or used
in the United States before his invention or discovery
thereof, and shall state of what country he is a citizen
and where he resides, and whether he is a sole or joint
inventor of the invention claimed in his application. In
every original application the applicant must distinctly
state that to the best of his knowledge and belief the in-
vention has not been in public use or on sale in the
United States more than one year prior to his applica-
tion or patented or described in any printed publication
in any country before his invention or more than one
year prior to his application, or patented or made the
subject of an inventor's certificate in any foreign coun-
try prior to the date of his application on an appli-
cation filed by himself or his legal representatives or
assigns more than twelve months prior to his appli-
cation in this country. He shall state whether or not
any application for patent or inventor's certificate on
the same invention has been filed in any foreign coun-
try, either by himself or by his legal representatives
or assigns. If any such application has been filed, the
applicant shall name the country in which the earliest
such application was filed, and shall give the day,
month, and year of its filing ; he shall also identify by
country and by day, month, and year of filing, every
such foreign application filed more than twelve months
before the filing of the application in this country.

(2) This statement (i) must be subscribed to by the
applicant, and (ii) must either (a) be sworn to (or
affirmed) as provided in rule 66, or (b) include the
personal declaration of the applicant as prescribed in
rule 68. See rule 153 for design cases and rule 162
for plant cases.

(b) If the application is made as provided in rules
42, 43, or 47, the applicant shall state his relationship
to the inventor and, upon information and belief, the
facts which the inventor is required by this rule to
state.

(c) An additional statement may be required if the
application has not been filed in the Patent and Trade-
mark Office within a reasonable time after execution
of the original statement.

Rule 68. Declaration in Lieu of Oath. Any docu-
ment to be filed in the Patent and Trademark Office
and which is required by any law, rule, or other regu-
lation to be under oath may be subscribed to by a writ-
ten declaration with the exception of testimony relat-
ing to interferences and other contested cases covered
by rules 271 to 286. Such declaration may be used in
lieu of the oath otherwise required, if, and only if, the
declarant is on the same document, warned that willful
false statements and the like are punishable by fine or
imprisonment, or both (18 U.S.C. 1001) and may jeop-
ardize the validity of the application or any patent
issuing thereon. The declarant must set forth in the
body of the declaration that all statements made of his
own knowledge are true and that all statements made
on information and belief are believed to be true.

18 U.S.C. 1001. Statements or entries generally

Whoever, in any matter within the jurisdiction of
any department or agency of the United States know-
ingly and willfully falsifies, conceals or covers up by
any trick, scheme, or device a material fact, or makes
any false, fictitious or fraudulent statements or repre-
sentations, or makes or uses any false writing or docu-
ment knowing the same to contain any false, fictitious
or fraudulent statement or entry, shall be fined not
more than $10,000 or imprisoned not more than five
years, or both.

Oaths and declarations submitted in applica-
tions filed after May 1, 1975 must make refer-
ence to the prior filing or non-filing of applica-
tions for inventor's certificates.

A rule 68 declaration need not be ribboned
to the other papers, even if signed in a country
foreign to the United States. When a declara-
tion is used, it is unnecessary to appear before
any official in connection with the making of the
declaration. It must, however, since it is an
integral part of the application, be maintained
together therewith. Suggested forms for dec-
larations are located in Part 3 of Title 37, Code
of Federal Regulations.

By statute, 35 U.S.C. 25, the Commissioner
has been empowered to prescribe instances when
a written declaration may be accepted in lieu
of the oath for "any document to be filed in the
Patent and Trademark Office".

The filing of a written declaration is accept-
able in lieu of an original application oath that
is informal.

The applicant must state that no foreign ap-
plications have been filed, if such is the case.
If all foreign applications have been filed
within twelve months of the U.S. filing date.
he is required only to recite the first such
foreign application, and it should be clear that
the foreign application referred to is the first
filed foreign application. The applicant is
required to recite all foreign applications filed
more than twelve months prior to the U.S.
filing. It is desirable to give the foreign serial
number as well as the filing date of the first
filed foreign application, especially if the inven-
tor's name will not appear in a certified copy of
said foreign application.

The single signature forms mentioned in
§ 605.04 (a) includes the oath or declaration.

In the oath, the jurat must be filled out, and
the word "sole" or "only" must appear if there

is but one inventor, and "joint" if two or more
inventors.

When joint inventors execute separate oaths
or declarations, each oath or declaration should
make reference to the fact that the affiant is a
joint inventor together with each of the other
inventors indicating them by name. This may
be done by stating that he does verily believe
himself to be the original, first and joint inven-
tor together with "A or A & B, etc." as the facts
may be.

A seal is usually impressed on an oath. See
§§ 604 and 604.01 and rule 66. However oaths
executed in many states including Alabama,
Louisiana, Maryland, Massachusetts, New Jer-
sey, New York, Rhode Island, South Carolina
and Virginia need not be impressed with a seal.

If a claim is presented for matter not orig-
inally claimed or embraced in the original
statement of invention in the specification a
supplemental oath is required. Rule 67, § 603.

## 602.01 Oath Cannot Be Amended [R-25]

The wording of an oath or declaration cannot
be amended. If the wording is not correct or if
all of the required affirmations have not been
made or if it has not been properly subscribed
to, a new oath or declaration must be required.
However, in some cases a deficiency in the oath
or declaration can be corrected by a supple-
mental paper and a new oath or declaration is
not necessary.

For example, if the oath does not set forth
evidence that the notary was acting within his
jurisdiction at the time he administered the
oath a certificate of the notary that the oath
was taken within his jurisdiction will correct
the deficiency. See §§ 602 and 604.02.

## 602.02 New Oath or Substitute for Original [R-25]

In requiring a new oath or declaration, the
examiner should always give the reason for the
requirement and call attention to the fact that
the application of which it is to form a part
must be properly identified in the body of the
new oath or declaration, preferably by giving
the serial number and the date of filing. This
is done in the first action by means of attach-
ment Form PO-152 (see § 707.07(a) ).

Where neither the original oath or declara-
tion, nor the substitute oath or declaration is
complete in itself, but the two taken together
give all the required data, no further oath or
declaration is needed.

## 602.03 Defective Oath or Declaration [R-40]

In the first Office action the examiner must
point out, making use of attachment Form PO-
152 (see § 707.07(a)), every deficiency in a
declaration or oath and require that the same be
remedied. However, when an application is
otherwise ready for issue, an examiner with
full signatory authority may waive the follow-
ing minor deficiencies :

1\. A delay of somewhat more than five weeks
plus mailing time in filing after the time
of making the declaration, or the time of
execution in the case of an oath.

2\. Residence of an applicant if a post office
address is given.

3\. Minor deficiencies in the execution of an
oath.

4\. Minor deficiencies in the body of the oath
where the deficiencies are self-evidently
cured in the rest of the oath, as in an oath
of plural inventors couched in plural terms
except for use of "sole" for "joint," par-
ticularly where "sole inventors" is as-
serted. In re Searles, 164 USPQ 623.

If any of the above are waived, the examiner
should write in the margin of the declaration or
oath a notation such as "Stale date of declara-
tion (oath) waived; application ready for issue"
and his initials and the date.

## 602.04 Foreign Executed Oath [R-25]

An oath executed in a foreign country must
be properly authenticated. See § 604 and rule
66.

## 602.04(a) Foreign Executed Oath Is Ribboned to Other Appli- cation Papers [R-21]

Extract from Rule 66. (b) When the oath is taken
before an officer in a country foreign to the United
States, all the application papers, except the drawings,
must be attached together and a ribbon passed one or
more times through all the sheets of the application,
except the drawings, and the ends of said ribbon
brought together under the seal before the latter is
affixed and impressed, or each sheet must be impressed
with the official seal of the officer before whom the
oath is taken. If the papers as filed are not properly
ribboned or each sheet impressed with the seal, the
case will be accepted for examination but before it
is allowed, duplicate papers, prepared in compliance
with the foregoing sentence, must be filed.

Note that a declaration in lieu of applica-
tion oath (rule 68) need not be ribboned to the
other papers. It must, however, be maintained
together therewith.

### 602.05 Oath or Declaration-Date of Execution [R-40]

The time elapsed between the date of execu-
tion of the oath or declaration and the filing
date of the application should be checked for
compliance with rule 65 (c). If an unreason-
able time has elapsed, the examiner should call
for a new oath or declaration. What consti-
tutes a reasonable time is a question of judg-
ment to be determined by all the circumstances
in the particular case. (Five weeks plus time
of transmission in the mails was considered
reasonable under the circumstances of Ex parte
Heinze, 1919 C.D. 67; 265 O.G. 145). The
"Notice of informal Patent Application" attach-
ment form PO-152 is used to notify applicant
that his oath or declaration is stale.

If no date of execution appears, applicant is
required to file either a new oath or declaration
or a certificate from the notary giving the actual
date when the oath or declaration was made.

## 602.05 (a) Oath or Declaration in Di- vision and Continuation Cases [R-40]

Where the date of filing the application is
not the date that determines the statutory
twelve months' period, as in divisional and
continuation cases, it is immaterial, so far as
concerns the acceptability of the oath or decla-
ration, how long a time intervenes between the
execution of the oath or declaration and the
filing of the application.

When a divisional application is identical
with the original application as filed, signing
and execution of the oath in the divisional case
may be omitted. (See rule 60, § 201.06 (a).)

# 603 Supplemental Oath or Declaration [R-44]

Rule 67. Supplemental oath or declaration for mat-
ter not originally claimed. (a) When an applicant pre-
sents a claim for matter originally shown or described
but not substantially embraced in the statement of
invention or claim originally presented, he shall file
a supplemental oath or declaration to the effect that
the subject matter of the proposed amendment was part

of his invention; that he does not know and does not
believe that the same was ever known or used in the
United States before his invention or discovery thereof,
or patented or described in any printed publication in
any country before his invention or discovery thereof,
or more than one year before his application, or in pub-
lic use or on sale in the United States for more than
one year before the date of his application, that said
invention has not been patented or made the subject
of an inventor's certificate in any foreign country prior
to the date of his application in this country on an
application filed by himself or his legal representatives
or assigns more than twelve months prior to his appli-
cation in the United States, and has not been aban-
doned. Such supplemental oath or declaration should
accompany and properly identify the proposed amend-
ment, otherwise the proposed amendment may be re-
fused consideration.

(b) In proper cases the oath or declaration here re-
quired may be made on information and belief by an
applicant other than inventor.

Rule 67 requires in the supplemental oath
or declaration substantially all the data called
for in rule 65 for the original oath or declara-
tion. As to the purpose to be served by the sup-
plemental oath or declaration, the examiner
should bear in mind that it cannot be availed
of to introduce new matter into an application.

# 603.01 Supplemental Oath or Declara- tion Filed After Allowance [R-40]

Since the decision in Cutter Co. v. Metro-
politan Electric Mfg. Co., 275 Fed. 158, many
supplemental oaths and declarations covering
the claims in the case have been filed after the
case is allowed. Such oaths and declarations
may be filed as a matter of right and when re-
ceived they will be placed in the file by the
Patent Issue Division, but their receipt will not
be acknowledged to the party filing them. They
should not be filed or considered as amendments
under rule 312, since they make no change in
the wording of the papers on file. See § 714.16.

# 604 Administration or Execution of Oath [R-21]

Extract From Rule 66. Officers authorized to ad-
minister oaths. (a) The oath or affirmation may be
made before any person within the United States au-
thorized by law to administer oaths, or, when made in

a foreign country, before any diplomatic or consular
officer of the United States authorized to administer
oaths, or before any officer having an official seal and
authorized to administer oaths in the foreign country
in which the applicant may be, whose authority shall
be proved by a certificate of a diplomatic or consular
officer of the United States, the oath being attested
in all cases in this and other countries, by the proper
official seal of the officer before whom the oath or
affirmation is made. Such oath or affirmation shall be
valid as to execution if it complies with the laws of
the state or country where made. When the person
before whom the oath or affirmation is made in this
country is not provided with a seal, his official charac-
ter shall be established by competent evidence, as by
a certificate from a clerk of a court of record or other
proper officer having a seal.

See § 602.04 (a) for foreign executed oath.

## 604.01 Seal [R-21]

When the person before whom the oath or
affirmation is made in this country is not pro-
vided with a seal, his official character shall be
established by competent evidence, as by a cer-
tificate from a clerk of a court of record or
other proper officer having a seal, except as
noted in § 604.03(a), in which situations no
seal is necessary. When the issue concerns the
authority of the person administering the oath,
the examiner should require proof of author-
ity. Depending on the jurisdiction, the "seal"
may be either embossed or rubber stamped. The
latter should not be confused with a stamped
legend indicating only the date of expiration of
the notary's commission.

See also § 602.04 (a) on foreign executed
oath and seal. In some jurisdictions, the seal of
the notary is not required but the official title of
the officer must be on the oath. This applies to
Alabama, California (certain notaries), Lou-
isiana, Maryland, Massachusetts. New Jersey,
New York, Ohio, Puerto Rico, Rhode Island,
South Carolina and Virginia.

## 604.02 Venue [R-31]

That portion of an oath or affidavit indicat-
ing where the oath is taken is known as the
venue. Where the county and state in the
venue agree with the county and state in the
seal, no problem arises. If the venue and seal
do not correspond in county and state, the
jurisdiction of the notary must be determined
from statements by the notary appearing on the
oath, or from the listing at § 604.03. Venue and
notary jurisdiction must correspond or the oath
is improper. The oath should show on its face
that it was taken within the jurisdiction of the
certifying officer or notary. This may be given

either in the venue or in the body of the jurat.
Otherwise, a new oath or declaration, or a
certificate of the notary that the oath was
taken within his jurisdiction, must be required.
Ex parte Delavoye, 1906 C.D. 320; 124 O.G.
626; Ex parte Irwin, 1928 C.D. 13; 367 O.G.
701.

The following language may be used in an
Office action where the venue is not shown :

[1] The oath in this application lacks the
statement of venue. To correct this defect, ap-
plicant is required to furnish either a new
oath or declaration in proper form, identify-
ing the application by serial number and date
of filing, or a certificate by the officer before
whom the original oath was taken stating that
he was within his jurisdiction when he ad-
ministered that oath.

Where the seal and venue differ the appro-
priate statement on the "Notice of Informal
Patent Application" form PO-152 should be
checked.

## 604.03 Notaries and Extent of Juris- diction

The extent of the jurisdiction of the notaries
in the various states is given below.

COUNTY ONLY

Louisiana

Texas
Mississippi

VARIABLE JURISDICTION

(See explanatory paragraphs below)

Alabama (a)
Missouri (e)

Florida (b)
Nebraska (a)

Hawaii (c)
Ohio (f)

Iowa (d)
Tennessee (g)

Kansas (e)
Virginia (h)

Kentucky (d)
West Virginia (d)

STATEWIDE

All other states

(a) Alabama and Nebraska notaries are ap-
pointed for counties and for state at large.

(b) Florida notary commissions are cus-
tomarily for state at large but may be restricted
by commission to less than the state at large.

(d) In Iowa, Kentucky and West Virginia it
is limited to county for which appointed, but
notary in any county may qualify and act as
notary in any other county.

## 604.03(a)

(e) The jurisdiction of Kansas and Missouri
notaries is coextensive with county of appoint
ment and adjoining counties.

(f) In Ohio, notaries other than attorneys are
appointed by the Governor for a term of 5 years
and have power to act only in county for which
appointed. An attorney or any person certified
by a judge of the court of common pleas of the
county in which he resides as qualified for the
duties of official stenographic reporter of such
state, may, however be commissioned for the
entire state. The extent of jurisdiction is stated
near the notary's signature.

(g) Tennessee notary publics commissioned
in one county may file in county court of any
other county and thereupon may exercise the
function of his office in such other county. In
such cases, however, notary must attach to his
certificate a statement that he is qualified in the
county in which he acts. Notaries at large are
commissioned by the Secretary of the State.
Notary's signature must indicate that he is so
qualified. Special seal is prescribed by the Sec-
retary of State.

(h) In Virginia, notaries are limited to city
or county for which appointed except that
notary for city may act in county or city con-
tiguous thereto, and a notary for a county may
act in city contiguous thereto. Notaries may be
appointed for two or more counties and cities or
for the state at large.

The notary does not have to state when his
commission expires but if he does so state, the
oath should be inspected to determine whether
or not the notary's commission had expired at
the date of execution of the oath.

# 604.03 (a) Notarial Powers of Some Military Officers

Public Law 506 (81st Congress, Second Ses-
sion) Article 136: (a) The following persons
on active duty in the armed forces . . . shall
have the general powers of a notary public and
of a consul of the United States, in the per-
formance of all notarial acts to be executed by
members of any of the armed forces, wherever
they may be, and by other persons subject to
this code [Uniform Code of Military Justice]
outside the continental limits of the United
States:

(1) All judge advocates of the Army and
Air Force;

(2) All law specialists;

(3) All summary courts-martial;

(4) All adjutants, assistant adjutants, act-
ing adjutants, and personnel adjutants;

(5) All commanding officers of the Navy
and Coast Guard;

(6) All staff judge advocates and legal offi-
cers, and acting or assistant staff judge advo-
cates and legal officers; and

(7) All other persons designated by regula-
tions of the armed forces or by statute.

(d) The signature without seal of any such
person acting as notary, together with the title
of his office, shall be prima facie evidence of
his authority.

## 604.04 Consul [R-31]

When the oath is made in a foreign country,
the authority of any officer other than a diplo-
matic or consular officer of the United States
authorized to administer oaths must be proved
by certificate of a diplomatic or consular officer
of the United States. See rule 66, § 604. This
proof may be through an intermediary ; e.g., the
consul may certify as to the authority and juris-
diction of another official who, in turn, may cer-
tify as to the authority and jurisdiction of the
officer before whom the oath is taken.

## 604.04(a) Consul-Omission of Cer- tificate [R-31]

Where the oath is taken before an officer in
a foreign country other than a diplomatic or
consular officer of the United States and whose
authority is not authenicated, the application
is nevertheless given a filing date for purposes
of examination. The examiner, in his first
Office action, should note this informality and
require either authentication of the oath by an
appropriate diplomatic or consular officer or a
declaration (rule 68). The following language
is suggested :

[1] "The oath is objected to as being informal
in that it lacks authentication by a diplomatic
or consular officer of the United States; rule
66(a). This informality can be overcome
either by forwarding the original oath to the
appropriate officer for authentication or by
filing a declaration (rule 68), if applicant
wishes to preserve his original filing date. If
authentication is desired, applicant should re-
quest return of the oath for this purpose. Such
request must be accompanied by an order for
a copy of the oath to be retained in the file
until the properly authenticated oath is re-
turned. After the oath has been authenticated,
it should be returned promptly to the Patent
Office."

At the time of the next Office action the
request for return of the oath, together with
the application file and the copy of the oath,
is submitted to the group director. If the
request is approved by him, the oath will be

604.06

returned to the applicant by the examining
group.

### 604.05 Consular Fee Stamp

All papers executed on or after June 28, 1955,
that formerly required the consular fee stamp,
are acceptable without such stamp.

### 604.06 By Attorney in Case

The language of rule 66 and 35 U.S.C.
115 is such that an attorney in the case is no
longer barred from administering the oath as
notary. The Office presumes that an attorney
acting as notary is cognizant of the extent of his
authority and jurisdiction and will not know-

ingly jeopardize his client's rights by perform-
ing an illegal act. If such practice is permis-
sible under the law of the jurisdiction where
the oath is administered, then the oath is a valid
oath.

The law of the District of Columbia pro-
hibits the administering of oaths by the attor-
ney in the case and hence the old bar still ap-
plies in the case of oaths administered in the
District of Columbia. If the oath is known to
be void because of being administered by the
attorney in a jurisdiction where the law holds
this to be invalid, the proper action for the
Office to take is to strike the application since
there is in effect no proper application before
the Office and the examiner will refer the file
to the solicitor's office to initiate such action.
(Riegger v. Beierl, 1910 C.D. 12; 150 O.G.
826). See rule 66 and § 604. [R-24]

## 605 Applicant [R-29]

Rule 41. Applicant for patent. (a) A patent must be
applied for and the application papers must be signed
and the necessary oath or declaration executed by the
actual inventor in all cases, except as provided by rules
42, 43, and 47. (See rule 60)

(b) Unless the contrary is indicated, the word "ap-
plicant" when used in these rules refers to the inventor.
joint inventors who have applied for a patent, or to
the person mentioned in rules 42, 43, or 47 who has
applied for a patent in place of the inventor.

Extract from Rule 45. Joint inventors. (a) Joint
inventors must apply for a patent jointly and each
must sign the application papers and make the re-
quired oath or declaration ; neither of them alone, nor
less than the entire number, can apply for a patent
for an invention invented by them jointly, except as
provided in rule 47.

For convertibility from a joint to sole or sole
to joint application, see § 201.03.

Rule 46. Assigned inventions and patents. In case
the whole or a part interest in the invention or in the
patent to be issued is assigned, the application must
still be made by the inventor or one of the persons
mentioned in rules 42, 43, or 47. However, the patent
may be issued to the assignee or jointly to the inventor
and the assignee as provided in rule 334.

This section concerns filing by the actual in-
ventor. If filed by other, see § 409.03.

### NOTE

Disposition of application by inventor, § 301.
Inventor dead or insane, § 409.

#### 605.01 Applicant's Citizenship

The statute (35 U.S.C. 115) requires an ap-
plicant to state his citizenship. Where an
applicant is not a citizen of any country, a

statement to this effect is accepted as satis-
fying the statutory requirement; but a state-
ment as to citizenship applied for or first
papers taken out looking to future citizenship
in this (or any other) country does not meet
the requirement.

# 605.02 Applicant's Residence [R-35]

Applicant's place of residence (not to be con-
fused with his Post Office address) can be fur-
nished by the attorney. In the case of an ap-
plicant who is in the U.S. Army or U.S. Navy,
a statement to that effect is sufficient as to
residence. For change of residence see
§ 717.02(b).

When the post office address is supplied but
the residence is omitted, the post office address
is presumed to be the city and state of his resi-
dence. Applicant should be so notified by us-
ing language similar to that suggested below.

[1] "Applicant's residence has been omitted
from the papers. The city and state of his
post office address will be presumed to be the
city and state of his residence. If the above
is incorrect, applicant should submit a state-
ment of his place of residence no later than at
the time of payment of the issue fee."

If both the post office address and residence
are incomplete, not uniform or omitted, the
"Notice of Informal Patent Application" form
PO-152 should be used. Note rule 33(a).

# 605.03 Applicant's Post Office Address [R-35]

Applicant's post office address means that
address at which he customarily receives his
mail. The post office address should include
the ZIP Code designation.

The object of requiring applicant's post of-
fice address is to enable the Office to communi-
cate directly with the applicant if desired;
hence, the address of the attorney with in-
structions to send communications to applicant
in care of the attorney is not sufficient.

If the post office address is entirely omitted
it must be supplied by a letter over the appli-
cant's own signature. Where, however, having
given complete data as to his residence, the
applicant identifies his post office address only
by street and number, it is assumed and so
accepted, that the city and state of his resi-
dence are the city and state of his post office
address.

Any amendment of the post office address re-
quires the signature of the applicant himself.
The "Notice of Informal Patent Application"
attachment forin PO-152 is used to notify appli-

cant that the post office address is incomplete or
omitted. Note rule 33 (a).

# 605.04 Applicant's Signature and Name [R-29]

Rule 57. Signature. The application must be signed
by the applicant in person. The signature of the oath
or declaration will be accepted as the signature to the
application provided the oath or declaration is attached
to and refers to the specification and claims to which
it applies. Otherwise the signature must appear at
the end of the specification after the claims. Full
names must be given, including at least one given
name without abbreviation together with any other
given name or initial.

The signing and execution by the applicant
of certain applications may be omitted.
§§ 201.06 and 201.07.

NOTE: Signature to response see §§ 714.01 (a)
to (e).

# 605.04(a) Single Signature Form [R-24]

The single signature form should be exe-
cuted only when attached to a complete appli-
cation as the last page thereof. Such forms
are shown as 16 and 16a in the List of Forms in
the Rules of Practice booklet.

# 605.04(b) One Full Given Name Required [R-35]

All applications which disclose the full first
and last names with middle initial or name,
if any, of the applicant at any place in the
application papers will be received and con-
sidered as a sufficient compliance with rule 57
of the Rules of Practice.

When a full given name of the applicant does
not appear either in the signature or elsewhere
in the papers the examiner will, in the first
official action, require an amendment over ap-
plicant's signature supplying the omission, and
he will not pass the application to issue until
the omission has been supplied unless a state-
ment be filed over the applicant's own signature
setting forth that his name as signed contains
at least one given name without abbreviation
or what is in fact his full first name.

No affidavit should be required.

The requirement should be made only when
all of the given names in the signature appear
as mere initials or as what can be only an
abbreviation of a name.

Rule 57 requires "full names". One given
name without abbreviation, together with any

other given name or initial must appear some-
where in the papers as filed. Otherwise, ap-
propriate amendment is required.

In an application where the name is type-
written with a middle name or initial, but the
signature is without such middle name or ini-
tial, action should be taken as follows:

In the first Office letter, call attention to the
lack of uniformity and request information
over the applicant's signature as to the correct
form of his name, together with any necessary
amendment.

If applicant, in reply, gives the name with-
out the middle name or initial unaccompanied
by any instructions to amend the typewritten
name, the reply may be interpreted as a direc-
tion to cancel the middle name or initial from
the application. It is necessary however, that
such surplus portion of the name, if it appears
printed on the drawing, should be removed
therefrom. This can be done by the Office
draftsman.

If applicant gives the name with the middle
name or initial, interpret the reply as a direc-
tion that the middle name or initial is to be
used in the name on the printed patent. As
the printer takes the name from the face of
the file wrapper, the middle name or initial
should be added thereto in red ink.

If applicant fails to answer the request and
the case is otherwise ready for issue, prepare
an examiner's amendment indicating that the
name on the drawing has been corrected to
correspond with the signature or signatures,
have the draftsman correct the drawing, and
pass the case to issue. This cannot be done if
there are inconsistencies in the signatures of the
same applicant.

There should be uniformity notwithstanding
that lack of it is not sufficient to affect the
validity of the patent.

When the name on the file wrapper is cor-
rected, the file should be sent to the Application
Division for correction of its records.

# 605.04(c) Applicant Changes Name [R-35]

In cases where an applicant's name has been
changed after his application has been filed
and the applicant desires that the patent when
issued carry an endorsement as to the change
in his name, he must submit a recording fee
accompanied by either an affidavit signed with
both names and setting forth the procedure
whereby the change of name was effected, or a
certified copy of the court order, such papers
are recorded by the Assignment Division where
the new name is added on the file wrapper.

605.05(a)

The Assignment Division forwards the file to
the Application Division for a change in their
records.

No change is made on the face of the file
by the clerk of the examining group. A suit-
able endorsement being made by the Assignment
Division. When ready for allowance, the case
should be sent to the Drafting Division for the
addition of the new name to the drawing if
there is already a name on the drawing.

Where the change of name is merely by
amendment, such as the addition of a full first
name or a middle initial and no affidavit is
required, the file is sent to the Application
Division for a change in their records and if
the application is assigned it will be forwarded
by the Application Division to the Assignment
Division for a change in assignment record.

## 605.04(d) Applicant Unable to Write

If the applicant is unable to write, his mark
as affixed to the application must be attested
to by a witness. In the case of the oath, the
notary's signature to the jurat is sufficient to
authenticate the mark.

## 605.04(e) May Use Title With Signa- ture

It is permissible for an applicant to use a
title of nobility or other title, such as "Dr.",
in connection with his signature. The title
will not appear in the printed patent.

## 605.04(f) Signature on Joint Appli- cations-Order of Names [R-24]

It is not essential that the names appear in
the same order in the signatures to the petition,
specification, oath or declaration, and drawing.

The order of names of joint patentees in the
heading of the patent is taken from the order
in which the typewritten names appear in the
original oath or declaration accompanying the
application papers. Care should therefore be
exercised in selecting the preferred order of the
typewritten names of the joint inventors, be-
fore filing, as requests for subsequent shifting
of the names would entail changing numerous
records in the Office. Since the particular
order in which the names appear is of no conse-
quence insofar as the legal rights of the joint
applicants are concerned. no changes will be
made except for good reasons. A request to
change the order of names must be signed by
either the attorney or agent of record or all the

applicants. It is suggested that all typewritten
and signed names appearing in the application
papers should be in the same order as the type-
written names in the oath or declaration.

In those instances where the joint applicants
file separate oaths or declarations, the order of
names is taken from the order in which the
several oaths or declarations appear in the ap-
plication papers unless a different order is
requested at the time of filing.

# 605.04 (g) When Name Is Corrected, Send to Application Division [R-35]

When the name is corrected by amendment
or the order of the names is changed, the file
should be sent to the Application Division for
correction of the name in its record. When
the name is changed, see § 605.04 (c).

## 605.04(h) Signature to Drawing [R-29]

Signatures and names are not permitted
within the sight space of a drawing prepared
under rule 84 as amended on May 28, 1971. All
drawings filed after January 1, 1972 must com-
ply with the amended rules. The name of the
applicant and other identifying information
may be placed at the top center of the drawing.
See § 608.02.

## 605.05 Administrator, Executor, or Other Legal Representative [R-24]

In an application filed by a legal representa-
tive of the inventor, the specification should
not be written in the first person. Instead of
the usual "I have found," the wording should
be "it was found."

For prosecution by administrator or execu-
tor, see § 409.01 (a).

For prosecution by heirs, see §§ 409.01 (a) and
409.01 (d).

For prosecution by representative of legally
incapacitated inventor, see § 409.02.

For prosecution by other than inventor, see
§ 409.03.

## 605.05(a) Signature of Legal Repre- sentative

If the drawing is signed by the legal repre-
sentative it must follow this form :

John A. Jones, deceased,
by Mary A. Jones, Administratrix.

The other signatures must either be in the
above form or:

Mary A. Jones
Administratrix of Estate of
John A. Jones, deceased.

If the drawing is signed by the attorney, this
form must be used :

John A. Jones, deceased,
by Mary A. Jones, Administratrix,
by William A. Smith, Atty.
If the specification bears the signature of the
administrator or executor but omits the matter,
"administrator of the Estate of John Jones,
deceased," the matter can be added by amend-
ment. The examiner may make the amend-
ment if the case is otherwise ready for issue.

# 605.06 Filing by Other Than Inventor [R-24]

See § 409.03.

## 606 Title of Invention

Rule 72(a). The title of the invention, which should
be as short and specific as possible, should appear as a
heading on the first page of the specification, if it does
not otherwise appear at the beginning of the applica-
tion.

## 606.01 Examiner May Require Change in Title [R-29]

Where the title is not descriptive of the in-
vention claimed, the examiner should require
the substitution of a new title that is clearly
indicative of the invention to which the claims
are directed. This may result in slightly
longer titles, but the loss in brevity of title
will be more than offset by the gain in its
informative value in indexing, classifying,
searching, etc. If a satisfactory title is not
supplied by the applicant, the examiner may
change the title by examiner's amendment on
or after allowance.

If a change in title is the only change being
made by the examiner at the time of allow-
ance a separate examiner's amendment need
not be prepared. The change in title will be
incorporated in the notice of allowance. This
will be accomplished by placing an "X" in the
designated box on the notice of allowance form
and entering thereunder the title as changed by
the examiner who should initial the face of the
file wrapper.

However, if an examiner's amendment must
be prepared for other reasons any change in
title will be incorporated therein.

Inasmuch as the words "improved", "im-
provement of" and "improvement in" are not

considered as part of the title of an invention,
the Patent Office does not include these words
at the beginning of the title of the invention.

## 607 Filing Fee [R-35]

Applications filed before October 25, 1965,
required only a basic filing fee. That part of
the Fee Act, effective October 25, 1965, per-
taining to claims presented after an application
is filed, does not apply to these applications.
See § 714.10.

Applications filed on or after October 25,
1965, are subject to the following fees and prac-
tice :

When filing an application, a basic fee of $65
entitles applicant to present (10) claims includ-
ing not more than (1) in independent form. If
claims in excess of the above are included at
the time of filing, an additional fee of $10 is
required for each independent claim in excess
of one, and a $2 fee for each claim in excess of
ten (10) claims (whether independent or de-
pendent).

Upon submission of an amendment (whether
entered or not) affecting the claims, payment
of the following additional fees is required in
a pending application :

$10 __ for each independent claim pending in
excess of the number of independent
claims already paid for.

$2 __ for each claim pending in excess of the
total number already paid for. (It
should be recognized that the basic
$65 fee pays for ten (10) claims, one
of which may be independent, re-
gardless of the number actually
filed.)

The Application Division has been authorized
to accept all applications, otherwise acceptable,
if the basic fee of $65 is submitted, and to re-
quire payment of the deficiency within a stated
period upon notification of the deficiency.

Rule 22. Fees payable in advance. Fees and charges
payable to the Patent Office are required to be paid
in advance, that is, at the time of making application
for any action by the Office for which a fee or charge
is payable.

Amendments before the first action, or not
filed in response to an Office action, presenting
additional claims in excess of the number al-
ready paid for, not accompanied by the full ad-
ditional fee due, will not be entered in whole or
in part and applicant will be so advised. Such
amendments filed in reply to an Office action
will be regarded as not responsive thereto and
the practice set forth in § 714.03 will be followed.

The additional fees, if any, due with an
amendment are calculated on the basis of the

claims (total and independent) which would be
present, if the amendment were entered. The
amendment of a claim, unless it changes a de-
pendent claim to an independent claim, and the
replacement of a claim by a claim of the same
type do not require any additional fees.

For purposes of determining the fee due the
Patent and Trademark Office, a claim will be
treated as dependent if it contains reference to
one other claim in the application. A claim de-
termined to be dependent by this test will be
entered if the fee paid reflects this deter-
mination.

Any claim which is in dependent form but
which is so worded that it, in fact is not, as for
example it does not include every limitation of
the claim on which it depends, will be required
to be canceled as not being a proper dependent
claim; and cancellation of any further claim
depending on such a dependent claim will be
similarly required. The applicant may there-
upon amend the claims to place them in proper
dependent form, or may redraft them as inde-
pendent claims, upon payment of any neces-
sary additional fee.

After a requirement for restriction, non-
elected claims will be included in determining
the fees due in connection with a subsequent
amendment unless such claims are canceled.

An amendment accompanying the papers con-
stituting the separate application under rule 60
canceling claims from the certified copy will
be effective to diminish the number of claims to
be considered in calculating the filing fees to
be paid.

The additional fees, if any, due with an
amendment are required prior to any consider-
ation of the amendment by the examiner.

Money paid in connection with the filing of
a proposed amendment will not be refunded
by reason of the nonentry of the amendment.
However, unentered claims will not be counted
when calculating the fee due in subsequent
amendments.

Amendments affecting the claims cannot serve
as the basis for granting any refund.

Forms 3.51 and 3.52, located in 37 Code of
Federal Regulations, may be used as an aid in
determining the required fee. Copies of these
forms are available from the Correspondence
and Mail Branch and from the receptionist in
the lobby of building 3 of the Patent and Trade-
mark Office. [R-46]

## 607.01 Fee Exempt [R-22]

There were two types of Fee Exempt appli
cations: (a) those filed under 35 U.S.C. 266,
repealed as of October 25, 1965 and (b) those

filed under a ruling of the Comptroller Gen-
eral's Opinion B-111,648 also abrogated as of
the same date:

Beginning October 25, 1965, there are no
longer any applications which are exempt from
the filing fee or the issue fee. Applications filed
before this date without the filing fee under the
provisions previously in effect are subject to
payment of the issue fee.

## 607.02 Returnability of Fees [R-46]

All questions pertaining to the return of fees
are referred to the Refund Branch of the Ac-
counting and Cost Analysis Division of the
Office of Finance. No opinions should be ex-
pressed to attorneys or applicants as to whether
or not fees are returnable in particular cases.

## 608 Disclosure [R-35]

In return for a patent, the inventor gives as
consideration a complete revelation or dis-
closure of the invention for which he seeks
protection. All amendments or claims must
find basis in the original disclosure, or they
involve new matter. Applicant may rely for
disclosure upon the specification with original
claims and drawings, all as filed complete. See
rule 118 and § 608.04.

If during the course of examination of a pat-
ent application, an examiner notes the use of
language that could be deemed offensive to any
race, religion, sex, ethnic group, or nationality,
he should object to the use of the language as
failing to comply with the Rules of Practice.
Rule 3 proscribes the presentation of papers
which are lacking in decorum and courtesy.
There is a further basis for objection in that
the inclusion of such proscribed language in a
Federal Government publication would not be
in the public interest. Also, the inclusion in
application drawings of any depictions or
caricatures that might reasonably be consid-
ered offensive to any group should be similarly
objected to, on like authority.

The examiner should not pass the applica-
tion to issue until such language or drawings
have been deleted, or questions relating to the
propriety thereof fully resolved.

## 608.01 Specification [R-46]

35 U.S.C. 22. Printing of papers filed. The Commis-
sioner may require papers filed in the Patent and
Trademark Office to be printed or typewritten.

Rule 71. Detailed description and specification of the
invention. (a) The specification must include a writ-
ten description of the invention or discovery and of

the manner and process of making and using the
same, and is required to be in such full, clear, con-
cise, and exact terms as to enable any person skilled
In the art or science to which the invention or dis-
covery appertains, or with which it is most nearly
connected, to make and use the same.

(b) The specification must set forth the precise in-
vention for which a patent is solicited, in such manner
as to distinguish it from other inventions and from
what is old. It must describe completely a specific
embodiment of the process, machine, manufacture,
composition of matter or improvement invented, and
must explain the mode of operation or principle when-
ever applicable. The best mode contemplated by the in-
ventor of carrying out his invention must be set forth.

(c) In the case of an improvement, the specification
must particularly point out the part or parts of the
process, machine, manufacture, or composition of mat-
ter to which the improvement relates, and the descrip-
tion should be confined to the specific improvement and
to such parts as necessarily cooperate with it or as may
be necessary to a complete understanding or descrip-
tion of it.

Certain cross notes to other related applica-
tions may be made. References to foreign ap-
plications or to applications identified only by
the attorney's docket number should be re-
quired to be cancelled. See rule 78 and § 202.01.

Rule 52. Language, paper, writing, margins. (a)
The specification and oath or declaration must be in
the English language. All papers which are to become
a part of the permanent records of the Patent and
Trademark Office must be legibly written or printed
in permanent ink or its equivalent in quality. All of the
application papers must be presented in a form having
sufficient clarity and contrast between the paper and
the writing or printing thereon to permit the produc-
tion of readily legible copies in any number by use of
photographic, electrostatic, photo-offset, and micro-
filming processes. If the papers are not of the required
quality, substitute typewritten or printed papers of
suitable quality may be required.

(b) The application papers (specification, including
claims, oath, or declaration, papers as provided for in
rules 42, 43, 47, etc.) and also papers subsequently
filed, must be plainly written on but one side of the
paper. The size of all sheets of paper should be S to
81/2 by 101/2 to 13 inches (20.3 to 21.6 cm. by 26.6 to
33.0 cm.). A margin of 11/2 inches (3.8 cm.) must be
reserved on the left-hand side and on the top of each
page of the specification, including claims. The lines
must not be crowded too closely together; typewritten
lines should be double spaced. The pages of the specifi-
cation, including claims, should be numbered consecu-
tively, starting with 1, the numbers being placed in the
center of the bottom margins.

have been made before the application was signed and
sworn to or declaration made, and should be dated
and initialed or signed by the applicant in a mar-
ginal note or footnote on the same sheet of paper to
indicate such fact. No such alterations are permissible
after execution of the application papers. (See rule 56.)

Rule 58. Chemical and mathematical formulas and
tables. (a) The specification, including the claims, may
contain chemical and mathematical formulas, but shall
not contain drawings or flow diagrams. The descrip-
tion portion of the specification may contain tables ;
claims may contain tables only if necessary to conform
to 35 U.S.C. 112.

(b) All tables and chemical and mathematical for-
mulas in the specification, including claims, and amend-
ments thereto, must be on pure white durable paper,
the surface of which is calendered and smooth, in
order to permit use as camera copy when printing any
patent which may issue. A good grade of bond paper is
acceptable ; watermarks should not be prominent. India
ink or its equivalent, or solid black typewriter ribbon
must be used to secure perfectly black solid lines.

(c) To facilitate camera copying when printing,
the width of formulas and tables as presented should
be limited normally to 5 inches (12.7 cm.) so that it
may appear as a single column in the printed patent.
If it is not possible to limit the width of a formula or
table to 5 inches (12.7 cm.), it is permissible to present
the formula or table with a maximum width of 10%
inches (27.3 cm.) and to place it sideways on the sheet,
in which case the formula or table will appear printed
across both columns of the page in the printed patent.
Typewritten characters used in such formulas and
tables must be from a block (nonscript) type font or
lettering style having capital letters which are at least
0.085 incli (2.2 mm.) high (elite type). Hand lettering
must be neat, clean, and have a minimum character
height of 0.085 inch (2.2 mm.). A space at least 14 inch
(6.4 mm.) high should be provided between the for-
mulas and tables and the text. Tables should have
the lines and columns of data closely spaced to con-
serve space, consistent with high degree of legibility.

In order that specifications may be expedi-
tiously handled by the Office, page numbers
should be placed at the center of the bottom
of each page. It is a common practice and
a commendable one, to consecutively number all
the lines of each page (and the lines of each
claim). A top margin of at least 11/2 inches
should be reserved on each page to prevent
possible mutilation of text when the papers are
punched for insertion in a file wrapper.

Applicants should make every effort to file
patent applications in a form that is clear and
reproducible. The Office may accept for filing
date purposes papers of reduced quality but will
require that acceptable copies be supplied for
further processing. Typed. mimeographed.

xeroprinted, multigraphed or non-smearing
carbon copy forms of reproduction are
acceptable.

Legibility includes ability to be photocopied
and photomicrographed so that suitable re-
prints can be made. This requires a high con-
trast, with black lines and a white background.
Gray lines and/or a gray background sharply
reduce photo reproduction quality. Legibility
of some application papers may become im-
paired due to abrasion or aging of the printed
material during examination and ordinary han-
dling of the file. It may be necessary to require
that legible and permanent copies be furnished
at later stages after filing, particularly when
preparing for issue.

Some of the patent application papers re-
ceived by the Patent and Trademark Office are
copies of the original, ribbon copy. These are
acceptable if, in the opinion of the Office, they
are legible and permanent.

The paper used must have a surface such that
amendments may be written thereon in ink. So-
called "Easily Erasable" paper having a special
coating so that erasures can be made more easily
may not provide a "permanent" copy. Rule 52
(a). If a light pressure of an ordinary (pencil)
eraser removes the imprint, the examiner
should, as soon as this becomes evident, notify
applicant that it will be necessary for him to
order a copy of the specification and claims to
be made by the Patent and Trademark Office at
his expense for incorporation in the file. It is
not necessary to return this copy to applicant
for signature.

See in re Benson, 1959 C.D. 5; 744 O.G. 353.
Reproductions prepared by heat-sensitive, hec-
tographic or spirit duplication processes are
also not satisfactory.

As stated in rule 52 the specification as well
as oath or declaration must be in the English
language.

The specification is sometimes in such faulty
English that a new specification is necessary,
but new specifications encumber the record and
require additional reading, and hence should
not be required or accepted except in extreme
cases.

The specification does not require a date.

If a newly filed application obviously fails to
disclose an invention with the clarity required
by 35 U.S.C. 112, revision of the application
should be required. See § 702.01.

As the specification is never returned to ap-
plicant under any circumstance, he should re-
tain a line for line copy thereof, each line, pref-
erably, having been consecutively numbered on
each page. In amending, the attorney or the
applicant requests insertions, cancellations, or
alterations, giving the page and the line.

Rule 52(c) relating to interlineations and
other alterations is strictly enforced. See in
re Swanberg, 129 USPQ 364.

# USE OF METRIC SYSTEM OF MEASUREMENTS IN PATENT APPLICATIONS

In order to minimize the necessity in the
future for converting dimensions given in the
English system of measurements to the metric
system of measurements when using printed
patents as research and prior art search docu-
ments, all patent applicants are strongly en-
couraged to use either (1) only metric (S.I.)
units, or (2) English units together with their
metric system equivalents, when describing their
inventions in the specifications of patent ap-
plications. This practice, however, is not being
made mandatory at this time.

The initials S.I. stand for "Systeme Interna-
tional d'Unites", the French name for the In-
ternational System of Units, a modernized
metric system adopted in 1960 by the Inter-
national General Conference of Weights and
Measures based on precise unit measurements
made possible by modern technology.

This request is made as part of the long-range
program for conversion to metric units cur-
rently being conducted by the Federal Govern-
ment.

# FILING OF NON-ENGLISH LANGUAGE APPLICATIONS

The Patent and Trademark Office will ac-
cord a filing date to an application meeting the
requirements of 35 U.S.C. 111 even though some
or all of the application papers, including the
written description and the claims, is in a lan-
guage other than English and hence does not
comply with 37 CFR 1.52, provided :

(1) the oath or declaration, is signed and
physically attached to the specification and
claims to which it refers; and

(2) the application papers are accompanied
by a statement, in English, from the appli-
cant. his attorney or agent, certifying that it
has been considered necessary to file the non-
English language application in order to save
a foreign priority date or prevent the run-
ning of a statutory bar.

A verified English translation of the non-
English language papers should either accom-
pany the application papers or be filed in the
Office no later than two months after a notice
requesting the translation has been mailed by
the Office.

A subsequently filed verified English transla-
tion must contain the complete identifying data
for the application in order to permit prompt
association with the papers initially filed. Ac-

cordingly, it is strongly recommended that the
original application papers be accompanied by
a cover letter and a self-addressed return post
card, each containing the following identifying
data in English: (a) applicant's name (s) ; (b)
title of invention; (c) number of pages of speci-
fications, claims, and sheets of drawings; (d)
whether oath or declaration was filed and (e)
amount and manner of paying the filing fee.

The translation must be a literal translation
verified as such by the translator, and must be
accompanied by a signed request from the ap-
plicant, his attorney or agent, asking that the
verified English translation be used as the copy
for examination purposes in the Office. If the
verified English translation does not conform
to idiomatic English and United States practice
it should be accompanied by a preliminary
amendment making the necessary changes
without the introduction of new matter pro-
hibited by 35 U.S.C. 132. In the event the
verified literal translation is not timely filed in
the Office the application will be regarded as
abandoned.

It should be recognized that this practice is
intended for emergency situations to prevent
loss of valuable rights and should not be rou-
tinely used for filing applications. There are at
least two reasons why this should not be used
on a routine basis. First, there are obvious dan-
gers to applicant and the public if he fails to
obtain a correct literal translation. Second. the
filing of a large number of applications under
the procedure will create significant adminis-
trative burdens on the Office.

The practice will be closely monitored to de-
termine whether or not it should be continued.
[R-47]

# 608.01 (a) Arrangement of Applica- tion [R-29]

Rule 77. Arrangement of application. The follow-
ing order of arrangement should be observed in fram-
ing the application :

(a) Title of the invention ; or an introductory por-
tion stating the name, citizenship, and residence of the

applicant, and the title of the invention may be used.

(b) Abstract of the disclosure.

(d) Brief summary of the invention.

(e) Brief description of the several views of the
drawing, if there are drawings.

(f) Detailed description.

(g) Claim or claims.

(h) Signature. (See rule 57.)

NOTE

Design patent specification, § 1503.01.
Plant patent specification, § 1605.

Reissue patent specification, § 1401.06.

The following order of arrangement is pref-
erable in framing the specification and, except
for the title of the invention, each of the lettered
items should be preceded by the headings
indicated.

(a) Title of the Invention.

(b) Abstract of the Disclosure.

(d) Background of the Invention.

1\. Field of the Invention.

2\. Description of the Prior Art.

(e) Summary of the Invention.

(f) Brief Description of the Drawing.

(g) Description of the Preferred Embodi-
ment (s).

(h) Claim(s).

# 608.01(b) Abstract of the Disclosure [R-46]

Rule 72(b). A brief abstract of the technical dis-
closure in the specification must be set forth immedi-
ately following the title and preceding the disclosure
in a separate paragraph under the heading "Abstract
of the Disclosure". The purpose of the abstract is to
enable the Patent and Trademark Office and the pub-
lic generally to determine quickly from a cursory in-
spection the nature and gist of the technical disclosure,
and the abstract shall not be used for interpreting the
scope of the claims.

In all cases which lack an abstract, the
examiner in the first Office action should re-

quire the submission of a brief abstract of the
technical disclosure in the specification, the ab-
stract to appear immediately after the title of
the invention and preceding the disclosure in a
separate paragraph under the heading "Ab-
stract of the Disclosure." Responses to such
actions should be treated under rule 111(b)
practice like any other formal matter.

Under current practice, in all instances where
the application contains an abstract when sent
to issue, the abstract will be printed on the
patent.

Upon passing the case to issue, the examiner
should see that the abstract is an adequate and
clear statement of the contents of the disclosure
and generally in line with the guidelines. The
abstract shall be changed by the examiner's
amendment in those instances where deemed
necessary.

# GUIDELINES FOR THE PREPARATION OF PATENT ABSTRACTS

## Background

The Rules of Practice in Patent Cases re-
quire that each application for patent include
an abstract of the disclosure, rule 72(b).

The content of a patent abstract should be
such as to enable the reader thereof, regardless
of his degree of familiarity with patent docu-
ments, to ascertain quickly the character of the
subject matter covered by the technical dis-
closure and should include that which is new
in the art to which the invention pertains.

The abstract is not intended nor designed for
use in interpreting the scope or meaning of the
claims, rule 72 (b).

## Content

A patent abstract is a concise statement of the
technical disclosure of the patent and should
include that which is new in the art to which the
invention pertains.

If the patent is of a basic nature. the entire
technical disclosure may be new in the art, and
the abstract should be directed to the entire
disclosure.

If the patent is in the nature of an improve-
ment in an old apparatus, process, product, or
composition, the abstract should include the
technical disclosure of the improvement.

In certain patents, particularly those for com-
pounds and compositions, wherein the proces :
for making and/or the use thereof are not
obvious, the abstract should set forth a process
for making and/or a use thereof.

If the new technical disclosure involves modi-
fications or alternatives, the abstract should

mention by way of example the preferred modi-
fication or alternative.

The abstract should not refer to purported
merits or speculative applications of the inven-
tion and should not compare the invention with
the prior art.

Where applicable, the abstract should include
the following: (1) if a machine or apparatus,
its organization and operation; (2) if an article,
its method of making; (3) if a chemical com-
pound, its identity and use; (4) if a mixture,
its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of
apparatus should not be given.

With regard particularly to chemical patents,
for compounds or compositions, the general
nature of the compound or composition should
be given as well as the use thereof, e.g., "The
compounds are of the class of alkyl benzene sul-
fonyl ureas, useful as oral anti-diabetics."
Exemplification of a species could be illustra-
tive of members of the class. For processes, the
type reaction, reagents and process conditions
should be stated, generally illustrated by a
single example unless variations are necessary.

### Language and Format

The abstract should be in narrative form and
generally limited to a single paragraph within
the range of 50 to 250 words. The form and
legal phraseology often used in patent claims,
such as "means" and "said," should be avoided.
The abstract should sufficiently describe the dis-
closure to assist readers in deciding whether
there is a need for consulting the full patent
text for details.

The language should be clear and concise and
should not repeat information given in the
title. It should avoid using phrases which can
be implied, such as, "This disclosure concerns,"
"The disclosure defined by this invention,"
"This disclosure describes," etc.

#### Responsibility

Preparation of the abstract is the responsibil-
ity of the applicant. Background knowledge of
the art and an appreciation of the applicant's
contribution to the art are most important in
the preparation of the abstract. The review of
the abstract, for compliance with these guide-
lines, with any necessary editing and revision
on allowance of the application is the responsi-
bility of the examiner.

#### Sample Abstract's

A heart valve with an annular valve body defining
an orifice and having a plurality of struts forming a
pair of cages on opposite sides of the orifice. A spheri-
cal closure member is captively held within the cages

and is moved by blood flow between open and closed
positions in check valve fashion. A slight leak or
backflow is provided in the closed position by making
the orifice slightly larger than the closure member.
Blood flow is maximized in the open position of the
valve by providing an inwardly convex contour on
the orifice defining surfaces of the body. An annular
rib is formed in a channel around the periphery of
the valve body to anchor a suture ring used to secure
the valve within a heart.

A method for sealing, by application of heat, over-
lapping closure panels of a folding box made from
paperboard having an extremely thin coating of
moisture-proofing thermoplastic material on opposite
surfaces. Heated air is directed at the surfaces to be
bonded, the temperature of the air at the point of
impact on the surfaces being above the char point
of the board. The duration of application of heat is
made so brief, by a corresponding high rate of ad-
vance of the boxes through the air stream, that
the coating on the reverse side of the panels remains
substantially non-tacky. The bond is formed im-
mediately after heating within a period of time for
any one surface point less than the total time of ex-
posure to heated air of that point. Under such con-
ditions the heat applied to soften the thermoplastic
coating is dissipated after completion of the bond by
absorption into the board acting as a heat sink with-
out the need for cooling devices.

Amides are produced by reacting an ester of a car-
boxylic acid with an amine, using as catalyst an
alkoxide of an alkali metal. The ester is first heated
to at least 75° C. under a pressure of no more than
500 mm. of mercury to remove moisture and acid
gases which would prevent the reaction, and then
converted to an amide without heating to initiate the
reaction.

# 608.01(c) Background of the Inven- tion [R-41]

The Background of the Invention ordinarily
comprises two parts:

(1) Field of the Invention: A statement of
the field of art to which the invention pertains.
This statement may include a paraphrasing of
the applicable U.S. patent classification defini-
tions. The statement should be directed to the
subject matter of the claimed invention.

(2) Description of the Prior Art: A para-
graph (s) describing to the extent practical the
state of the prior art known to the applicant,
including references to specific prior art where
appropriate. Where applicable, the problems
involved in the prior art, which are solved by
the applicant's invention, should be indicated.
See also §§ 608.01(a), 608.01 (p) and 707.05(b).

# 608.01(d) Brief Summary of Inven- tion [R-21]

Rule 73. Summary of the invention. A brief sum-
mary of the invention indicating its nature and sub-
stance, which may include a statement of the object of
the invention, should precede the detailed description.
Such summary should, when set forth, be commensurate
with the invention as claimed and any object recited
should be that of the invention as claimed.

Since the purpose of the brief summary of
invention is to apprise the public, and more
especially those interested in the particular art
to which the invention relates, of the nature of
the invention, the summary should be directed
to the specific invention being claimed, in con-
tradistinction to mere generalities which would
be equally applicable to numerous preceding
patents. That is, the subject matter of the in-
vention should be described in one or more
clear, concise sentences or paragraphs. Stereo-
typed general statements that would fit one
case as well as another serve no useful purpose
and may well be required to be canceled as
surplusage, and, in the absence of any illumi-
nating statement, replaced by statements that
are directly in point as applicable exclusively
to the case in hand.

The brief summary, if properly written to
set out the exact nature, operation and purpose
of the invention will be of material assistance
in aiding ready understanding of the patent
in future searches. See § 905.04. The brief sum-
mary should be more than a mere statement of
the objects of the invention, which statement
is also permissible under rule 73.

The brief summary of invention should be
consistent with the subject matter of the
claims. Note final review of application and
preparation for issue, § 1302.

# 608.01(e) Reservation Clauses Not Permitted

Rule 79. Reservation clauses not permitted. A res-
ervation for a future application of subject matter dis-
closed but not claimed in a pending application will
not be permitted in the pending application, but an
application disclosing unclaimed subject matter may
contain a reference to a later filed application of the
same applicant or owned by a common assignee dis-
closing and claiming that subject matter.

# 608.01(f) Brief Description of Draw- ings

Rule 74. Reference to drawings. When there are
drawings, there shall be a brief description of the

several views of the drawings and the detailed de-
scription of the invention shall refer to the different
views by specifying the numbers of the figures, and
to the different parts by use of reference letters or
numerals (preferably the latter).

The examiner should see to it that the fig-
ures are correctly described in the brief de-
scription of the drawing, that all section lines
used are referred to, and that all needed sec-
tion lines are used.

# 608.01(g) Detailed Description of In- vention [R-22]

A detailed description of the invention and
drawings follows the general statement of in-
vention and brief description of the drawings.
This detailed description, required by rule 71,
§ 608.01, must be in such particularity as to
enable any person skilled in the pertinent art
or science to make and use the invention without
involving extensive experimentation. An ap-
plicant is ordinarily permitted to use his own
terminology, as long as it can be understood.
Necessary grammatical corrections, however,
should be required by the examiner, but it
must be remembered that an examination is
not made for the purpose of securing gram-
matical perfection.

The reference characters must be properly
applied, no single reference character being
used for two different parts or for a given part
and a modification of such part. In the latter
case, the reference character, applied to the
"given part," with a prime affixed may advan-
tageously be applied to the modification.
Every feature specified in the claims must be
illustrated, but there should be no superfluous
illustrations.

The description is a dictionary for the claims
and should provide clear support or antecedent
basis for all terms used in the claims. See
rule 75, §§ 608.01(i), 608.01 (o), and 1302.01.

NOTE .- Completeness, § 608.01 (p).

# 608.01(h) Mode of Operation of In- vention [R-44]

The best mode contemplated by the inventor
of carrying out his invention must be set forth
in the description. The Office practice is to ac-
cept an operative example as sufficient to meet
this requirement of the Statute in the absence
of information to the contrary.

The question of whether an inventor has or
has not disclosed what he feels is his best mode
is a question separate and distinct from the
question of sufficiency of his disclosure, In re
Gay, 135 USPQ 311 (C.C.P.A. 1962) ; In re
Glass, 181 USPQ 31 (C.C.P.A. 1974). See 35
U.S.C. 112 and rule 71 (b).

In chemical cases, complete data necessary
for the preparation and use of at least one ex-
ample of the invention should be presented.

NOTE .- Completeness, § 608.01 (p).

# 608.01(i) Claims [R-35]

Rule 75. Claim (8). (a) The specification must con-
clude with a claim particularly pointing out and dis-
tinctly claiming the subject matter which the applicant
regards as his invention or discovery.

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

(c) When more than one claim is presented, they
may be placed in dependent form in which a claim
may refer back to and further restrict a single preced-
ing claim. Claims in dependent form shall be con-
strued to include all the limitations of the claim
incorporated by reference into the dependent claim.

(d) (1) The claim or claims must conform to the
invention as set forth in the remainder of the specifica-
tion and the terms and phrases used in the claims must
find clear support or antecedent basis in the descrip-
tion so that the meaning of the terms in the claims may
be ascertainable by reference to the description. (See
rule 58(a).)

(2) See rules 141 to 146 as to claiming different
inventions in one application.

(e) Where the nature of the case admits, as in the
case of an improvement, any independent claim should
contain in the following order, (1) a preamble com-
prising a general description of all the elements or
steps of the claimed combination which are conven-
tional or known, (2) a phrase such as "wherein the
improvement comprises," and (3) those elements, steps
and/or relationships which constitute that portion of
the claimed combination which the applicant considers
as the new or improved portion.

NOTE

Numbering of Claims, § 608.01 (j).
Form of Claims, § 608.01 (m).

Dependent claims, $ 608.01 (n).
Examination of claims, $ 706.
Claims in excess of fee, § 714.10 .** ***

# 608.01(j) Numbering of Claims

Rule 126. Numbering of claims. The original number-
ing of the claims must be preserved throughout the
prosecution. When claims are canceled, the remaining
claims must not be renumbered. When claims are
added, except when presented in accordance with rule
121(b), they must be numbered by the applicant con-
secutively beginning with the number next following
the highest numbered claim previously presented
(whether entered or not). When the application is
ready for allowance, the examiner, if necessary, will re-
number the claims consecutively in the order in which
they appear or in such order as may have been re-
quested by applicant.

In a single claim case, the claim is not num-
bered.

# 608.01(k) Statutory Requirement of Claims [R-22]

35 U.S.C. 112 requires that the applicant
shall particularly point out and distinctly
claim the subject matter which he regards as
his invention. The portion of the application
in which he does this forms the claim or
claims. This is an important part of the ap-
plication, as it is the definition of that for
which protection is granted.

# 608.01 (1) Original Claims

In establishing a disclosure, applicant may
rely not only on the specification and drawing
as filed but also on the original claims if their
content justifies it.

Where subject matter not shown in the draw-
ing or described in the specification is claimed
in the case as filed, and such original claim
itself constitutes a clear disclosure of this sub-
ject matter, then the claim should be treated on
its merits, and requirement made to amend the
drawing and specification to show this subject
matter. The claim should not be attacked
either by objection or rejection because this
subject matter is lacking in the drawing and
specification. It is the drawing and specifica-
tion that are defective; not the claim.

It is of course to be understood that this dis-
closure in the claim must be sufficiently specific
and detailed to support the necessary amend-
ment of the drawing and specification.

## 608.01(m) Form of Claims [R-22]

While there is no set statutory form for
claims, the present Office practice is to insist
that each claim must be the object of a sen-

tence starting with "I (or we) claim" (or the
equivalent). If, at the time of allowance, the
quoted terminology is not present, it is inserted
by the clerk. Each claim begins with a capital
letter and ends with a period. Periods may not
be used elsewhere in the claims except for ab-
breviations. A claim may be typed with the
various elements subdivided in paragraph form.

There may be plural indentations to further
segregate subcombinations or related steps. In
general, the printed patent copies will follow
the format used but printing difficulties or ex-
pense may prevent the duplication of unduly
complex claim formats.

Reference characters corresponding to ele-
ments recited in the detailed description and the
drawings may be used in conjunction with the
recitation of the same element or group of ele-
ments in the claims. The reference characters,
however, should be enclosed within parentheses
so as to avoid confusion with other numbers or
characters which may appear in the claims.
The use of reference characters is to be consid-
ered as having no effect on the scope of the
claims.

Many of the difficulties encountered in the
prosecution of patent applications after final
rejection may be alleviated if each applicant
includes, at the time of filing or no later than the
first response, claims varying from the broadest
to which he believes he is entitled to the most
detailed that he is willing to accept.

Claims should preferably be arranged in or-
der of scope so that the first claim presented is
the broadest. Where separate species are
claimed, the claims of like species should be
grouped together where possible and physically
separated by drawing a line between claims or
groups of claims. (Both of these provisions
may not be practical or possible where several
species claims depend from the same generic
claim.) Similarly, product and process claims
should be separately grouped. Such arrange-
ments are for the purpose of facilitating classi-
fication and examination.

The form of claim required in rule 75(e) is
particularly adapted for the description of im-
provement type inventions. It is to be con-
sidered a combination claim. The preamble of
this form of claim is considered to positively
and clearly include all the elements or steps re-
cited therein as a part of the claimed combina-
tion.

For rejections not based on prior art see
$ 706.03.

# 608.01(n) Dependent Claims [R-22]

Rule 75(c), reads as follows:

When more than one claim is presented, they may
be placed in dependent form in which a claim may refer

# MANUAL OF PATENT EXAMINING PROCEDURE

back to and further restrict a single preceding claim.
Claims in dependent form shall be construed to include
all the limitations of the claim incorporated by refer-
ence into the dependent claim.

For applications filed on or after October 25,
1965, the initial determination, for fee purposes,
as to whether a claim is dependent must be made
by persons other than examiners; it is neces-
sary, at that time, to accept as dependent virtu-
ally every claim which refers to another claim,
without determining whether there is actually a
true dependent relationship. Such acceptance
does not, however, preclude a subsequent hold-
ing by the examiner that a claim is not a proper
dependent claim. Any claim which is in depend-
ent form but which is so worded that it, in fact is
not, as for example it does not include every
limitation of the claim on which it depends, will
be required to be canceled as not being a proper
dependent claim; and cancellation of any fur-
ther claim depending on such a dependent claim
will be similarly required. The applicant may
thereupon amend the claims to place them in
proper dependent form, or may redraft them as
independent claims, upon payment of any neces-
sary additional fee.

An essential characteristic of a proper de-
pendent claim is that it shall include every
limitation of the claim from which it depends
(35 U.S.C. 112) or in other words that it shall
not conceivably be infringed by anything which
would not also infringe the basic claim. Thus,
for example, if claim 1 recites the combination
of elements a, b, c and d, a claim reciting the
structure of claim 1 in which d was omitted or
replaced by e would not be a proper dependent
claim, even though it placed further limitations
on the remaining elements or added still other
elements.

The fact that a dependent claim which is oth-
erwise proper might require a separate search
or be separately classified from the claim on
which it depends would not render it an im-
proper dependent claim, although it might
result in a requirement for restriction.

The fact that the independent and dependent
claims are in different statutory classes does not,
in itself, render the latter improper. Thus, if
claim 1 recites a specific product, a claim for the
method of making the product of claim 1 in a
particular manner would be a proper dependent
claim since it could not be infringed without in-
fringing claim 1. Similarly, if claim 1 recites a
method of making a product, a claim for a prod-
uct made by the method of claim 1 could be a
proper dependent claim. On the other hand,
if claim 1 recites a method of making a specified
product, a claim to the product set forth in claim
1 would not be a proper dependent claim if the
product might be made in other ways. Note,

that since rule 75(c) requires the dependent
claim to "further restrict" the preceding claim,
this rule does not apply to product-by-process
claims.

## CLAIM FORM AND ARRANGEMENT

A dependent claim 2 could read as follows:

2\. The product of claim 1 in which

A dependent claim cannot directly refer back
to two or more preceding claims. For example,
a claim reading as follows:

7\. A machine as specified in claims 5 or 6 (or,
5 and 6) in which . ..

is not permitted. Such a claim disguises the
true number of claims, since it is in reality two
claims. It is also alternative.

However, a series of dependent claims is per-
missible in which a dependent claim refers to a
preceding claim which, in turn, refers to an-
other preceding claim.

A claim which depends from a dependent
claim should not be separated therefrom by any
claim which does not also depend from said
"dependent" claim. It should be kept in mind
that a dependent claim may refer back to any
preceding independent claim. These are the
only restrictions with respect to the sequence of
claims and, in general, applicant's sequence
should not be changed. See § 608.01 (j).

REJECTION AND OBJECTION

If the base claim has been cancelled, a claim
which is directly or indirectly dependent thereon
should be rejected as incomplete. If the base
claim is rejected, the dependent claim should be
objected to rather than rejected, if it is otherwise
allowable.

Examiners are reminded that a dependent
claim is directed to a combination including
everything recited in the base claim and what is
recited in the dependent claim. It is this com-
bination that must be compared with the prior
art, exactly as if it were presented as one inde-
pendent claim.

The numbering of dependent claims and the
numbers of preceding claims referred to in de-
pendent claims should be carefully checked
when claims are renumbered upon allowance.

# 608.01(o) Basis for Claim Terminol- ogy in Description [R-22]

The meaning of every term used in any of
the claims should be apparent from the de-
scriptive portion of the specification with clear
disclosure as to its import, and in mechanical
cases it should be identified in the descriptive
portion of the specification by reference to the
drawing, designating the part or parts therein

to which the term applies. A term used in the
claims may be given a special meaning in the
description. No term may be given a meaning
repugnant to the usual meaning of the term.

Usually the terminology of the original
claims follows the nomenclature of the specifi-
cation, but sometimes in amending the claims
or in adding new claims, new terms are intro-
duced that do not appear in the specification.
The use of a confusing variety of terms for
the same thing should not be permitted.

New claims and amendments to the claims
already in the case should be scrutinized not
only for new matter but also for new terminol-
ogy. While an applicant is not limited to the
nomenclature used in the application as filed,
yet whenever by amendment of his claims, he
departs therefrom, he should make appropriate
amendment of his specification so as to have
therein clear support or antecedent basis for
the new terms appearing in the claims. This is
necessary in order to insure certainty in con-
struing the claims in the light of the specifica-
tion. Ex parte Kotler 1901 C.D. 62; 95 O.G.
2684. See rule 75, §§ 608.01(i) and 1302.01.

# 608.01 (p) Completeness [R-22]

Newly filed applications obviously failing to
disclose an invention with the clarity required
are discussed in $ 702.01.

A disclosure in an application, to be com-
plete, must contain such description and details
as to enable any person skilled in the art or
science to which the invention pertains to make
and use the invention.

While the prior art setting may be men-
tioned in general terms, the essential novelty,
the essence of the invention, must be described
in such details, including proportions and tech-
niques where necessary, as to enable those per-
sons skilled in the art to make and utilize the
invention.

Specific operative embodiments or examples
of the invention must be set forth. Examples
and description should be of sufficient scope as
to justify the scope of the claims. Markush
claims must be provided with support in the
disclosure for each member of the Markush
group. Where the constitution and formula of
a chemical compound is stated only as a proba-
bility or speculation, the disclosure is not suffi-
cient to support claims identifying the com-
pound by such composition or formula.

A complete disclosure should include a state-
ment of utility. This usually presents no prob-
lem in mechanical cases. In chemical cases,
varying degrees of specificity are required.

A disclosure involving a new chemical com-
pound or composition must teach persons
skilled in the art how to make the compound
or composition. Incomplete teachings may not
be completed by reference to subsequently filed
applications.

# GUIDELINES FOR CONSIDERING DISCLOSURES OF UTILITY IN DRUG CASES

## General

These guidelines are set down to provide
uniform handling of applications disclosing
drug or pharmaceutical utility. They are in-
tended to guide patent examiners and patent
applicants as to criteria for utility statements.
They deal with fundamental questions and are
subject to revision and amendment if future
case law indicates this to be necessary.

The following two basic principles shall be
followed in considering matters relating to the
adequacy of disclosure of utility in drug cases :

(1) The same basic principles of patent law
which apply in the field of chemical arts shall
be applicable to drugs, and

(2) The Patent Office shall confine its exam-
ination of disclosure of utility to the applica-
tion of patent law principles, recognizing that
other agencies of the Government have been
assigned the responsibility of assuring con-
formance to the standards established by statute
for the advertisement, use, sale or distribution
of drugs.1

A drug is defined by 21 U.S.C. 321 (g)

The term "drug" means (A) articles
recognized in the official United States
Pharmacopeia, official Homeopathic Phar-
macopeia of the United States, or official
National Formulary, or any supplement
to any of them; and (B) articles intended
for use in the diagnosis, cure, mitigation,
treatment, or prevention of disease in man
or other animals; and (C) articles (other
than food) intended to affect the structure
or any function of the body of man or other
animals; and (D) articles intended for use
as a component of any articles specified in
clause (A), (B), or (C); but does not
include devices or their components, parts,
or accessories.

In addition, compositions adapted to be applied
to or used by human beings, e.g., cosmetics,
dentifrices, mouthwashes, etc., may be treated
in the same manner as drugs subject to the con-
ditions stated.

Any proof of a stated utility or safety re-
quired pursuant to these guidelines may be

1 In re Krimmel, 48 CCPA 1116. 292 F.2d 948, 130 USPQ
215; In re Hartop et al., 50 CCPA 780, 311 F.2d 249, 135
USPQ 419.

incorporated in the application as filed, or may
be subsequently submitted by affidavit if and
when required. The Patent Office, in reaching
its own independent decisions on questions of
utility and how to use under 35 U.S.C. 101 and
112, will continue to avail itself of assistance
and information from the Secretary of Health,
Education, and Welfare as authorized by 21
U.S.C. 372(b), when necessary.

In accordance with the basic principles set
forth above, the following procedures shall be
followed in examining patent applications in
the drug field with regard to disclosures relat-
ing to utility.

35 U.S.C. 101

Utility must be definite and in currently
available form,? not merely for further investi-
gation or research but commercial availability
is not necessary. Mere assertions such as "thera-
peutic agents,"3 "for pharmaceutical pur-
poses,"" "biological activity,"5 "intermedi-
ates," 6 and for making further unspecified
preparations are regarded as insufficient.

If the asserted utility of a compound is
believable on its face to persons skilled in the
art in view of the contemporary knowledge in
the art, then the burden is upon the examiner
to give adequate support for rejections for lack
of utility under this section." On the other hand,
incredible statements $ or statements deemed
unlikely to be correct by one skilled in the
art º in view of the contemporary knowledge
in the art will require adequate proof on the
part of applicants for patents.

Proof of utility under this section may be
established by clinical or in vivo or in vitro
data, or combinations of these, which would be
convincing to those skilled in the art.1º More
particularly, if the utility relied on is directed
solely to the treatment of humans, evidence of
utility, if required, must generally be clinical
evidence,11 although animal tests may be ade-
quate where the art would accept these as
appropriately correlated with human utility.12

3 Brenner v. Manson, 383 U.S. 519. 148 USPQ 689.

3 Cf. In re Lorenz et al., 49 CCPA 1227. 305 F.2d 875. 134
USPQ 312 : cf. Ex parte Brockmann et al., 127 USPQ 57.
'In re Diedrich, 50 CCPA 1355, 318 F.2d 946, 138 USPQ
128.

5 In re Kirk et al., 54 CCPA 1119, 153 USPQ 48 ; Ex parte
Lanham, 135 USPQ 106.

6 In re Joly et al., 54 CCPA 1159, 153 USPQ 45 ; In re Kirk
et al., 54 CCPA 1119 : 153 USPQ 48.

" In re Gazare, 54 CCPA 1524, 154 USPQ 92.

8 In re Citron, 51 CCPA 852. 325 F.2d 248. 139 USPQ 516 ;
In re Oberweger, 28 CCPA 749. 115 F.2d 826. 47 USPQ 455 ;
Er parte Moore et al., 128 USPQ 8.

" In re Ruskin, 53 CCPA 872, 354 F.2d 895. 148 USPQ 221 :
In re Pottier, 54 CCPA 1293. 153 USPQ 407 ; In re Novak
et al., 49 CCPA 1283. 306 F.2d 924. 134 USPQ 335. See also,
In re Irons, 52 CCPA 938, 340 F.24 974. 144 USPQ 351.

10 In re Irons, 52 CCPA 938. 340 F.2d 924. 144 USPQ 351 :
Ex parte Paschall, 88 USPQ 131 : Ex parte Pennell et al., 99
USPQ 56 : Ex parte Ferguson, 117 USPQ 229 ; Ex parte Tim-
mis, 123 USPO 581.

11 Ex parte Timmis, 123 USPQ 581.

12 In re Hartop et al., 50 CCPA 780, 311 F.2d 249, 135
USPQ 419 ; Ex parte Murphy, 134 USPQ 134.

If there is no assertion of human utility,1ª or
if there is an assertion of animal utility,14 oper-
ativeness for use on standard test animals is
adequate for patent purposes.

Exceptions exist with respect to the general
rule relating to the treatment of humans. For
example, compositions whose properties are
generally predictable from a knowledge of their
components, such as laxatives, antacids and
certain topical preparations, require little or no
clinical proof.15

Although absolute safety is not necessary to
meet the utility requirement under this section,
a drug which is not sufficiently safe under the
conditions of use for which it is said be be
effective will not satisfy the utility require-
ment.16 Proof of safety shall be required only
in those cases where adequate reasons can be
advanced by the examiner for believing that
the drug is unsafe, and shall be accepted if it
establishes a reasonable probability of safety.

## 35 U.S.C. 112

A mere statement of utility for pharmaco-
logical or chemotherapeutic purposes may raise
a question of compliance with section 112, par-
ticularly ". . . as to enable any person skilled
in the art to which it pertains . . . to use the
same." If the statement of utility contains
within it a connotation of how to use, and/or
the art recognizes that standard modes of
administration are contemplated, section 112 is
satisfied.17 If the use disclosed is of such nature
that the art is unaware of successful treatments
with chemically analogous compounds, a more
complete statement of how to use must be sup-
plied than if such analogy were not present.18
It is not necessary to specify the dosage or
method of use if it is obvious to one skilled in
the art that such information could be obtained
without undue experimentation.17

With respect to the adequacy of disclosure
that a claimed genus possesses an asserted
utility representative examples together with
a statement applicable to the genus as a whole
will ordinarily be sufficient if it would be
deemed likely by one skilled in the art, in view
of contemporary knowledge in the art, that the
claimed genus would possess the asserted

13 Cf. Blicke v. Treves, 44 CCPA 753, 241 F.2d 718, 112
USPQ 472 ; In re Krimmel, 48 CCPA 1116, 292 F.2d 948, 130
USPQ 215 : In re Dodaon, 48 CCPA 1125, 292 F.2d 943, 130
USPQ 224 ; In re Hitching8, 52 CCPA 1141, 342 F.2d 80, 144
USPQ 637.

14 In re Bergel et al., 48 CCPA 1102, 292, F.2d 955, 130
USPQ 206 ; Ex parte Melvin, 155 USPQ 47.

15 Er parte Harrison et al., 129 USPQ 172 ; Ex parte Lewin,
140 USPQ 70.

16 In re Hartop et al., 50 CCPA 780, 311 F.2d 249, 135
USPO 419.

17 Cf. In re Johnson, 48 CCPA 733. 282 F.2d 370. 127
T'SPQ 216 ; In re Hitchings et al., 52 CCPA 1141, 342 F.2d 80,
144 USPQ 637.

18 In re Mouren et al., 52 CCPA 1363. 345 F.2d 595, 145
USPQ 452; In re Schmidt et al., 54 CCPA 1577, 153 USPO.
640.

atility." Proof of utility will be required for
other members of the claimed genus only in
those cases where adequate reasons can be ad-
vanced by the examiner for believing that the
genus as a whole does not possess the asserted
utility. Conversely, a sufficient number of repre-
sentative examples, if disclosed in the prior art
will constitute a disclosure of the genus to which
they belong.

In the case of mixtures including a drug as
an ingredient, or mixtures which are drugs, or
methods of treating a specific condition with a
drug, whether old or new, a specific example
should ordinarily be set forth, which should
include the organism treated. In appropriate
cases, such an example may be inferred from
the disclosure taken as a whole and/or the
knowledge in the art (e.g., gargle).

Where the claimed compounds are capable
of several different utilities and one use is ade-
quately described in accordance with these
guidelines, additional utilities will be investi-
gated for compliance with sections 101 and 112
only if not believable on their face to those of
ordinary skill in the art in view of the con-
temporary knowledge of the art. Failure to
meet these standards may result in a require-
ment to cancel such additional utilities.20

## INCORPORATION BY REFERENCE

An application for a patent when filed may
incorporate "essential material" by reference to
(1) a United States patent, or (2) an allowed
U.S. application, subject to the conditions set
forth below. "Essential material" is defined as
that which is necessary to (1) support the
claims, or (2) for adequate disclosure of the
invention (35 U.S.C. 112). "Essential mate-
rial" may not be incorporated by reference to
(1) patents issued by foreign countries, to (2)
nonpatent publications, to (3) a patent or ap-
plication which itself incorporates "essential
material" by reference or to (4) a foreign appli-
cation. See In re Fouche, 169 USPQ 429.

Nonessential subject matter may be incor-
porated by reference to (1) patents issued by
the United States or foreign countries, (2) prior
filed, commonly owned U.S. applications or (3)
nonpatent publications, for purposes of indicat-
ing the background of the invention or illustrat-
ing the state of the art.

10 In re Oppenquer, 31 CCPA 1248, 143 F.2d 974. 62 USPQ
297 : In re Cavallito et al., 48 CCPA 711. 282 F.2d 357, 127
USPQ 202 ; In re Cavallito et al., 48 CCPA 720, 282 F.24 363,
127 USPQ 206; In re Schmidt, 48 CCPA 1140, 293 F.2d 274,
130 USPQ 404 : In re Cavallito, 49 CCPA 1335, 306 F.2d 505.
134 USPQ 370 ; In re Surrey, 54 CCPA 855. 370 F.2d 349, 151
ESPQ 724 : In're Lund et al .. 54 CCPA 1361, 153 USPQ 625.
20 He parte Lanham, 121 USPQ 223 : Ex parte Moore et al.,
128 USPQ 8; In re Citron, 51 CCPA 852, 325 F.2d 248, 139
USPQ 516 ; In re Gottlieb et al., 51 CCPA 1114, 328 F.2d 1016,
140 USPQ 665.

The referencing application must include (1)
an abstract, (2) a brief summary of the inven-
tion, (3) an identification of the referenced
patent or application, (4) at least one view in
the drawing in those applications admitting of
a drawing, and (5) one or more claims. Where
appropriate it would be advisable to direct, par-
ticular attention to specific portions of the
referenced patent or application.

### COMPLETE DISCLOSURE FILED

If an application is filed with a complete dis-
closure, essential material may be cancelled by
amendment and the same material substituted
by reference to a patent or a pending and com-
monly owned allowed application in which the
issue fee has been paid. The amendment must
be accompanied by an affidavit or declaration
executed by the applicant or his attorney or
agent stating that the material cancelled from
the application is the same material that has
been incorporated by reference.

#### ISSUE FEE PAID

If an application incorporates essential ma-
terial by reference to a U.S. patent or a pending
and commonly owned allowed U.S. application
for which the issue fee has been paid, applicant
will be required prior to examination to furnish
the Patent Office with a copy of the referenced
material together with an affidavit or declara-
tion executed by the applicant or his attorney or
agent stating that the copy consists of the same
material incorporated by reference in the ref-
erencing application. However, if a soft copy
of a U.S. patent is furnished, no affidavit or
declaration is required.

##### ISSUE FEE NOT PAID

If an application incorporates essential ma-
terial by reference to a pending and commonly
owned application other than one in issue with
the fee paid, applicant will be required prior to
examination to amend the disclosure of the
referencing application to include the material
incorporated by reference. The amendment must
be accompanied by an affidavit or declaration
executed by the applicant or his attorney or
agent stating that the amendatory material con-
sists of the same material incorporated by refer-
ence in the referencing application.

##### IMPROPER INCORPORATION

The filing date of any application wherein
essential material is improperly incorporated

###### 608.01 (q)

###### MANUAL OF PATENT EXAMINING PROCEDURE

by reference to a foreign application or patent
or to a publication will not be affected because of
the presence of such reference. In such a case,
the applicant will be required to amend the dis-
closure to include the material incorporated by
reference. The amendment must be accompanied
by an affidavit or declaration executed by the
applicant, or his attorney or agent, stating that
the amendatory material consists of the same
material incorporated by reference in the refer-
encing application. In re Hawkins, 179 USPQ
157; In re Hawkins, 179 USPQ 163; In re Haw-
kins, 179 USPQ 167, (CCPA, 1973).

Reliance upon a commonly assigned copend-
ing application by a different inventor may
ordinarily be made for the purpose of complet-
ing the disclosure. See In re Fried et al, 141
USPQ 27; 51 CCPA 1118 and General Electric
Company v. Brenner, 159 USPQ 335; 407 F. 2d
1258.

Since a disclosure must be complete as of the
filing date, subsequent publications or subse-
quently filed applications cannot be relied upon
to establish a constructive reduction to prac-
tice.

###### DEPOSIT OF MICROORGANISMS

Some inventions which are the subject of
patent applications depend on the use of micro-
organisms which must be described in the spec-
ification in accordance with 35 U.S.C. 112. No
problem exists when the microorganisms used
are known and readily available to the public.
When the invention depends on the use of a
microorganism which is not so known and read-
ily available, applicants must take additional
steps to comply with the requirements of § 112.

În re Argoudelis, et al., 168 USPQ 99
(CCPA, 1970), accepted a procedure for meet-
ing the requirements of 35 U.S.C. 112. Ac-
cordingly, the Patent Office will accept the
following as complying with the requirements
of § 112 for an adequate disclosure of the micro-
organism required to carry out the invention :

(1) the applicant, no later than the effective
U.S. filing date of the application, has made a
deposit of a culture of the microorganism in a
depository affording permanence of the deposit
and ready accessibility thereto by the public if
a patent is granted, under conditions which
assure (a) that access to the culture will be
available during pendency of the patent appli-
cation to one determined by the Commissioner
to be entitled thereto under rule 14 of the Rules
of Practice in Patent Cases and 35 U.S.C. 122,
and (b) that all restrictions on the availability
to the public of the culture so deposited will be
irrevocably removed upon the granting of the
patent;

(2) such deposit is referred to in the body of
the specification as filed and is identified by
deposit number, name and address of the de-
pository, and the taxonomic description to the
extent available is included in the specification ;
and

(3) the applicant or his assigns has provided
assurance of permanent availability of the cul-
ture to the public through a depository meeting
the requirements of (1). Such assurance may
be in the form of an averment under oath or by
declaration by the applicant to this effect.

A copy of the applicant's contract with the
depository may be required by the examiner
to be made of record as evidence of making the
culture available under the conditions stated
above.

NOTE .- For problems arising from the desig-
nation of materials by trademarks and trade
names, see § 608.01(v). [R-39]

###### 608.01(q) Substitute or Rewritten Specification [R-26]

Rule 125. Substitute specification. If the number or
nature of the amendments shall render it difficult to
consider the case, or to arrange the papers for printing
or copying, the examiner may require the entire speci-
fication or claims, or any part thereof, to be rewritten.
A substitute specification will ordinarily not be ac-
cepted unless it has been required by the examiner.

The specification is sometimes in such faulty
English that a new specification is necessary,
but new specifications cumber the record and
require additional reading, and hence should
not be required or accepted except in extreme
cases.

A substitute specification that has not been
required, and is not needed, is not entered. See
§ 714.20.

New matter in amendment, see § 608.04.

Application prepared for issue, see § 1302.02.

###### 608.01(r) Derogatory Remarks About Prior Art in Speci- fication

The applicant may refer to the general state
of the art and the advance thereover made by
his invention, but he is not permitted to make
derogatory remarks concerning the inventions
of others.

608.01 (s) Restoration of Canceled
Matter [R-26]

Canceled text in the specification or a can-
celed claim can be restored only by presenting

the cancelled matter as a new insertion. See
rule 124, § 714.24.

608.01(t) Use in Subsequent Applica-
tion [R-29]

A reservation for a future application of
subject matter disclosed but not claimed in a

pending application will not be permitted in
the pending application, rule 79, § 608.01 (e).

While a specification cannot be transferred
to another application, drawings may be
transferred from a prior application to a later
case by the same inventor if they are no
longer needed in the prior application. note
§§ 608.02(i) to 608.02(k).

###### 608.01 (u) Use of Formerly Filed In- complete Application [R-26]

Parts of an incomplete application which
have been retained by the Office may be used as
part of a complete application if the missing
parts are later supplied. See §§ 506 and 506.01.

608.01(v) Trademarks and Names
Used in Trade [R-26]

The expressions "trademarks" and "names
used in trade" as used below have the follow-
ing meanings:

Trademark: a word, letter, symbol or device
adopted by one manufacturer or merchant and
used to identify and distinguish his product
from those of others. It is a proprietary word
pointing distinctly to the product of one pro-
ducer.

Names Used in Trade: a nonproprietary
name by which an article or product is known
and called among traders or workers in the art,
although it may not be so known by the public
generally. Names used in trade do not point
to the product of one producer, but they iden-
tify a single article or product irrespective of
producer.

Names used in trade are permissible in pat-
ent applications if:

(1) Their meanings are established by an
accompanying definition which is sufficiently
precise and definite to be made a part of a
claim, or

(2) In this country, their meanings are well
known and satisfactorily defined in the litera-
ture.

Condition (1) or (2) must be met at the
time of filing of the complete application.

###### TRADEMARKS

The relationship between a trademark and
the product it identifies is sometimes indefinite,
uncertain and arbitrary. The formula or char-
acteristics of the product may change from
time to time and yet it may continue to be sold
under the same trademark. In patent specifi-
cations, every element or ingredient of the
product should be set forth in positive, exact,
intelligible language. so that there will be no
uncertainty as to what is meant. Arbitrary
trademarks which are liable to mean different
things at the pleasure of manufacturers do not
constitute such language.

However, if the product to which the trade-
mark refers is otherwise set forth in such lan-
guage that its identity is clear the examiners
are authorized to permit the use of the trade-
mark if it is distinguished from common de-

scriptive nouns by capitalization. If the trade-
mark has a fixed and definite meaning it con-
stitutes sufficient identification unless some
physical or chemical characteristic of the article
or material is involved in the invention. In that
event as also in those cases where the trademark
has no fixed and definite meaning, identification
by scientific or other explanatory language is
necessary.

The matter of sufficiency of disclosure must
be decided on an individual case by case basis.
In re Metcalfe and Lowe, 161 USPQ 789; 869
O.G. 691.

Where the identification of a trademark is
introduced by amendment it must be restricted
to the characteristics of the product known at
the time the application was filed to avoid any
question of new matter.

If proper identification of the product sold
under a trademark, or a product referred to
only by a name used in trade, is omitted from
the specification and such identification is
deemed necessary under the principles set forth
above, the examiner should hold the disclosure
insufficient and reject on the ground of insuf-
ficient disclosure any claims based on the
identification of the product merely by trade-
mark or by the name used in trade. If the
product cannot be otherwise defined, an amend-
ment defining the process of its manufacture
may be permitted. Such amendments must be
supported by satisfactory showings establish-
ing that the specific nature or process of manu-
facture of the product as set forth in the
amendment was known at the time of filing of
the application.

Although the use of trademarks having defi-
nite meanings is permissible in patent ap-
plications, the proprietary nature of the marks
should be respected and every effort made to
prevent their use in any manner which might
adversely affect their validity as trademarks.
The examiner should not permit the use of
language such as "the product X (a descrip-
tive name) commonly known as Y (trade-
mark)" since such language does not bring
out the fact that the latter is a trademark.
Language such as "the product X (a descrip-
tive name) sold under the trademark Y" is
permissible.

The use of a trademark in the title of an
application should be avoided as well as the
use of a trademark coupled with the word
"type": i.e., "Band-Aid tvpe bandage."

The owner of a trademark may be identified
in the specification.

Examiners should reply to all trademark
misuse complaint letters and forward a copy to
the editor of this manual.

See appendix I for a partial listing of trade-
marks and the particular goods to which they
apply.

608.02 Drawing [R-40]

35 U.S.C. 115. Drawings. When the nature of the case
admits, the applicant shall furnish a drawing.

Rule 81. Drawings required. The applicant for pat-
ent is required by statute to furnish a drawing of his
invention whenever the nature of the case admits of
it; this drawing must be filed with the application.
Illustrations facilitating an understanding of the in-
vention (for example, flow sheets in cases of processes,
and diagrammatic views) may also be furnished in
the same manner as drawings and may be required by
the Office when considered necessary or desirable.

Rule 84. Standards for drawings.

(a) Paper and ink. Drawings must be made upon
pure white paper of a thickness corresponding to two-
ply or three-ply bristol board. The surface of the paper
must be calendered and smooth and of a quality which
will permit erasure and correction with India ink.
India ink, or its equivalent in quality, must be used for
pen drawings to secure perfectly black solid lines. The
use of white pigment to cover lines is not acceptable.

(b) Size of sheet and margins. The size of a sheet
on which a drawing is made must be exactly 816 by 14
inches (21.6 by 35.6 cm.). One of the shorter sides of
the sheet is regarded as its top. The drawing must in-
clude a top margin of 2 inches (5.1 cm.) and bottom
and side margins of one-quarter inch (6.4 mm.) from
the edges, thereby leaving a "sight" precisely 8 by 1194
inches (20.3 by 29.8 cm.). Margin border lines are not
permitted. All work must be included within the
"sight". The sheets may be provided with two 14-inch
(6.4 mm.) diameter holes having their centerlines
spaced eleven-sixteenths inch (17.5 mm.) below the top
edge and 2% inches (7.0 cm.) apart, said holes being
equally spaced from the respective side edges.

(c) Character of lines. All drawings must be made
with drafting instruments or by a process which will
give them satisfactory reproduction characteristics.
Every line and letter must be absolutely black and per-
manent; the weight of all lines and letters must be
heavy enough to permit adequate reproduction. This
direction applies to all lines however fine, to shading,
and to lines representing cut surfaces in sectional
views. All lines must be clean, sharp, and solid, and
fine or crowded lines should be avoided. Solid black
should not be used for sectional or surface shading.
Freehand work should be avoided wherever it is pos-
sible to do so.

(d) Hatching and shading. (1) Hatching should be
made by oblique parallel lines, which may be not less
than about one-twentieth inch (1.3 mm.) apart.

(2) Heavy lines on the shade side of objects should
be used except where they tend to thicken the work
and obscure reference characters. The light should
come from the upper left hand corner at an angle of

45". Surface delineations should be shown by proper
shading, which should be open,

(c) Scale. The scale to which a drawing is made
ought to be large enough to show the mechanism with-
out crowding when the drawing is reduced in repro-
duction, and views of portions of the mechanism on a
larger scale should be used when necessary to show
details clearly ; two or more sheets should be used if
one does not give sufficient room to accomplish this end,
but the number of sheets should not be more than is
necessary.

(f) Reference characters. The different views should
be consecutively numbered figures. Reference numerals
(and letters, but numerals are preferred) must be
plain, legible and carefully formed, and not be encir-
cled. They should, if possible, measure at least one-
eighth of an inch (3.2 mm.) in height so that they may
bear reduction to one twenty-fourth of an inch (1.1
mm.) ; and they may be slightly larger when there is
sufficient room. They must not be so placed in the close
and complex parts of the drawing as to interfere with
a thorough comprehension of the same, and therefore
should rarely cross or mingle with the lines. When
necessarily grouped around a certain part, they should
be placed at a little distance, at the closest point where
there is available space, and connected by lines with
the parts to which they refer. They should not be placed
upon hatched or shaded surfaces but when necessary, a
blank space may be left in the hatching or shading
where the character occurs so that it shall appear per-
fectly distinct and separate from the work. The same
part of an invention appearing in more than one view
of the drawing must always be designated by the same
character, and the same character must never be used
to designate different parts.

(g) Symbols, legends. Graphical drawing symbols
and other labeled representations may be used for con-
ventional elements when appropriate, subject to ap-
proval by the Office. The elements for which such
symbols and labeled representations are used must be
adequately identified in the specification. While descrip-
tive matter on drawings is not permitted, suitable
legends may be used, or may be required, in proper
cases, as in diagrammatic views and flowsheets or to
show materials or where labeled representations are
employed to illustrate conventional elements. Arrows
may be required, in proper cases, to show direction of
movement. The lettering should be as large as, or
larger than, the reference characters.

(h) [Revoked]

(1) Views. The drawing must contain as many fig-
ures as may be necessary to show the invention; the
figures should be consecutively numbered if possible
in the order in which they appear. The figures may be
plan, elevation, section, or perspective views, and de-
tail views of portions or elements, on a larger scale if
necessary, may also be used. Exploded views, with the
separated parts of the same figure embraced by a
bracket, to show the relationship or order of assembly
of various parts are permissible. When necessary, a

view of a large machine or device in its entirety may
be broken and extended over several sheets if there
is no loss in facility of understanding the view (the
different parts should be identified by the same figure
number but followed by the letters, a, b. c. etc., for each
part). The plane upon which a sectional view is taken
should be indicated on the general view by a broken
line, the ends of which should be designated by numer-
als corresponding to the figure number of the sectional
view and have arrows applied to indicate the direction
in which the view is taken. A moved position may be
shown by a broken line superimposed upon a suitable
figure if this can be done without crowding, otherwise
a separate figure must be used for this purpose. Modi-
fied forms of construction can only be shown in sep-
arate figures. Views should not be connected by projec-
tion lines nor should centerlines be used.

(j) Arrangement of views. All views on the same
sheet must stand in the same direction and should, if
possible, stand so that they can be read with the sheet
held in an upright position. If views longer than the
width of the sheet are necessary for the clearest illus-
tration of the invention, the sheet may be turned on its
side so that the two-inch (5.1 cm.) margin is on the
right-hand side. One figure must not be placed upon
another or within the outline of another.

(k) Figure for Official Gazette. The drawing should,
as far as possible, be so planned that one of the views
will be suitable for publication in the Official Gazette
as the illustration of the invention.

(1) Extraneous matter. An inventor's, agent's, or
attorney's name, signature, stamp, or address, or other
extraneous matter, will not be permitted upon the face
of a drawing, within or without the margin, except that
identifying indicia (attorney's docket number, inven-
tor's name, number of sheets, etc.) should be placed
within three-fourths inch (19.1 mm.) of the top edge
and between the hole locations defined in paragraph
(b) of this rule. Authorized security markings may be
placed on the drawings provided they be outside the
illustrations and are removed when the material is
declassified.

(m) Transmission of drawings. Drawings transmit-
ted to the Office should be sent flat, protected by a
sheet of heavy binder's board, or may be rolled for
transmission in a suitable mailing tube ; but must never
be folded. If received creased or mutilated, new draw-
ings will be required. (See rule 152 for design draw-
ings, 165 for plant drawings, and 174 for reissue
drawings.)

Rule 86. Draftsman to make drawings. (a) Appli-
cants are advised to employ competent draftsmen to
make their drawings.

(b) The Office may furnish the drawings at the ap-
plicant's expense as promptly as its draftsmen can
make them, for applicants who cannot otherwise con-
veniently procure them. (See rule 21.)

Design patent drawings, rule 152, § 1503.02.
Plant patent drawings, rule 165, § 1606.

Reissue application drawings, §§ 608.02 (k)
and 1401.05.

Each sheet of drawing must bear the "Ap-
proved" stamp of the Draftsman before the
application is allowed.

The Record Services Branch of the Office
Services Division has charge of the drawings in
patented cases. Canceled sheets, however, are
not retained with the patented drawings but are
filed with the abandoned files and drawings in
the Abandoned Files Unit.

See: Correction of drawings, § 608.02(p).
Prints, preparation and distribution, §§ 508 and
608.02 (m). Prints, Return of drawing, § 608.02
(y). Signature to the drawing is treated in
§ 605.04(h). For pencil notations of classifica-
tion and name or initials of assistant examiner
to be placed on drawings see § 717.03.

The filing of a divisional case under the
provisions of rule 60 (unexecuted case), does
not obviate the need for formal bristolboard
drawings. See § 608.02 (b).

#### DRAWING SYMBOLS

Rule 84(g) indicates that graphic drawing
symbols and other labeled representations may
be used for conventional elements where appro-
priate, subject to approval by the Office. Also,
suitable legends may be used, or may be re-
quired, in proper cases.

The "Rules of Practice" and Title 37, Code of
Federal Regulations pamphlets include a sec-
tion entitled "Symbols for Draftsman" which
shows various symbols which may be used in
patent application drawings. Since this set of
symbols is rather limited in scope, attention is
called to the below listed publications.

These publications have been reviewed by the
Office and the symbols therein are considered
to be generally acceptable in patent drawings.
Although the Office will not "approve" all of
the listed symbols as a group because their use
and clarity must be decided on a case-by-case
basis, these publications may be used as guides
when selecting graphic symbols. Overly spe-
cific symbols should be avoided. Symbols with
unclear meanings should be labeled for clari-
fication.

These publications are available from the
American National Standards Institute Inc.,
1430 Broadway, New York, New York 10018.

The publications reviewed are the following :
Y32.2-1970 Graphic Symbols for Electrical &
Electronics Diagrams

Y32.10-1967 Graphic Symbols for Fluid
Power Diagrams

Y32.11-1961 Graphic Symbols for Process
Flow Diagrams in the Petroleum & Chem-
ical Industries

Y32.14-1962 Graphic Symbols for Logic Dia-
grams
Z32.2.3-1949 (R1953) Graphic Symbols for
Pipe Fittings, Valves and Piping
Z32.2.4-1949 (R1953) Graphic Symbols for
Heating, Ventilating & Air Conditioning
Z32.2.6-1950 Graphic Symbols for Heat-
Power Apparatus

#### APPLICATIONS FILED WITHOUT DRAWINGS

Applications filed without drawing are ini-
tially inspected to determine whether or not
a drawing, under the statute, is necessary be-
fore the applicant can be given a filing date.
Doubtful cases are referred to the group
director for decision as to the need for such a
drawing. If, after an application without a
drawing has been received in the group, it is
clear that a drawing is required, the application
should be returned to the Application Division
along with a memorandum indicating that a
drawing is required. It has long been the prac-
tice to accept a process case (that is, a case hav-
ing only process or method claims) which is
filed without a drawing. The same practice has
been followed in composition cases. Other sit-
uations where drawings are usually not con-
sidered essential for a filing date are:

I. Coated articles or products. Where the
invention resides solely in coating or impreg-
nating a conventional sheet, e.g., paper or
cloth, or an article of known and conventional
character with a particular composition, the
application containing claims to the coated or
impregnated sheet or article, unless significant
details of structure or arrangement are in-
volved in the article claims.

II. Articles made from a particular mate-
rial or composition. Where the invention con-
sists in making an article of a particular mate-
rial or composition, unless significant details
of structure or arrangement are involved in
the article claims.

III. Laminated structures. Where the
claimed invention involves only laminations of
sheets (and coatings) of specified material un-
less significant details of structure or arrange-
ment (other than the mere order of the layers)
are involved in the article claims.

IV. Articles, apparatus or systems where
sole distinguishing feature is presence of a par-
ticular material. Where the invention resides
solely in the use of a particular material in an
otherwise old article, apparatus or system re-
cited broadly in the claims; for example,

a. Hydraulic system distinguished solely by
the use therein of a particular hydraulic fluid;
b. Packaged sutures wherein the structure
and arrangement of the package are conven-

tional and the only distinguishing feature is
the use of a particular fluid.

## ILLUSTRATION SUBSEQUENTLY REQUIRED

The acceptance of an application without a
drawing does not preclude the examiner from
requiring an illustration in the form of a
drawing under the second sentence of rule 81.
In requiring such a drawing, the examiner
should clearly indicate that the requirement
is made under the second sentence of rule 81,
and be careful not to state that he is doing
so "because the nature of the case admits" of
a drawing, as that might give rise to an erro-
neous impression as to the completeness of the
application when filed. Examiners making
such requirements are to specifically require, as
a part of the applicant's next response, at least
an ink sketch or permanent print of any draw-
ing proposed in response to the requirement,
even though no allowable subject matter is yet
indicated. This will afford the examiner an
early opportunity to determinee the sufficiency
of the illustration and the absence of new mat-
ter. See rule 118. The description should of
course be amended to contain reference to the
new illustration. This may obviate further
correspondence where an amendment places the
case in condition for allowance, except for the
formal requirement relating to the drawing.
In the event of a final determination that there
is nothing patentable in the case, the sketch and
authorization for entry will not be forwarded to
the Drafting Division.

## PHOTOGRAPHS

Photographs are not considered to be draw-
ings. Photographs are not acceptable for a
filing date nor for any purpose except as ex-
hibits unless they come within the special cate-
gories set forth in the paragraph immediately
below. Photolithographs of photographs and
photographs mounted on proper size bristol-
board are never acceptable. See In re Taggart
et al., 1957 C.D. 6; 725 O.G. 397 and In re
Myers, 1959 C.D. 2; 738 O.G. 947.

## SPECIAL CATEGORIES

The Patent Office is willing to accept black
and white photographs or photomicrographs
(not photolithographs or other reproductions
of photographs) printed on sensitized paper in
lieu of India ink drawings, to illustrate inven-
tions which are incapable of being accurately
or adequately depicted by India ink drawings,
restricted to the following categories: crystal-
line structures, metallurgical microstructures,
textile fabrics, grain structures and ornamen-

tal effects. The photographs or photomicro-
graphs must show the invention more clearly
than they can be done by India ink drawings
and otherwise comply with the rules concern-
ing drawings.

Such photographs to be acceptable must be
made on photographic paper having the fol-
lowing characteristics which are generally rec-
ognized in the photographic trade: double
weight paper with a surface described as
smooth ; tint, white.

## NOTIFYING APPLICANT

If the drawings are informal, but may be
admitted for examination purposes the drafts-
man indicates on 2-part form, PO-948, what the
informalities are and whether they can be cor-
rected or whether new drawings are required.
In either case the drawings are accepted as satis-
fying the requirements of rule 51.

The examiners are directed to advise the
applicants (see § 707.07(a) ) in the first Office
action of the conditions which render the draw-
ing informal, and when indicated, that such

drawings can be corrected so as to be acceptable,
but will not, in any case, require new drawings
because of their execution unless the necessity
therefor shall have been indicated by the
draftsman.

As soon as allowable subject matter is found,
or an appeal is filed, the requirement for new
drawings should be insisted upon. Before writ-
ing the action, the draftsman should be con-
sulted to ascertain if, at that time, the new
drawing could be prepared by the Patent Office
on request and, if so, the estimate of cost should
be included in the action. Otherwise, the action
should state :

"Applicant is advised to employ the serv-
ices of a competent patent draftsman out-
side the Office, as the Drafting Division of
the Patent Office does not have the facilities
at the present time, for preparing new
drawings".

This procedure, by avoiding a fruitless request
to have the Drafting Division prepare the new
drawing, will promote earlier issuance of the
patent.

### ADDITIONAL ILLUSTRATION

The examiner may require additional draw-
ings for the purpose of illustrating the dis-
closure.

When a necessary additional illustration is
small and may be added to the drawings on
file, an additional sheet of drawing should not
be required, but the examiner will ask that the
proposed illustration be shown in a sketch,
which showing will be transferred to one of the
sheets of the drawings.

For the handling of additional, duplicate, or
substitute drawing, see § 608.02(h). [R-36]

## 608.02(a) New Drawing-When Re- quired [R-41]

### PHOTOPRINTS AS DRAWINGS

To expedite filing, applicants sometimes sub-
mit applications with photoprints in lieu of
formal drawings. Such applications are ac-
cepted by Application Division for filing only,
provided the photoprints are readable and re-
producible. Applicant is notified on form let-
ter POL-1094 that formal drawings, in com-
pliance with rule 84, together with a minimum
comparison fee of ten dollars, are required
within two months, to avoid abandonment.
This charge may be applied against deposit
accounts and authorization to charge such
accounts should be included when the formal
drawings are filed. For those who have no
deposit account, acceptance of the formal draw-
ings will be contingent upon payment of the
comparison charge within the set period. A
copy of form POL-1094 is placed in the file
wrapper by the Application Division. When
the file wrapper is received in the properly as-
signed examining group, the POL-1094 is
promptly mailed. The application will not be
examined until the formal drawings are re-
ceived.

In those situations where an application is
filed with informal drawings, applicants are re-
quested to wait until they receive their "Notice
of Informal Drawings" form, PO-1094 from
the group art unit before submitting the for-
mal drawings and the comparison charge. The
letter of transmittal accompanying the formal
drawings should identify the group art unit
indicated on form PO-1094. Also, each sheet of
drawing should include the serial number and
group art unit in the upper right margin. In
the past. some drawings have been misdirected
because the group art unit indicated on the
filing receipt was used rather than that indi-
cated on form PO-1094.

In the event the drawings are not timely fur-
nished, the application becomes abandoned after

expiration of the two-month period referred to
in form letter POL-1094. The group clerk
prepares a letter of abandonment but the ex-
aminer is not credited with a disposal.

New applications with photoprints in lieu of
drawings are identified by a pink "Special R.
84" tag on the file wrapper.

The draftsman is the judge of drawings, as
to the execution of the same, and the arrange-
ment of the views thereon, while the examiner
is the judge as to the sufficiency of the showing.
The drawings, upon receipt of an application,
are sent from the Application Division to be in-
spected by the draftsman. If satisfactory, he
stamps on each sheet "Approved by Drafts-
man." See also § 608.02.

## HANDLING OF NEW DRAWINGS

If the new drawings are timely filed, the
clerk should immediately send the new draw-
ings with the file wrapper to the Draftsman
for approval as to form. If the drawings are
approved as to form by the Draftsman, the
clerk checks to see if the $10 comparison fee
has been paid or charged to a deposit account.
If the fee has been paid, this fact should be
noted on form PO-948 or PO-1094 in the left
margin thereof opposite the comparison fee re-
quirement and initialed by the clerk. A simple
phrase such as "fee O.K." is sufficient. If the fee
has not been paid, the applicant or his attorney
should be so notified. This should be done by
the clerk by either telephone or a short letter.
The following language may be used :

"Formal drawings have been received in this
application. However, the response is incom-
plete because a comparison fee of $10 has not
been paid. Applicant is given 30 days to com-
plete his response in order to avoid any ques-
tion of abandonment."

If the minimum $10 comparison fee has been
paid, the examiner compares the content of the
new drawing to the informal drawing to deter-
mine if the illustration is sufficient and whether
new matter has been added. The examiner
should state in his next Office action his con-
clusions. These conclusions could merely state
that upon comparison, the new drawings were
acceptable or why they were not acceptable.

If the application is allowed on the first ac-
tion, the examiner should state that the new
drawings were acceptable in the examiner's
amendment or on form POL-327.

# 608.02 (b) Informal Drawings [R- 41]

Rule 85. Informul druwings. The requirements of
rule 84 relating to drawings will be strictly enforced.
A drawing not executed in conformity thereto, if suit-

608.02(c)

able for reproduction, may be admitted but in such case
the drawing must be corrected or a new one furnished.
as required. The necessary corrections or mounting will
be made by the Office upon applicant's request or per-
mission and at his expense. (See rules 21 and 165.)

In instances where the drawing is such that
the prosecution can be carried on without the
corrections, applicant is informed of the reasons
why the drawing is objected to on Form
PO-948, and that the drawing is admitted for
examination purposes only (see § 707.07(a) ).
To be fully responsive, an amendment must in-
clude a request for drawing corrections when
there is an indication of allowable subject
matter or an appeal is filed. See rule 111 (b).

# 608.02(c) Drawings or Print Kept in Examining Group [R-36]

The photocopies of the drawings must always
be kept on top of the papers on the right of the
file wrapper so as to be visible upon opening
the wrapper and easily detached. This photo-
copy (or "print") is placed in the drawing
cabinet when the corresponding large size (10
by 15 inches) drawing is removed during
prosecution.

No application should be sent to issue or to
the Abandoned Files Unit unless the original
drawing, if any, accompanies it.

Rule 84 was amended on May 28, 1971 (887
O.G. 1840) to require the drawings in patent
applications to be 81/2 by 14 inches in size and
to prohibit names within the illustration area
of the drawing.

Although the rule was changed in May 1971,
filing of the smaller size drawings did not be-
come mandatory until January 1, 1972.

The small size formal bristolboard drawings
are placed in the center portion of the applica-
tion file wrapper underneath the application
papers by the Customer Services Division.
The bristolboard drawing should be retained in
this position for filing in the examining groups
in all applications filed after January 1, 1972.

# 608.02(d) Complete Illustration in Drawings

Rule 83. Content of drawing. (a) The drawing must
show every feature of the invention specified in the
claims. However, conventional features disclosed in the
description and claims, where their detailed illustration
is not essential for a proper understanding of the inven-
tion, should be illustrated in the drawing in the form of
a graphical drawing symbol or a labeled representation
(e.g. a labeled rectangular box).

(b) When the invention consists of an improvement
on an old machine the drawing must when possible
exhibit, in one or more views, the improved portion

Itself, disconnected from the old structure, and also
in another view, so much only of the old structure as
will suffice to show the connection of the invention
therewith.

Likewise, any structural detail that is of
sufficient importance to be described should be
shown in the drawing. (Ex parte Good, 1911
C.D. 43; 164 O.G. 739.)

# 608.02(e) Examiner Determines Completeness of Drawings

The examiner should see to it that the fig-
ures are correctly described in the brief de-
scription of the specification and that the
reference characters are properly applied, no
single reference character being used for two
different parts or for a given part and a modi-
fication of such part. Every feature covered
by the claims must be illustrated, but there
should be no superfluous illustrations.

## 608.02(f) Modifications in Drawings

Modifications may not be shown in broken
lines on figures which show in solid lines
another form of the invention. Ex parte
Badger, 1901 C.D. 195; 97 O.G. 1596.

All modifications described must be illus-
trated. or the text canceled. (Ex parte Peck,
1901 C.D. 136; 96 O.G. 2409.) This require-
ment does not apply to a mere reference to
minor variations nor to well-known and con-
ventional parts.

## 608.02(g) Illustration of Prior Art

Figures showing the prior art are usually un-
necessary and should be canceled. Ex parte
Elliott, 1904 C.D. 103; 109 O.G. 1337. How-
ever, where needed to understand applicant's
invention, they may be retained if designated
by a legend such as "Prior Art."

# 608.02(h) Additional, Duplicate or Substitute Drawings [R- 36]

When an amendment is filed stating that at
the same time substitute or additional sheets
of drawings are filed and such drawings have
not been transmitted to the examining group,
the docket clerk in the examining group should
call the Application Division before entering the
amendment to ascertain if the drawing was not
received. In the next communication of the
examiner the applicant is notified if the draw-
ings have not been received.

Additional and substitute drawings, together
with the file wrapper, are routed through the

Drafting Division where any defects in execu-
tion will be noted. If there are none, they will
be stamped, "APPROVED BY DRAFTS-
MAN". When such drawings are considered
by the examiner, it should be kept in mind that
the "APPROVED" stamp applies only to the
size and quality of paper, lines rough and
blurred and other details of execution. The
Draftsman will automatically forward all such
cases to the Customer Services Division for
preparation of the paper prints. The Customer

Services Division will return the cases to the
examining groups.

The examiner should not overlook such fac-
tors as new matter, the necessity for the addi-
tional sheets and consistency with other sheets.
Clerks will routinely "enter" all additional and
substitute sheets on the file wrapper. If the
examiner decides that the sheets should not be
entered, applicant is so informed, giving the
reasons. The entries made by the clerk will
be marked "(N.E.)".

If an additional sheet of drawing is con-
sidered unnecessary and the original drawing
requires alterations which are taken care of in
the proffered additional sheet, the latter may
be used in lieu of the usual sketch required in
making the correction of the original drawing.

If an old, large size drawing is to be trans-
ferred to an application filed after January 1,
1972, the drawing together with the file wrap-
per, should be forwarded to the Draftsman.
He will cut down the size of the drawing and
forward the case for preparation of prints.
Only the Draftsman may cut the oversize draw-
ings to size.

For return of drawing, see § 608.02(y).

## 608.02(i) Transfer of Drawings From Prior Applications [R- 44]

Rule 88. Use of old drawings. If the drawings of a
new application are to be identical with the drawings
of a previous application of the applicant on file in
the Office, or with part of such drawings, the old draw-
ings or any sheets thereof may be used if the prior
application is, or is about to be, abandoned, or if the
sheets to be used are canceled in the prior applica-
tion. The new application must be accompanied by a
letter requesting the transfer of the drawings, which
should be completely identified.

Transfer of all drawings from a first pending
application to another will be made only after
a written declaration of abandonment has been
filed in the first application.

## NEWLY SUBMITTED APPLICATION

The transfer of drawings to newly submitted
applications that have not been forwarded to
the examining group will be effected by the
Application Division if no drawing prints are
filed and the application is otherwise entitled to
receive a filing date. The transfer of the draw-
ings between applications under rule 88 is proc-
essed in the examining groups if informal
prints are filed with the application papers. A
new application filed without drawings but hav-
ing a request for transfer of drawings from a
pending application must be accompanied by a
written declaration of abandonment under rule
138. In order to insure copendency, such an
abandonment may be worded as to become effec-
tive only after the transfer of the drawings has
+taken place. When a new application is filed
with a request to transfer drawings under rule
88, the application papers should include draw-
ing prints to enable the Application Division to
process the case before transfer of the formal
drawings is effected.

The above practice applies to transfer of
drawings from any application except where
the issue fee has been paid, in which case an
express abandonment (rule 138) must be filed
together with a showing why the proposed ac-
tion was not taken earlier. See rule 313.

The name of the attorney on the drawing
being transferred is not changed. See
§ 608.02(u).

When an application is sent to issue, any can-
celed sheet of drawing then in the case is sent
to the Abandoned Files Unit. Such canceled
sheet is available for applicant's use in another
application directed to its subject matter. It
follows that, except as provided in rule 174,
drawings printed in a patent may not be trans-
ferred to a subsequent case.

# 608.02(j) Transfer of Canceled Sheets of Drawings to Divi- sional Application [R-44]

In the case of a divisional application, if the
drawing and descriptive matter pertaining
thereto have been canceled from the parent
case, the canceled sheet or sheets of drawing
may be withdrawn and used as the original
drawing of the divisional case. The sheets in-
volved should be taken to the Drafting Division
for erasure of the "CANCEL per" stamp.

# 608.02(k) Transfer of Drawings to Reissue [R-32]

In a reissue application, the prints of the
original or patented drawing may be used for
examination purposes, and the formal transfer
of the original drawing to the reissue applica-
tion made when the reissue application is ready
for issue, provided no change whatever, even so
much as the priming of a reference character,
or correction of an obvious error, is made in
the drawing. If there is to be any change
whatsoever in the drawing, a new drawing for
the reissue must be filed.

If there is more than one sheet of original
drawing, a required change on any sheet will
preclude the use of the original drawings which
must be kept in the condition existing at the
time of issue of the original patent. See
§ 1401.05.

Transfer of the drawing is made as set forth
in § 608.02 (i), notation thereof being entered on
the file wrapper of the original application.

The letter of transmittal in a reissue applica-
tion should request transfer of the drawings, if
such transfer is desired.

608.02(m)

608.02(m) Drawing Prints [R-44] 608.02(n) Duplicate Prints in Patent-
ability Report Cases [R-
29]

## Preparation and distribution of drawing prints is discussed in § 508.

Prints are made of the drawings of an ac-
ceptable application. Prints of the drawings
as filed are entered in the application, given
a paper number and kept on top of the pa-
pers on the right side of the file wrapper, see
§ 717.01(b).

All prints and inked sketches subsequently
filed to be part of the record are endorsed with
the date of their receipt in the Office and given
their appropriate paper number.

The print being thus an official paper in the
record should not be marked or in any way
altered. The bristolboard drawing, of course,
should not be marked up by the examiner.
Where, as in an electrical wiring case, it is
desirable, to identify the various circuits by
different colors, or in any more or less com-
plex case, it is advantageous to apply legends,
arrows or other indicia, an additional print for
such use should be ordered by the examiner
and placed unofficially in the file.

Prints remain in the file at all times except
as provided in § 608.02(c).

# HEAVY PAPER PRINTS

A second print on heavy weight, colored
paper is prepared of each drawing in all appli-
cations having a filing date after January 1,
\+ 1972\. The print on colored paper is in addition
to the white paper print.

Pink paper was used from January 1, 1972 to
January 1, 1974. Buff colored paper has been
used since January 1, 1974.

Primary examiners should place the classifi-
cation and the name of the examiner on the
colored print.

The colored prints are located above the white
paper prints on the right hand portion of the
file wrapper, when initially received in the ex-
amining group.

After the application has been classified and
\+ assigned to an examiner, the colored prints
should be removed and placed in the drawing
cabinets.

If an application has several sheets of draw-
\+ ings, the colored prints should be stapled to-
gether at their bottom edges before being filed.
If the number of sheets of prints is too large to
be stapled, a fastener should be placed through
the holes at the top.

\+ The time when the colored prints are removed
from the drawing cabinets is determined by the
group director.

The formal bristolboard drawings submitted
by applicant in cases filed after January 1, 1972
remain in the file wrapper.

In patentability report cases having draw-
ings, the examiner to whom the case is as-
signed obtains a duplicate set of prints of
the drawing for filing in the group to which
the case is referred.

When a case that has had patentability re-
port prosecution, is passed for issue or becomes
abandoned, notification of this fact is given
by the group having jurisdiction of the case
to each group that submitted a patentability
report. The examiner of each such reporting
group notes the date of allowance or abandon-
ment on his duplicate set of prints. At such time
as these prints become of no value to the report-
ing group, they may be destroyed.

## 608.02(0) Dates Entered on Drawing [R-44]

The Incoming Mail Section (mail room)
stamp and the "Corrected" stamp applied by
the Drafting Division are impressed on the back
of the drawings.

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 Patent Issue
Division. Under current practice, the clerk of
the examining group does NOT enter any date
when the case is "sent to issue".

Approval of the Drafting Division is indi-
cated by a legend associated with the "O.G. Fig.
Cl. . . . Sub. .. . " stamp on the front of each
sheet.

## 608.02(p) Correction of Drawings [R-29]

Rule 123. Amendments to the drawing. (a) No
change in the drawing may be made except by permis-
sion of the Office. Permissible changes in the con-
struction shown in any drawing may be made only by
the Office. A sketch in permanent ink showing pro-
posed changes, to become part of the record, must be
filed. The paper requesting amendments to the draw-
ing should be separate from other papers.

(b) Substitute drawings will not ordinarily be ad-
mitted in any case unless required by the Office.

NOTE .- Correction is deferrable, see § 608.02
(b), correction at allowance and issue, see
$$ 608.02(w) and 1302.05.

A canceled figure may be reinstated. An
amendment should be made to the specification
adding the brief description if a canceled figure
is reinstated.

# 608.02(q) Conditions Precedent to Amendment of Drawing [R-44]

Correction and alterations in the disclosure
of the drawings of a pending application may
be made only under the supervision of, or by
the Chief Draftsman.

No alterations will be permitted unless re-
quired by an examiner's letter in each case, or
proposed in writing by applicant or his attor-
+ney or agent. In either case the alterations or
corrections as indicated in the sketches filed
with the request of the applicant or his attorney
or agent must be given written approval by the
examiner before the case is sent to the Drafting
Division.

In those cases filed after January 1, 1972,
which contain oversize drawings (larger than
81/2 by 14 inches), the Draftsman will cut down
the edges of the drawing in order to allow it to
be placed in the file wrapper. The Draftsman
will place two copies of a form letter in each
application in which the drawings were cut.
One copy should be mailed with the first Office
letter as an attachment thereto and the other
copy should be retained in the file wrapper.

The Draftsman will also place two copies of
the form in all applications having drawings
with names within the illustration area. Names
must be removed from the illustration area of
all drawings in cases filed after January 1, 1972.
The names will be removed from the drawing
by the Draftsman upon payment of the appro-
priate fee. Estimates of the fee may be ob-
tained from the Draftsman. Removal of the
border lines will not be required since the
printer can easily mask them out when printing
the drawing.

NOTE .- Disposition of orders for amend-
ment of drawing, § 608.02 (x).

# 608.02(r) Separate Letter to Drafts- man [R-44]

Any request by the applicant for amendment
of the drawing to cure defects must be em-
bodied in a separate letter to the Chief Drafts-
man. Otherwise the case, unless in other respects
ready for issue, will not be forwarded by the
examiner to the Drafting Division, and appli-
cant will be so advised in the next action by
the examiner.

NOTE .- Changes which may require sketches,
§ 608.02(v).

# 608.02(s) Estimating Cost of Correct- ing Drawings [R-44]

The Draftsman places an estimate of the cost
of correcting any formal defects of the draw-
ing on form PO-948. See §§ 707.07 (a) and (c).

Files and drawings sent from the examin-
ing group to the Draftsman for estimating
the cost of correcting the drawing or of mak-
ing new drawings will be retained by the
draftsman only long enough to estimate the
cost of the work.

If the examiner approves of a proposed
correction of a drawing for which an estimate
is requested he will note his approval on the
order for the estimate, attach the order to the
outside of the file and have the docket clerk
of the group forward the file and drawing
to the Draftsman. The Draftsman will note
the estimate on the order and also on the
drawing. If the application is not up for ac-
tion the Draftsman sends the estimate to the
applicant. If the application is up for action
the Draftsman does not send an estimate, but
the examiner should include the estimate in
the next action.

When giving an estimate in a case where no
allowable subject matter has been found the
examiner should inform the applicant that no
correction will be made until a claim is found
to be allowable. If specifically requested by
the applicant, the drawing will be corrected
whether or not a claim is allowable or an appeal
is filed.

If an application is ready for allowance
except for a correction required by the drafts-
man, such as in a case where the lines are
rough and blurred, the examiner will ascer-
tain (by calling Ext. 73227) whether or not the
attorney in the case has a deposit account. If
there is no such account, the examiner will
obtain an estimate of the cost of this work from
the draftsman even though applicant has not
requested such an estimate, provided that no
estimate has been previously furnished on form
PO-948. Including the estimate in the final re-
quirement for correction of the drawing may
avoid prolonging the prosecution. [R-36]

## 608.02(t) Cancelation of Figures [R-23]

Cancelation of one or more figures which do
not occupy entire sheets of the drawings is
done by the clerk in the examining group who
encloses a figure and its legend with a red ink
line. No portion of the figure itself should be
crossed by the red line. The words "CANCEL
per" and the date of the amendment directing
the cancelation or the date that substitute sheets
are filed should be written in red ink within the
red line. Cancelation of an entire sheet of draw-
ings is done by stamping the words "CANCEL
per" in the top right corner of the drawing
within the marginal line.

When the cancelation of some of the figures
from one sheet of drawings has left the re-
maining figures with an inartistic arrangement,
the Chief Draftsmen should be consulted as to
whether the remaining figures should be trans-
ferred to other sheets already in the case or
shown in additional drawings. Cancelation of
a figure may necessitate renumbering of the
remaining figures.

## 608.02(u) Changing Name of Attor- ney on Drawing Forbidden [R-23]

Writing upon the drawings the names of
attorneys subsequently appointed, so as to
make it appear that their names were present
when the drawings were originally filed, is
prohibited.

This prohibition applies also where a draw-
ing is transferred from one case to another
having a different attorney.

## 608.02(v) Drawing Changes Which Require Sketches [R-23]

When changes are to be made in the drawing
itself, other than mere changes in reference
characters, designations of figures, or inking
over lines pale and rough, a print or pen-and-
ink sketch showing such changes in red ink
must be filed. Ordinarily, broken lines may
be changed to full without a sketch.

Sketches filed by an applicant and used by
the draftsman for correction of the drawing
will not be returned. All such sketches must
be in ink or permanent prints.

A pencil sketch that is otherwise acceptable
or a blueprint with the changes indicated in
pencil, may be inked in by the Office Drafts-
man at applicant's request and at his expense.

## 608.02(w) Drawing Changes "Which May Be Made by Examin- er's Amendment Without a Sketch [R-36]

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

As a guide to the examiner the following
corrections are illustrative of those that may
be made by examiner's amendment without a
sketch .

1\. Adding two or three reference characters
or exponents.

2\. Changing one or two numerals or figure
ordinals.

3\. Removing superfluous matter.

4\. Adding or reversing directional arrows.

5\. Changing Roman Numerals to Arabic Nu-
merals to agree with specification.

6\. Adding section lines or brackets, where
easily executed.

7\. Making simple changes in inventor's
name (not his signature).

8\. Changing lead lines.

9\. Correcting misspelled legends.

In the event that several different kinds of
changes are required or any of the listed
changes are time consuming, an examiner's
amendment should not be made.

608.02(x)

# MANUAL OF PATENT EXAMINING PROCEDURE

## 608.02(x) Disposition of Orders for Amendment of Drawing [R-36]

Where the ordered correction of the drawing
in a case up for action by the examiner is ap-
proved, the application and drawing are for-
warded to the draftsman provided there is an
allowable claim, an appeal has been filed, or
there has been a specific request by applicant
that the drawing be corrected regardless of
whether or not a claim has been allowed or an
appeal filed (§ 608.02(s). Applicant's letter to
the draftsman is attached to the outside of
the file and the examiner writes on said let-
ter "approved", with the date of approval and
his initials, attaching, if appropriate, a "Spe-
cial" tag (PO-364). If rough and blurred lines
are to be corrected, the examiner should at that
time indicate in the margin the figure to be
printed in the Official Gazette. It is not neces-
sary to carry such files to the draftsman. Mes-
senger envelopes should be used. After the
drawing has been corrected, the draftsman
stamps the letter to the draftsman and the back
of the drawing CORRECTED and returns the
case to the examiner.

NEW DRAWINGS PREPARED BY PATENT OFFICE

When new drawings have been required in
pending applications and have been prepared by

the draftsman, a copy (print) is sent to the ap-
plicant for his file.

In the event that the application is in condi-
tion for allowance, the application can be sent
to issue immediately after the drawing is
prepared.

# CORRECTION NOT APPROVED

Where the correction is not approved, for
example, because the proposed changes are er-
roneous, or involve new matter or (although
otherwise proper) do not include all necessary
corrections, the case and request for correction
of drawing are not sent to the draftsman. The
examiner's reasons for not approving the cor-
rections to the drawing should be set forth
in the Office action.

# 608.02(y) Return of Drawing [R- 29]

If there is an accepted drawing in the case,
other drawings (except those originally filed)
that have been finally denied admission will be
returned to the applicant only at his request.

Such a request must be filed within a reason-
able time; otherwise the drawing may be dis-
posed of at the discretion of the Commissioner.

When a drawing is to be returned, the file,
the examiner's letter stating that the drawing
is being returned, and the drawing are taken to
the Drafting Division where the letter will be
stamped and the drawing returned. The letter
is mailed by the examining group.

Before drawings are returned prints are made
and put in the application file.

Drawings prepared by the Office Draftsman
are not sent to the applicant for signature. See
$ 608.02 (x).

## 608.03 Models, Exhibits, Specimens [R-37]

35 U.S.C. 114 Models, specimens. The Commis-
sioner may require the applicant to furnish a model of
convenient size to exhibit advantageously the several
parts of his invention.

When the invention relates to a composition of mat-
ter, the Commissioner may require the applicant to
furnish specimens or ingredients for the purpose of
inspection or experiment.

Rule 91. Models not generally required as part of
application or patent. Models were once required in
all cases admitting a model, as a part of the applica-
tion, and these models became a part of the record of
the patent. Such models are no longer generally re-
quired (the description of the invention in the specifi-
cation, and the drawings, must be sufficiently full and
complete, and capable of being understood, to disclose
the invention without the aid of a model), and will
not be admitted unless specifically called for.

Rule 92. Model or exhibit may be required. A model,
working model, or other physical exhibit, may be re-
quired if deemed necessary for any purpose on exami-
nation of the application.

With the exception of cases involving per-
petual motion, a model is not ordinarily re-
quired by the Office to demonstrate the opera-
tiveness of a device. If operativeness of a
device is questioned, the applicant must estab-
lish it to the satisfaction of the examiner, but
he may choose his own way of so doing.

A physical exhibit, not to be part of the case.
is generally not refused except when bulky or
dangerous.

Rule 93. Specimens. When the invention relates to
a composition of matter, the applicant may be required
to furnish specimens of the composition, or of its in-
gredients or intermediates, for the purpose of inspec-
tion or experiment.

## 608.03(a) Handling of Models, Ex- hibits and Specimens [R-23]

All models received in this Office, whether
forming part of an application, or filed upon
request from the examiner, must be received

from the Supply and Receiving Unit and not
from the applicant or his agent. It is neces-
sary that all models should be taken to the
Supply and Receiving Unit for proper record-
ing in order that they may be located under sub-
sequent inquiry and for final disposition. The
examiners should, therefore, refuse to accept
models from inventors or attorneys. Models
properly received and entered in the records of
the Supply and Receiving Unit will be delivered
or will be picked up by the examining group.

When a model has been received in compli-
ance with the official requirement, the date of
its filing shall be entered on the file wrapper
of the application.

When an exhibit or model is received, it will
be forwarded from the Supply and Receiving
Unit to the examining group. A label showing
attorney's name and address should be attached
to the model or exhibit so that it can be returned
after prosecution of case. If exhibit is too large
to be kept in the group during prosecution of
case, it may be sent to the Supply and Receiv-
ing Unit with instructions to indicate whether
exhibit is to be held or returned to sender.

Rule 94. Return of models, exhibits or specimens.
Models, exhibits, or specimens in applications which
have become abandoned, and also in other applications
on conclusion of the prosecution, may be returned to
the applicant upon demand and at his expense, unless
it be deemed necessary that they be preserved in the
Office. Such physical exhibits in contested cases may
be returned to the parties at their expense. If not
claimed within a reasonable time, they may be disposed
of at the discretion of the Commissioner.

When a model is to be returned a letter
should be written to applicant by the examining
group stating that it is being returned under
separate cover and the Supply and Receiving
Unit should be properly notified to return the
model.

NOTE .- Disposition of exhibits which are
part of the record, § 715.07 (d).

Models, exhibits and specimens may be pre-
sented to the Office for purposes of interview
and taken away by the attorney at the end of
the interview. See $ 713.08.

NOTE .- Plant specimens, § 1607, Rule 166.

Rule 95. Copies of exhibits. Copies of models or
other physical exhibits will not ordinarily be furnished
by the Office, and any model or exhibit in an applica-
tion or patent shall not be taken from the Office except
in the custody of an employee of the Office specially
authorized by the Commissioner.

### 608.04 New Matter [R-23]

Rule 118. Amendment of disclosure. In original ap-
plications, all amendments of the drawings or specifi-

cations, and all additions thereto, must conform to at
least one of them as it was at the time of the filing of
the application. Matter not found in either, involving
a departure from or an addition to the original discle-
sure, cannot be added to the application even though
supported by a supplemental oath, and can be shown
or claimed only in a separate application.

In establishing a disclosure applicant may
rely not only on the specification and drawing
as filed but also on the original claims if their
content justifies it. Note $ 608.01 (1).

While amendments to the specification and
claims involving new matter are ordinarily
entered, such matter is required to be canceled
from the descriptive portion of the specifica-
tion, and the claims affected are rejected.

A "new matter" amendment of the drawing
is ordinarily not entered. Neither is an addi-
tional or substitute sheet containing "new mat-
ter" even though stamped APPROVED by the
Draftsman and provisionally entered by the
clerk. See § 608.02 (h).

The examiner's holding of new matter may
be petitionable or appealable, § 608.04(c).

NOTE .- New matter in reissue application,
§ 1401.07. New matter in substitute specifica-
tion, $ 714.20.

# 608.04(a) Matter Not in Original Specification, Claims or Drawings [R-23]

Matter not in the original specification,
claims or drawings is usually new matter.
Depending on circumstances such as the ade-
quacy of the original disclosure, the addition of
inherent characteristics such as chemical or

physical properties, a new structural formula
or a new use may be new matter. See Ex parte
Vander Wal et al., 1956 C.D. 11; 705 O.G. 5
(physical properties), Ex parte Fox, 1960 C.D.
28; 761 O.G. 906 (new formula) and Ex parte
Ayers et al., 108 USPQ 444 (new use). For
rejection of claim involving new matter see
§ 706.03(o).

NOTE .- Completeness of disclosure, § 608.01
(p) ; Trademarks and trade names, § 608.01 (v).

# 608.04(b) New Matter by Prelimi- nary Amendment [R-23]

An amendment is sometimes filed along with
the filing of the application. Such amendment
does not enjoy the status as part of the original
disclosure. Its test as to involving new matter
is the same as though filed on a subsequent date.
Ex parte Leishman, 137 Ms. 336, Pat. No.
1,581,937, and Ex parte Adams, Pat. No.
1,789,921.

# 608.04(c) Review of Examiner's Holding of New Matter

Where the new matter is confined to amend-
ments to the specification, review of the ex-
aminer's requirement for cancellation is by
way of petition. But where the alleged new
matter is introduced into or affects the claims,
thus necessitating their rejection on this
ground, the question becomes an appealable
one, and should not be considered on petition
even though that new matter has been intro-
duced into the specification also. Rules 181
and 191 afford the explanation of this seem-
ingly inconsistent practice as affecting new
matter in the specification.

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