900

Printed page 1

Printed page 2

Printed page 3

Printed page 4

Printed page 5

Printed page 6

Printed page 7

Printed page 8

Printed page 9

Printed page 10

Printed page 11

Printed page 12

Printed page 13

Printed page 14

Printed page 15

Printed page 16

Printed page 17

Printed page 18

Printed page 19

Printed page 20

OCR transcription for search; preserved printed pages are authoritative

# Chapter 900 Prior Art, Classification, Search

901
Prior Art

901.01
Canceled Matter in U.S. Patent Files

901.02
Abandoned and Forfeited Applications

901.03
Pending Applications

901.04
U.S. Patents

901.05
Foreign Patents

901.05 (a)
Citation Dates

901.05 (b)
Other Significant Data

901.05(c)
Obtaining Copies

901.05(d)
Translation

901.06
Non-Patent Publications

901.06 (a)
Scientific Library

901.06 (b)
Borrowed Publications

901.06 (c)
Alien Property Custodian Publications
Abstracts of U.S. Applications

901.06 (d)

901.07
Arrangement of Art in Examining Divisions

901.08
Borrowing References

901.09
Missing Copies-Replacement

902
Official Publications and Indices of U.S. Patents

902.01
Manual of Classification

902.02
Definitions

902.02 (a)
Search Notes

902.02 (b)
Search Cards

902.03
U.S. Patent Classification Indices

902.03 (a)
Numerical

902.03 (b)
Blue Slip

902.03 (c)
Subclass Lists

902.03 (d)
Count

902.04
Classification Orders and Bulletins

903
Classification

903.01
Statutory Authority

903.02
Basis and Principles of Classification

903.02 (a)
New and Revised Classes

903.02 (b)
Scope of a Class

903.03
Of Foreign Patents

903.04
Stamping Examiners' and Search Room
Copies

903.05
Transfer of U.S. Patents

903.06
Ordering Official Cross-References

903.06 (a)
Discovery of New Cross-References

903.07
Classifying and Cross-Referencing at Allow-
ance or before Issue

903.07 (a)
Cross-References - Keeping Systematic
Notes during Prosecution

903.07 (b)
Issuing in Another Division Without
Transfer

903.08
Applications-Assignment and Transfer

903.08 (a)
New Applications

903.08 (b)
Classification and Assignment to Examiner

903.08 (c)
Immediate Inspection of Amendments

903.08 (đ)
Transfer Procedure

903.08 (e)
General Regulations Governing Applica-
tion Assignment

903.08(f)
Classification Examiner's Decision

903.08(g)
Transfer to Another Division after Deci-
sion

904
How to Search

904.01
Analysis of Claims

904.01 (a)
Variant Embodiments within Scope of

Claim

904.01 (b)
Equivalents

904.01 (c)
Analogous Arts

904.01 (d)
Outlining Field of Search

904.02
Selecting Pertinent References

905
Miscellaneous

905.01
Orders for Photoprints

905.02
Orders for Soft Copies

905.03
Orders for Patented and Abandoned Files

905.04
Marking Examiners' Copies

## 901 Prior Art

Extract from Rule 104. (a) On taking up an appli-
cation for examination, the examiner shall make a
thorough study thereof and shall make a thorough
investigation of the available prior art relating to the
subject matter of the invention sought to be patented.

## 901.01 Canceled Matter in U.S. Patent Files

Canceled matter in the application file of a
U.S. patent is not a proper reference.

## 901.02 Abandoned and Forfeited Ap plications

Rule 108. Abandoned and forfeited applications not
cited. Abandoned and forfeited applications as such
will not be cited as references.

Where a forfeited or abandoned application
is referred to in an issued U.S. patent the dis-
closure of the application is incorporated by
reference into the disclosure of the patent and
is available to the public. See Rule 14(b).

In re Heritage, 1950 C.D. 419; 639 O.G. 638
holds that where a patent refers to and relies
upon the disclosure of a copending abandoned
application, such disclosure is available as a
reference.

It has also been held that where the refer-
ence patent refers to a copending but aban-
doned application which discloses subject mat-
ter in common with the patent, the effective
date of the reference as to the common subject
matter is the filing date of the abandoned ap-
plication. Ex parte Clifford, 49 U.S.P.Q. 152;
Ex parte Peterson, 63 U.S.P.Q. 99; and In re
Switzer et al., 612 O.G. 11.

## 901.03 Pending Applications

U.S. applications which are pending before
the Office are preserved in secrecy and so are not
available as references (Rule 14a) except that
claims in one application may be rejected on the
claimed subject matter of a copending applica-
tion of the same inventor (822.01) or assignee
(305).

Published abstracts and abbreviatures of ap-
plications áre references (901.06(d) ).

When a file is removed from the Group appli-
cation rack for use by an examiner assigned to
that Group, but not having jurisdiction of that
file, cardboard Form OF-25 should be inserted
in place of the borrowed file. (Basis: Notice
of January 14, 1965.)

## 901.04 U.S. Patents

The following different series of U.S. pat-
ents are being, or in the past have been issued.
The date of patenting given on the face of
each copy is the publication date and is the one
usually cited. The filing date, in most in-
stances also given on the face of the patent, is
ordinarily the effective date as a reference.

X-Series. These are the approximately
10,000 patents issued between 1790 and July 4,
1836. They were not originally numbered, but
have been arbitrarily assigned numbers in the
sequence in which they were issued. The num-
ber should not be cited. When copies are or-
dered, the patentee's name and date of issue
suffice for identification. Copies in stock are
arranged chronologically.

1836 Series. The mechanical, electrical, and
chemical patents issued since 1836 and fre-
quently designated as "utility" patents, are in-
cluded in this series. A citation by number
only is understood to refer to this series. This
series comprises the bulk of all U.S. patents
issued. Some U.S. patents issued in 1861 bear
two numbers but only the larger number should
be cited.

Reissue Series. Reissued patents (1401)
have been given a separate series of numbers,
preceded by "Re." In citing the letters must
be given, e.g., Re 1776. The date that it is
effective as a reference is the effective date of
the original patent application, not the filing
date of the reissue application.

A. I. Series. From 1838 to 1861, patents
covering an inventor's improvement on his own
patented device were given a separate series of
numbers preceded by "A.I." to indicate Addi-
tional Improvement. In citing, the letters
must be given, e.g., A.I. 113. About 300 such
patents were issued.

Plant Patent Series. When the statutes were
amended to provide for patenting certain types

of plants (Chapter 1600) these patents were
given a separate series of numbers. In citing,
the letters "P.P." must be given, e.g., P.P. 13.

Design Patents. Patents for designs (Chap-
ter 1500) are issued under a separate series of
numbers. In citing, the letter "D" must be
given, e.g., D. 140,000.

## 901.05 Foreign Patents

For a comprehensive list of the patent pub-
lications officially issued by foreign govern-
ments and detailed instructions for their use
see "Manual of Foreign Patents" by Belknap
Severance, 161 pages, published 1935 by the
Patent Office Society.

## 901.05(a) Citation Dates

Source

Citation date

Australia

Complete specification ac- cepted.

Austria

Ausgegeben.

Belgium

Brevet Octroyé or Octrooi Torgekend.

Canada

Issued.

Czechoslovakia

Vydano.

Denmark

Udstedt.

Finland

Julkaistu.

France.

Délivré.

Germany

Ausgegeben. See 901.05 (b)

Germany (East)

Tag der Ausgabe der Pa- tentschrift.

Great Britain.

Complete specification pub- lished or complete specifi- cation accepted. See 901.05 (b)

Hungary

Megjelent.

India

Complete specification left.

Ireland

Complete specification ac- cepted.

Italy

Des., Rilasciato or Data di Concessione.

Netherlands

Uitgegeven. See 901.05 (b)

Norway

Offentliggjort.

Philippines

Patented.

Poland

Undesignated date on top right of patent.

Sweden

Publicerat or offentliggjord.

Switzerland

Publié or Veröffentlicht or Pubblicato.

U.S.S.R

"Received in Scientific Li- brary" (stamped).

The dates indicated in the table are custom-
arily used in the identification of foreign pat-
ents which are cited as references. These dates
are not in all cases the effective dates of the
references, either as printed publications or as
patents and when the dates become critical, it
may be necessary to establish the exact effec-
tive date of the reference as is pointed out in
901.05 (b).

## 901.05(b) Other Significant Data

Occasionally, the exact date of foreign pat-
enting becomes material. In the case of Aus-
tralia, Great Britain, India, Ireland and
U.S.S.R., it does not appear on the printed
copies of the patents. If necessary, this infor-
mation can be secured from the Scientific Li-
brary. For the effective dates of Belgian pat-
ents, see the Memorandum of March 2, 1959,
which has been reproduced in 41 J.P.O.S.
at page 440. For the effective dates of Italian
patents, see the Memorandum of October 25,
1960 distributed to all Examiners. Comments
concerning German, French and Belgian pro-
cedure in granting patents are found in Ex
parte Gruschwitz et al., 138 U.S.P.Q. 505. This
case did not involve anticipation but the bar of
foreign patenting under 35 U.S.C. 102(d).

German allowed applications have been is-
sued in printed form beginning September 1,
1955. Those printed from this date up to De-
cember 31, 1956, are captioned "Patentan-
meldung." They should be cited as "German
printed applications" and identified by the name
of the applicant and serial number of the
application; the date of printing is the date
following the words "Bekanntgemacht am."
The applications printed after January 1, 1957,
are captioned "Auslegeschrift" and have an
additional number which is larger than 1,000,-
000; this new number should be used instead
of the original serial number. The date follow-
ing "Ausgabe der Auslegeschrift" should be
cited. In addition to the above, data custom-
arily given in citing foreign patents should be
used.

German Utility Models (Gebrauchsmuster)
may be used as references as prior patents, but
not as prior printed publications, effective as of
their registration date. When necessary, the
Librarian will obtain the complete text of the
specification from the German Patent Office.
A file of such copies is maintained in the Scien-
tific Library.

Netherlands applications, unless withdrawn,
are printed beginning January 1, 1964. They
are captioned "Octrooiaanvrage". They should
be cited as Netherlands applications giving the
number, date of publication, "Datum van ter
inzagelling", name of applicant, "Aanvrager",
and data customarily given in citing foreign
patents. (Basis: Notice of December 2, 1964.)
Certain British applications had become void
and hence lack a date of acceptance. Neverthe-
less, they were given a number in the patent
series. The date of publication (year only) is
given following the statement "Printed for His
Majesty's Stationery Office," and this should
be cited.

British specifications prior to 1916 have
printed in large heavy type at the head of the

first page of the specification a number and
year, as 1451 A.D. 1912. This, together with
the name, as required by the rules, is always
the proper citation of the patent. The year
given at the head of the specification is either
the year of filing or the year of acceptance, but
in either case it is the official designation of
the patent.

The year printed on the drawing is not al-
ways the year for correct designation of the
patent. Where it is not, the correct year is
shown by a small superior number or expo-
nent placed to the right and above the serial
number of the patent, as-

1910-No. 499 11
1912-No. 19421 18

In instances of this kind the patent should be
cited as No. 499 of 1911 or No. 19421 of 1913.

Some countries issue patents of addition and
they should be identified as such and the num-
ber of the addition patent should be cited.

"Patents of addition" generally cover im-
provements of a patented parent invention and
can be obtained by the proprietor of the parent
invention. Inventiveness in relation to the par-
ent invention need not be demonstrated and the
term is governed by the term of the parent
patent.

For citation of the number of pages of draw-
ing and specification, see 707.05 (e).

Some foreign countries list the references
cited during the prosecution. These, especially
if they are U.S. patents, may be helpful, either
as references of interest to the examiner or to
suggest an overlooked field of search.

## 901.05(c) Obtaining Copies

Prints of foreign patents classified in arts in
other classes other than the ones in which he
examines can be had by an Examiner if he
thinks the patents would be of frequent use in
his own class (905.01).

## 901.05(d) Translation

Examiners may request translators in the
Translation Section to assist them orally or with
written translations of any specifications in lan-
guages with which the examiner is not familiar.
(See 901.06(a), Translations-Requests for
Translations, and 903.03, Classification of For-
eign Patents, below.) Alternative versions of
specifications, in English or other languages
known to the Examiner, can commonly be
found. Searches for alternate versions are per-
formed in the Stack Service Section of the Sci-
entific Library. As a substitute for translation,
this service materially reduces the apparent
problem posed by a foreign language speci-
fication.

## 901.06 Non-Patent Publications

All printed publications may be used as ref-
erences, the date to be cited being the publica-
tion date. Recognized abbreviations of names
of periodicals may be used in their citation
(707.05 (e) ).

There are some publications kept or circu-
lated in every group and each assistant Ex-
aminer should ascertain which are available in
his group and whether or not any of them is
likely to bear on any class assigned to him.

## 901.06(a) Scientific Library

The technical literature, foreign patents and
services supplied by the Scientific Library are
important to the Examiner for two primary
reasons. In the first place, they provide ma-
terial which must be known or searched to de-
termine whether claims of applications are di-
rectly anticipated, and therefore unpatentable
under the provisions of 35 U.S.C. 102(a) or
(b). In the second place, in cases in which the
primary search indicates that there is some
novelty as compared to any single reference
in the art, the library handbooks, textbooks,
periodicals, reports and other materials assist
in deciding the question of patentable inven-
tion (35 U.S.C. 103). They enable the ex-
aminer to make a further study to determine
whether the features novel in the particular
combination searched would be obvious to a
person skilled in the art from the general state
of knowledge as reflected in the technical
literature.

### MATERIALS AVAILABLE Foreign Patents

The Library receives foreign patents by ex-
change from almost all countries which issue
printed patents. These patents are bound into
book collections which include one set arranged
in numerical order and, for most principal
countries, another set in order of the classifi-
cation used by that country. The date of re-
· ceipt .of each patent is stamped on the first
(i.e., numerically arranged) copy of the patent
and in a ledger. To ascertain whether a copy
of a foreign patent has been received inquiry
should be made of the Stack Service Section on
Extension 2470.

The Library has a set of officially published
abstracts known as British Abridgments.
These are classified according to broad subjects.

## Foreign Patent Journals

Most foreign countries issue official patent
and trademark journals corresponding to the
Official Gazette. Patent journals are shelved
under country names in the patent collections,

and with the numerical sets of those countries
which print their patents. Trademark jour-
nals constitute a separate collection which is
presently shelved in the Arlington warehouse.

## Books

A representative selection of books published
in the United States and Great Britain in the
fields of applied technology is systematically
acquired by the Library. In addition to the
English language books, there is a modest se-
lection from French and German literature,
mostly in the field of chemistry. There are
also collections in the various examining groups
of books and trade catalogs pertinent to the
arts which they examine. The Design Patent
Group has a great many manufacturers'
catalogs.

In selecting books and periodicals to be or-
dered, the Librarian and his staff obtain as-
sistance from members of the Examining Corps,
and suggestions concerning materials to be
obtained are welcomed at any time. A monthly
list of accessions is circulated to all examining
groups at the beginning of each month and
the books are placed on inspection in the Li-
brary for several weeks thereafter. Duplicate
copies of books on this list, or any other per-
tinent book, may be ordered by Examiners for
use in the groups by addressing a memoran-
dum to the Librarian over the signature of the
Primary Examiner.

The books and trade catalogs procured for
permanent assignment to the examining groups
are recorded in the Library's main catalog, and
copies of these books usually are available in
the Library.

## Technical Periodicals

Over 1,500 technical periodicals are received.
These include publications of many important
scientific and technical societies. The list in-
cludes a number of titles in the design patent
field and in fields of interest to non-examining
areas of the Office.

Most of the periodicals received by the Li-
brary are circulated to examining groups.
Once each year the Library sends to each group
a list of all titles currently circulated to them
with request for suggestions for changes. This
systematic procedure does not preclude the re-
questing of subscriptions for new titles at any
time, and the Library itself will occasionally
add new titles. The Library is alert to new
periodical publications and it acquires sample
copies which it sends to groups likely to be inter-
ested with a request for review and recommen-
dation.

An important part of the duties of each Ex-
aminer involves constant inspection of non-
patent literature pertinent to the class or classes

that he examines. He should fill out a form
PO-253 for each item needed in connection
with search in his arts. All information re-
quired by the order form should be given, in-
cluding the name of the publication, the par-
ticular pages desired, and each class and
subclass in which he desires a copy, and the
order approved by the Primary Examiner.
The order should be sent to the Document Serv-
ices Branch (with the publication where
possible).

## Technical Documents

Almost all unclassified and declassified tech-
nical documents issued by the Atomic Energy
Commission and agencies such as the Office of
Technical Services, Armed Services Technical
Information Agency, National Aeronautics and
Space Administration, and the National Bureau
of Standards, are received.

## AIDS TO SEARCHING

Encyclopedic works, published indexes, and
abstracting vehicles which assist searches in
patents and technical literatures are constantly
increasing in number and quality. The Library
welcomes suggestions for acquisition of avail-
able or forthcoming aids to searching. In con-
ducting library searches, examiners are encour-
aged to supplement their own familiarity, skill,
and available time by assignments to patent aids
and by queries addressed to the Circulation and
Reference Section of the Library (Ext. 2500).

## CARD CATALOGS Main Catalog

This card catalog is located in the Reference
Room and lists all materials in the Library, the
Law Library and Examining Groups except
patent specifications and Atomic Energy Com-
mission documents. If an examiner finds that
the book he desires is not on the shelf he may
be able to ascertain through the card catalog that
another copy is available elsewhere in the Office.
Examiners sometimes acquire material inde-
pendently of the Library, and it is important
that any such material should be sent to the
Library's Technical Processes Branch for cata-
loging to assure that it may be recorded for the
benefit of the entire office.

The Library of Congress classification scheme
is used in classifying the books, bound periodi-
cals, and documents other than those of the
Atomic Energy Commission and the books in
the Law Library. A printed outline of this

scheme is kept on one of the reading tables on
the second floor of the book stacks. The ex-
aminer will find it helpful in determining the
general subject area of the field in which he
is interested. Catalog cards are made for the
author, title when distinctive, and subjects.
Bound volumes of periodicals are cataloged,
classified and maintained on the bookshelves,
while those which have not yet been bound are
separately located in alphabetical order. At
the beginning of the main card catalog, there
is a separate card listing of bound periodicals
and foreign patent and trademark journals.

## Catalog of Atomic Energy Commission Documents

This catalog is separate from the main card
catalog and lists unclassified and declassified
AEC documents by series. Publication of these
cards was terminated on July 1, 1959, but in-
formation of this kind from publications sub-
sequent to that date can be obtained from
Nuclear Science Abstracts.

## Underwood Card Digest

This is a card catalog of patent decisions
made by the Commissioner and by the various
courts. Each card contains a digest of the
decision.

## LIBRARY SERVICES Foreign Patent Information

Upon request made to the Circulation and
Reference Section (Ext. 2500) the Library will
procure individual typewritten copies of patents
from countries which issue, but do not print
them. Where applicable, the dates of opening
to inspection, of issuance and of publication will
be requested of the foreign patent office. The
copy of each patent so acquired is retained in a
special file in the Stack Service Section, and a
photocopy thereof is submitted to the examiner.

## Technical Documents

When technical reports, such as those pub-
lished by U.S. Government agencies and their
contractors are desired, the Library should be
provided with all necessary identifying data,
including the report number if available. The
Library will obtain printed copies whenever
they are available but it may sometimes be pos-
sible to obtain only a microfilm or microprint
copy.

## Manufacturers' Catalogs and Advertising Circulars

These publications will be obtained by the
Library upon request. The Library does not
obtain duplicate copies and therefore the Group
copy is used to fill photocopy requests. Many
copies of this type of material are received and
they are sent to the groups for recommenda-
tions as to retention. They must be returned
to the Technical Processes Branch of the Li-
brary with information as to whether the
groups wishes to retain them. If they are to be
retained by the group, they will be cataloged
by the Library and returned; otherwise they
may be sent to another group.

The Technical Processes Branch will assist
examiners who wish to build up collections of
catalogs or circulars pertinent to their arts, by
writing for copies to companies listed under
pertinent subject headings in Thomas' Register
of American Manufacturers and MacRae's
Bluebook. Thomas' Register gives product
classifications, an alphebetical list of trade
names, brands, etc .; international trade section,
boards of trade, and other commercial organi-
zations, leading trade papers; and volume 4 is
an index providing a product finding guide to
the contents of the first three volumes. Thomas
Micro-Catalogs, consisting of a film viewing
machine and a set of catalogs of about 2,450
American manufacturing firms in the form of
sheets of microfilm, is available in the Reading
Room (Room 1895) near the 4-volume Thomas
Register of American Manufacturers, which
serves as an index for the file. MacRae's Blue-
book is a comprehensive listing of sources of
industrial equipment, products and materials,
alphabetically arranged by product headings.
The principal arrangement is by subject and
there is also an index to advertisers. The Ex-
aminer should be aware of Sweet's Catalog
Service, an annual publication which consists
of six separately bound files of manufacturers'
catalogs covering architecture, engineering,
process industries, mechanical industries, power
plants and product design.

## Loan of Books and Other Publications

### General

All Library materials other than the books
in the main reference collection in the Refer-
ence Room (1895) may be charged out at the
circulation desk. Materials should be kept as
briefly as possible, and ordinarily no longer
than two weeks. Since all library materials
are used for reference purposes, none may be
taken outside of the Commerce Building. Ex-
aminers may use the Commere Department
Library but may not charge out its books.

Books needed from that Library for official
use should be obtained through the Scientific
Library by means of interlibrary loan as de-
scribed in the following paragraph.

Interlibrary Loans

On request the Circulation and Reference
Section will borrow from other libraries ma-
terials not available in the Scientific Library.
In return for this service, the Library loans
its materials to other libraries in the District
of Columbia so that occasionally an Examiner
may find that the item he desires is unavail-
able. These materials which are out on inter-
library loan may be recalled for the Examiner
if required for immediate use. To borrow
books from another library is costly in terms
of both time and effort; therefore, it is library
policy not to borrow materials unless strictly
pertinent to official use. Law books cannot be
borrowed by the Library for use by Examiners
in connection with law courses.

When a book or periodical is borrowed from
another library, and cited in an office action, a
photocopy of the portion cited should be or-
dered immediately and placed in an appropri-
ate class and subclass. This class and subclass
should be cited in the office letter. A separate
file of duplicate photocopies of borrowed refer-
ences is maintained in the Stack Service Section.

## Reference Services

### General

The staff of the Circulation and Reference
Section (Ext. 2500, Room 1895) will assist ex-
aminers in the use of the card catalogs and
other resources of the Library, in pointing out
publications which will help the examiners de-
fine the limits of the field of search, and in pro-
viding information for use in prior art searches.
Upon request, it will provide bibliographies on
given subjects. As requested by examiners, it
performs searches in foreign patent journals to
ascertain the dates of opening to public inspec-
tion, of grant or sealing, and of publication of
specified foreign patent applications.

#### Procurement of Patents

The Circulation and Reference Section will
initiate action to procure specified foreign pat-
ents which are not in the Library's collections.
(See 901.06 (a), LIBRARY SERVICES-For-
eign Patent Information, above.)

Publication Dates of Nonpatent Materials

Requests pertaining to the earliest date of
publication or first distribution to the public
of publications for which this information is
required should be made to the Circulation and
Reference Section. A duplicate copy of the
reply incorporating this information will be
forwarded to the examiner.

#### Alternate Versions of Foreign Patents

The problem of using a patent published in
an unfamiliar language can be materially re-
duced by discovery of an approximate equiva-
lent in English or a familiar foreign language.
Searches for alternate versions are undertaken
by the Stack Service Section of the Library
(Ext. 2470).

## Translations

### Requests for Translations

Examiners may consult the Translation Sec-
tion at any time for oral assistance in trans-

lating foreign patents or literature. If it is
determined that a written translation of part
or all of a patent, periodical article, or book
is required, request should be made to the
Chief Librarian. Translations are made from
all of the principal European languages and
from Japanese. The Library will have re-
quired translations from other languages made
elsewhere.

Card Index of Available Translations

This index lists all translations which have
been made by the Translation Section of the

Library and a few others gathered from mis-
cellaneous sources. The card file and over
10,000 translations of foreign patents and
trademarks with some periodical articles and
excerpts from books are located in the Trans-
lation Section. Translations, which are avail-
able to examiners and non-Office personnel, are
indexed by country, patent or trademark num-
ber, and patentee or author. A copy of any
translations coming to an examiner from out-
side of the Office should be furnished to the
Translation Section so that it may make a copy
for its files. In this case the source is indi-
cated on the translation so that it will not be
certified as an official translation of the Patent
Office.

All examiners are provided with a pamph-
let, "The Patent Office Scientific Library,"
which gives further details concerning library
services.

# 901.06(b) Borrowed Publications

Whenever it is necessary to borrow reference
material from other libraries including the
main Commerce library, for official use, or to
obtain catalogues, bulletins or other literature,
a letter to this effect is sent to the Librarian,
Scientific Library. (Basis: Circular of Oct. 7,
1922.)

A PHOTOCOPY SHOULD IMMEDI-
ATELY BE ORDERED OF THE POR-
TION OF ANY BORROWED BOOK
WHICH IS CITED IN AN OFFICE AC-
TION. SUCH PHOTOCOPY SHOULD BE
PLACED IN AN APPROPRIATE CLASS
AND SUBCLASS AND SUCH CLASS AND
SUBCLASS MUST BE CITED IN THE
OFFICE LETTER. See 707.05 for citation
data.

As the Examiner currently inspects non-
patent literature pertinent to the class or
classes that he examines, he should fill out a
form PO-250 for each item or part thereof
that is essential in connection with search in
his arts. The publication, the particular pages
desired, each class and subclass in which he
desires a copy and the other information on
the order form should be given and the order
approved by Primary Examiner.

The order should be sent to the Manuscript
and Lithographic Branch with the publication
(where possible).

A reasonable effort should be made to avoid
duplication of disclosures that are patented or
about to be patented. (Basis: Notice of Octo-
ber 31, 1949.)

# 901.06(c) Alien Property Custodian Publications

Applications vested in the Alien Property
Custodian during World War II were pub-
lished in 1943 even though they had not be-
come patents.

Care must be taken not to refer to these pub-
lications as patents; they should be designated
as A.P.C. published applications.

An A.P.C. published application may be
used by the examiner as a basis for rejection
only as a printed publication effective from the
date of publication which is printed on each
copy.

The manner of citing one of these publica-
tions is as follows: A.P.C. Application of
Ser. No.
Published

Before citing any A.P.C. published applica-
tion, and before each subsequent action, the
examiner should verify, whether the applica-
tion has become abandoned or patented. If it
has become abandoned, the examiner's action
should state this fact. If it has become pat-
ented the patent is to be cited. The patent
should be substituted for the printed applica-
tion as the basis for the rejection unless the
date of publication is material. (Basis: No-
tice of May 14, 1943.)

The Scientific Library contains a complete
set of A.P.C. published applications arranged
numerically in bound volumes.

# 901.06(d) Abstracts of U.S. Applica- tions

For a period of years, it was possible to
have an abstract of an abandoned application
published, containing a brief description of
the subject matter and a figure of the drawing,
if any. See 711.06 and 711.06(a).

Additional copies of abstracts may be ob-
tained by a request directed to the Classifica-
tion Group, identifying the desired abstract by
serial number, and date of publication, and by
giving the class and subclass in which the
added copy is to be placed. The forms used
in ordering copies of U.S. patents may be
employed.

The Classification Group has a set of ab-
stracts arranged by serial number for ready
reference when only the serial number is
known. (Basis: Notice of August 10, 1949.)

# 901.07 Arrangement of Art in Examin- ing Divisions

In the examining divisions the U.S. patents
are arranged in shoes bearing appropriate la-

(

902.01

bels, each showing the class, sub-class, and
usually the lowest and highest numbered pat-
ents put in the respective shoe. The patents
should be arranged in numerical order.

Some U.S. copies are marked "Cross Ref-
erence." These are patents which are classified
in other classes or subclasses but which have
disclosures pertinent to the subclasses in which
they are placed as cross references. Cross ref-
erence copies may be filed in the shoes along
with the copies of the original patents to sim-
plify the tasks of searching and filing. Soft
copies which no longer are of any value to the
art in which they are located should be dis-
carded.

Copies of foreign patents are usually kept in
shoes separate from and immediately following
the U.S. patents and are preferably arranged
numerically without regard to country.

Non-patent publications or photocopies
thereof containing disclosures for particular
subclasses, if numerous, should be filed in shoes
following the foreign patents, otherwise at the
bottom of the last shoe of foreign patents.

## 901.08 Borrowing References

The search files in each examining division
should at all times be complete. Where they
are incomplete, the Examiners using such files
and relying upon their completeness may miss
valuable references. References removed from
the files whether for use in the division or
otherwise should, of course, be promptly re-
turned.

The following is established as the uniform
Office practice in borrowing references (do-
mestic and foreign patents and publications) :

a. References may be borrowed and charged
for a maximum of two days. In all possible
instances, the references should be returned in
less than two days, preferably in a few hours.
It is the responsibility of the chief of the bor-
rowing division to see that all borrowed ref-
erences are returned within the time indicated.

b. The file clerk of each division shall re-
view the charges each morning, select all
charges over two days old and collect the cor-
responding borrowed references. The file
clerk shall report to his chief for appropriate
action any failure to obtain overdue references
and any instances where it is necessary repeat-
edly to collect overdue references.

c. In the case of domestic patents, when it
appears that they will be needed for more than
two days, particularly where future use is in-
dicated, soft copies should be ordered, but the
references may be borrowed for immediate use,
if this will facilitate an action. The Patent
Copy Sales Branch should give prompt service

on Examiner's orders for soft copies. (Basis :
Notice of April 6, 1948.)

## 901.09 Missing Copies-Replacement

When the original copy of a reference is
missing from the Examiner's files, a soft copy
should be substituted at once and marked-
"Keep until original is found." When it defi-
nitely appears that the original is lost, the
Classification Group should be notified and re-
quested to supply a mounted copy. When re-
ceived, this is substituted for the soft copy.
If the original copy is subsequently found, the
substitute copy should be removed from the
file and discarded.

## 902 Official Publications and Indices of U.S. Patents

### 902.01 Manual of Classification

The Manual of Classification is published in
loose-leaf form, and supplementary sheets con-
taining changes are issued from time to time
to replace the original sheets.

All manual changes are effected by a series
of Classification Orders each of which is cur-
rently published in the Official Gazette to the
extent necessary to keep the manuals up to
date. As these changes are published, each
Examiner should enter them in his manual,
so that his manual will at all times be com-
plete and up-to-date. As supplementary sheets
are issued, the old sheets should be removed,
and the new sheets substituted therefor.

There are over 300 classes of utility inven-
tions each having a title descriptive of its sub-
ject matter and being identified by one of a
series of class numbers (some numbers of the
series are blank and not presently assigned to
any class). Each class is subdivided into a
number of subclasses with each subclass bear-
ing a title descriptive of its subject matter and
being identified by a subclass number which in
many instances will include decimal fractions.
A complete identification of a subclass requires
both the class ,and subclass numbers, the class
number appearing first and the subclass num-
ber second, e.g., "103-161" identifies Class 103,
Subclass 161.

The Manual of Classification has the follow-
ing parts:

A Brief Statement on the Use of the Manual.
Classes Arranged by Related Subjects. Tab-
ulation of classes, in which the classes are ar-
ranged in five major subject groups, with the
classes listed under each group by relationship
of subject matter. This tabulation is for the
purpose of assisting the user in finding the
main class pertinent to his search.

Classes Arranged by Examining Division.
Classes Listed Alphabetically by title.

Classes Listed Numerically with titles.

Subclass Schedules. Complete subclass sched-
ules for each class, the utility classes appear-
ing first in numerical sequence of class num-
bers, and then the design classes in numerical
sequence of design class numbers. Design
class alphabetical sequence by class names cor-
responds to numerical sequence. This is not
true of the utility classes.

Alphabetical Index. Words and phrases
(frequently called titles) identifying various
characters of patentable subjects arranged in
alphabetical order, with the citation of a class
or both class and subclass in which subject
matter identified by the title will be found.

### 902.02 Definitions

All of the utility classes (i.e., classes devoted
to technology) except a few unrevised classes
have definitions. None of the design classes
has definitions.

Such definitions state the subject matter that
is found in each defined class and subclass
much more explicitly than it is possible to
state in short class and subclass titles.

Each examining division has a set of defini-
tions and there are several sets in the Pub-
lic Search Room. Additional or replacement
sheets incorporating all changes and additions
are issued from time to time and should be
promptly added to each set of definitions.

### 902.02(a) · Search Notes

The definitions have search notes as a part
thereof; namely, notes giving information as
to where subject matter related to the class will
be found (such notes appearing after the class
definition), and also notes as to where subject
matter pertinent to the subclass will be found
(appearing after the subclass definition).
These notes are intended to indicate both the
relationship and the difference between the
separately classified subjects.

Such search notes are not exhaustive and
should be regarded as suggestive of additional
fields of search, but not as limiting the search.

### 902.02(b) Search Cards

In one shoe of each defined subclass in both
the examining division and the Public Search
Room is a "Search Card" having the definition
of the subclass and the search notes if any.

### 902.03 U.S. Patent Classification In- dices

The following indices of U.S. patents are
available and may be used to obtain classifi-
cation data of U.S. patents:

### 902.03 (a) Numerical

A numerical index of domestic patents giv-
ing their present original classification is in
card files in the Public Search Room and in
ledger books in the Service Branch of the
Classification Group.

A numerically arranged punched card index
of both original and officially cross-referenced
domestic patents is on file in the Machine Tab-
ulating Branch of the Administrative Services
Division.

In each of the above, there is a separate in-
dex for each series, X, 1836, AI, Re, PP and D.
For the present original classification, call Ext.
3822. For official cross references of a given
patent, call Ext. 2352.

### 902.03(b) Blue Slips

The "blue" issue or classification slips (Form
PO-270), starting with patent number 1,987,-
000, RE. 19,228, D 126,796, P.P. 1, and for all
subsequently issued patents, and containing the
original classification and cross-references or-
dered at time of issue are on file in the Service
Branch, Classification Group.

### 902.03(c) Subclass Lists

Cards representing all U.S. patents, arranged
by class and subclass, are available in punched
card form in the Machine Tabulating Branch
of the Administrative Services Division.

Tabulated lists for each subclass can be ob-
tained, one list for originals and one list for
cross-reference and published abstracts of U.S.
applications.

### 902.03(d) Count

In the Service Branch, Classification Group,
is maintained a subclass "count," giving the
number of U.S. patents originally classified in
each class and subclass, and a corresponding
"count" for cross-referenced U.S. patents.

### 902.04 Classification Orders and Bul- letins

Classification Orders are issued from time to
time giving all changes in the classification
that have been made officially, including every
change to be made in the Manual of Classifica-
tion or in the definition books.

Photolithographed copies are distributed to
all examining divisions for immediate use.

Each order, except for those portions per-
taining to the amendment of existing defini-
tions, is subsequently printed in the Official
Gazette.

These orders are from time to time collected

and issued as a Classification Bulletin. As
class schedules and definitions are extensively
amended to take care of developments subse-
quent to original classification, they are repub-
lished in amended form in Classification Bul-
letins.

# 903 Classification

## 903.01 Statutory Authority

The statutory authority for establishing and
maintaining a classification is given in the fol-
lowing statute, which states:

35 U.S.C. 9. Classification of patents. The Com-
missioner may revise and maintain the classification
by subject matter of United States letters patent, and
such other patents and printed publications as may
be necessary or practicable, for the purpose of deter-
mining with readiness and accuracy the novelty of
inventions for which applications for patent are filed.
(Act June 10, 1898, ch. 430, sec. 1, 30 Stat. 440.)

## 903.02 Basis and Principles of Classi- fication

The basis of classification used in the U.S.
Patent Office, the principles followed, and the
reasons why such principles were adopted are
set forth in the booklet Development and Use
of Patent Classification Systems, which is avail-
able in each Art Unit. Since classification is
the basic tool of every Examiner, this booklet,
particularly as it relates to the present classifi-
cation system, should be carefully studied.

Unofficial subclasses and digests made by
patent examiners, if made in accordance with
the plan of classification, could be defined and
issued as an official part of the classification.

Relative to all such work, the patent exam-
iners doing the same are directed to consult
the Examiner of Classification having jurisdic-
tion of the class to the end that, when the work
is completed, it can be defined and made offi-
cial. (Basis: Notice of August 22, 1949.)

## 903.02 (a) New and Revised Classes

The establishment of new classes or sub-
classes and the revision of old classes are done
under the supervision of an Examiner of Clas-
sification.

When an old class is to be revised, or a new
class formed, an assistant Examiner who has
been examining applications in the art involved
may be transferred from the examining divi-
sion to a classification division for the reclassi-
fying work.

The Examiner performing the reclassifica-
tion secures a set of patent copies of the pres-
ent classification, by either ordering soft copies
or borrowing the Search Room copies. With
these copies, by study and successive groupings,
he develops an arrangement of the patents
which is satisfactory for searching.

The lines marking the confines of the new or
revised class and its subclasses are determined,
and appropriate definitions drawn, all subject
to the supervision and approval of an Exam-
iner of Classification and to the final approval
by the Commissioner. Then the Examiner's
and the Search Room's copies of the patents
included in the new class are collected, ar-
ranged and stamped conformably to the new
classification. Official cross-references are also
prepared and appropriately stamped.

The patents comprised in the new class are
entered upon the numerical and subclass in-
dices.

Notification of the new class or subclass is
published in the Official Gazette, and Supple-
mentary sheets necessary to correct the loose
leaf Manual of Classification are published.

Definitions of all revised classes and sub-
classes are found in the Classification Bulletins.

## 903.02 (b) Scope of a Class

In using any classification system, it is nec-
essary to analyze the organization of the class
or classes to be included in the search.

The initial analysis should determine which
one or ones of the several types of subject mat-
ter (manufacture, art, apparatus or starting
material) are contained in the class being
considered.

Further, relative to each type of subject mat-
ter, it is necessary to consider each of the
various combinations and subcombinations set
out below :

Feature Combined with Basic Subject Mat-
ter for Some Added Purpose. The added pur-
pose is in excess of the scope of the subject
matter for the class, as defined in the class defi-
nition, e.g., adding a sifter to a stone crusher
which gives the added function of separating
the crushed stone.

Feature Combined to Perfect the Basic Sub-
ject Matter. Features may be added to the
basic subject matter which do not change the
character thereof, but do perfect it for its in-
tended purpose, e.g., an overload release means
tends to perfect a stone crusher by providing
means to stop it on overload and thus prevent
ruining the machine. However, this perfect-
ing combined feature adds nothing to the basic
character of the machine.

## 903.03

Basic Subject Matter. The combination of
features necessary and essential to the funda-
mental character of the subject matter treated,
e.g., a stone crusher requires a minimum num-
ber of features as essential before it can func-
tion as such.

Subcombinations Specialized to Basic Sub-
ject Matter. Each type of basic subject matter
may have subcombinations specialized to use
therewith, e.g., the crusing element of a stone
crusher.

Subcombinations of General Utility. Each
type of basic subject matter may have sub-
combinations which have utility with other
and different types of subject matter, e.g., the
machine elements of a stone crusher. Subcom-
binations of this character usually are provided
for in some general class so that the Examiner
should determine in each instance where they
are classified.

## 903.03 Classification of Foreign Pat- ents

Foreign patents are now distributed by the
Translation Section of the Library to the Exam-
ining Groups without control or record forms,
and they should be marked by the examiner
and assigned to the proper class and subclass
without recording. It is helpful if the copy
is either folded or disassembled and re-stapled
so that the most significant sheet of drawing is
exposed when the copy is in the shoe case.
NOTE: Since the Library retains copies of
these and other foreign patents (See 901.06 (a) ),
a desired foreign patent, known by country and
number, can be inspected in the Library or pho-
tocopies ordered. When a foreign patent is not
properly classifiable in the group to which the
Library sent it, the examiner should transmit it
to the group in which he considers it to be classi-
fiable, or, if he knows of no such group, he
should return it to the Library. Any indication
of classification made by the Library is advisory
only, and the final decision as to where the
patent is to be placed will be made by the
examiner in whose art it is found to be classi-
fiable. Foreign patents should be discarded
by the Examining Groups without return to the
Library when they are found to be exact dupli-
cates of either foreign patents or domestic
patents. Such foreign duplicates are discarded
to minimize the number of patents to be in-
spected in making searches.

When a partial translation is desired, return
the patent to the Translation Section, Scien-
tific Library, Room 1898-A, with the word
"Title" or "Claim" or other specific portion
indicated thereon.

The Library invites examiners confronted
with language problems in classifying foreign-

language patents to call upon its translators for
oral language assistance to be provided at the
examiners' desks. Examiners are accordingly
encouraged to request this help by contacting
the Translation Section by phone (Ext. 2689,
4668, or 4669). Examiners are privileged to
ask for specific translators if they so desire.

Foreign patents should be classified within
two weeks after receipt from the Library.

Time spent in classifying foreign patents is
allowed in computing an examiner's output.
The method used in classifying foreign patents
and the assignment of such work among the
examiners of the group are left to the Super-
visor. The hours spent by each examiner on
this work are noted on the individual examiner's
record of "Other" time (PO-690E). (Basis:
Notice of September 24, 1940, Notice of Au-
gust 3, 1960, and Notice of May 25, 1961 and
Notice of October 17, 1963.)

## 903.04 Stamping of Examiner's and Search Room Copies

Before each application in issue becomes a
patent, the Issue and Gazette Branch forwards
the issue slip and the printed Examiner's and
Search Room copies of the patent to the Clas-
sification Group for stamping and recording of
the classification of the patent, preparation of
cross-references and transmittal to the Exam-
iner and Search Room on the date of the
patent.

After they are so stamped and recorded, the
photolithographic copies are retained in the re-
spective classes in the groups and no changes
in the classification or the arrangement of the
copies are permitted except as set out in 903.05.

The classification printed in the heading of
patents issued since 1933 cannot always be re-
lied upon to be the present original classifica-
tion, since this data is obtained from the file
wrapper of the application at time of issue and
will not reflect any changes in clasification
made after the issuance of the patent.

### 903.05 Transfer of U.S. Patents

The transfer of official copies of U.S. patents,
either original or cross-reference, from one
class or subclass to another requires the ap-
proval of a Classification Examiner. (Basis:
Notice of February 20, 1918.)

Examiners must submit to the Classification
Group all questions of transfer of patents.

When an Examiner desires to transfer offi-
cial copies of domestic patents to a different
class or subclass, he should have a memoran-
dum list prepared for signature of the Primary
Examiner of the numbers of all patents which
are to be transferred indicating only the class

903.05

and subclass into which each is to be placed.
Both originals and properly identified official
cross-references may be included in the same
list and these may involve transfers to or from
any number of different classes or subclasses.
Additional cross-reference copies of any listed
patent may also be requested. This list with
the Examiner's copies of the patents is routed
through any other group involved for its
prompt approval or comment and is forwarded
to the Classification Group.

In those instances where a transfer is ap-
proved by a Patent Classifier, the class and sub-
class designations on both the Examiner and
Search Room copies of the patents are changed
and the numerical patent index and subclass
lists are altered to agree with the new classifi-
cation. When the transfer is not approved, the
copies of the patents will be returned with

a notification thereof. (Basis: Notice of
March 9, 1953.)

Unauthorized transfers render the subclasses
in the Public Search Room no longer du-
plicates of those in the Examiners' rooms, and
also render incorrect the official numerical
index and subclass lists. (Basis: Notice of
February 20, 1918.)

When it becomes necessary in the course of a
transfer to remove copies from the files in the
Public Search Room, a dummy a little longer
than a patent copy is substituted therefor, and
the identification data of the patents with-
drawn are written thereon. This dummy is
amended if the patents are returned, and
should all be returned the dummy is removed.

The procedure for transfering an entire
class or subclass from one group to another
is given in the Manual of Clerical Operations.

903.07

# 903.06 Practice To Be Followed in Ordering Official Cross-Refer- ences

The following alternatives are available for
obtaining official cross-reference copies of
United States patents.

a. Send to the Classification Group a list of
patents and relative to each patent, indicate
the class and subclass in which it is thought
each should be cross-referenced.

b. The preferred mode of ordering a cross-
reference where the Examiner has a soft copy
with the pertinent portion marked, is to indi-
cate on the marked soft copy the class and
subclass in which it is thought it should be
cross-referenced. Such soft copy should be
forwarded to the Classification Group where
it will be promptly inspected, the necessary
action taken and the soft copy returned within
two days of its receipt. (Basis: Notice of
April 6, 1948.)

## 903.06(a) Discovery of New Cross- References

Patents which are useful as references may be
found either in the course of a search or from
inspection of the Official Gazette each week.
Soft copies may be placed in the Examiner's
search files. However, if they contain disclosure
properly classifiable in an official subclass, they
should be given the status of official cross-ref-
erences in accordance with 903.06.

# 903.07 Classifying and Cross-Refer- encing at Allowance or Before Issue

It is the duty of each Primary Examiner to
personally review the classification and cross-
referencing made by his assistants of every ap-
plication passed for issue and to initial the blue
slip to show that this review has been made.
(Basis: Order 2357 and from Memorandum of
Feb. 18, 1952.)

Both the blue issue slip (PO-270) and the
file wrapper provide spaces for an "Assistant
Examiner" and for a "Primary Examiner" to
write their initials or signature.

Examiners with full signatory authority who
act on an application themselves and send it to
issue should initial the blue slip and sign the
file wrapper only in the "Primary Examiner"
space. A line should be drawn through the
"Assistant Examiner" box to make it clear that
the absence of an initial or signature in the box
was not an oversight. (Basis: Notice of June
18, 1965.)

The initial classification of pending applica-
tions and the drawings thereof will have been
indicated in pencil by the Primary Examiner.
See 903.08 (b).

However, an application, properly classified
at the start of examination, may be improperly
classified when it is ready for allowance. The
claims as allowed should be reviewed, in order
to determine the subject matter covered there-
by. It is the disclosed subject matter covered
by the allowed claims that determines the orig-
inal classification of U.S. patents.

Only the correct official classification should
be left on the file and drawing of each appli-
cation when passed for issue. Unofficial sub-
classes (not established by classification order)
should not be indicated on the file wrapper or
drawing. (Basis: Notice of Mar. 31, 1914.)

The examiner fills out a blue slip (PO-270)
or a salmon slip (PO-328) in the case of de-
signs to indicate the class and subclass in
which the patent should be classified and also
the classes in which it should appear as a cross
reference. Unofficial subclasses should not be
indicated on the blue slip, neither as original
nor as cross-reference. The Examiner attaches
the blue slip to the inside of the left fold of the
file wrapper to be forwarded to the Issue and
Gazette Branch. (Basis: Order 2952, and
Memorandum of May 14, 1952.)

The Examiner also enters the classification
appearing on the issue slip in the space pro-
vided on the front of the file and in the space
provided in the stamping at the left margin of
the drawing. Care should be exercised to see
that all three entries of the classification are
correct and in agreement, particularly after
any alteration of one entry, for otherwise the
patent will be printed with an erroneous clas-
sification or improperly positioned in the Offi-
cial Gazette.

All Examiners are requested to fill in the
class and subclass on the drawings in large
numerals using as much of the space provided
as feasible. In this way the filing of drawings
and subsequent searching by the Issue and
Gazette Branch will be greatly aided. (Basis:
Memorandum of January 5, 1953.)

## RESUBMISSION

The original classification assignment of an
application may have involved a "borderline"
situation. The file wrapper of such an applica-
tion will be stamped, "RESUBMIT TO
CLASSIFICATION DIV. - , etc.", the
stamp appearing below the Interference Search
box. A "Special" tag should be attached to the
file when resubmitted. Note that there should
be no resubmission if there is, at the time of
allowance, no longer any doubt or dispute about
the proper classification. (Basis: Notice of
January 14, 1965.)

In the case of oversized patents, where only
a minor portion of the disclosure is pertinent

to the subclass in which a cross reference is to
be placed, the Examiner may indicate on the
Issue Classification Slip that a digest of the
patent should be prepared, thus, 74-340 (di-
gest. After the hard copy is printed, the Is-
sue Section of the Classification Service Branch
inquires of the Examiner as to which sheets of
the patent should constitute the digest. Where
an official Classification Order affects an appli-
cation already passed to issue, the Classification
Group makes the necessary changes on the file
wrapper, blue slip, and drawing, if any. The
Clerk of the Examining Group is notified so
that the Serial Register card may be similarly
changed.

Applications which already have been sent
to the printer will be classified by the Classifi-
cation Group at the time the patent issues.
(Basis: Notice of March 31, 1914.)

# 903.07(a) Cross-Referencing-Keep Systematic Notes During Prosecution

Throughout the examination of the case,
systematic notes should be kept as to cross-
references needed either due to claimed or un-
claimed disclosure. The several Examiners
handling related subject matter should be con-
sulted during prosecution (whether they handle
larger unclaimed combinations or claimed or
unclaimed, but disclosed, subcombinations),
and asked if cross-references are needed. If
needed, systematically note the proper class and
subclass. It is to be noted that a cross-refer-
ence where possible MUST be provided for all
CLAIMED disclosure and inserted on the blue
slip at time of issue.

# 903.07(b) Issuing in Another Exam- ining Group Without Transfer

When an Examiner issues a prospective pat-
ent in another examining Group, he notes in
the space provided on the blue issue slip, in
red ink, the class and subclass of the other
Group, and in parenthesis the number of said
other Group. (The initials of said other Pri-
mary Examiner must also appear in said
space.) In the lower left corner, the Examiner
writes his own Group number in black ink.
(When the patent issues, the Classification
Group will, as a matter of routine, send the
necessary notices to the group involved.)

The sending of cases to issue from one group
and assigning them to classes in another group
is restricted to those situations where both Ex-
aminers concur in the proposed classification of
the patent, which must be shown by the con-
curring Examiner initialing the issue slip, or
where there has been a ruling by a Patent

Classifier, who must initial the slip. (Basis:
Notice of March 24, 1937.)

The prints of the drawings, if any, should
be forwarded to said other group so as to be
available therein for interference search pur-
poses. If the allowed cases of the group
passing the case to issue are still being checked
for classification, the prints should not be for-
warded until the proposed classification has
been approved by the Patent Classifier. Where
the nature of the disclosure is such that it would
be desirable that prints of the drawings be also
present in the group passing the case to issue,
copies thereof may be ordered for this purpose.
(Basis: Notice of September 8, 1952.)

# 903.08 Applications: Assignment and Transfer

The examining group to which an application
is assigned is responsible for its examination
until such time as the application is officially
transferred to another group by the Application
Branch.

The Primary Examiners have full authority
to accept any application submitted to them
that they believe is properly classifiable in a
class in their group. Only where there is a
difference of opinion between different groups
should cases be submitted to a Patent Classifier.

## 903.08(a) New Applications

New applications are assigned to the various
examining groups in the first instance by the
Application Branch.

Upon receiving an application from the Ap-
plication Branch and before making any entry
on the Serial Register or Docket record cards,
each Primary Examiner will forthwith decide
whether it has been properly assigned to his
group.

If the Primary Examiner decides that the
application properly belongs in his group, it
is processed as a new receipt.

When a new application is received which,
in the opinion of the Primary Examiner, does
not belong to his Group, he will submit it
promptly without any entry being made on the
SeriaÎ Register or Docket Record cards, to the
Examiner of the Group to which he thinks it
belongs, on Transfer Inquiry form P.O. 447.
(The drawing, if any, is retained as a charge.)

If the latter agrees to accept the application,
the transfer is effected by the Clerk of the Group
to which the application was originally as-
signed.

If not accepted it may be promptly and in-
formally submitted to the Classification Group
for assignment by oral decision prior to entry.
No search for prior art to show classification
need be made. The group to which the Patent
Classifier assigns it will make the first action

(

(
1

thereon. If the search in connection with the
first action develops art showing proper classi-
fication elsewhere, the transfer is initiated after
a response is received from applicant.

# BORDERLINE CLASSIFICATION

The classification assignment of an applica-
tion to the proper Examining Group, especially
when there is submission to and assignment by
the Office of Patent Classification, often in-
volves a borderline situation. Classifiers in the
Office of Patent Classification, when assigning
such borderline cases, will stamp the file wrap-
per directly below the interference search box
when it is their considered opinion that the
classification of such an application should be
reconsidered on allowance. The stamp will in-
dicate which Classification Division will recon-
sider the case on a "Special" basis. (Basis:
Notice of January 14, 1965.)

## 903.08(b)· Classification and Assign- ment to Examiner

Every application, new or amended and in-
cluding the drawings, if any, when first as-
signed to a group must be classified and as-
signed to an Examiner for examination.

The Supervisory Primary Examiner assigns
them, noting in lead pencil in the space pro-
vided on the face of the file and in the upper
left hand corner of the drawing (first sheet),
the class and subclass to which the case pertains,
and also the name or initials of the Examiner
or the assigned docket designation. The appli-
cation file is then turned over to the clerk for
processing.

## 903.08(c) Immediate Inspection of Amendments

Upon the receipt of an amendment which
makes a transfer proper, steps should be taken
promptly in accordance with the transfer pro-
cedure outlined in Sec. 903.08 (d).

### 903.08(d) Transfer Procedure

#### SUBMISSION OF APPLICATIONS FOR CLASSIFICATION

Where the Examiners in different groups are
in agreement that an application is properly
assignable to one of the groups but are in dis-
agreement as to which one should receive it, the
Examiners involved should present their posi-
tions orally to the appropriate Patent Classifier
for verbal decision. This is generally termed
informal submission.

In all other instances, including those in-
stances where a Patent Classifier feels that addi-
tional evidence is necessary, applications are
submitted for classification as follows: The Ex-
aminer having jurisdiction thereof submits a
memorandum listing the group or groups and
the classes therein in which he believes the case
may be classifiable. He makes a search both in
his own class and in that to which he thinks the
case should be transferred, citing the most perti-
nent art relative to the question of classification.
He should not take time to write either an anal-
ysis of the art or an argument. He forwards
the file, together with his memorandum, to one
of the other groups involved. Each of the other
Examiners involved may similarly make a
search and cite art without taking the time to
write either an art analysis or an argument.
The time involved in making such searches is
not lost, since the cited art may be of value to
the Examiner to whom the case is assigned.
Each Examiner in turn promptly adds his
memorandum to the file and the last forwards
the file and all papers to the Classification
Group. This practice is all that is required by
the general rules governing the assignment of
applications for examination. See particularly
items 4 and 10 of the regulations governing
assignment of applications [903.08(e)]. This
is generally termed "formal" submission.
(Basis: Notice of Nov. 25, 1947.)

##### 903:08(e) General Regulations Gov- erning the Assignment of Applications for Examina- tion

The fact should be borne in mind that the
following regulations are only general guides,
and exceptions frequently arise because of some
unusual condition. The fact should also be
kept in view that the Patent Classifiers as well
as the Patent Examiners are confronted with
an already existing classification, made up
of newly revised classes, those revised years
ago and which have somewhat outgrown their
definitions and limits, and still others made a
generation ago and never changed. Also, these
classes are based on different theories and
plans, some on art, some on structure, some on
functions, some on the material worked upon,
and some apparently, on no theory or plan at
all. The Patent Classifiers cannot change this
existing condition as each application comes
up for assignment but must seek to dovetail
the cases into the patchwork and try to get
the applications where they will be best han-
dled. To do this often violates the Patent Clas-
sifier's views as to what constitutes a really
proper classification.

# 903.08(e)

1\. The assignment of applications follows, as
far as possible, the rules or principles govern-
ing the classification of patents. (See the book-
let Development and Use of Patent Classifica-
tion Systems.)

2\. The most comprehensive claim, that is the
claim to the most extensive combination, gov-
erns, and this is true whether there is only one
such claim and a large number of other claims,
or whether the sets of claims are more evenly
divided. It is regarded as just as vital that one
complex claim be searched and adjudicated by
an Examiner skilled in the art as that a group
of such claims be so searched and adjudicated.

3\. The claims and statement of invention are
generally taken as they read, since any attempt
of a Patent Classifier to go behind the record
and decide the case upon what is deemed the
"real invention" would, it is believed, introduce
more errors than such action would cure. The
Patent Classifiers cannot possess the specific
knowledge of the state of the art in all the
classes that the Patent Examiners collectively
possess. Further, such questions are matters
of merit for the Examiners to determine and
are often open to argument and are subject for
appeal.

4\. The location of the U.S. patents consti-
tuting the prior art is generally controlling
over all else. (Note: Where time permits, ob-
vious misplacements of the patents constituting
the prior art are corrected, but to straighten all
lines as the cases come up for assignment would
require the time of several men and would often
involve a reclassification of an entire class.)

5\. Ordinarily an application cannot be as-
signed to a class which includes one element or
part only of several claimed in combination.
The claim is treated in its entirety. The ques-
tion of aggregation is not reviewed by the Pat-
ent Classifiers.

6\. The Patent Classifiers are authorized in
all cases, where they evaluate the facts as war-

ranting it, to assign applications for examina-
tion to the group best able to examine the same.
Since assignment for examination on this basis
will at times be contrary to classification of
patents containing the same character of
claims, the Patent Classifiers will indicate the
proper classification of the patent, if such claims
are allowed.

7\. When an application has been taken up
by an Examiner for action and a requirement
to restrict is found necessary, a part of the
claims being directed to matter classifiable in
the group where the case is being examined, an
action requiring restriction should be made
without seeking a transfer of the case to another
group. The action of the applicant in response
to the requirement for restriction may result in
making a transfer of the application unnec-
essary.

8\. Ordinarily where all the claims of an ap-
plication are for an article made of a specific
composition or alloy with no other characteris-
tic of the article recited, the application will be
assigned to the composition or alloy class.

(

9\. A class of cases exists in which either no
art or a divided art is found and in which no
rule or principle is involved. (Such cases are
placed where, in the judgment of the Patent
Classifiers they will be best searched and adju-
dicated. It is often impossible to so explain a
decision in this class of cases as to satisfy, or in
any way aid, the Examiners interested. In-
deed, the reasons for or against sending such
cases one place or another may be so evenly bal-
anced that no reason of any value can be given.

10\. An examiner seeking the transfer of a
case should make a search, both of his own class
and the class to which he thinks the case should
be transferred, and the Examiner in charge of
the group should exhibit the result of such
search to the Office of Patent Classification.
This is the only way to utilize the expert knowl-
edge of the Examiners involved. (Basis: No-
tice of April 15, 1919.)

(

## 903.08 (f) Patent Classifier's Decision

A Classifier in a Classification Division de-
cides the question of the proper classification
of the application, and returns the application
to the group which submitted it enclosing a
statement of the grounds of his decision.

# 903.08(g) Transfer to Another Ex- amining Group After Decision

If the application is to remain in the group
which submitted it for classification, no further
procedure is necessary. If assigned to another
group, the clerk processes the case as described
in the Manual of Clerical Procedures.

## 904 How to Search

Having obtained a thorough understanding
of the subject matter disclosed and claimed in
the application, the Examiner then searches
the prior art as disclosed in patents and other
printed documents. Any such document used
in the rejection of a claim is called a "refer-
ence."

The first search should be such that the Ex-
aminer need not ordinarily make a second search
of the prior art, unless necessitated by amend-
ments to the claims by the applicant in the first
response, except to check to determine whether
any reference which would appear to be sub-
stantially more pertinent than the prior art cited
in the first Office action has become available
subsequent to the initial prior art search. It
should cover the invention as described and
claimed, including the inventive concepts
toward which the claims appear to be directed.
It should not be extended merely to add im-
material variants.

## 904.01 Analysis of Claims

The breadth of claim of the application
should always be carefully noted; that is, the
Examiner should be fully aware of what the
claim does not call for, as well as what it does
require. For, there is always danger of read-
ing into the claim limitations imported from
the specification or drawing.

# 904.01(a) Variant Embodiments Within Scope of Claim

Substantially every claim includes within its
breadth or scope of definition one or more vari-

ant embodiments not disclosed by applicant,
which would anticipate the terms of the defini-
tion. The claim must be so analyzed and
understood that any such variant encountered
during the search will be recognized and
selected.

In each type of subject matter capable of
such treatment (e.g., a machine or other ap-
paratus), the subject matter as defined by the
claim may be sketched in order to clearly
delineate the limitations of the claim. Two or
more sketches, each of which is as divergent
from the particular disclosure as is permitted
by claim recitation, will assist the Examiner in
determining the claim's actual breadth or scope.
However, an applicant will not be required to
submit such sketches of claim structure (In re
Application filed November 16, 1945, 1951
C.D. 1; 646 O.G. 5).

# 904.01(b) Equivalents

Also, all subject matter that is the patentable
equivalent of the subject matter as defined in
the claim, even though specifically different
from the definition in the claim, must be
considered.

# 904.01(c) Analogous Arts

Not only must the art be searched with which
the invention claimed is classifiable, but also all
analogous arts regardless of where classified.

The determination of when arts are analo-
gous is at times difficult. It depends upon the
necessary essential function or utility of the
subject matter covered by the claims, and not
what it is called.

For example, a tea mixer and a concrete
mixer are for the same art, namely, the mixing
art, this being the necessary function of each.
Similarly a brick cutting machine and a biscuit
cutting machine have the same necessary
function.

# 904.01(d) Outlining Field of Search

In outlining a field of search the Examiner
should note every class and subclass that may
have material pertinent to the subject matter as
claimed, or that may in the future properly be
claimed in that case. Every subclass pertinent
to each type of invention claimed should be
listed, from the largest combination through
the various subcombinations to the most ele-
mentary part needed to anticipate any disclo-
sure properly claimable in that case.

The following should be kept in mind: (a)
that a combination reference is necessary to

anticipate a claim drawn to an old or exhausted
combination, (b) that a combination reference
is valuable as a basic reference where elements
thereof may be varied by substituting equiva-
lent elements of a secondary reference, (c) that
a convincing aid to a rejection on the ground
of old combination is the citation of references
showing the subcombinations to have been al-
ready recognized as having practical and more
general utility, (d) that combination claims at
times can be anticipated by combining sepa-
rately classified subcombinational elements
where reasons can be given for holding ob-
viousness in forming the combination, and (e)
that in the rejection of a claim on the ground
of aggregation, the citation of references show-
ing the individual utility of the elements may
better prove that the aggregative structure is
no more than the sum of the features shown by
the several elemental patents.

In each action by an Examiner upon an ap-
plication, he makes an initialed endorsement in
ink in the space provided on the left-hand page
of the open file wrapper, stating the classes and
subclasses of domestic and foreign patents; and
the publications in which search for references
was made and also the date of the search.

In subsequent actions, if further search is
made, notation of the additional field covered
is also endorsed and initialed on the file
wrapper.

# 904.02 Selecting Pertinent References

It is a prerequisite to a speedy and just de-
termination of the issues involved in the exam-
ination of an application that a careful and
exhaustive search be made in the first action. It
is not enough that the claims alone be searched,
especially if they be broad in their scope; but
the search should, in so far as possible, cover
the entire claimable subject matter in the case.

It thus results that the Examiner finds refer-
ences that, while not needed for treating the
claims before him, would be useful for forestall-
ing the possible presentation of claims to other
subject matter disclosed by applicant but
shown to be old by these references.

In selecting the references to be cited the Ex-
aminer should carefully compare the references
with one another and with the applicant's dis-
closure to avoid the citation of an unnecessary
number. The Examiner is not called upon to
cite all the references that may be available,
but only the "best." (Rule 106.) Multiplying
references, any one of which is as good as, but
no better than, the others, adds to the burden
and cost of prosecution, and should therefore
be avoided. However, if doubt exists as to

the inclusion of a reference, it is better to err in
citing too much art rather than too little.

While the best reference should always be the
one used, yet if this is of a date less than one
year prior to the filing date of the application,
a second reference, though inferior but not
thus open to being overcome under Rule 181, if
such reference is found, should be cited and
the claims additionally rejected thereon.

In all references, including non-patent, for-
eign patents and domestic patents, the Exam-
iner should study the specification or descrip-
tion as it relates to every feature in the drawing
which he does not thoroughly understand.

# 905 Miscellaneous

## 905.01 Orders for Photoprints

All orders for photocopies on PO-250 orig-
inating in the Examining Groups must be au-
thorized by an Examiner having full or partial
signatory authority in the box headed "PRI-
MARY EXAMINER (Signature)". The
stamped name of the authorizing Examiner will
be indication of authority for Reproduction
Section. Handwritten signatures should not
be used. Note that Form PO-250 is not to be
used in implementing the new system for fur-
nishing photocopies for the application file and,
if ordered, for applicant or his attorney.
(Basis: Notice of December 18, 1964.)

## 905.02 Orders for Soft Copies

Soft copies may be ordered on PO-14 by the
Examiner for his use. These orders are filled
by employees of Patent Copy Sales Branch.
No employees other than those assigned to this
Branch have access to the files of printed
copies of patents. In emergency cases, orders
may be taken to the Chief of the Branch whose
approval thereof, if given, will insure immedi-
ate filling of said orders. (Basis: Notice of
February 25, 1927.)

Because of the cost of printing copies of
patents economy should be exercised in their
use. No soft copies should, however, be returned
to Patent Copy Sales Branch by Examiners.

(

## 905.03 Orders for Patented and Aban- doned Files

In the examination of an application it is
sometimes necessary to inspect the application
papers of some previously abandoned applica-
tion or granted patent. This is always true in
the case of a reissue application.

Patented and abandoned files may be ob-
tained in the Record Room and Abandoned

(

905.04

File Room, respectively, by filling out a slip
(PO-125), found there, and leaving this slip
with the clerk in charge. The patented files
are drawn from the shelves and distributed,
the slip being retained by the clerk as a charge.
The patent file should be promptly returned
when the Examiner has finished with it, and
it should not be kept longer than thirty days
without renewing the charge. Where the file
is needed for the purpose of reissue or inter-
ference, this information should be given to
the Record Room upon obtaining the file, and
as soon as these matters have been disposed of,
the file should be returned to the Record Room.

When an interference is declared between a
patent and an application and the interference
is forwarded to the Examiner of Interference,
the clerk in charge of the Record Room should
be informed in order that the charge may be
changed and the location of the file known at
all times. (Basis: Notice of March 19, 1947.)

Examiners may expedite service in obtain-
ing abandoned files in the manner indicated in
711.04(b).

When ordering a patented file from the Rec-
ord Room, the name of the person ordering the
file should appear on the form PO-125. It is
important that the Patent Number be stated
rather than the number of the application
which matured into the patent. An examiner
ordering a patented file should also place his
division number on the form. If the notation
"HOLD" is marked on the form PO-125 the
case will be held at the Record Room and in

.the absence of such notation it will be sent to
the division indicated. Examiners may expe-
dito service by requesting the patented file by
telephone and later, at a time indicated by the
clerk in charge, the examiner may appear at
the record room to complete the Form PO-125
and to pick up the file. If the need for the
file is not urgent, examiner time may be saved
by sending a form PO-125, completed in the
manner indicated above, to the Record Room
by regular Office Messenger Service. The file
will be delivered by the same Messenger Serv-
ice to the division indicated on the form or it
will be held at the record room only if so re-
quested on the form.

Patent Copy Sales Branch 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."

## 905.04 Marking Examiner's Copies of Patents

When the Examiners' copies of patents are
sent to their respective divisions to be filed, the
assistant Examiners who examined the appli-
cation should mark in ink on the face of the
drawings, or the specifications where there are
no drawings, such features as may be deemed
advantageous in aiding understanding of the
patents in future searches. (Basis: Order
2380.)

Printed page 1

Printed page 2

Printed page 3

Printed page 4

Printed page 5

Printed page 6

Printed page 7

Printed page 8

Printed page 9

Printed page 10

Printed page 11

Printed page 12

Printed page 13

Printed page 14

Printed page 15

Printed page 16

Printed page 17

Printed page 18

Printed page 19

Printed page 20

OCR transcription for search; preserved printed pages are authoritative

Continua la tua ricerca in ChatGPT o Claude