Intro

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# MANUAL OF

# PATENT

# EXAMINING PROCEDURE

ORIGINAL EDITION

DEPARTMENT OF COMMERCE
UNITED STATES OF AMERICA

U.S. DEPARTMENT OF COMMERCE
Patent and Trademark Office

REEL NUMBER

2

BOOK NUMBERS

28

4/19/

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Rewe 128 -- CorBf 1971

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Patent Office
Washington, D88CD4 2023) begiven

## MANUAL OF PATENT EXAMINING PROCEDURE

## Instructions regarding Revision No. 28

The attached revised pages are replacements for those
in the Manual having corresponding numbers, or additional
pages to be placed in appropriate numerical sequence.

Change Notice 17-2, relating to the Trial Multiple
Dependent Claim Practice, should be retained until prosecu-
tion of all applications under the program is concluded.
The termination of this program was announced in the Notice
of June 9, 1969; 864 0.01-323. All other Change Notices
have been incorporated into the Manual.

Ins Id-1.81S

The notation "/H-26/" in the attached pages appears
either at the title or at the end of a section that has
been revised.

Louis O. Maassel
Editor, Manual of Patent
Examining Procedure

Particular attention is called to the following sections:

101

Incorporates memorandum to Patent Office Personnel dated December 10, 1970, relating to confiden- tiality and accessibility of patent application papers.

502

Incorporates notice of March 5, 1971, relating to identification of application correspondence (855 0.0. 2) .

503

Incorporates notice of March 10, 1971 relating to early notification of serial number (884 0.0. 970) .

(Over)

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901.06
1112.05

Revised towaruSudek seiesod Abetriebs" handling.
Revised for FO-880.

Chapter
1200

ZHUGHOCAS DMINIMAXU THATAT HO JAUMAM
Revised in view of zecsesd Rule 192 and now
clerical procedures.

1208
1208.01

Times for furnishing examiners"
answers.

List of replacement pages, all bearing Rev. No. 28:

Title Page

2016202

3-4

209-210

4.1.4.2

211-212

5-6

213-214

31-32

214.I-blonk

32.1-32.2

215-216

43-44

216.1-blank

44.Jeblank

217-218

73-74

218.1-blank

74.1-blank

219-220

79-80

220.1-220.2

139-140

220.3-220.4

140.1-140.2

220.5-220.6

167-168

220.7-blank

177-178

253-254

179-180

255-blank

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<!-- PageHeader="Rev. 27 - Jan., 1971" -->

(

## U. S. DEPARTMENT OF COMMERCE Patent Office Washington, D. C. 20231 MANUAL OF PATENT EXAMINING PROCEDURE Third Edition

### Instructions regarding Revision No. 27

The attached revised pages are replacements for those
in the Manual having corresponding numbers, or additional
pages to be placed in appropriate numerical sequence.

Change Notice 17-2, relating to the Trial Multiple
Dependent Claim Practice, should be retained until prosecu-
tion of all applications under the program is concluded.
The termination of this program was announced in the Notice
of June 9, 1969; 864 O.G. 323. All other Change Notices
have been incorporated into the Manual.

The notation "/R-277" in the attached pages appears
either at the title or at the end of a section that has
been altered in any way.

Louis O. Maassel
Editor, Manual of Patent
Examining Procedure

Particular attention is called to the following sections:

606.01

Revised to Notice of

indicate practice of marking box on Allowance form for a title change.

903.07

Revised to unofficial

include instructions on designating subclasses on issue slips.

1001.01, 1002

Revised to

correspond with current rule language.

Index

Completely revised.

(Over)

Rev. 27 - Jan., 1971

C

C

C

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List of replacement pages for Revision 27:

Page

Rev. No.

Page

Rev. No.

Title Page

27-27

263-264

27-27

III-blank

27

265-266

27-27

21-22

27-27

267-268

27-27

27-28

27-27

269-270

27-27

41-42

27-27

271-272

27-27

69-70

27-27.

273-274

27-27

70.1-blank

27

275-276

27-27

83-84

27-27

277-278

27-27

151-152

27-27

279-280

27-27

#152.1-blank

27

281-282

27-27

157-blank

27

283-284

27-27

159-160

27-27

285-286

27-27

161-blank

27

287-288

27-27

165-166

23-27

289-290

27-27

257-258

27-27

291-292

27-27

259-260

27-27

293-blank

27

261-262

27-27

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<!-- PageHeader="UNITED STATES DEPARTMENT OF COMMERCE * PATENT OFFICE * WASHINGTON" -->

Y

<!-- PageHeader="Reference: MPEP 608.01(n)" -->

## MANUAL OF PATENT EXAMINING PROCEDURE, 3rd. Ed. Change Notice

SERIES NO. 17-2
(Follows Change 17-1)

June 4, 1968

### TRIAL MULTIPLE DEPENDENT CLAIM PRACTICE

For the trial period running from July 1, 1968 through December 31, 1968, all applications
and amendments to applications filed in the Patent Office will be permitted to include multiple
dependent claims which refer back to any of the preceding claims in the alternative whether
independent or dependent. In this manner a claim may have a single number but would effectively
be considered and treated as a plurality of claims. Entry into this program will require (1) the
filing of a written request in which the applicant agrees to abide by the conditions of the program,
and (2) the filing of appropriate fees and a showing of the fee calculation. Although the trial period
terminates December 31, 1968, the prosecution of all applications placed in this program will con-
tinue under the program guidelines.

\-

A claim dependent upon any of a plurality of preceding claims will be considered in accept-
able form and entered provided it is otherwise acceptable and does not (1) cross statutory classes
with any of its parent claims, or (2) depend from any other multiple dependent claim, or (3) refer
back to preceding claims in the conjunctive rather than the disjunctive form (e.g., "The tool as
defined in any one of claims 1, 2, and 4 . . . ".is acceptable, but "The tool as defined in claims 1
and 2. . . " is not acceptable. Likewise, "The tool as defined in claims 1, 2, or 4 . . . " is
acceptable, whereas "The tool as defined in claims 1, 2 and/or 4 . . . " is not acceptable). Should
any dependent claim include a claim association that violates any of the above prohibitions the claim
will be rejected as indefinite for failure to comply with 35 U. S. C. 112 and will not be further treated
with regard to any other claim association. Also, multiple dependent claims will not be considered
for entry after final rejection. Further, during this trial period, for the applications involved in
this program the total numbered claims may not exceed ten. Non-compliance with this condition
will result in applicant being given one month to reduce the total numbered claims to ten. In newly
filed cases, the failure to comply within the one month period will result in loss of filing date. In
all other cases the entire amendment will not be entered in the absence of compliance with this
requirement.

It is suggested that the claims be arranged in order of narrowing scope whereby the first
claim presented is the broadest. Claims dependent upon the broad claim should come next,
followed by claims which are dependent upon any of the plurality of preceding claims.

### Practice and Rejections

When acting on a multiple dependent claim, the examiner will consider the patentability of
the various claim associations encompassed by said claim and apply any pertinent prior art in the
usual manner. Each of these associations should be compared with the prior art, exactly as if it
were presented as an independent claim. If a claim having multiple dependency should include both
patentable and unpatentable claim associations, the Examiner will identify each of the patentable
claim associations and identify and specifically reject each of the unpatentable claim associations.
However, mere failure to reject a claim association does not give rise to a presumption of
allowability.

For fee purposes every claim which refers to any of the preceding claims will be considered
effectively as a dependent claim for each association of claims that it represents, thereby effectively
increasing the number of claims in the case. Therefore, in these cases the additional fees required
for claims in excess of ten will be two dollars($2.00) times the total effective number of claims in
excess of ten. This fee is based on the fact that such a claim is, in substance and so far as the work
of examination is concerned, equivalent to a number of dependent claims each based on a single
preceding claim.

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In applications not under this program but having multiple dependent claims, it will be
assumed that applicant intends these claims as effectively only a single claim. Accordingly,
such claims will be considered alternative and therefore indefinite under 35 U. S. C. 112.

Rule 75(c) is hereby suspended for the duration of the trial period in those cases pre-
senting multiple dependent claims under this program insofar as conflict exists between the
requisites of the rule and the proposed practice.

Richard A. Wahl
Assistant Commissioner

Published 851 O.G.
6/25/68

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### MANUAL OF PATENT EXAMINING PROCEDURE

Third Edition, November 1961

DEPARTMENT OF COMMERCE
UNITED STATES OF AMERICA

U.S. DEPARTMENT OF COMMERCE
PATENT OFFICE

<!-- PageFooter="Rev. 28, Apr. 1971" -->
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The Patent Office does not handle the sale of the Manual, distribution of notices and
revisions or change of address of those on the subscription list.

Correspondence relating to any of the above items should be sent to the Superin-
tendent of Documents at the following address:
Superintendent of Documents
Mail List Section
P.O. Box 1533
Washington, D.C. 20013

Orders for individual replacement pages not amounting to a complete revision of the
Manual should be sent to the following address:

Commissioner of. Patents
Washington, D.C. 20231
Attn .: Document Services Branch

The cost per page will be 30c (see rules 13(a), 21(b), and 21(t) Rules of Practice).

Charges may be made to deposit accounts if the requestor is an account holder in good
standing at the time the request is received. Checks or money orders should be made pay-
able to the Commissioner of Patents. Requests must identify the specific pages required
and the number of copies of each page.

Employees of the Patent Ofice should direct their order for the Manual, replacement
pages, notices, and revisions to the Scientific Library.

First Edition, November 1949

Revision 1, November 1950

Revision 2, December 1951

Revision 3, May 1952

Second Edition, November 1953

Revision 1, April 1955

Revision 2, June 1956

Revision 3, June 1957

Revision 4, July 1958

Third Edition, November 1961

Revision 1, January 1964

Revision 2, November 1964

Revision 3, January 1965

Revision 4, April 1965

Revision 5, July 1965

Revision 6, October 1965

Revision 7, January 1966

Revision 8, April 1966

Revision 9, July 1966

Revision 10, October 1966

Revision 11, January 1967

Revision 12, April 1967

Revision 13, July 1967

Revision 14, October 1967

Revision 15, January 1968

Revision 16, April 1968

Revision 17, July 1968

Revision 18, October 1968

Revision 19, January 1969

Revision 20, April 1969

Revision 21, July 1969

Revision 22, October 1969

Revision 23, January 1970

Revision 24, April 1970

Revision 25, July 1970

Revision 26, October 1970

Revision 27, January 1971

Revision 28. April 1971

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### Foreword

This Manual is published to provide Patent Office examiners, applicants,
attorneys, agents, and representatives of applicants with a reference work
on the practices and procedures relative to the prosecution of applications
before the Patent Office. It contains instructions to examiners, as well as
other material in the nature of information and interpretation, and outlines
the current procedures which the examiners are required or authorized to
follow in appropriate cases in the normal examination of application.

Examiners will be governed by the applicable statutes, the Rules of Prac-
tice, decisions, and orders and instructions issued by the Commissioner and
the Assistant Commissioners. Orders and Notices still in force which relate
to the subject matter included in this Manual are incorporated in the text.
Orders and Notices, or portions thereof, relating to the examiners' duties
and functions which have been omitted or not incorporated in the text may
be considered obsolete. Interference procedure not directly involving the Pri-
mary Examiner is not included in this Manual and, therefore, Orders and
Notices relating thereto remain in force.

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

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

Commissioner of Patents.
Washington, D.C. 20231

WILLIAM E. SCHUYLER, JR.,
Commissioner.

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### Contents

Page

Checklist of Pages.

vi

Introduction

1

Chapter 100

Secrecy and Access

3

200

Types, Cross-Noting, and Status of Applications

7

300

Ownership and Assignment

21

400

Representative of Inventor or Owner

23

500

Receipt and Handling of Mail and Papers

31

600

Parts, Form and Content of Application

33

700

Examination of Applications

61

800

Restriction; Double Patenting

117

900

Prior Art, Classification, Search

137

1000

Matters Submitted to Commissioner and

159

Group Directors

1100

Interference

163

1200

Appeal

209

1300

Allowance and Issue

221

1400

Correction of Patents

229

1500

Design Patents.

235

1600

Plant Patents

239

1700

Miscellaneous

243

Appendix I

Partial List of Trademarks

247

Appendix II

List of Decisions Cited

253

Index.

257

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### Checklist of Pages Needed To Form a Complete Set of the Third Edition as of Revision 26. DATES OF REVISIONS 16-26 All pages issued in earlier revisions have been revised.

Rev. No.

Date

Rev. No.

Date

16

Apr. 1968

22

Oct. 1969

17

July 1968

23

Jan. 1970

18

Oct. 1968

24

Apr. 1970

19

Jan. 1959

25

July 1970

20

Apr. 1969

26

Oct. 1970

21

July 1969

Page

Revision No.

Page

Revision No.

Title Page (2 sides)

26-26

57-58

23-23

III-IV

17-17

59-60

23-23

V-VI

22-26

VII

26

Chapter 700

61-62

25-25

Introduction

63-64

25-25

1-2

22-22

65-66 66.1

23-23 23

Chapter 100

67-68

18-18

69-70

16-16

3-4

24-24

70.1

16

4.1

24

71-72

20-20

5-6

18-18

72.1-72.2

20-16

73-74

17-17

Chapter 200

74.1

17

7-8

26-26

75-76

22-22

8.1

26

77-78

25-25

9-10

22-22

79-80

21-21

10.1-10.2

25-25

80.1

21

11-12

24-24

81-82

21-21

13-14

24-24

83-84

16-16

14.1

24

85-86

24-24

15-16

20-21

87-88

26-26

16.1

25

88. 1

26

17-18

24-24

89-90

24-24

19-20

22-23

90.1-90.2

24-26

20.1

23

91-92

26-26

93-94

24-24

Chapter 300

95-96

24-24

21-22

24-24

96.1-96.2

24-24

22.1

24

97-98

24-26

98.1

26

Chapter 400

99-100

26-26

23-24

24-24

101-102

25-25

25-26

24-24

102.1-102.2

25-25 25

27-28

24-24

102.3

29-30

24-22

103-104 105-106

21-21 21-21

Chapter 500

106.1 107-108

21 25-25

31-32

24-24

108.1

25

32.1

26

109-110

22-22

111-112

25-25

Chapter 600

113-114

25-25

33-34

22-22

115-116

18-12

34.1-34.2

25-25

35-36

25-25

Chapter 800

37-38

21-21

117-118

18-18

38.1

21

119-120

20-20

39-40

24-24

120.1-120.2

20-20

41-42

24-24

121-122

18-18

43-44

24-24

123-124

25-25

44.1

24

125-126

25-25

45-46

22-22

127-128

18-18

46.1

22

129-130

18-18

47-48

22-22

131

18

48.1-48.2

22-22

133-134

18-18

48.3-48.4

26-26

135-136

26-26

49-50

26-21

51-52

21-21

Chapter 900

53-54

25-25

137-138

18-17

54.1

25

138.1-138.2

17-17

55-56

23-23

139-140

17-17

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Page

Revision No.

Page

Revision No.

140.1

17

220.5-220.6

25-25

141-142

25-25

220.7

25

143-144

23-23

145-146

23-23

Chapter 1300

147-148

26-26

221-222

24-24

149

26

223-224

24-24

151-152

23-26

225-226

24-24

153-154

26-26

227-228

24-24

154.1-154.2

26-26

228.1

26

154.3

26

155-156

24-24

Chapter 1400

157

24

229-230

25-25

Chapter 1000

231-232

25-25

159-160

21-21

233-234

22-22

161

21

234.1-234.2

22-22

Chapter 1100

Chapter 1500

163-164

23-23

235-236

20-20

165-166

23-23

237-238

20-20

166.1

23

167-168

23-23

Chapter 1600

169-170

20-20

239-240

25-25

171-172

25-25

241-242

23-23

172.1

22

173-174

22-22

Chapter 1700

174.1

22

243-244

24-24

175-176

22-22

245-246

26-26

176.1

22

246.1-246.2

26-20

177-178

22-22

246.3

26

179-180

25-25

181-182

25-25

Appendix I

183-184

25-25

247-248

26-26

185-186

25-25

249-250

26-26

186.1

26

251

26

187-188

23-23

189

23

Appendix II

191-192

omitted

193-194

25-25

253-254

26-26

194.1

25

255

26

195-196

26-26

197-198

26-26

Index

199-200

23-23

257-258

19-19

201-202

23-23

259-260

19-19

203

25

261-262

19-19

205

23

263-264

19-19

207-208

omitted

265-266

19-19

267-268

19-19

Chapter 1200

269-270

19-19

209-210

23-23

271-272

19-19

211-212

23-23

273-274

19-19

213-214

23-23

275-276

19-19

214.1

21

277-278

19-19

215-216

26-26

279-280

19-19

216.1

26

281-282

19-19

217-218

21-21

283-284

19-19

218.1

21

285-286

19-19

219-220

25-25

287-288

19-19

220.1-220.2

25-25

289-290

19-19

220.3-220.4

25-25

291-292

19-19

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### Introduction

### Constitutional Basis

The Constitution of the United States pro-
vides :

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

### Statutes

Pursuant to the provision of the Constitution,
Congress has over the years passed a number of
statutes under which the Patent Office is or-
ganized and our patent system is established.
The provisions of the statutes can in no way
be changed or waived by the Patent Office.

Prior to January 1, 1953, the law relating to
patents consisted of various sections of the Re-
vised Statutes of 1874, derived from the Pat-
ent Act of 1870 and numerous amendatory and
additional acts.

By an Act of Congress approved July 19,
1952, which came into effect on January 1,
1953, the patent laws were revised and codi-
fied into their present form. With certain excep-
tions applying to applications filed and patents
issued before January 1, 1953, this law governs
all cases in the Patent Office. The patent law is
Title 35 of the United States Code, which con-
tains 96 sections numbered from 1 to 293, with
gaps in the numbering between various chapters
of the title. In referring to a particular section
of the patent code the citation is given, for
example, as, 35 U.S.C. 31. The pamphlet "Pat-
ent Laws" (available from the Superintendent
of Documents for 35 cents) reprints the patent
code and some additional statutes.

### Rules of Practice

One of the sections of the patent statute,
namely, 35 U.S.C. 6, authorizes the Commis-
sioner of Patents, subject to the approval of
the Secretary of Commerce, to establish regula-
tions, not inconsistent with law, for the con-
duct of proceedings in the Patent Office.

These rules are set forth in a Patent Office
booklet entitled "Rules of Practice of the United
States Patent Office in Patent Cases" (available
from the Superintendent of Documents for 55
cents). These rules and the various amendments
were published in the Federal Register. In the
Federal Register and in the Code of Federal
Regulations these rules are Part 1 of Title 37,
Patents, Trademarks and Copyrights, and the
individual rules, there called sections, are num-
bered with the Part number and a decimal point
prefixed to the numbers to the rule number;
thus section 1.33 in the Federal Register and the
Code of Federal Regulations is the same as rule
33. Primarily the function of the Rules of Prac-
tice is to advise the public of the regulations
which have been established in accordance with
the statutes and which must be followed before
the Office. The Rules of Practice govern the
Examiners, as well as applicants and their
attorneys.

### Commissioner's Orders and Notices

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

### Decisions

In addition to the statutory regulations, the
actions taken by the Examiner in the examina-
tion of applications for patents are to a great
extent governed by decisions on prior cases.
Applicants dissatisfied with an Examiner's ac-
tion may have it reviewed. In general, that por-
tion of the Examiner's action pertaining to

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### MANUAL OF PATENT EXAMINING PROCEDURE

objections on formal matters may be reviewed
by petition to the Commissioner of Patents (see
$ 1002) and that portion of the Examiner's ac-
tion pertaining to the rejection of claims on the
merits, may be reviewed by appeal to the Board

of Appeals (see § 1201). The distinction is set
forth in Rules 181 and 191. In citing decisions
as authority for his actions, the Examiner
should cite the decision in the manner set forth
in § 707.06.

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