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# Chapter 1100 Interference

## APPLICABLE TO INTERFERENCES DECLARED AFTER JULY 1, 1965

1101
Preliminaries to an Interference

1101.01
Between Applications

1101.01 (a)
In Different Divisions
1106
Redeclaration and Additional Interferences

1101.01 (b)
Common Ownership

1106.01
After Decision on Motion

1101.01 (c)
The Interference Search

1106.02
By Addition of New Party

1101.01 (d)
Correspondence Under Rule 202

1101.01 (e)
How Conducted

1101.01 (f)
Not an Action on the Case

1101.01 (g)
When and When Not Needed

1101.01 (h)

Approval or Disapproval by Law Exami-
ner

1101.01 (i)
Failure of Junior Party to Overcome
Filing Date of Senior Party

1101.01 (j)
Suggestion of Claims

1101.01 (k)
Conflicting Parties Have Same Attorney

1101.01 (1)

Action To Be Made at Time of Suggest-
ing Claims

1111.01
Interviews

1111.02
Record in Each Interference Complete

1111.03
Overlapping Applications

1111.04

"Secrecy Order" Cases

1111.05
Amendments Filed During Interference

1101.01 (0)
Application in Issue or in Interference

1101.02

1101.02 (a)

Copying Claims From a Patent

1111.07
Conversion of Application From Joint to Sole
or Sole to Joint

1111.08
Reissue During Interference

1111.09
Suit Under 35 U.S.C. 146

1111.10
Benefit of Foreign Filing Date

1111.11
Patentability Reports

1111.12
Certified Copies of Part of an Application

1111.13
Consultation With Examiner of Interferences

1111.14
Correction of Error in Joining Inventor

1112
Letter Forms Used in Interferences

1112.01
To Law Examiner

1112.02
Suggesting Claims

1112.03
Same Attorney or Agent

1112.04
Requesting Withdrawal From Issue

1112.05
Declaration

1112.05 (a)
Initial Memorandum

1112.06
Requests for Jurisdiction

1112.06 (a)
Requesting Jurisdiction of Application

1112.08
Primary Examiner Initiates Dissolution

1112.09
Redeclaration

1105
Interference Matters Requiring Decision by
Primary Examiner

1105.01
Briefs and Hearings on Motion

1105.02.
Decision on Motion To Dissolve

1105.03

Decision on Motion to Amend or to Add or
Substitute an Application

1105.04
Decision on Motion Relating to Burden of
Proof

1105.05
Dissolution on Primary Examiner's Own
Motion

1105.06
Form of Decision Letter

1105.07
Petition for Reconsideration

1107
Examiner's Entry in Interference File Subse-
quent to Interference

1108
Entry of Amendments Filed in Connection With
Motions

1109
Action After Award of Priority

1109.01
The Winning Party

1109.02
The Losing Party

1110
Action After Dissolution

1110.01
Under Rule 262(b)

1110.02
Under Rule 231 or 237

1111
Miscellaneous

1101.01 (m)
Time Limit Set for Making Suggested
Claims

1101.01 (n)
Suggested Claims Made After Statutory
Period Running Against Case

1101.02 (b)

Examiner Cites Patent Having Filing
Date Later Than That of Application
Difference Between Copying Patent
Claims and Suggesting Claims of an
Application

1101.02 (d)
Copied Patent Claims Not Identified

1101.02 (e)
Making of Patent Claims Not a Response
to Last Office Action

1101.02 (f)
Rejection of Copied Patent Claims

1101.02 (g)
After Prosecution of Application Is Closed
or Application Is Allowed

1101.08
Removing of Affidavits Before Interference

1102
Preparation of Interference Papers and Decla-
ration

1102.01
Preparation of Papers

1102.01 (a) Initial Memorandum to the Board of
Patent Interferences

1102.02
Declaration of Interference

1103
Suspension of Ec Parte Prosecution

1104
Jurisdiction of Interference

1112.10
Denying Entry of Amendment Seeking Fur-
ther Interference

The interference practice is based on 35
U.S.C. 135 here set forth :

35 U.S.C. 135. Interferences. Whenever an appli-
cation is made for a patent which, in the opinion of
the Commissioner, would interfere with any pending
application, or with any unexpired patent, he shall
give notice thereof to the applicants, or applicant and

1101.02 (c)

With a Patent

Notice of Rule 231 (a) (3) Motion Relating

1111.06
to Application Not Involved in Interference

patentee, as the case may be, The question of pri-
ority of invention shall be determined by a board of
patent interferences (consisting of three examiners
of interferences) whose decision, if adverse to the
claim of an applicant, shall constitute the final re-
fusal by the Patent Office of the claims involved, and
the Commissioner may issue a patent to the applicant
who is adjudged the prior inventor. A final judgment
adverse to a patentee from which no appeal or other
review has been or can be taken or had shall con-
stitute cancellation of the claims involved from the
patent, and notice thereof shall be endorsed on copies
of the patent thereafter distributed by the Patent
Office.

A claim which is the same as, or for the same or
substantially the same subject matter as, a claim of
an issued patent may not be made in any application
unless such a claim is made prior to one year from
the date on which the patent was granted.

Rule 201 sets forth the definition of an in-
terference and is here reproduced.

Rule 201. Definition, when declared. (a) An inter-
ference is a proceeding instituted for the purpose of
determining the question of priority of invention be-
tween two or more parties claiming substantially the
same patentable invention and may be instituted as
soon as it is determined that common patentable sub-
ject matter is claimed in a plurality of applications
or in an application and a patent.

(b) An interference will be declared between pend-
ing applications for patent or for reissue of different
parties when such applications contain claims for sub-
stantially the same invention which are allowable in
the application of each party, and interferences will
also be declared between pending applications for pat-
ent, or for reissue, and unexpired original or reissued
patents, of different parties, when such applications
and patents contain claims for substantially the same
invention which are allowable in all of the applica-
tions involved, in accordance with the provisions of
these rules.

(c) Interferences will not be declared, nor contin-
ued, between applications or applications and patents
owned by the same party unless good cause is shown
therefor. The parties shall make known any and all
right, title and interest affecting the ownership of
any application or patent involved or essential to the
proceedings, not recorded in the Patent Office, when
an interference is declared, and of changes in such
right, title, or interest, made after the declaration of
the interference and before the expiration of the time
prescribed for seeking review of the decision in the
interference.

## 1101 Preliminaries to an Interference

An interference is often an expensive and
time-consuming proceeding. Yet, it is neces-
sary to determine priority when two applicants

before the Office are claiming the same subject
matter and their filing dates are close enough
together that there is a reasonable possibility
that the first applicant to file is not the first
inventor.

The greatest care must therefore be exer-
cised both in the search for interfering appli-
cations and in the determination of the ques-
tion as to whether an interference should be
declared. Also the claims in recently issued
patents, especially those used as references
against the application claims, should be con-
sidered for possible interference.

The question of the propriety of initiating
an interference in any given case is affected by
so many factors that a discussion of them here
is impracticable. Some circumstances which
render an interference unnecessary are herein-
after noted, but each instance must be carefully
considered if serious errors are to be avoided.

In determining whether an interference ex-
ists a claim should be given the broadest inter-
pretation which it reasonably will support,
bearing in mind the following general princi-
ples :

(a) The interpretation should not be
strained.

(b) Express limitations in the claim should
not be ignored nor should limitations be read
therein to meet the exigencies of a particular
situation.

(c) The doctrine of equivalents which is
applicable in questions of patentability is not
applicable in interferences, i.e., no application
should be placed in interference unless it dis-
closes clearly the structure called for by the
count and the fact that it discloses equivalent
structure is no ground for placing it in inter-
ference.

(d) Before a claim (unless it is a patented
claim) is made the count of an interference
it should be allowable and in good form. No
pending claim which is indefinite, ambiguous
or otherwise defective should be made the count
of an interference.

(e) A claim copied from a patent, if am-
biguous, should be interpreted in the light of
the patent in which it originated.

(f) Since interference between cases having
a common assignee is not normally instituted, if
doubt exists as to whether the cases are com-
monly owned they should be submitted to the
Assignment Branch for a title report. Note:
After September 1965 title searches are auto-
matically made only when the Issue Fee is paid.

(g) If doubts exist as to whether there is an
interference, an interference should not be
declared.

(

## 1101.01 Between Applications

Where two or more applications are found to
be claiming the same patentable invention they
may be put in interference, dependent on the
status of the respective cases and the difference
between their filing dates. One of the applica-
tions should be in condition for allowance. Un-
usual circumstances may justify an exception to
this if the approval of the appropriate Director
is obtained. (Basis: Notice of November 29,
1961.)

Interferences will not be declared between
pending applications if there is a difference of
more than 3 months in the effective filing dates
of the oldest and next oldest applications, in the
case of inventions of a simple character, or a
difference of more than 6 months in the effective
filing dates of the applications in other cases,
except in exceptional situations, as determined
and approved by the Commissioner. If an inter-
ference is declared, all applications having the
same interfering subject matter should be in-
cluded. (Basis: Notice of June 26, 1964.)

Before taking any steps looking to the for-
mation of an interference, it is very essential
that the Examiner make certain that each of
the prospective parties is claiming the same
patentable invention and that the claims that
are to constitute the counts of the interference
are clearly readable upon the disclosure of each
party and allowable in each application.

It is to be noted that while the claims of two
or more applicants may vary in scope and in
immaterial details, yet if directed to the same
invention, an interference exists. But mere dis-
closure by an applicant of an invention which
he is not claiming does not afford a ground for
suggesting to that applicant claims for the said
invention copied from another application that
is claiming the invention. The intention of the
parties to claim the same patentable invention,
as expressed in the summary of the invention or
elsewhere in the disclosure, or in the claims, is
an essential in every instance.

When the subject matter found to be allow-
able in one application is disclosed and claimed
in another application, but the claims therein
to such subject matter are either nonelected or
subject to election, the question of interference
should be considered. The requirement of Rule
201(b) that the conflicting applications shall
contain claims for substantially the same in-
vention which are allowable in each application
should be interpreted as meaning generally
that the conflicting claimed subject matter is
sufficiently supported in each application and
is patentable to each applicant over the prior
art. The statutory requirement of first inven-
torship is of transcendent importance and

every effort should be made to avoid the im-
provident issuance of a patent when there is
an adverse claimant.

Following are illustrative situations where
the examiner should take action toward insti-
tuting interference :

A. Application filed with claims to divisible
inventions I and II. Before action requiring
restriction is made, examiner discovers another
case having allowed claims to invention I.

The situation is not altered by the fact that
a requirement for restriction had actually been
made but had not been responded to. Nor is
the situation materially different if an election
of noninterfering subject matter had been
made without traverse but no action given on
the merits of the elected invention.

B. Application filed with claims to divisible
inventions I and II and in response to a re-
quirement for restriction, applicant traverses
the same and elects invention I. Examiner
gives an action on the merits of I, Examiner
subsequently finds an application to another
containing allowed claims to invention II and
which is ready for issue.

The situation is not altered by the fact that
the election is made without traverse and the
nonelected claims possibly cancelled.

C. Application filed with generic claims and
claimed species a, b, c, d, and e. Generic claims
rejected and election of a single species re-
quired. Applicant elects species a, but contin-
ues to urge allowability of generic claims. Ex-
aminer finds another application claiming spe-
cies b which is ready for issue.

The allowability of generic claims in the
first case is not a condition precedent to set-
ing up interference.

D. Application filed with generic claims and
claims to five species and other species disclosed
but not specifically claimed. Examiner finds
another application the disclosure and claims
of which are restricted to one of the unclaimed
species and have been found allowable.

The prosecution of generic claims is taken as
indicative of an intention to cover all species
disclosed which come under the generic claim.

In all the above situations, the applicant has
shown an intention to claim the subject matter
which is actually being claimed in another ap-
plication. These are to be distinguished from
situations where a distinct invention is claimed
in one application but merely disclosed in an-
other application without evidence of an in-
tent to claim the same. The question of inter-
ference should not be considered in the latter
instance. However, if the application disclos-
ing but not claiming the invention is senior,
and the junior application is ready for issue,

# 1101.01 (a)

the matter should be discussed with the Group
Supervisor to determine the action to be taken.
(Basis: Memorandum of August 5, 1949.)

# 1101.01 (a) In Different Groups

An interference between applications as-
signed to different groups is declared by the
group where the controlling interfering claim
would be classified. After correspondence un-
der Rule 202, if necessary, appropriate trans-
fer of one of the applications is made. After
termination of the interference, further trans-
fer may be necessary depending upon the out-
come.

# 1101.01(b) Common Ownership

Where applications by different inventors but
of common ownership claim the same subject
matter or subject matter that is not patentably
different :--

I. Interference therebetween is normally not
instituted since there is no conflict of interest.
Elimination of conflicting claims from all ex-
cept one case should usually be required, Rule
78(b). The common assignee must determine
the application in which the conflicting claims
are properly placed. Treatment by rejection
is set forth in Section 305.02 (a).

II. Where an interference with a third party
is found to exist, the owner should be required
to elect which one of the applications shall be
placed in interference.

Whenever a common assignee of applications
by different inventors is called upon to eliminate
conflicting claims from all except one applica-
tion under the provisions of Rule 78 (b), a copy
of the Office action making this requirement
must be sent directly to each of the applicants.

Whenever a common assignee is required un-
der Rule 201 (c) to elect one of the conflicting
applications owned by him for purpose of inter-
ference with a third party, a copy of the Office
action making this requirement must be sent to
the applicants in each of the commonly assigned
applications. (Basis: Notice of March 1, 1962.)

# 1101.01 (c) The Interference Search

The search for interfering applications must
not be limited to the class or subclass in which
it is classified, but must be extended to all classes
in or out of the Examining Group which it has
been necessary to search in the examination of
the application. (Basis: Notice of August 2,
1909.)

Moreover, the possibility of the existence of
interfering applications should be kept in mind

throughout the prosecution. Where the Ex-
aminer at any time finds that two or more ap-
plications are claiming the same invention and
he does not deem it expedient to institute inter-
ference proceedings at that time, he should
make a record of the possible interference as,
on the face of the file wrapper in the space
reserved for class and subclass designation.
His notations, however, if made on the file
wrapper or drawings, must not be such as to
give any hint to the applicants, who may in-
spect their own applications at any time, of
the date or identity of a supposedly interfer-
ing application. Serial numbers or filing dates
of conflicting applications must never be placed
upon drawings or file wrappers. A book of
"Prospective Interferences" should be main-
tained containing complete data concerning
possible interferences and the page and line of
this book should be referred to on the respective
file wrappers or drawings. For future refer-
ence, this book may include notes as to why
prospective interferences were not declared.

In determining whether an interference ex-
ists, the Primary Examiner must decide the
question. The Law Examiner may, however,
be consulted to obtain his advice and he will
have charge of such correspondence with
junior parties as is provided for in Rule 202.
(Basis : Order 2687.)

The appropriate Director should be con-
sulted if it is believed that the circumstances
justify an interference between applications
neither of which is ready for allowance.

# 1101.01(d) Correspondence Under Rule 202

Correspondence under Rule 202 may be
necessary.

Rule 202. Preparation for interference between ap-
plications; preliminary inquiry of junior applicant.
In order to ascertain whether any question of pri-
ority arises between applications which appear to in-
terfere and are otherwise ready to be prepared for
interference, any junior applicant may be called upon
to state in writing under oath the date and the char-
acter of the earliest fact or act, susceptible of proof,
which can be relied upon to establish conception of the
invention under consideration for the purpose of es-
tablishing priority of invention. The statement filed
in compliance with this rule will be retained by the
Patent Office separate from the application file and if
an interference is declared will be opened simultane-
ously with the preliminary statement of the party fil-
ing the same. In case the junior applicant makes no
reply within the time specified, not less than thirty

(

days, or if the earliest date alleged is subsequent to the
filing date of the senior party, the interference ordi-
narily will not be declared.

Under Rule 202 the Commissioner may re-
quire an applicant junior to another applicant
"to state in writing under oath the date and the
character of the earliest fact or act, susceptible

of proof, which can be relied upon to establish
conception of the invention under considera-
tion." Such affidavit does not become a part of
the record in the application, nor does any cor-
respondence relative thereto. The affidavit,
however, will become a part of the interference
record, if an interference is formed.

# 1101.01(e) Correspondence Under 1101.01(g) Correspondence Under Rule 202, How Con- Rule 202, When and When Not Needed ducted

The Rule 202 correspondence is conducted by
the Law Examiner on receipt from the Pri-
mary Examiner of notice of the proposed inter-
ference.

This letter and a carbon copy thereof, both
signed by the Primary Examiner, together
with the files are forwarded to the Law Exam-
iner. The files, however, are not retained by
the Law Examiner, but are returned to the
examining division where they are held sepa-
rate from other files while the correspondence
is being conducted.

In preparing cases for submission to the Law
Examiner and in subsequent treatment of the
cases involved attention should be given to the
following points :

(1) The name of the Examiner to be called
for a conference should be given as indicated
on the form.

(2) It should be stated which of the applica-
tions, if any, is ready for allowance.

(3) If an application is a division or con-
tinuation of an earlier one, this fact should be
stated. If it is a continuation-in-part, this
should be indicated along with a statement
whether or not the application is entitled to the
benefit of the filing date of the earlier applica-
tion for the conflicting subject matter.

(4) If two or more applications are owned
by the same assignee, or are presented by the
same attorney, it should be so stated.

(5) Only the broadest claim proposed for
interference or, if various aspects of an inven-
tion are claimed, the broadest claim to each
feature, need be identified but if the claims are
not present in either of the applications, a pro-
posed count should be set out in this letter. See
the second form letter in 1112.01.

(6) Any other points which have a bearing
on the declaration of the interference should be
stated.

(7) Amendments or other papers filed in
cases held by the Law Examiner bearing on the
question of interference should be promptly
forwarded to him.

(8) Letters of submission should be in dupli-
cate. (Basis: Notice of April 18, 1919.)

## 1101.01(f) Correspondence Under Rule 202, Not an Action on the Case

Correspondence under Rule 202 is not an
action on the case. Hence, it cannot serve to
extend the statutory period if the case is await-
ing action by the applicant.

After July 1, 1964, correspondence under
Rule 202 was greatly curtailed since interfer-
ences between pending applications with more
than six months difference in effective filing
dates were not to be declared unless approved
by the Commissioner in exceptional situations.
(Basis: Notice of June 24, 1964.)

1101.01 (h) Correspondence Under
Rule 202, Approval or
Disapproval by Law Ex-
aminer

The Law Examiner will stamp the letters
from the Examiner either "Approved" or "Dis-
approved," as the case may require, and return
the carbon copy to the examining division.

If the earliest date alleged by the junior
party under Rule 202 fails to antedate the fil-
ing date of the senior applicant, the Law Ex-
aminer disapproves the proposed interference
and the Examiner then follows the procedure
outlined in the next section. When a "Disap-
proved" letter is returned to the examining
division it is accompanied by a note to be at-
tached to the senior party's case requesting the
Issue and Gazette Branch to return the case to
the Law Examiner after the notice of allow-
ance is sent.

Where the junior party, as required by Rule
202, states under oath a date of a fact or an
act, susceptible of proof, which would establish
that he had conceived the claimed invention
prior to the filing date of the senior applicant,
the Law Examiner approves the Examiner's
proposal to suggest claims and the Examiner
may then proceed with the preparation of the
cases for interference.

## SEALING STATEMENT

When an interference is to be declared in-
volving applications which had previously been
submitted to the Law Examiner for corre-
spondence under Rule 202, before forwarding
the files to the Interference Division, the Ex-
aminer should ascertain from the Law Exam-
iner if any such statement has been filed and,
if so, get this statement and forward it with
the files to the Interference Division. (Basis:
Order 3380.)

The oath under Rule 202 becomes a part of
the interference file in contradistinction to the
application file as in the case of an affidavit
under Rule 131 or Rule 204 but, like them, is

subject to inspection on the opening of the pre-
liminary statements.

When the formation of an interference be-
tween two parties is necessary, all other appli-
cants claiming the contested invention should
be placed in the interference irrespective of
their filing dates or of any dates alleged under
Rule 202, provided there is no statutory bar to
the allowance of the claims in the other appli-
cations.

1101.01(i) Correspondence Under
Rule 202, Failure of Jun-
ior Party To Overcome
Filing Date of Senior
Party

If the earliest date alleged by a junior party
in his affidavit under Rule 202 fails to overcome
the filing date of the senior party and if the in-
terference is not to be declared (note that an
interference might be necessary for other rea-
sons), the senior party's application will be
sent to issue as speedily as possible and the con-
flicting claims of the junior applicant will be
rejected on the patent when granted. A short-
ened period for response may be set in the
senior party's case. (See 710.02 (b).)

After the senior applicant's application has
been passed for issue, the application is sent
to the Law Examiner by the Issue and Gazette
Branch in accordance with a note to that effect
attached to the application and he writes a
letter to that applicant urging him to promptly
pay the final fee, this being done to the end
that prosecution of the junior application may
be promptly resumed, the senior party's dis-
closure then being available as prior art in
treating the claims of the junior application.
The examiner may make a supplemental action
on the junior applicant's case when the senior
applicant's patent issues.

### INTERIM PROCEDURE

In the meantime the junior party's applica-
tion will be treated in accordance with the
following :

Where a junior party after correspondence
under Rule 202 fails to overcome the filing date
of the senior party, the Examiner when he
reaches the case for action will write a letter
substantially as follows:

In view of Rule 202, action on this case (or
on claims 1, 2, 4, etc., indicating the conflict-
ing claims and claims not patentable over the
senior party's case) is suspended for six
months to determine whether an interference
will be declared (unless these claims are can-

celed). At the end of the six months appli-
cant should call up the case for action.

The letter should include the usual action on
the remaining claims in the case, indicating
what, if any, claims are allowable. (Basis:
Order 2913.)

If the Examiner's letter is a suspension of
action on the entire case, the case should be
noted on the Examiner's calendar at the date
marking the end of the six months period and
on the Docket Clerk's cards and, if applicant
does not call up the case, the Examiner should
do so unless the senior party's patent will soon
issue, since there is no period for response run-
ning against the applicant and the case should
not be permitted to remain indefinitely among
the files in the examining group.

It sometimes happens that the application of
the junior party is not amended and nothing
else occurs to bring it to the attention of the
Examiner, and that the patent to the senior
party issues and is not promptly cited to the
junior party. This works an unnecessary hard-
ship upon the junior applicant and the Office
should make every effort to give him action in
view of this reference at the earliest possible
date. To this end, the Examiner should keep
informed as to the progress of the senior appli-
cation and cite the patent with appropriate
comment to the junior applicant immediately
after its issue. (Basis: Notice of February 15,
1921.)

If, at the end of the six months' suspension,
it appears likely that the senior application will
be passed to issue within the next six months,
action on the conflicting claims and claims not
patentable over the senior party's case should
again be suspended for a period of six months.
Of course, if the first suspension was directed
to certain claims only and the usual action was
given on other claims, it is necessary for the ap-
plicant to make such response as is required to
the action on the other claims.

If, at the end of the first six months' suspen-
sion, there is no likelihood of the senior party's
application being put in condition for allow-
ance within the next six months and the only
unsettled question in the junior party's case is
the disposition of the claims on which action
was suspended, then the interference should be
declared.

If the junior application is in issue when the
interference is discovered and, in correspond-
ence under Rule 202, the junior applicant fails
to make the date of the senior party, the junior
application should be withdrawn from issue
(see "Letter Forms Used in Interferences,"
1112.04) and a letter sent informing him that
the interfering claim or claims and claims not
patentable over the senior party's case cannot

be allowed him as his date of invention in-
dicates he is not the first inventor. Action
should be suspended for six months, the Exam-
iner noting the expiration date on his calendar
and advising applicant to call the case up for
action at the end of the six months. There-
after, procedure should be as above.

# 1101.01(j) Suggestion of Claims

Rule 203. Preparation for interference between ap-
plications; suggestion of claims for interference. (a)
Before the declaration of interference, it must be de-
termined by the examiner that there is common pat-
entable subject matter in the cases of the respective
parties, patentable to each of the respective parties,
subject to the determination of the question of pri-
ority. Claims in the same language, to form the counts
of the interference, must be present or be presented, in
each application ; except that, in cases where, owing to
the nature of the disclosures in the respective applica-
tions, it is not possible for all applications to properly
include a claim in identical phraseology to define the
common invention, an interference may be declared,
with the approval of the Commissioner, using as a
count representing the interfering subject matter a
claim differing from the corresponding claims of one
or more of the interfering applications by an imma-
terial limitation or variation.

(b) When the claims of two or more applications
differ in phraseology, but relate to substantially the
same patentable subject matter, the examiner shall,
if it has been determined that an interference should
be declared, suggest to the parties such claims as are
necessary to cover the common invention in the same
language. The parties to whom the claims are sug-
gested will be required to make those claims (i. e., pre-
sent the suggested claims in their applications by
amendment) within a specified time, not less than 30
days, in order that an interference may be declared.
The failure or refusal of any applicant to make any
claim suggested within the time specified, shall be
taken without further action as a disclaimer of the
invention covered by that claim unless the time be
extended.

(c) The suggestion of claims for purpose of inter-
ference will not stay the period for response to an
Office action which may be running against an appli-
cation, unless the claims are made by the applicant
within the time specified for making the claims.

(d) When an applicant presents a claim in his ap-
plication (not suggested by the examiner as specified
in this rule) which is copied from some other appli-
cation, either for purpose of interference or otherwise,
he must so state, at the time he presents the claim and
identify the other application.

Although the subject of suggesting claims is
treated in detail at this point in the discussion

of a prospective interference between applica-
tions, some of the practice here outlined is also
applicable to.a prospective interference with a
patent.

If the applications contain identical claims
covering the entire interfering subject matter
the Examiner proceeds under Rule 207 to form
the interference; otherwise, proper claims must
be suggested to some or all of the parties.

It should be noted at this point that if an
applicant copies a claim from another appli-
cation without suggestion by the Examiner,
Rule 203(d) requires him to "so state, at the
time he presents the claim and identify the
other application."

The question of what claims to suggest to the
interfering applications is one of great im-
portance, and failure to suggest such claims as
will define clearly the matter in issue leads to
confusion and to prolongation of the contest.

While it is much to be desired that the claims
suggested (which are to form the issue of the
interference) should be claims already present
in one or the other of the applications, yet if
claims cannot be found in the applications
which satisfactorily express the issue it may be
necessary to frame a claim or claims reading on
all the applications and clearly expressing the
interfering subject matter and suggest it or
them to all parties. Whether selecting a claim
already presented or framing one for suggestion
to all parties, the examiner should keep in mind
that where one application has a less detailed
disclosure than others there is less chance for
error in finding support in all applications if
language is selected from the application with
the less detailed disclosure.

It is not necessary that all the claims of each
party that read on the other party's case be
suggested. The counts of the issue should be
representative claims and should be materially
different. Stated another way, the difference
between counts should be one not taught by the
prior art, and should have a significant effect
in the subject matter involved. In general, the
broadest patentable claim which is allowable
in each case should be used as the interference
count and additional claims should not be sug-
gested unless they meet the foregoing test as
to material difference. In determining the
broadest patentable count the examiner should
avoid the use of specific language which im-
poses an unnecessary limitation. Claims not
patentably different from counts of the issue are
rejected in the application of the defeated party
after termination of the interference.

The claims to form the issue of the interfer-
ence are suggested to all parties who have not
already made those claims.

# 1101.01 (k) Suggestion of Claims, Conflicting Parties Have Same Attorney

Rule 208. Conflicting parties having same attorney.
Whenever it shall be found that two or more parties
whose interests appear to be in conflict are represented
by the same attorney or agent, the examiner shall
notify each of said principal parties and the attorney
or agent of this fact, and shall also call the matter
to the attention of the Commissioner. If conflicting
interests exist, the same attorney or agent or his asso-
ciates will not be recognized to represent either of the
parties whose interests are in conflict without the
consent of the other party or in the absence of special
circumstances requiring such representation, in fur-
ther proceedings before the Patent Office involving the
matter or application or patent in which the conflict-
ing interests exist.

This notification should be given to both par-
ties at the time claims are suggested even
though claims are suggested to only one party.
Notation of the persons to whom this letter is
mailed should be made on all copies. (See
"Letter Forms Used in Interferences," 1112.03.)
The attention of the Commissioner is not called
to the fact that two conflicting parties have the
same attorney until an actual interference is
set up and then it is done by notifying the
Examiner of Interferences as explained in
1102.01 (b).

## 1101.01(1) Suggestion of Claims, Ac- tion To Be Made at Time of Suggesting Claims

At the same time that the claims are sug-
gested an action is made on each of the applica-
tions that are up for action by the Examiner,
whether they be new or amended cases. In this
way possible motions under Rule 231(a) (2)
and (3) may be forestalled. That is, the action
on the new or amended case may bring to light
patentable claims that should be included as
counts of the interference, and, on the other
hand, the rejection of unpatentable claims will
serve to indicate to the opposing parties the
position of the Examiner with respect to such
claims.

The Examiner is required to inform each
applicant when the interference is declared
what claims in his application are unpatentable
over the issue. There would seem to be no ob-
jection to, and many advantages in, giving this
information when suggesting claims.

Where in a letter suggesting claims to an
applicant for interference, the Examiner states
that none of the claims in the case is patentable
over the claims suggested, this statement does

not constitute a formal rejection of the claims,
so that after the expiration of the period fixed
for presenting the suggested claims, if no
amendment has been filed, the Examiner should
make a definite action on the claims then in
the application.

## 1101.01(m) Suggestion of Claims, Time Limit Set for Mak- ing Suggested Claims

Where claims are suggested for interference,
a limited period determined by the Examiner,
not less than 30 days, is set for reply. See
710.02(c).

Should any one of the applicants fail to
make the claim or claims suggested to him,
within the time specified, all his claims not pat-
entable thereover are rejected on the ground
that he has disclaimed the invention to which
they are directed. If applicant makes the sug-
gested claims later they will be rejected on the
same ground unless the delay is satisfactorily
explained. (706.03(u).)

# 1101.01(n) Suggestion of Claims, Suggested Claims Made After Statutory Period Running Against Case

If suggested claims are made within the time
specified for making the claims, the applicant
may ignore other outstanding rejections in the
application. Even if claims are suggested in
an application near the end of the statutory pe-
riod running against the case, and the time limit
for making the claims extends beyond the end
of the period, such claims will be admitted if
filed within the time limit even though outside
the six months' period and even though no
amendment was made responsive to the Office
action outstanding against the case at the time
of suggesting the claims. No portion of the
case is abandoned provided the applicant makes
the suggested claims within the time specified.
However, if the suggested claims are not thus
made within the specified time, the case becomes
abandoned in the absence of a responsive
amendment filed within the six months' period.
Rule 203 (c).

# 1101.01(o) Suggestion of Claims, Application in Issue or in Interference

An application will not be withdrawn from
issue for the purpose of suggesting claims for
an interference. When an application is pend-

(

ing before the Examiner which contains one or
more claims, which may be made in a case in
issue, the Examiner may write a letter suggest-
ing such claims to the applicant whose case is
in issue, stating that if such claims be made
within a certain specified time the case will be
withdrawn from issue, the amendment entered
and the interference declared. Such letters
must be submitted to the Group Manager. If
the suggested claims are not copied in the
application in issue, it may be necessary to
withdraw it from issue for the purpose of re-
jecting other claims on the implied disclaimer
resulting from the failure to copy the suggested
claims, using form at 1112.04.

When the Examiner suggests one or more
claims appearing in a case in issue to an appli-
cant whose case is pending before him, the case
in issue will not be withdrawn for the purpose
of interference unless the suggested claims
shall be made in the pending application with-
in the time specified by the Examiner. The
letter suggesting claims should be submitted to
the Group Manager for approval.

In either of the above cases the Issue and
Gazette Branch should be notified when the
claim is suggested, so that in case the final fee
is paid during the time in which the suggested
claims may be made, proper steps may be taken
to prevent the final fee from being applied.
(Basis: Order 1365.)

The Examiner should borrow the allowed ap-
plication from the Issue and Gazette Branch
and hold the file until the claims are made or
the time limit expires. This avoids any pos-
sible issuance of the application as a patent
should the final fee be paid. To further insure
against the issuance of the application, the
Examiner may pencil in the blank space fol-
lowing "Final Fee" on the file jacket the ini-
tialled request: "Defer for interference."
The final fee is not applied to such an applica-
tion until the following procedure is carried
out.

When notified that the final fee has been re-
ceived, the Examiner shall prepare a memo to
the Issue and Gazette Branch requesting that
issue of the patent be deferred for a period of
90 days due to a possible interference. This
allows a period of 60 days to complete any
action needed. At the end of this 60 day
period, the application must either be released
to the Issue and Gazette Branch or be with-
drawn from issue, using form at 1112.04.

When an application is found having claims
to be suggested to other applications already
involved in interference, to form another inter-
ference, the Primary Examiner requests juris-
diction of the last named applications. To this
end a separate letter (see form at 1112.06(a)),

addressed to the Commissioner is written for
each file, referring only to that file, and is
placed therein. This letter goes to the Group
Manager for his approval, along with the ap-
plication (s) under the jurisdiction of the
Examiner and the interfering application which
the Examiner ordinarily borrows from the
Service Branch of the Board of Patent Inter-
ferences on an informal basis. In case the
application is to be added to the existing inter-
ference, the Primary Examiner need only send
the application and form PO-850 properly
filled out as to the additional application and
identifying the interference, to the Patent
Interference Examiner who will take the appro-
priate action. Section 1106.02.

## 1101.02 With a Patent

Rules 204, 205 and 206 quoted below deal
with interference involving patents.

Rule 204. Interference with a patent; affidavit by
junior applicant. (a) The fact that one of the parties
has already obtained a patent will not prevent an inter-
ference. Although the Commissioner has no power to
cancel a patent, he may grant another patent-for the
same invention to a person who, in the interference,
proves himself to be the prior inventor.

(b) When the effective filling date of an applicant
is three months or less subsequent to the effective
filing date of a patentee, the applicant, before the in-
terference will be declared, shall file an affidavit that
he made the invention in controversy in this country
before the effective filing date of the patentee, or that
his acts in this country with respect to the invention
were sufficient to establish priority of invention rela-
tive to the effective filing date of the patentee.

(c) When the effective filing date of an applicant is
more than three months subsequent to the effective
filing date of the patentee, the applicant, before the
interference will be declared, shall file two copies of
affidavits by himself and by one or more corroborating
witnesses, supported by documentary evidence if avail-
able, setting out a factual description of aets and cir-
cumstances which would prima facie entitle him to an
award of priority relative to the effective filing date
of the patentee, and accompanied by an explanation
of the basis on which he believes that the facts set
forth would overcome the effective filing date of the
patentee. Upon a showing of sufficient cause, an
affidavit on information and belief as to the expected
testimony of a witness whose testimony is necessary
to overcome the filing date of the patentee may be
accepted in lieu of an affidavit by such witness. If the
examiner finds the case to be otherwise in condition
for the declaration of an interference he will consider
this material only to the extent of determining whether
a date prior to the effective filing date of the patentee is
alleged, and if so, the interference will be declared.

# 1101.02

The extensive discussion of modified patent
claims below should not be misinterpreted.
Most interferences between applications and
patents have the exact patent claim as a count.

As a patentee may not alter his claims (ex-
cept by reissue) an applicant must make one
or more claims of the patent or a claim cor-
responding substantially to a claim of the pat-
ent and differing therefrom by an immaterial
variation or by the exclusion of an immaterial
limitation to invoke an interference as stated in
Rule 205.

Where a patent claim must be modified, the
count of the interference should be the broader
claim as between the patentee and the applicant.
Thus, if an immaterial limitation is excluded,
the count of the interference should be a copy
of the modified patent claim as made in the
application following the practice as explained
in Bonine v. Bliss, 1919 C.D. 75; 265 O.G. 306.
(Basis: Notice of October 3, 1962.)

For the practice to be followed where an in-
terference in fact exists between a patent and
an application but, because of overlapping nu-
merical ranges or differences in Markush
groups, for instance, priority cannot be prop-
erly determined on the basis of a patent claim,
see the following Notice:

It has been found that the practice set forth
in Ex parte Card and Card, 112 O.G. 499, 1904
C.D. 383, does not adequately take care of all
situations where there is an interference in fact
between a patent and an application but there
are obstacles to the applicant making the exact
patent claim.

In those cases where the claim of the patent
contains an immaterial limitation which can
be wholly eliminated or suitably modified so as
to broaden the claim, the practice set forth in
Ex parte Card and Card should continue to be
followed.

A. In some cases, the disclosure in the appli-
cation, although for the same generic inven-
tion in fact as the patent claim, is somewhat
narrower than the claim of the patent. Under
such circumstances, the applicant should be
permitted to copy the claim of the patent
as exactly as possible, modifying it only by
substituting language based upon his own nar-
rower disclosure for the limitation in the patent
claim which he can not make. In declaring
the interference, the exact patent claim should
be used as the count of the interference and it
should be indicated that the claim in the appli-
cation corresponds substantially to the inter-
ference count.

Examples of the practice outlined in the
preceding paragraph :

I. PATENT CLAIMS A RANGE OF 10 To 90.

Application discloses a range of 20 to 80,

there being no distinction in substance between
the two ranges.

Application may be permitted to copy the pat-
ent claim, modifying it by substituting his
range of 20 to 80 for the range of 10 to 90 in
the patent claim.

Interference should be declared with the ex-
act patent claim as the count and it should be
indicated that the claim in the application
corresponds substantially to the interference
count.

## II. PATENT CLAIMS A MARKUSH GROUP OF 6 MEMBERS.

Application discloses a Markush group of 5
of the same 6 members, there being no distinc-
tion in substance between the two groups.

Applicant may be permitted to copy the pat-
ent claim, modifying it by substituting his
5-member group for the 6-member group in
the patent claim.

Interference should be declared with the ex-
act patent claim as the count and it should be
indicated that the claim in the application cor-
responds substantially to the interference count.

B. In some cases, the disclosure in the ap-
plication, although for the same invention in
fact as the patent claim, is somewhat broader
than the claim of the patent. Under such cir-
cumstances, in initially declaring the interfer-
ence the applicant should be required to make
the exact patent claim and the interference
should be declared on that claim. However, if
the applicant presents and prosecutes a motion
to substitute a broader count and, in connec-
tion with such a motion, makes a satisfactory
showing, as by demonstrating that his best
evidence lies outside the exact limit of the
patent claim, the applicant may be permitted
to substitute a count wherein language based
upon his slightly broader disclosure replaces
the corresponding limitation in the patent
claim. In redeclaring the interference, the
application claim should be used as the count
of the interference and it should be indicated
that the claim in the patent corresponds sub-
stantially to the interference count.

Examples of the practice outlined in the pre-
ceding paragraph :

### I. PATENT CLAIMS A RANGE OF 20 TO 80.

Application discloses a range of 10 to 90,
there being no distinction in substance between
the two ranges.

Applicant should be required initially to
copy the exact patent claim.

Interference should be declared initially with
the exact patent claim as the count.

(
1

(

However, if, in seeking interference the ap-
plicant makes a satisfactory showing of the
necessity for including the ranges of 10 to 20
and 80 to 90 in the interference count, the inter-
ference may be declared having as a count the
patent claim modified by substituting his range
of 10 to 90 for the range of 20 to 80 in the
patent claim. Rule 205 (a).

Similarly, the applicant may seek such sub-
stitution after the interference is declared on
the exact patent claim by filing a motion to
substitute a count with the broader range sup-
ported by a similar showing.

In either case where the application claim is
accepted as a count, it should be indicated in
the interference notices and declaration sheet
that the claim in the patent corresponds sub-
stantially to the interference count.

# II. PATENT CLAIMS A MARKUSH GROUP OF 5 MEMBERS.

Application discloses a Markush group of 6
members, including the 5 claimed in the pat-
ent, there being no distinction in substance be-
tween the two groups.

Applicant should be required initially to
copy the exact patent claim.

Interference should be declared initially with
the exact patent claim as the count.

If, in connection with a motion to substitute,
the applicant makes a satisfactory showing of
the necessity for including the sixth member
in the interference count, he may be permitted
to present the patent claim modified by substi-
tuting his 6-member group for the 5-member
group in the patent claim.

Interference should be redeclared with the
application claim as the count and it should be
indicated that the claim in the patent corre-
sponds substantially to the interference count.

C. Some cases may include aspects of both
A and B, above. Such cases should be appro-
priately treated by the same general principles
outlined above.

Examples of cases involving mixed aspects :

I. PATENT CLAIMS A RANGE OF 10 TO 80.

Application discloses a range of 20 to 90,
there being no distinction in substance between
the two ranges.

(a) Initially, applicant may be permitted to
copy the patent claim, modifying it by sub-

stituting the range of 20 to 80 for the range
of 10 to 80 in the patent claim.

Interference should be initially declared with
the exact patent claim as the count and it
should be indicated that the claim in the ap-
plication corresponds substantially to the in-
terference count.

(b) If, in connection with a motion to sub-
stitute, the applicant makes a satisfactory
showing of the necessity for including the
range of 80 to 90 in the interference count, he
may be permitted to present the patent claim
modified by submitting his range of 20 to 90
for the range of 10 to 80 in the patent claim.

Interference should be redeclared with a
count covering the range of 10 to 90 and it
should be indicated that both the claim in the
patent and the claim in the application cor-
respond substantially to the interference count.

II. PATENT CLAIMS A MARKUSH GROUP OF 6
MEMBERS.

Application discloses a Markush group of 5
of the same 6 members, plus another member
not claimed in the patent, there being no dis-
tinction in substance between the two groups.

(a) Initially, applicant may be permitted to
copy the patent claim, modifying it by sub-
stituting the 5 members of the patent claim
which he discloses for the 6-member group in
the patent claim.

Interference should be declared initially with
the exact patent claim as the count and it
should be indicated that the claim in the appli-
cation corresponds substantially to the inter-
ference count.

(b) If, in connection with a motion to sub-
stitute, the applicant makes a satisfactory
showing of the necessity for including his addi-
tional member of the group, he may be per-
mitted to present the patent claim modified by
substituting the 6-member group which he dis-
closes for the 6-member group in the patent
claim.

Interference should be redeclared with a
count including in a Markush group all 7
members claimed in the patent and disclosed
in the application and it should be indicated
that both the claim in the patent and the claim
in the application correspond substantially to
the interference count.

The practice outlined above should be re-
stricted to situations where the inventions
claimed in the patent and disclosed in the
application are clearly the same, so that there
is truly an interference in fact.

Until further notice, interferences declared
or redeclared in accordance with this practice
should be submitted to the Group Manager.

All prior decisions, orders, and notices are
hereby overruled to the extent that they may

be inconsistent with the said practice. (Basis:
Notice of April 5, 1954.)

Some cases may include aspects of both a
Card situation and those of an "A" or "B"
situation noted above. These cases should be
treated in accordance with the general prin-
ciples outlined in the foregoing notice.

For rejection of copied patent claims see
1101.02(f).

Rule 205. Interference with a patent; copying claims
from patent. (a) Before an interference will be de-
clared with a patent, the applicant must present in his
application copies of all the claims of the patent which
also define his invention and such claims must be
patentable in the application. However, an interfer-
ence may be declared after copying the claims exclud-
ing an immaterial limitation or variation if such
immaterial limitation or variation is not clearly sup-
ported in the application or if the applicant otherwise
makes a satisfactory showing in justification thereof.

(b) Where an applicant presents a claim copied or
substantially copied from a patent, he must, at the
time he presents the claim, identify the patent, give
the number of the patented claim, and specifically
apply the terms of the copied claim to his own dis-
closure, unless the claim is copied in response to a
suggestion by the Office. The examiner will call to the
Commissioner's attention any instance of the filing of
an application or the presentation of an amendment
copying or substantially copying claims from a patent
without calling attention to that fact and identifying
the patent.

Rule 206. Interference with a patent; claims improp-
erly copied. (a) Where claims are copied from a
patent and the examiner is of the opinion that the
applicant can make only some of the claims so copied,
he shall notify the applicant to that effect, state why
he is of the opinion the applicant cannot make the
other claims and state further that the interference
will be promptly declared. The applicant may pro-
ceed under rule 231, if he desires to further contest
his right to make the claims not included in the decla-
ration of the interference.

(b) Where the examiner is of the opinion that none
of the claims can be made, he shall reject the copied
claims stating why the applicant cannot make the
claims and set a time limit, not less than 30 days, for
reply. If, after response by the applicant, the rejec-
tion is made final, a similar time limit shall be set for
appeal. Failure to respond or appeal, as the case may
be, within the time fixed will in the absence of a satis-
factory showing, be deemed a disclaimer of the inven-
tion claimed.

When an interference with a patent is pro-
posed it should be ascertained before any steps
are taken whether there is common ownership.
A title report must be placed in the patented
file when the papers for an interference be-
tween an application and a patent are for-
warded. To this end the Examiner, before

1101.02(a)

should refer the patented file to the Assign-
ment Branch for notation as to ownership.

PATENT IN DIFFERENT GROUP

Where claims are copied from a patent clas-
sified in another group, the propriety of de-
claring the interference (if any) is decided by
and the interference is declared by the group
where the copied claims would be classi-
fied. In such a case, it may be necessary to
transfer the application, including the draw-
ings, temporarily to the group which will
declare the interference. A print of the draw-
ings should be made and filed in the group
originally having jurisdiction of the applica-
tion in place of the original drawings. When
claims are copied from a plurality of patents
classified in different groups, the question
of which group should declare the interfer-
ences should be resolved by agreement be-
tween the Examiners of the groups con-
cerned, possibly in consultation with the
Directors involved.

## 1101.02(a) Copying Claims From a Patent

A large proportion of interferences with a
patent arise through the initiative of an appli-
cant in copying claims of a patent which has
come to his attention through citation in an
Office action or otherwise.

If, in copying a claim from a patent an
error is introduced by the applicant, the Ex-
aminer should correct applicant's claim to cor-
respond to the patent claim. A notation should
be added to his letter (POL 76) stating that
the correction has been made.

However, in some instances the Examiner
observes that certain claims of a patent can be
made in a pending application and, if the pat-
ent is not a statutory bar, he must take steps
to avoid the issuance of a second patent claim-
ing the same invention without an interfer-
ence. The practice set forth hereinbelow ap-
plies when an issued patent and a pending
application are not commonly assigned. If
there is a common assignment, a rejection as
outlined in 305 should be made if an attempt
is made to claim in the pending application
the same invention as is claimed in the patent.

A patent claiming the same invention as that
being claimed in an application can be over-
come only through interference proceedings.
Where the effective filing date of the applica-
tion is prior to that of the patented application,
no oath is required.

If the effective filing date of the applicant is
three months or less later than that of the pat-
ented application, the applicant must submit an
affidavit that he made the invention prior to the
filing date of the patent, even though there was

copendency between the two applications, Rule
204(b). The affidavit may be made by persons
other than the applicant. Cf. 715.04.

If the effective filing date of the applicant is
more than three months later than that of the
patented application, the applicant is required
by Rule 204(c) to submit a showing by affi-
davits including at least one by a corroborating
witness, and documentary exhibits setting forth
acts and circumstances which if proven by tes-
timony taken in due course would provide suf-
ficient basis for an award of priority to him
with respect to the effective filing date of the
patent application. In connection with a re-
quirement for a showing under Rule 204 (b) or
(c), or in examining such a showing submitted
voluntarily, the Examiner must determine
whether or not the patentee is entitled to the
filing date of an earlier domestic or foreign
application. A determination that a divisional
or continuation relationship is acknowledged in
the heading of the patent is sufficient for this
purpose as to a parent application thus men-
tioned. In the case of a foreign application
this determination will not be made unless
the necessary papers (Rule 55(b) ) are already
of record in the file, including a sworn trans-
lation of the foreign application if it is not in
the English language. Where the benefit of
such earlier application is then accorded the
patentee, this fact should be noted on the form
PO-850 and will be stated in the notices of
interference.

The Examiner will examine the showing to
determine whether it includes the two copies
of affidavits and exhibits and is accompanied
by an explanation of the pertinency of the
showing as required by the rule. If dupli-
cate copies of any of the affidavits or exhibits
are omitted, the Examiner will notify the ap-
plicant of such omission and state that because
of it the application cannot be forwarded for
declaration of the interference. Lack of an
explanation should be treated similarly except
that if there are accompanying remarks, with
the amendment or in a separate paper, which
appear to be an explanation their sufficiency
should not be questioned. A period of twenty
days should be set within which to correct the
omission.

The substance of the showing will be con-
sidered by the Examiner only to the extent of
determining that it includes an allegation relat-
ing to priority of at least one date prior to the
effective filing date of the patentee. Absent
such a date, the deficiency should be pointed out
and the copied claims rejected on the patent
with a time limit for response under Rule 203.
If such an allegation is present and the inter-
ference is otherwise proper, the Examiner will

(

1101.02(f)

forward the application and the patented file
with form PO-850 for declaration of the inter-
ference. The Board of Patent Interferences
will consider the sufficiency of the showing
prior to declaration of the interference (Rule
228).

Although, aside from dates, the examiner
will not normally attempt any evaluation of
the sufficiency of the showing, an exception may
be made where it is clear beyond any argument
that the showing relates to an invention of a
different character from that of the copied
claims. In such a case, the examiner may re-
fuse to accept the showing and reject the copied
claims on the patent.

If the filing date of the patent precedes the
filing date of the application and the patent is
not a statutory bar against the application, the
claims of the application should be rejected on
the patent. If it appears that the applicant
is claiming the same invention as is claimed in
the patent and that the applicant is able to
make one or more claims of the patent, a state-
ment should be included in the rejection that
the patent cannot be overcome by an affidavit
under Rule 131 but only through interference
proceedings. Note, however, 35 U.S.C. 135,
2d par. and section 1101.02(f). If the appli-
cant controverts this statement and presents an
affidavit under Rule 131, the case should be
considered special, one claim of the patent
which the applicant clearly can make should
be selected, and an action should be made re-
fusing to accept the affidavit under Rule 131
and requiring the applicant to make the se-
lected claim as well as any other claims of the
patent which he believes find support in his
application. If necessary, the applicant should
be required to file the affidavit and showing re-
quired by Rule 204. In making this require-
ment, where applicable, the applicant should
be notified of the fact that the patentee has been
accorded an earlier effective filing date by vir-
tue of a parent or foreign application. A time
limit for response should be set under Rule 203.
In any case where an applicant attempts to
overcome a patent by means of affidavit under
Rule 131, even though the examiner has not
made a rejection on the ground that the same
invention is claimed in the patent, the claims of
the patent should be examined and, if appli-
cant is claiming the same invention as is claimed
in the patent and can make one or more of
claims of the patent, the affidavit under Rule 131
should be refused, and an action such as out-
lined in the preceding part of this paragraph
should be made. If necessary, the require-
ments of Rule 204 should be specified and a
time limit for response should be set under
Rule 203.

1101.02(b)
Copying Claims From a
Patent, Examiner Cites
Patent Having Filing
Date Later Than That of
Application

If a patent, having a filing date later than
the filing date of an application, discloses the
same subject matter as disclosed in that ap-
plication and if the application claims the
same invention as that claimed in the patent
so that a second patent could not be granted
without interference proceedings, the patent
should be cited and one claim of the patent
which applicant clearly can make should be
selected and the applicant should be required
to make the selected claim as well as any other
claims of the patent which he believes find
support in his application.

If an application claims an invention pat-
entably different from that claimed in a pat-
ent, which discloses the same subject matter as
that disclosed in the application but which has
a filing date later than the filing date of the
application, so that a distinct patent could be
granted to the applicant without interference
proceedings, the patent should be only cited to
the applicant. Thus, it is left to the applicant
to determine whether he wishes to and can
copy the claims of the patent.

1101.02(c) Copying Claims From a
Patent, Difference Be-
tween Copying Patent
Claims and Suggesting
Claims of an Application

The practice of an applicant copying claims
from a patent differs from the practice of sug-
gesting claims for a prospective interference
involving only applications in the following
respects :

(1) No correspondence under Rule 202 is
conducted with a junior applicant who is to
become involved in an interference with a pat-
ent but, instead, an affidavit under Rule 204
is required.

(2) When a question of possible interfer-
ence with a patent arises, the patent should be
cited, whereas no information concerning the
source of the claim should be revealed when
a claim is suggested for a prospective inter-
ference involving only applications.

(3) All claims of a patent which an appli-
cant can make should be copied.

(4) Claims copied by an applicant from a
patent may differ from the patent claims by the
exclusion of an immaterial limitation or vari-

ation which the applicant can not make or upon
a satisfactory showing (Rule 205 (a) ), whereas
claims suggested for an interference between
applications must normally be identical though
Rule 203 (a) permits an exception with the ap-
proval of the Commissioner.

### 1101.02(d) Copying Claims From a Patent, Copied Patent Claims Not Identified

If an attorney or agent presents a claim
copied or substantially copied from a patent
without indicating its origin he may be deemed
to be seeking, obviously improperly, to obtain
a claim or claims to which the applicant is not
entitled under the law without an interference,
or the Examiner may be led into making an
action different from what he would have
made had he been in possession of all the facts.
Rule 205(b) therefore requires the Examiner
to "call to the Commissioner's attention any
instance of the filing of an application or the
presentation of an amendment copying or sub-
stantially copying claims from a patent with-
out calling attention to the fact and identify-
ing the patent."

### 1101.02(e) Copying Claims From a Patent, Making of Patent Claims Not a Response to Last Office Action

The making of claims from a patent when
not required by the Office does not constitute a
response to the last Office action and does not
operate to stay the running of the statutory pe-
riod dating from the unanswered Office action.

The declaration of an interference based on
such claims before the expiration of the stat-
utory period, by operation of Rule 212 stays
the running of the statutory period.

### 1101.02(f) Copying Claims From a Patent, Rejection of Copied Patent Claims

#### REJECTION NOT APPLICABLE TO PATENT

When claims from a patent are made, the
application is taken up at once and the Exam-
iner may reject such claims in the application
if the ground of rejection is not also applica-
ble in the case of the patent. Examples of
such a ground of rejection are insufficient dis-
closure in the application, a reference whose
date is junior to that of the patent, or because
the claims copied from a patent are barred to

applicant by the second paragraph of 35 U.S.C.
135, which reads:

"A claim which is the same as, or for the same
or substantially the same subject matter as, a
claim of an issued patent may not be made in
any application unless such a claim is made
prior to one year from the date on which the
patent was granted."

It should be noted that an applicant is per-
mitted to copy a patent claim outside the year
period if he has been claiming substantially
the same subject matter within the year limit.
See Thompson v. Hamilton, 1946 C.D. 70, 585
O.G. 177; In re Frey, 1950 C.D. 362, 639 O.G.
5; Andrews v. Wickenden, 1952 C.D. 176, 659
O.G. 305; In re Tanke et al., 1954 C.D. 212;
687 O.G. 677; Emerson v. Beach, 1955 C.D. 34;
691 O.G. 170; Rieser v. Williams, 118 U.S.P.Q.
96; Stalego et al. v. Haymes et al., 120 U.S.P.Q.
473.

As is pointed out in Rule 206, where more
than one claim is copied from a patent, and
the Examiner holds that one or more of them
are not patentable to applicant and at least
one other is, the Examiner should at once initi-
ate the interference on the claim or claims con-
sidered patentable to applicant, rejecting the
others, leaving it to applicant to proceed under
Rule 231(a) (2) in the event that he does not
acquiesce in the Examiner's ruling as to the
rejected claims.

Where all the claims copied from a patent
are rejected on a ground not applicable to the
patentee the Examiner sets a time limit for
reply, not less than thirty days, and all subse-
quent actions, including action of the Board
on appeal, are special in order that the inter-
ference may be declared as promptly as pos-
sible. Failure to respond or appeal, as the
case may be, within the time fixed, will, in the
absence of a satisfactory showing, be deemed a
disclaimer of the invention claimed.

While the time limit for an appeal from the
final rejection of a copied patent claim is usu-
ally set under the provisions of Rule 206, where
the remainder of the case is ready for final
action, it may be advisable to set a shortened
statutory period for the entire case in accord-
ance with Rule 136.

The distinction between a limited time for
reply under Rule 206 and a shortened statutory
period under Rule 136 should not be lost sight
of. The penalty resulting from failure to reply
within the time limit under Rule 206 is loss of
the claim or claims involved, on the doctrine of
disclaimer, and this is appealable; while failure
to respond within the set statutory period (Rule
136) results in abandonment of the entire ap-
plication. That is not appealable. Further, a
belated response after the time limit set in ac-
cordance with Rule 206 may be entered by the

(
!

Examiner, if the delay is satisfactorily ex-
plained (except that the approval of the Com-
missioner is required where the situation de-
scribed in the next paragraph below exists) ; but
one day late under Rule 136 period, no matter
what the excuse, results in abandonment. How-
ever, if asked for in advance, one extension of
either period may be granted by the Examiner,
provided that extension does not go beyond the
six months' period.

## COPIED OUTSIDE TIME LIMIT

Where a patent claim is suggested to an
applicant by the Examiner for the purpose of
establishing an interference and is not copied
within the time limit set, or a reasonable ex-
tension thereof, an amendment presenting it
thereafter will not be entered without the ap-
proval of the Commissioner. (Basis: Notice
of September 27, 1933.)

The rejection of copied patent claims some-
times creates a situation where two different
periods for response are running against the
application-one, the statutory period dating
from the last full action on the case; the
other, the limited period set for the response

to the rejection (either first or final) of the
patent claims. This condition should be
avoided where possible as by setting a short-
ened period for the entire case, but where un-
avoidable, it should be emphasized in the Ex-
aminer's letter.

In this connection it is to be noted that a reply
to a rejection or an appeal from the final rejec-
tion of the patent claims will not stay the run-
ning of the regular statutory period if there be
an unanswered Office action in the case at the
time of reply or appeal, nor does such reply or
appeal relieve the Examiner from the duty of
acting on the case if up for action, when reached
in its regular order.

Where an Office action is such as requires the
setting of a time limit for response to or ap-
peal from that action or a portion thereof, the
Examiner should note at the end of the letter
the date when the time limit period ends and
also the date when the statutory period ends.
(Basis: Notice of June 29, 1938.) See 710.04.

## REJECTION APPLICABLE TO PATENT AND APPLICATION

If the ground of rejection is applicable to
both the claims in the application and the claims

in the patent, any letter including the rejection
must have the approval of the appropriate Di-
rector.

An interference will not be declared where
the Examiner is aware of a reference for the
copied claims, even if it would also be applicable
to the patent. However, if such a reference is
discovered while an interference involving a
patent is before the Examiner for his decision
on motions, he should proceed under Rule 237,
last sentence. If a reference is discovered at
any other time during the course of an inter-
ference, the Examiner proceeds in accordance
with Rule 237 and Section 1105.05 of the
Manual. The Director's approval must be
obtained before forwarding the form letter
of Sec. 1112.08 and before mailing the decision
on motion. (Basis: Portions of Notice of
March 15, 1950.)

The decision on such a motion should avoid
any comment on the patentability of the claims
already granted to the patentee. See Noxon
v. Halpert, 128 U.S.P.Q. 481.

1101.02(g) Copying Claims From a
Patent, After Prosecution
of Application Is Closed
or Application Is Allowed

An amendment presenting a patent claim in
an application not in issue is usually admitted
and promptly acted on. However, if the case
had been closed to further prosecution as by
final rejection or allowance of all of the claims,
or by appeal, such amendment is not entered as a
matter of right. Where the prosecution of the
application is closed and the copied patent
claims relate to an invention distinct from that
claimed in the application, entry of the amend-
ment may be denied. (Ex parte Shohan, 1941
C.D. 1; 522 O.G. 501.) Admission of the
amendment may very properly be denied in a
closed application, if prima facie, the claims are
not supported by applicant's disclosure. An
applicant may not have recourse to asserting a
patent claim which he has no right to make as
a means to reopen or prolong the prosecution
of his case. See 714.19(4).

## AFTER NOTICE OF ALLOWANCE

When an amendment which includes one or
more claims copied or substantially copied from
a patent is received after the Notice of Allow-
ance and the Examiner finds one or more of the
claims patentable to the applicant and an inter-
ference to exist, he should prepare a letter [see
Letter Form 1112.04], requesting that the appli-
cation be withdrawn from issue for the purpose
of interference. This letter, which should des-

ignate the claims to be involved, should be sent
to the Group Manager and then forwarded,
together with the file and the proposed amend-
ment, to the appropriate Director.

When an amendment is received after Notice
of Allowance, which includes one or more claims
copied or substantially copied from a patent
and the Examiner finds basis for refusing the
interference on any ground he should make an
oral report to the Group Manager of the rea-
sons for refusing the requested interference.
Notification to applicant is made on Form
POL-271 if the entire amendment or a portion
of the amendment (including all the copied
claims) is refused. The following or equivalent
language should be employed to express the
adverse recommendation as to the entry of the
copied or substantially copied patent claims:

"Entry of claims
is not recom-
mended because (brief statement of basic rea-
sons for refusing interference). Therefore
withdrawal of the application from issue is not
deemed necessary." "(Basis: Notice of Decem-
ber 9, 1943 and January 6, 1953.)

## 1101.03 Removing of Affidavits Be- fore Interference

When there are of record in the file, affida-
vits under Rule 131, 204(b) or 204(c) they
should not be sealed but should be left in the
file for consideration by the Board of Interfer-
ence Examiners. If the interference proceeds
normally, these affidavits will be removed and
sealed up by the Service Branch of the Board of
Patent Interferences and retained with the
interference.

In the event that there had been correspond-
ence under Rule 202, this should be obtained
from the Law Examiner and left (unsealed) in
the file.

Affidavits under Rules 131 and 204, as well
as an affidavit under Rule 202 (which never be-
comes of record in the application file) are avail-
able for inspection by an opposing party to an
interference when the preliminary statements
are opened. Ferris v. Tuttle, 1940 C.D. 5; 521
O.G. 523. (Basis : Notice of October 15, 1940.)

The now opened affidavits filed under Rules
131 and 204 may then be returned to the appli-
cation files and the affidavits filed under Rule
202 filed in the interference jacket.

## 1102 Preparation of Interference Papers and Declaration

Rule 207 .- Preparation of interference papers and
declaration of interference. (a) When an interfer-
ence is found to exist and the applications are in con-

dition therefor, the primary examiner shall forward
the files to the Board of Patent Interference together
with a statement indicating the claims of each appli-
cant or patentee which are to form the respective
counts of the interference and also indicating whether
any party is entitled to the benefit of the filing date of
any prior application as to the subject matter in issue,
and, if so, identifying such application.

(b) A patent interference examiner will institute
and declare the interference by forwarding notices to
the several parties to the proceeding. Each notice
shall include the name and residence of each of the
other parties and those of his attorney or agent, and
of any assignee, and will identify the application of
each opposing party by serial number and filing date,
or in the case of a patentee by the number and date of
the patent. The notices shall also specify the issue of
the interference, which shall be clearly and concisely
defined in only as many counts as may be necessary to
define the interfering subject matter (but in the case
of an interference with a patent all the claims of the
patent which can be made by the applicant should con-
stitute the counts), and shall indicate the claim or
claims of the respective cases corresponding to the
count or counts. If the application or patent of a
party included in the interference is a division, con-
tinuation or continuation-in-part of a prior application
and the examiner has determined that it is entitled to
the filing date of such prior application, the notices
shall so state. Except as noted in paragraph (e) of
this section, the notices shall also set a schedule of
times for taking various actions as follows :

(1) For filing the preliminary statements required
by rule 215 and serving notice of such filing, not less
than 2 months from the date of declaration.

(2) For each party who files a preliminary state-
ment to serve a copy thereof on each opposing party
who also files a preliminary statement as required by
rule 215(b), not less than 15 days after the expiration
of the time for filing preliminary statements.

(3) For filing motions under rule 231, not less than
4 months from declaration.

(c) The notices of interference shall be forwarded
by the patent interference examiner to all the parties,
in care of their attorneys or agents; a copy of the
notices will also be sent the patentees in person and, if
the patent in interference has been assigned, to the
assignees.

(d) When the notices sent in the interest of a patent
are returned to the Office undelivered, or when one of
the parties resides abroad and his agent in the United
States is unknown, additional notice may be given by
publication in the Official Gazette for such period of
time as the Commissioner may direct.

(e) In a case where the showing required by rule
204 (c) is deemed insufficient (rule 228) the notice of
interference will not set the time schedule specified
in paragraph (b) of this section but will be accom-
panied by an order to show cause by the Board of
Patent Inteferences as provided by rule 228.

## 1102.01 Preparation of Papers

The only paper prepared by the Examiner
is the Initial Memorandum (Form PO-850)
addressed to the Board of Patent Interferences
which provides authorization for preparation
of the Notices of Interference and the Declara-
tion Sheet. The latter papers are prepared in
the Service Branch of the Board of Patent
Interferences.

"In declaring or redeclaring an interference
the following should be borne in mind :

(1) That no party should be made junior as
to some counts and senior as to others, but that
two interferences should be set up making the
party with two applications junior in one in-
terference and senior in the other.

(2) That no interference should be declared
in which each party to the interference is not
involved on every count.

(3) That where an applicant puts identical
claims in two applications by virtue of one of
which he will be the senior party and of the
other the junior the latter application should be
placed directly in the interference, leaving the
applicant to gain such benefit as he may from
the senior application either by motion to shift
the burden of proof or by introducing the
senior into the interference as evidence." (In
re Redeclaration of Interference Nos. 49,635;
49,636; 49,866; 1926 C.D. 75; 350 O.G. 3.)

The Initial Memorandum and the files to be
involved are forwarded to the interference
Service Branch. Any correspondence under
Rule 202 should be obtained from the Law
Examiner and forwarded with the other
papers. See 1101.03. This same practice ob-
tains in the case of affidavits of this nature in
earlier applications the benefits of which is ac-
corded a party by the Examiner in the initial
memorandum. (Such cases will be acknowl-
edged in the Declaration papers.) If a patent
is involved in the interference, a recent title
report on the patent should be forwarded with
the other papers.

The information to be included in the initiat-
ing memorandum is set forth below :

## 1102.01 (a) Initial Memorandum to the Board of Patent Inter- ferences

The initial memorandum to the Board of
Patent Interferences is written on Form PO-
850 for that purpose. See 1112.05(a). Since
the files will be available, information found on
the file wrapper is unnecessary and is not de-
sired except as indicated on the form. The

form is designed to require a minimum of effort
by the examiner and typing should not be used
unless the counts are not found verbatim in any
file as provided in the last sentence of Rule
203 (a). In this case copies of the counts should
be supplied at the end of the form using addi-
tional plain sheets if needed. The files to be in-
cluded in the interference should be listed by
last name (of first listed inventor if application
is joint), serial number, and filing date irrespec-
tive of whether an application or a patent is in-
volved. The sequence of the listed applications
is completely immaterial .. If the Examiner has
determined that a party is entitled to the benefit
of the filing date of one or more applications
(or patents) as to all counts by virtue of a con-
tinuation-in-part relationship the blanks pro-
vided on the form for indicating this fact should
be filled in as to all such applications. It is
particularly important to list all applications
necessary to provide continuity of pendency to
the earliest application to which a party is en-
titled. Although a party will not normally be
given the benefit of a foreign application in
the declaration notices, if the Examiner has
determined that a patentee is in fact entitled to
the benefit of such application in connection
with the requirement for a showing under Rule
204, this should be noted on the form PO-850
(see section 1101.02(a) ) and the notices of in-
terference will indicate that such benefit has
been accorded the patentee. The claims in each
case which are unpatentable over the issue
should be indicated in the blanks provided for
that purpose. The Examiner also must furnish
a table showing the relation of the counts to the
claims of the respective parties in the area pro-
vided in the form as for example:

Jones

Smith

Green

3(m)

6(m)

The indication of claims in each case which
are regarded as unpatentable over the issue is
based on the decisions in Votey v. Wuest v.
Doman, 1904. C.D. 323; 111 O.G. 1627 and Earll
v. Love, 1909 C.D. 56; 140 O.G. 1209 in which
it is held that when an interference is declared
involving a patentee and the Examiner is of
the opinion that the application or applications
contain claims not patentably different from the
issue of the interference, he should append to
the letter to the applicant a statement that such
claims, specifying them by number, will be held

subject to the decisions in the interference.
The reason for making such statement applies
equally well to an interference involving only
applications.

The practice announced in these decisions
should be followed. Such a statement gives
the parties notice as to what claims the Exam-
iner considers unpatentable over the issue, it
avoids the inadvertant granting of claims to the
losing party which are not patentable over the
issue, but which are not included therein, and
will probably result in fewer motions under
Rule 231 (b). (Basis: Notice of May 11, 1917.)

In carrying out the provisions of Rule 208,
Examiners, when forwarding the Initial Mem-
orandum to the Board of Patent Interferences,
will in a separate memorandum, call their at-
tention to cases in which two of the parties are
represented by the same attorney, in lieu of
calling the matter directly to the attention of
the Commissioner. The Patent Interference
Examiner when mailing out the notices to the
parties and their attorney will advise the par-
ties and the attorney that the attorney will not
be recognized further as representing either par-
ty in the interference or in the interfering cases
unless he shows that he is entitled to continue
to represent either or both parties as provided
by Rule 208. The Patent Interference Exam-
iner will also call to the attention of the parties
and the attorney the requirement of the second
sentence of Rule 201(c). (Basis: Notice of
April 14, 1949.)

In an interference involving a patent, if the
Primary Examiner discovers a reference which,
in his opinion, renders a count obviously un-
patentable, action should be taken in accord-
ance with Section 1101.02 (f).

If one or more of the counts are claims of an
involved patent modified to be broader than the
corresponding patent claims, the word "modi-
fied" or "substantially" should appear in paren-
theses after the corresponding claims of the
patent in the table of claims. In other situa-
tions where exactly corresponding claims are
not present in the applications and patent con-
sidered to be interfering, see Notice of April 5,
1954 set forth in Section 1101.02 as to the proper
designation of the relationship of the claims to
the counts. In any event, where one of the
parties does not have a claim corresponding
exactly to the count, the Examiner should in-
dicate by the word "count" and an arrow which
claim in the table of counts is to be the count.
This should be the broader claim, of course.
The indication should be made for each count.
If an application was merely in issue and did

not become a patent, the original claim numbers
of the application, prior to revision for issue,
should be used.

A certificate of correction in a patent should
not be overlooked. For the best practice in in-
terference between applications, dependent
counts should be avoided and each count should
be independent. This avoids confusion in lan-
guage and disputes as to the meaning of the
counts. When dependent counts cannot be
avoided, as in the case of an interference with
a patent where one of the counts is a dependent
claim, the count may likewise be dependent on
the count corresponding to the claim on which
the dependent claim is founded. If necessary
a dependent claim may be the sole count of an
interference.

## 1102.02 Declaration of Interference

The papers necessary in declaring an inter-
ference are prepared in the interference Service
Branch. The notices to the parties and the
declaration sheet are signed by a Patent Inter-
ference Examiner, who institutes and declares
the interference by mailing the notices to the
several parties to the proceeding. Thereafter
the applications and interference files are kept
in the Service Branch where they are also re-
corded in a card index.

If an application that has been made special
by the Commissioner becomes involved in an
interference, the interference will be made spe-
cial, provided the prosecution of such appli-
cation has been diligent on the part of the
applicant. See 708.01.

## 1103 Suspension of Ex Parte Prosecu- tion

Rule 212. Suspension of ex parte prosecution. On
declaration of the interference, ex parte prosecution
of an application is suspended, and amendments and
other papers received during the pendency of the in-
terference will not be entered or considered without
the consent of the Commissioner, except as provided
by these rules. Proposed amendments directed toward
the declaration of an interference with another party
will be considered to the extent necessary. Ex parte
prosecution as to specified matters may be continued
concurrently with the interference, on order from or
with the consent of the Commissioner.

The treatment of amendments filed during
an interference is considered in detail in sec-
tions 1108 and 1111.05.

For treatment of other applications by the
same inventor or assignee having overlapping
claims with the application being put into in-
terference see 709.01 and 1111.03.

## 1104 Jurisdiction of Interference

Rule 211. Jurisdiction of interference. (a) Upon
the institution and declaration of the interference, as
provided in rule 207, the Board of Patent Interferences
will take jurisdiction of the same, which will then
become a contested case.

(b) The primary Examiner will retain jurisdiction
of the case until the declaration of interference is
made.

The declaration of interference is made when
the Patent Interference Examiner mails the
notices of interference to the parties. The in-
terference is thus technically pending before
the Board of Patent Interferences from the
date on which the letters are mailed, and from
that date the files of the various applicants are
opened to inspection by other parties. Rule 226.

Throughout the interference, the interfer-
ence papers and application files involved are in
the keeping of the Service Branch except at
such times that action is required as for decision
on motions, final hearings, appeals, etc., when
they are temporarily in possession of the tri-
bunal before whom the particular question is
pending.

If, independent of that interference, action as
to one or more of the applications becomes neces-
sary, the Examiner requests jurisdiction of the
necessary application or applications from the
Commissioner but first forwards the letter (or
letters) to the Group Manager for approval.
See 1111.05 and Form at 1112.06(a). It is not
foreseen that the Primary Examiner will need
to take action for which he requires jurisdiction
of the entire interference. However, if circum-
stances arise which appear to require it, the
Primary Examiner should request jurisdiction
from the Board of Patent Interferences.

The Examiner never asks jurisdiction of a
patent file, but merely borrows it if needed, as,
where the patent is to be involved in a new
interference.

### 1105 Matters Requiring Decision by Primary Examiner During Inter- ference

Rule 231 Motions before the primary examiner. (a)
Within the period set in the notice of interference for
filing motions any party to an interference may file
a motion seeking :

'(1) To dissolve as to one or more counts, except that
such motion based on facts sought to be established
by affidavits or evidence outside of official records and
printed publications will not normally be considered,
and when one of the parties to the interference is a
patentee, no motion to dissolve on the ground that

(

the subject matter of the count is unpatentable to
all parties or is unpatentable to the patentee will be
considered, except that a motion to dissolve as to the
patentee may be brought which is limited to such mat-
ters as may be considered at final hearing (rule 258).
Where a motion to dissolve is based on prior art, serv-
ice on opposing parties must include copies of such
prior art.

(2) To amend the issue by addition or substitution
of new counts.

(3) To substitute any other application owned by
him as to the existing issue, or to include any other
application or patent owned by him as to any subject
matter other than the existing issue but disclosed in
his application or patent involved in the interference
and in an opposing party's application or patent in
the interference which should be made the basis of
interference between himself and such other party.
Copies of such other application must be served on
all other parties and the motion must be accompanied
by proof of such service.

(4) To shift the burden of proof, or to be accorded
the benefit of an earlier application which would not
change the order of the parties.

(5) To amend an involved application by adding or
removing the names of one or more inventors as pro-
vided in rule 45.

(b) Each motion must contain a full statement of
the grounds therefor and reasoning in support there-
of. Any opposition to a motion must be filed within
20 days of the expiration of the time set for filing
motions and the moving party may, if he desires, file
a reply to such opposition within 15 days of the date
the opposition was filed. If a party files a timely
motion to dissolve, any other party may file a motion
to amend within 20 days of the expiration of the time
set for filing motions. Service on opposing parties of
an opposition to a motion to amend which is based on
prior art must include copies of such prior art. In
the case of action by the primary examiner under rule
237, such motions may be made within 20 days from
the date of the primary examiner's decision on motion
wherein such action was incorporated or the date of
the communication giving notice to the parties of the
proposed dissolution of the interference.

(c) A motion to amend or to substitute another
application must be accompanied by an amendment
adding the claims in question to the application con-
cerned if such claims are not already in that applica-
tion.

(d) All proper motions will be transmitted to and
considered by the primary examiner without oral
argument. Requests for reconsideration will not be
entertained.

(e) In the determination of a motion to dissolve an
interference between an application and a patent, the
prior art of record in the patent file may be referred
to for the purpose of construing the issue.

(f) Upon the granting of a motion to amend and the
adoption of the claims by the other parties within a

time specified, or upon the granting of a motion to sub-
stitute another application, and after the expiration
of the time for filing any new preliminary statements,
a patent interference examiner shall redeclare the
interference or shall declare such other interferences
as may be necessary to include said claims. A prelim-
inary statement as to the added claims need not be
filed if a party states that he intends to rely on the
original statement and such a declaration as to added
claims need not be signed or sworn to by the inventor
in person. A second time for filing motions will not be
set and subsequent motions with respect to matters
which have been once considered by the primary ex-
aminer will not be considered.

An interference may be enlarged or dimin-
ished both as to counts and applications in-
volved, or may be entirely dissolved, by actions
taken under Rule 231 "Motions before the Pri-
mary Examiner" or under Rule 237 "Dissolu-
tion at the request of examiner". The action
may be a substitution of one or more counts,
the addition of counts or dissolution as to one or
more counts or as to all counts, a change in the
application by addition, substitution, or dissolu-
tion a shifting of the burden of proof, or a con-
version of an application by changing the num-
ber of inventors. See 1111.07. Decisions on
questions arising under this rule are made under
the personal supervision of the Primary
Examiner.

Examiners should not consider exparte,
when raised by an applicant, questions which
are pending before the Office in inter partes pro-
ceedings involving the same applicant or party
in interest. See 1111.01.

Occasionally the entire subject matter of the
interference may have been transferred to an-
other group between the time of declaring the
interference and the time that motions are trans-
mitted for consideration. If this has occurred,
after the second group has agreed to take the
case, the interference Service Branch should
be notified so that appropriate changes may
be made in their records.

### 1105.01 Briefs and Consideration of Motions

A party filing a motion is expected to incor-
porate his reasons with the motion so that an
initial brief is not contemplated although if
filed with the motion it would not be objection-
able. Under Rule 231(b) other parties have
twenty days from the expiration of the time for
filing motions for filing an opposition to a mo-
tion, and the moving party may file a reply brief
within fifteen days of the date such opposition
is filed. If a motion to dissolve is filed by one
party the other parties may file a motion to

amend within 20 days from the expiration of
the time set for filing motions and the same
times for opposition and reply brief are allowed
with respect to the filing date of the latter
motion.

After the expiration of the time for filing a
reply brief, motions filed under Rule 231 are
examined by a Patent Interference Examiner
who, if he finds them to be proper motions, will
transmit the case to the Primary Examiner for
consideration of the motions with an indication
of such motions as are improper under the rules
and which should not be considered if there be
any such. No oral hearing will be set. The
Primary Examiner should take up the motions
promptly and should render only a brief deci-
sion setting out in addition to the actual grant-
ing or denial of each motion only the basic con-
clusions upon which denial or granting is based.
A statement of these conclusions may be omitted
if they are obvious from the decision itself and
the motion. See 1105.06.

In motions of the types specified below the
Primary Examiner must consult with and ob-
tain the approval of a member of the Board of
Patent Interferences before mailing the deci-
sion. Motions requiring such consultation and
approval are :

Motions to amend where the matter of sup-
port for a count is raised in opposition or
the Examiner decides to deny the motion
for that reason,

Motions relating to the benefit of a prior
application,
Motions to dissolve on the ground that one
or more parties have no right to make the
counts,

Motions to dissolve on the ground of no inter-
ference in fact,

Motions to convert an application to a differ-
ent number of inventors, and

Motions to substitute or involve another ap-
plication in interference where the matter
of support for a count is raised in opposi-
tion or the Examiner decides to deny the
motion for that reason,

E
The name of the Board member to be consulted
will appear in pencil on the letter transmitting
the case to the Primary Examiner. The con-
sultation will normally be at the offices of the
Board of Patent Interferences. The Primary
Examiner should arrange a convenient time by
telephone. In the case of motions to amend
or to involve another application the Patent
Interference Examiner will examine any oppo-
sition which may have been filed and if the
question of right to make the proposed counts
as to any party is raised thereby, he will indi-
cate in his letter transmitting motions the nec-

essity for consultation. If such indication is.
not made there will be no necessity for consulta-
tion unless the Primary Examiner from his
own consideration concludes that one or more
parties cannot make one or more of the pro-
posed counts. In this case he should inquire
of the Clerk of the Board or a Patent Interfer-
ence Examiner as to which member to consult.

### 1105.02 Decision on Motion To Dis- solve

By the granting of a motion to dissolve, one
or more parties may be eliminated from the
interference; or certain of the counts may be
eliminated. Where the interference is dis-
solved as to one or more of the parties but at
least two remain, the interference is returned
to the Primary Examiner prior to resumption
of proceedings before the Patent Interference
Examiner for removal of the files of the parties
who are dissolved out. Ex parte action is re-
sumed as to those applications and the interfer-
ence is continued as to the remaining parties.
The ex parte action then taken in each rejected
application should conform to the practice set
forth hereinafter under the heading "Action
After Dissolution" (1110). See 1302.12 with
respect to listing references discussed in motion
decisions.

With respect to a motion to dissolve on the
ground that one or more parties cannot make
one or more counts it should be kept in mind
that once the interference is dissolved as to a
count any appeal from a rejection based thereon
is ex parte and the views of other parties in the
interference will not be heard. In order to
preserve the inter partes forum for considera-
tion of this matter a motion to dissolve on this
ground should not be granted where the deci-
sion is a close one but only where there is clear
basis for it.

It should be noted that if all parties
agree upon the same ground for dissolution,
which ground will subsequently be the basis for
rejection of the interference count to one or
more parties, the interference should be dis-
solved pro forma upon that ground, without
regard to the merits of the matter. This agree-
ment among all parties may be expressed in the
motion papers, in the briefs, or in papers di-
rected solely to that matter. See Buchli v. Ras-
mussen, 339 O.G. 223; 1925 C.D. 75, and Tilden
v. Snodgrass, 1923 C.D. 30; 309 O.G. 477 and
Gelder v. Henry, 77 U.S.P.Q. 223.

Affidavits relating to the disclosure of a
party's application as, for example, on the
matter of operativeness or right to make,
should not be considered but affidavits relat-

(

ing to the prior art may be considered by anal-
ogy to Rule 132.

If there is considerable doubt as to whether
or not a party's application is operative and it
appears that testimony on the matter may be
useful to resolve the doubt, a motion to
dissolve may be denied so that the interference
may continue and testimony taken on the point.
See Bowditch v. Todd, 1902 C.D. 27; 98 O.G.
792 and Pierce v. Tripp v. Powers, 1923 C.D.
69 at 72, 316 O.G. 3.

Where the effective date of a patent or pub-
lication (which is not a statutory bar) is ante-
dated by the effective filing dates or the alle-
gations in the preliminary statements of all
parties, then the anticipatory effect of that
patent or publication need not be considered
by the Examiner at this time, but the refer-
ence should be considered if at least one party
fails to antedate its effective date by his own
filing date or the allegations in his prelimi-
nary statement. See Forsyth v. Richards, 1905
C.D. 115; 115 O.G. 1327 and Simons v. Dunlop,
103 U.S.P.Q. 237.

In deciding motions under Rule 231 (a) (1)
the Examiner should not be misled by citation
of decisions of the Court of Customs and Pat-
ent Appeals to the effect that only priority and
matters ancillary thereto will be considered
and that patentability of the counts will not
be considered. These court decisions relate
only to the final determination of priority,
after the interference has passed the motion
stage; in the ordinary case a motion to dis-
solve may attack the patentability of the count
and need not be limited to matters which are
ancillary to priority.

### 1105.03 Decision on Motion To Amend or To Add or Substi- tute Other Application

Motions by the interfering parties may be
made under Rule 231 (a) (2) and (3) to add or
substitute counts to the interference and also to
substitute or involve in interference other ap-
plications owned by them. It should be noted
that, if the Examiner grants a motion of this
character, he sets a time for the nonmoving
parties to present the allowed proposed counts
in their applications, if necessary, and also sets
a time for all parties to file preliminary state-
ments as to the allowed proposed counts. An
illustrative form for these requirements is given
at 1105.06. If the claims are made by some or
all of the parties within the time limit set, the
interference is reformed or a new interference
is declared by the Patent Interference Exam-
iner.

If a motion under Rule 231(a) (3) relates to

an application in issue, the application should
be withdrawn from issue prior to decision on
the motion only if the motion is transmitted to
the Primary Examiner after the final fee has
been paid or the date of transmittal is so close
to the ultimate date for paying the final fee that
the motion cannot be decided prior to that date.
For form see 1112.04.

The case should be withdrawn from issue
even though the Examiner may be of the opin-
ion that the motion will probably be denied,
but this withdrawal does not reopen the case
to further ex parte prosecution and if the mo-
tion is denied the case is returned to issue with
a new notice of allowance.

It will be noted that Rule 231 (a) (3) does not
specify that a party to the interference may
bring a motion to include an application or
patent owned by him as to subject matter, in
addition to the existing issue, which is not dis-
closed both in his application or patent already
in the interference and in an opposing party's
application or patent in the interference. Con-
sequently the failure to bring such a motion
will not be considered by the Examiner to re-
sult in an estoppel against any party to an
interference as to subject matter not disclosed
in his case in the interference. On the other
hand, if such a motion is brought during the
motion period, secrecy as to the application
named therein is deemed to have been waived,
access thereto is given to the opposing parties
and the motion may be transmitted by the Pat-
ent Interference Examiner; if so transmitted, it
will be considered and decided by the Primary
Examiner without regard to the question of
whether the moving party's case already in the
interference discloses the subject matter of the
proposed claims.

## CONCURRENCE OF ALL PARTIES

Contrary to the practice which obtains when
all parties agree upon the same ground for
dissolution, the concurrence of all parties in a
motion to amend or to substitute or add an ap-
plication does not result in the automatic grant-
ing of the motion. The mere agreement of the
parties that certain proposed counts are patent-
able does not relieve the Examiner of his duty
to determine independently whether the pro-
posed counts are patentable and allowable in
the applications involved. Even though no
references have been cited against proposed
counts by the parties, it is the Examiner's duty
to cite such references as may anticipate the
proposed counts, making a search for this pur-
pose if necessary.

Also, care should be exercised in deciding
motions that any counts to be added to the
existing interference differ materially from the

original counts and from each other, and that
counts of additional interferences likewise dif-
fer materially from the counts of the first inter-
ference and from each other 1101.01 (j).

A good test to apply is whether different
proofs may be required to prove priority as, for
example, in the case of a generic original count
and a proposed count to a species, or vice versa.
If the answer is affirmative, the motion to add
the proposed count should be granted. When
a patent is involved, all of the patent claims
which the applicant can make must be included
as counts of the interference.

The Examiner should also be careful not to
refuse acceptance of a count broader than orig-
inal counts solely on the ground that it does
not differ materially from them. If that is in
fact the case, and the proposed count is patent-
able over the prior art, the Examiner should
grant the motion to the extent of substituting
the proposed count for the broadest original
count so that the parties will not be limited in
their proofs to include one or more features
which are unnecessary to patentability of the
count. Where there is room for a reasonable
difference of opinion as to whether two claims
are materially different (or patentably distinct)
it is advisable to add the proposed claim to the
issue rather than to substitute it for the original
count. This will allow the parties to submit
priority evidence as to both counts.

Affidavits are occasionally offered in support
of or in opposition to motions to add or substi-
tute counts or applications. The practice here
is the same as in the case of affidavits concern-
ing motions to dissolve that is, affidavits relat-
ing to disclosure of a party's application as, for
example, on the matter of operativeness or right
to make, should not be considered, but affidavits
relating to the prior art may be considered by
analogy to Rule 132.

If a motion under Rule 231 (a) (2) or (3) is
denied on the basis of a reference which is not
a statutory bar, and which is cited for the first
time by the Examiner in his decision, the de-
cision may be modified and the motion granted
upon the filing of proper affidavits under Rule
131 in the application file of the party involved.
This is by analogy to Rule 237, although nor-
mally, request for reconsideration of decisions
on motions under Rule 231 will not be enter-
tained. Rule 231(d). These affidavits should
not be opened to the inspection of opposing
parties and no reference should be made to the
dates of invention set forth therein other than
the mere statement that the effective date of the
reference has been overcome. As in the case of
other affidavits under Rule 131, they remain
sealed until the preliminary statements for the
new counts are opened.

A member of the Board of Patent Interfer-
ences must be consulted in connection with mo-
tions to add or substitute one or more counts
or applications where the matter of right to
make one or more counts is raised in an opposi-
tion to the motion or the Primary Examiner
wishes to deny a motion for that reason al-
though it has not been raised by a party. In
the event the consultation ends in disagreement,
the matter will be resolved by the First Assist-
ant Commissioner.

### 1105.04 Decision on Motion Relating to Benefit of a Prior Applica- tion Under Rule 231(a) (4)

The Primary Examiner also decides motions
relating to benefit of a prior application under
Rule 231(a) (4). These may involve shifting
the burden of proof or merely giving a party
the benefit of an earlier date which will not
change the order of the parties. They may
result in judgment or order to show cause
against a junior party whose preliminary state-
ment does not allege dates prior to the earlier
application or, in the case of a junior party, they
may shorten the period for which diligence must
be proved or change the burden of proof from
that of beyond reasonable doubt to a mere pre-
ponderance of the evidence.

If there is doubt whether an earlier appli-
cation discloses the invention involved in the
interference, there being a reasonable ground
for denying the party's right to it, a party
should not be given the earlier record date.
The denial of a motion to shift the burden of
proof does not deprive a party of the benefit
of the earlier application upon which the mo-
tion was based. He may have the matter re-
viewed at final hearing (Rule 258) and he may
introduce that application as part of his evi-
dence to be subject to argument by all parties
and to be considered by the Board of Patent
Interferences. See Greenawalt v. Mark, 1904
C.D. 352; 111 O.G. 2224.

In deciding a motion of this nature, it is usu-
ally advisable first to determine exactly which
counts will be involved in the final redeclaration
of the interference. The practice in deciding
the motion should then follow that set forth
in the case of In re Redeclaration of Interfer-
ences Nos. 49,635; 49,636; 49,866; 1926 C.D.
75; 350 O.G. 3. In accordance with the last
stated case, no party in an interference should
be made junior as to some counts and senior as
to others. Therefore, if, in considering a mo-
tion to shift the burden of proof, it is found
that the moving party is entitled to the benefit
of an earlier filed application as to some counts
but not as to other counts in the same interfer-
ence, the motion should be denied.

(

In accordance with present practice an ear-
lier filed, allowable application disclosing a
single species (including chemical composi-
tions) is a constructive reduction to practice
of a count expressing the genus provided con-
tinuity of disclosure has been maintained be-
tween the earlier application and the involved
application either by copendency or by a chain
of successively copending applications. Where
such an application is a constructive reduction
to practice, the benefit of its filing date may
be obtained by a junior party by a motion to
shift the burden of proof. See McBurney v.
Jones, 104 U.S.P.Q. 115; Den Beste v. Martin,
1958 C.D. 178, 729 O.G. 724; Fried et al. v.
Murray et al., 1959 C.D. 311, 746 O.G. 563.

With respect to the shifting of the burden
of proof it should be noted that the order of
taking testimony should be placed upon the
applicant last to file unless all the counts of the
interference read upon an earlier application
which antedates that of the other party.

For proving of foreign filing for "Normal"
Priority see 201.14, 201.15 and for the determi-
nation of rights under Public Law 690 see
201.16.

### 1105.05 Dissolution on Primary Ex- aminer's Own Request Under Rule 237

Rule 237. Dissolution at the request of examiner.
If, during the pendency of an interference, a reference
or other reason be found which, in the opinion of the
primary examiner, renders all or part of the counts
unpatentable, the attention of the Board of Patent
Interferences shall be called thereto. The interference
may be suspended and referred to the primary exam-
iner for consideration of the matter, in which case the
parties will be notified of the reason to be considered.
Arguments of the parties regarding the matter will
be considered if filed within 20 days of the notifica-
tion. The interference will be continued or dissolved in
accordance with the determination by the primary
examiner. If such reference or reason be found while
the interference is before the primary examiner for
determination of a motion, decision thereon may be
incorporated in the decision on the motion, but the
parties shall be entitled to reconsideration if they
have not submitted arguments on the matter.

Rule 237 covers dissolution of an interference
on the Primary Examiner's own motion if he
discovers a reference or other reason which
renders all or part of the counts unpatentable.
Two procedures are available under this rule:
First, if the Primary Examiner finds a refer-
ence or other reason for terminating the inter-
ference in whole or in part the interference is
before him for determination of a motion, deci-

sion on this newly discovered matter "may be
incorporated in the decision on the motion, but
the parties shall be entitled to reconsideration
"if they have not submitted arguments on the
matter" (Rule 237). This same practice obtains
when the Primary Examiner discovers a new
reason for holding counts proposed under Rule
231(a) (2) or (3) unpatentable. Under
this practice, the Primary Examiner should
state that reconsideration may be requested
within the time specified in Rule 244(c).
(Basis : Notice of May 29, 1937.)

Second, if the Primary Examiner finds a ref-
erence or other reason for terminating the inter-
ference in whole or in part when the interfer-
ence is not before him for determination of a
motion, he should call the attention of the Ex-
aminer of Interferences to the matter. The
Primary Examiner should include in his letter
to the Interference Examiner a statement ap-
plying the reference or reason to each of the
counts of the interference which he deems un-
patentable and should forward with the origi-
nal signed letter a copy thereof for each of the
parties of the interference. Form at 1112.08.
(Basis: Notice of June 14, 1938.)

If preliminary statements have become open
to all parties, Rule 227, or if not and a party
authorizes the Primary Examiner to inspect his
preliminary statement, effect may be given
thereto in considering the applicability of a
reference to the count under Rule 237. See
1105.02.

The Patent Interference Examiner may sus-
pend the interference and refer the case to the
Primary Examiner for his determination of the
question of patentability, which is inter partes
as in the case of a motion to dissolve. Briefs
may be filed within twenty days of the notifi-
cation of the parties of the referral, but no
hearing will be set. Decision is prepared and
mailed by the Primary Examiner as in the case
of a motion to dissolve.

In cases involving a patent and an appli-
cation where the Primary Examiner raises the
question of patentability of the count, atten-
tion is directed to Noxon v. Halpert, 128
U.S.P.Q. 481.

If, in an interference involving two or more
applications, a reference is brought to the at-
tention of the Examiner by one of the parties
to the interference, that fact should be made
of record by the Examiner in his letter to the
Examiner of Interferences under Rule 237.

If, in an interference involving an applica-
tion and a patent, the applicant calls attention
to a reference which he states anticipates the
issue of the interference, the Examiner of
Interferences will forthwith dissolve the inter-
ference, and the Primary Examiner will there-

upon reject the claim or claims to the applicant
on his own admission of nonpatentability with-
out commenting on the pertinency of the refer-
ence. Such applicant is of course also estopped
from claiming subject matter not patentable
over the issue. A reference cited by the pat-
entee will be ignored. A reference newly dis-
covered by the Primary Examiner is treated
in accordance with 1101.02(f), Notice of
March 15, 1950.

#### 1105.06 Form of Decision Letter

In order to reduce the pendency of applica-
tions involved in interference proceedings, Pri-
mary Examiners are directed to render deci-
sions on motions within 30 days of the date of
transmittal to them.

The decision should separately refer to and
decide each motion which has been transmitted
by merely a statement of decision as granted
or denied, supplemented by a brief statement
of the conclusion of fact or law or both which
provided the basis for the decision to the extent
that this is not obvious from the statement of
the motion. Different grounds urged for seek-
ing a particular action, such as dissolution for
example, should be referred to and decided as
separate motions. The granting or denial of a
motion to dissolve on a single ground should
ordinarily need no statement of conclusion.
When a motion to dissolve on the ground of
no right to make urges lack of support for
more than one portion of a count and is granted,
the Examiner should indicate which portions
of the count he considers not to be disclosed in
the application in question. The same practice
applies in denying a party the benefit of prior
application.

Motions to amend or to substitute an appli-
cation do not require any statement of conclu-
sion if granted, but a denial should be supple-
mented by a statement of the conclusion on
which denial is based. If an application is to
be added or substituted and the Examiner has
determined that it is entitled to the filing date
of a prior application by virtue of a divisional,
continuation or continuation-in-part relation-
ship, the decision should so state.

Examples of the above are given in the
following:

The motion by Brown to dissolve on the
ground of unpatentability to all parties over
X in view of Y is denied.

The motion by Brown to dissolve on the
ground that Jones has no right to make the
count is granted. It is considered that the
expression "
" is not supported by
the Jones disclosure.

Rev. 5, Jul. 1965

The motion by Jones to substitute proposed
count 2 for the present count is granted.

The motion by Jones to add proposed count 3
is denied. The expression "
" is con-
sidered to be ambiguous.

The motion by Smith to shift the burden of
proof is granted.

It is usually advisable to decide motions to
dissolve first, then motions to amend or to sub-
stitute an application, and finally motions to
shift the burden of proof or relating to benefit
of an earlier application taking into account
any changes in the issue or the parties which
may have been effected by the granting of other
motions. If a motion to shift the burden of
proof is granted the change in the order of par-
ties should be stated.

If a motion to amend is granted the decision
should close with paragraphs setting times for
nonmoving parties to present claims corre-
sponding to the newly admitted counts and for
all parties to file preliminary statements as to
them. Such paragraphs should take the fol-
lowing form :

Should the parties Smith and Brown desire
to contest priority as to proposed count 2, they
should assert it by amendment to their respec-
tive applications on or before __________ , and
failure to so assert it within the time allowed
will be taken as a disclaimer of the subject mat-
ter thereof.

On or before
the statements de-
manded by Rules 215 et seg. with respect to
proposed count 2 must be filed in a sealed en-
velope bearing the name of the party filing it
and the number and title of the interference.
See also Rule 231(f), second sentence.

If a motion to substitute another commonly
owned application by a different inventor is
granted, the decision should include a para-
graph setting a time for the substituted party
to file a preliminary statement in the following
form :

The party
to be substituted for
the party
must file on or before

a preliminary statement as required
by Rules 215 et seg. in a sealed envelope bearing
his name and the number and title of the inter-
ference.

The decision should close with a warning
statement such as the following :

No reconsideration (Rule 231(d) second sen-
tence).

The time periods fixed in the decision for
copying allowed proposed counts and for filing
preliminary statements should ordinarily be the
same and a period of 30 days should suffice in
most cases. However, where mailing time is
materially longer, as to the West Coast or for-
eign countries, or when an attorney and inven-

tor are widely separated, this time may be in-
creased to as much as sixty days.

Where there has been consultation with a
member of the Board of Patent Interferences as
required by 1105.01, the word "APPROVED"
and spaced below this the Board Member's
name who was consulted should be typed at the
lower left hand corner of the last page. The
Board Member will sign in the space below
"APPROVED." If less than all of the
motions decided required consultation, under
1105.01, the word "APPROVED" should be
followed by an indication of matters requiring
such approval. For example,

"Approved as to the motion to shift the
burden of proof."

After the decision is signed by the Primary
Examiner and the proper clerical entry made,
the complete interference file is forwarded to
the Service Branch of the Board of Patent
Interferences for dating and mailing or for the
Board Member's signature if there has been a
consultation.

The motion decision is entered in the index
of the interference file; it should include the
following information and be set forth in this
order:

Date _____ "Dec. of Pr. Exr." _____ Granted
If some of the motions have been granted and
others denied, the last entry will be "Granted
and Denied", and of course, if all the motions
have been denied, the last entry will be "De-
nied." If a date for copying allowed proposed
counts and for filing preliminary statements
has been set, this should also be indicated at the
end of the line by

"Amendment and Statement due
"
Below are examples of entries which should
be made in the interference brief in the section
entitled "Decisions on Motion" (Form PO-222)
in each case involved in the interference :

Dissolved

Dissolved as to counts 2 and 3

Dissolved as to Smith
Counts 4 and 5 admitted

These entries should be verified by the pri-
mary Examiner.

Determination of the next action to be
taken is made by the Service Branch of the
Board. Examples of such action may be redec-
laration, entry of judgment, or setting of time
for taking testimony and for filing briefs for
final hearing.

#### 1105.07 Petition for Reconsideration of Decision

Petitions or requests for reconsideration of a
decision on motions under Rule 231 or 237 will
not be given consideration. Rule 231(d) sec-
ond sentence. An exception is the case where

under Rule 237 the Primary Examiner for the
first time takes notice of a ground for dissolu-
tion while the interference is before him for
consideration of motions by the parties and in-
corporates this matter in his decision so that the
parties have had no opportunity to present ar-
guments theron. In this case the Examiner's
decision should include a statement to the effect
that reconsideration may be requested within
the time specified in Rule 244(c). See 1105.05.

#### 1106 Redeclaration of Interferences and Additional Interferences

Redeclaration of interferences where necessi-
tated by a decision on motions under Rule 231
will be done by a Patent Interference Examiner,
the papers being prepared by the interference
Service Branch. The decision signed by the
Primary Examiner will constitute the author-
ization. The same practice will apply to the
declaration of any new interference which may
result from a decision on motions.

#### 1106.01 After Decision on Motion

Various procedures are necessary after de-
cision on a motion. The following general
rules may be stated :

(1) If the total result of the motion decision
consists solely in the elimination of counts, the
elimination of parties or a shifting of the bur-
den of proof, no redeclaration is necessary.
The motion decision itself constitutes the pa-
per deleting counts or parties and is likewise
adequate notice of the shifting of the burden
of proof.

(2) If the motion decision results in any
addition or substitution of parties or applica-
tions or the addition or substitution of counts,
then redeclaration is necessary. If redecla-
ration is necessary, the information falling
within category (1) is also included in the re-
declaration papers. The old counts should re-
tain their old numbers for ease of identification.

(3) Since all of the necessary information
concerning an application to be added or sub-
stituted should appear in the motion decision
or on the face of the application file no separate
communication from the Primary Examiner to
the Patent Interference Examiner is necessary
or desired.

The Patent Interference Examiner will de-
termine whether or not the nonmoving parties
have copied the proposed counts which have
been admitted within the time allowed and if
they have, he will proceed with the redeclara-
tion. If a party fails so to copy a proposed
count and thus will not be included in inter-
ference as to such count the application will
be returned to the Primary Examiner by the
Patent Interference Examiner with a memo-
randum explaining the circumstances, unless

the original interference will continue as to
one or more counts. In the latter case the ap-
plication concerned will be retained with the
original interference and a new interference
will be declared (assuming at least one other
nonmoving party asserts the proposed count)
on the new count and including only those par-
ties who have asserted it in their applications.

In declaring a new interference as a result of
a motion decision the notices to the parties and
the declaration sheet will include a statement to
the following effect :

"This interference is declared as the result
of a decision on motions in Interference No.
"

In this case also, no times for filing preliminary
statements or motions will be set.

#### 1106.02 By Addition of New Party by Examiner

Rule 238 states the procedure to be followed
when the Examiner finds, or there is filed, other
or new applications interfering as to some or
as to all of the counts. The procedure when
any testimony has been taken differs consider-
ably from the procedure when no testimony has
been taken. However, the difference does not
involve the Primary Examiner but rather af-
fects the action taken by the Patent Interfer-
ence Examiner.

The Primary Examiner forwards Form
PO-850 accompanied by the additional appli-
cation to the interference Service Branch,
giving the same information regarding the
additional application as in connection with
an original declaration (1102.01) and also in-
cluding the number of the interference. If no
testimony has been taken, the Patent Interfer-
ence Examiner will as a matter of course sus-
pend the interference and redeclare it to include
the additional party setting such times for the
new party or all parties as is consistent with the
stage of proceedings at that point. If the addi-
tional party is to be added as to only some of
the counts, the Patent Interference Examiner
will declare a new interference as to those counts
and reform the original interference omitting
the counts which are included in the new one.
In this case the fact that the issue was in another
interference should be noted in all letters in the
new interference.

## 1107 Examiner's Entry in Interference File Subsequent to Interference

An interference is terminated either by dis-
solution or by an award of priority to one of
the parties. In either case the interference is
returned with the entire record to the Exam-
iner as soon as the decision or judgment has
become final.

After the files have been returned to the
examining division the Primary Examiner is
required to make an entry on the index in the
interference file on the next vacant line that
the decision has been noted, such as by the
words "Decision Noted" and initialed by him.
The interference file is returned to the Service
Branch of the Board of Patent Interferences
when the examiner is through with it. There it
will be checked to see that such note has been
made and initialed before filing away the inter-
ference record.

## 1108 Entry of Amendments Filed in Connection With Motions

This section is limited to the disposition of
amendments filed in connection with motions
in an application involved in interference, after
the interference has terminated.

The manner of treating other amendments
which are filed in an application during the
course of the interference, is discussed in a
separate section (1111.05).

Under Rule 231(c) an applicant is required
to submit with his motion to amend the issue
or to substitute an application, as a separate
paper, and amendment embodying the proposed
claims if the claims are not already in the ap-
plication concerned. In the case of an appli-
cation involved in the interference, this amend-
ment is not entered at that time but is placed
in the application file.

If the motion is granted the amendment is
entered at the time decision on the motion is
rendered. If the motion is not granted, the
amendment, though left in the file, is not en-
tered and is so marked.

If the motion is granted only in part and
denied as to another part, only so much of the
amendment as is covered in the grant of the
motion is entered, the remaining part being in-
dicated and marked "not entered" in pencil.
(See Rule 266.)

In each instance the applicant is informed of
the disposition of the amendment in the first
action in the case following the termination of
the interference. If the case is otherwise ready
for issue, applicant is notified that the applica-
tion is allowable and the Notice of Allowance
will be sent in due course, that prosecution is
closed and to what extent the amendment has
been entered.

As a corollary to this practice, it follows that
where prosecution of the winning application
had been closed prior to the declaration of the
interference, as by being in condition for issue,
that application may not be reopened to further
prosecution following the interference, even
though additional claims had been presented
under Rule 231(a) (2). The interference pro-

(

ceeding was not such an Office action as relieved
the case from its condition as the doctrine of
Ex parte Quayle, 1935 C.D. 11; 453 O.G. 213.
(Basis: Circular of February 20, 1936.)

It should be noted at this piont that, under
the provisions of Rule 262(d), the termination

of an interference on the basis of a disclaimer,
concession of priority, abandonment of the in-
vention, or abandonment of the contest filed by
an applicant operates without further action as
a direction to cancel the claims involved from
the application of the party making the same.

MANUAL OF PATENT EXAMINING PROCEDURE

☒
(

☒
(
☒
190 (Pages 191 and 192 omitted. )

## 1109 Action After Award of Priority

Under 35 U.S.C. 135, the Commissioner may
at once issue a patent to the applicant who is
adjudged by the Board of Patent Interferences
to be the prior inventor, without waiting for
appeal by any loser. However, in ordinary
cases it is the policy of the Office not to issue a
patent to the winning party during the period
within which appeal may be taken to the Court
of Customs and Patent Appeals, or during the
pendency of such appeal. Therefore, the files
are not returned to the examining group until
after the termination of the appeal period,
or the termination of the appeal, as the case
may be. Jurisdiction of the Examiner is auto-
matically restored with the return of the files,
and the cases of all parties are subject to such
ex parte action as their respective conditions
may require, even though, where no appeal to
the Court of Customs and Patent Appeals was
filed, the losing party to the interference may
file a suit under 35 U.S.C. 146. In a case where
a patentee is the losing party, and the Office is
notified that a civil action under 35 U.S.C. 146
has been initiated, the files will not be returned
to the examining group until after that action
has been terminated. The date when the pri-
ority decision becomes final does not mark the
beginning of a statutory period for response by
the applicant. See Ex parte Peterson, 1941
C.D. 8, 525 O.G. 3.

If an application had been withdrawn from
issue for interference and is again passed to
issue, a notation "Re-examined and passed for
issue" is placed on the file wrapper together
with a new signature of the Primary Exam-
iner in the box provided for this purpose.
Such a notation will be relied upon by the
Issue and Gazette Branch as showing that the
application is intended to be passed for issue
and make it possible to screen out those appli-
cations which are mistakenly forwarded to the
Issue and Gazette Branch during the pendency
of the interference.

See 1302.12 with respect to listing references
discussed in motion decisions.

## 1109.01 The Winning Party

The winning party may be sent to issue de-
spite the filing of a suit under 35 U.S.C. 146
by his opponent in an interference solely in-
volving pending applications. Monaco v. Wat-
son, 106 U.S. App. D.C. 142; 270 F. 2d 335; 122
U.S.P.Q. 564. In an interference involving a
patent where the winning party is an applicant,
the Office will not send the application to issue
while a suit is pending under 35 U.S.C. 146.
Monsanto v. Kamp et al., 146 U.S.P.Q. 431.

In the case of the winning party, if his
application was not in allowable condition
when the interference was formed and has
since been amended, or if it contains an un-
answered amendment, or if the rejection stand-
ing against the claims at the time the interfer-
ence was formed was overcome by reason of
the award of priority, as an interference in-
volving the application and a patent which
formed the basis of the rejection, the Exam-
iner forthwith takes the application up for
action.

If, however, the application of the winning
party contains an unanswered Office action, the
Examiner at once notifies the applicant of this
fact and requires response to the Office action
within a shortened period of two months
running from the date of such notice. See Ex
parte Peterson, 1941 C.D. 8; 525 O.G. 3. This
procedure is not to be construed as requiring
the reopening of the case if the Office action
had closed the prosecution before the Exam-
iner. (See Notice of April 14, 1941, 710.02(b).)

The winning party, if the prosecution of his
case had not been closed, generally may be
allowed additional and broader claims to the
common patentable subject matter.) Note,
however, In re Hoover Co., Etc., 1943 C.D.
338; 553 O.G. 365.) Having won the interfer-
ence, he is not denied anything he was in pos-
session of prior to the interference, nor has he
acquired any additional rights as a result of
the interference. His case thus stands as it was
prior to the interference. If the application
was under final rejection as to some of its
claims at the time the interference was formed,
the institution of the interference acted to sus-
pend, but not to vacate, the final rejection.
After termination of the interference a letter
is written the applicant, as in the case of any
other action unanswered at the time the inter-
ference was instituted, setting a shortened pe-
riod within which to file an appeal or cancel
the finally rejected claims.

## 1109.02 The Losing Party

The application of each of the losing parties
following an interference terminated by a judg-
ment of priority is acted on at once. The
judgment is examined to determine the basis
therefor and action is taken accordingly.

If the judgment is based on a disclaimer,
concession of priority, or abandonment of the
invention filed by the losing applicant, such
disclaimer, concession of priority, or abandon-
ment of the invention operates "without fur-
ther action as a direction to cancel the claims

involved from the application of the party
making the same" (Rule 262(d) ). Abandon-
ment of the contest has a similar result. See
1110. The interference counts thus disclaimed,
conceded, or abandoned are accordingly can-
celled from the application of the party filing
the document which resulted in the adverse
judgment.

If the judgment is based on grounds other
than those referred to in the preceding para-
graph, the claims corresponding to the inter-
ference counts in the application of the losing
party should be treated in accordance with
Rule 265, which provides that such claims
"stand finally disposed of without further ac-
tion by the examiner and are not open to fur-
ther ex parte prosecution." Accordingly, a
pencil line should be drawn through the claims
as to which a judgment of priority adverse to
applicant has been rendered, and the words
"Rule 265" should be written in the margin to
indicate the reason for the pencil line. If these
claims have not been cancelled by the applicant
and the case is otherwise ready for issue, these
notations should be replaced by a line in red
ink and the words "Rule 265" in red ink before
passing the case to issue, and the applicant
notified of the cancellation by an Examiner's
Amendment. If an action is necessary in the
application after the interference, the applicant
should be informed that "Claims (designated
by numerals), as to which a judgment of pri-
ority adverse to applicant has been rendered,
stand finally disposed of in accordance with
Rule 265."

If, as the result of one or both of the two
preceding paragraphs all the claims in the ap-
plication are eliminated, a letter should be
written informing the applicant that all the
claims in his case have been disposed of, indi-
cating the circumstances, that no claims remain
subject to prosecution, and that the application
will be sent to the abandoned files with the
next group of abandoned applications. Pro-
ceedings are terminated as of the date appeal
or review by civil action was due if no appeal
or civil action was filed.

Except as noted in the next paragraph (judg-
ment based solely on ancillary matters), any
remaining claims in each defeated party's case
should be reviewed in connection with the win-
ning party's disclosure. Any claim in a losing
party's case not patentable over the winning
party's disclosure, either by itself or in con-
junction with art, should be rejected. Where
the winning party is an applicant, reference
should be made only to the application of
the winning party in Interference
(Name)
but the serial number or the filing date
No.

of the other case should not be included in the
Office Action. However, a losing applicant
may avoid a rejection based on unclaimed dis-
closure of a winning patentee. When notice
is received of the filing of a suit under 35
U.S.C. 146, further action is withheld on the
application of the party filing the suit. No let-
ter to that effect need be sent.

When the award of priority is based solely
upon ancillary matters, as right to make, and
is in favor of the junior party, the claims of
the senior party, even though the award of
priority was to the junior party, are not sub-
ject to rejection on the ground of estoppel,
through failure to move under Rule 231 (a) (2)
or on the disclosure of the junior party as prior
art (Rule 257).

If the losing party's case was under rejection
at the time the interference was declared, such
rejection is ordinarily repeated (either in full
or by reference to the previous action) and, in
addition, rejections as unpatentable over the
issue, unpatentable over the winning party's
disclosure, or any other suitable rejections are
made. If it was under final rejection or ready
for issue, his right to reopen the prosecution is
restricted to subject matter related to the is-
sue of the interference.

Where the losing party failed to get a copy
of his opponent's drawing or specification dur-
ing the interference, he may order a copy
thereof to enable him to respond to a rejection
based on the successful party's disclosure. Such
order is referred to the Chief of the Docket
Branch who has authority to approve orders of
this nature.

Where the rejection is based on the issue of
the interference, there is no need for the ap-
plicant to have a copy of the winning party's
drawing, for the issue can be interpreted in
the light of the applicant's own drawing as
well as that of the successful party.

It may be added that rejection on estoppel
through failure to move under Rules 231(a)
(2) and (3) may apply where the interference
terminates in a judgment of priority as well as
where it is ended by dissolution. See 1110.
However, Rule 231(a) (3) now limits the doc-
trine of estoppel to subject matter in the cases
involved in the interference. See 1105.03.

## 'I110 Action After Dissolution

After dissolution of an interference any
amendments which accompanied motions to
dissolve are entered to the extent that the mo-
tions were not denied. See 1108. See 1302.12
with respect to listing references discussed in

(

motion decisions. If the grounds for dissolu-
tion are also applicable to the non-moving par-
ties, e.g., unpatentability of the subject matter
of the interference, the Examiner should, on
the return of the files to his division, reject in
each of the applications of the non-moving
parties the claims corresponding to the counts

of the interference on the grounds stated in
the decision. It is proper to refer to the "ap-
plication of __________ , an adverse party in
Interference
No.

(Name)
" but neither the serial
number nor the filing date of such application
should be included in the Office Action.

If an application was in condition for allow-
ance or appeal prior to the declaration of the
interference, the matter of reopening the prose-
cution after dissolution of the interference
should be treated in the same general manner
as after an award of priority. (See 1109.01
and 1109.02.)

## 1110.01 Action after Dissolution -- By Termination Paper Filed Un- der Rule 262 (b)

Dissolution of an interference on the basis of
an abandonment of the contest operates as a
direction to cancel the involved claims from
that party's application (Rule 262(d) ).

If all the claims in an application are elim-
inated in accordance with the practice de-
scribed in the foregoing paragraphs, see the
fourth paragraph of 1109.02 for the action to
be taken.

Rule 262 (b) reads in part :

Upon the filing of such abandonment of the contest
or of the application, the interference shall be dissolved
as to that party, but such dissolution shall in subse-
quent proceedings have the same effect with respect to
the party filing the same as an adverse award of
priority.

Under these circumstances, it should be noted
that, pursuant to the last sentence of Rule
262 (b), supra, the party who abandons the con-
test or the application stands on the same foot-
ing as the losing party referred to in Section
1109.02.

### 1110.02 Action After Dissolution Un- der Rule 231 or 237

If, following the dissolution of the interfer-
ence under these circumstances, any junior
party files claims that might have been included
in the issue of the interference such claims
should be rejected on the ground of estoppel.
The senior of the parties, in accordance with
Rule 257, is exempted from such rejection.
Where it is only the junior parties to the inter-
ference that have common subject matter addi-
tional to the subject matter of the interference,
the senior one of this subgroup is free to claim
this common subject matter. Rule 231 (a) (3)
now limits the doctrine of estoppel to subject
matter in the cases involved in the interference.
See 1105.03.

### 1111.01 Interviews

Where an interference is declared all ques-
tions involved therein are to be determined
inter partes. This includes not only the ques-
tion of priority of invention but all questions

relative to the right of each of the parties to
make the claims in issue or any claim suggested
to be added to the issue and the question of
the patentability of the claims.

The Examiners are admonished that inter
partes questions should not be discussed ex
parte with any of the interested parties and
that they should so inform applicants or their
attorneys if any attempt is made to discuss
ex parte these inter partes questions. (Basis:
Notice of March 2, 1935.)

### 1111.02 Record in Each Interference Complete

When there are two or more interferences
pending in this Office relating to the same sub-
ject matter, or in which substantially the same
applicants or patentees are parties thereto, in
order that the record of the proceedings in each
particular interference may be kept separate
and distinct, all motions and papers sought to
be filed therein must be titled in and relate only
to the particular interference to which they be-
long, and no motion or paper can be filed in any
interference which relates to or in which is
joined another interference or matter affecting
another interference.

The Examiners are also directed to file in
each interference a distinct and separate copy
of their actions, so that it will not be necessary
to examine the records of several interferences
to ascertain the status of a particular case.

This will not, however, apply to the testi-
mony. All papers filed in violation of this prac-
tice will be returned to the parties filing them.
(Basis: Order 453.)

### 1111.03 Overlapping Applications

Where one of several applications of the
same inventor or assignee which contain over-
lapping claims gets into an interference, the
prosecution of all the cases not in the interfer-
ence should be carried as far as possible, by
treating as prior art the counts of the inter-
ference and by insisting on proper lines of di-
vision or distinction between the applications.
In some instances suspension of action by the
Office cannot be avoided. See 709.01.

Where an application involved in interfer-
ence includes, in addition to the subject mat-
ter of the interference, a separate and divisible
invention, prosecution of the second invention
may be had during the pendency of the inter-
ference by filing a divisional application for
the second invention or by filing a divisional
application for the subject matter of the inter-
ference and moving to substitute the latter
divisional application for the application orig-

inally involved in the interference. However,
the application for the second invention may
not be passed to issue if it contains claims
broad enough to dominate matter claimed in
the application involved in the interference.

### 1111.04 "Secrecy Order" Cases

Since declaration of an interference gives im-
mediate access to applications by opposing
parties, no interference will be declared involv-
ing an application which has a security status
therein (See 107 and 107.02). Claims will be
suggested so that all parties will be claiming
substantially identical subject matter. When
all applications contain the claims suggested,
the following letter will be sent to all parties:

Claims 1, 2, etc., (indicating the conflicting
claims and claims not patentable over the ap-
plication under security status) conflict with
those of another application. However, the
security status (of the other application) or (of
your application) does not permit the declara-
tion of an interference. Accordingly, action on
the applications is suspended for so long as this
situation continues.

Upon removal of the security status from all
applications, an interference will be declared.

The letter should also indicate the allow-
ability of the remaining claims if any.

### 1111.05 Amendments Filed During Interference

The disposition of amendments filed in con-
nection with motions in applications involved
in an interference, after the interference has
been terminated, is treated in a separate sec-
tion (1108). If the amendment is filed pur-
suant to a letter by the Primary Examiner,
after having gotten jurisdiction of the involved
application for the purpose of suggesting a
claim or claims for interference with another
party and for the purpose of declaring an
additional interference, the examiner enters
the amendment and takes the proper steps to
initiate the second interference.

### OTHER AMENDMENTS

When an amendment to an application in-
volved in an interference is received, the
Examiner inspects the amendment and, if nec-

essary, the application, to determine whether
or not the amendment affects the pending or
any prospective interference. If the amend-
ment is an ordinary one properly responsive
to the last regular ex parte action preceding
the declaration of the interference and does
not affect the pending or any prospective in-
terference, the amendment is marked in pencil
"not entered" and placed in the file, a corre-
sponding entry being endorsed in ink in the
contents column of the wrapper and on the
serial and docket cards. After the termina-
tion of the interference, the amendment may
be permanently entered and considered as in
the case of ordinary amendments filed during
the ex parte prosecution of the case. (Order
1759, Revised.)

When an amendment filed during interfer-
ence purports to put the application in condi-
tion for another interference either with a
pending application or with a patent, the Pri-
mary Examiner must personally consider the
amendment sufficiently to determine whether,
in fact, it does so. If it does, he obtains from
the Commissioner jurisdiction of the applica-
tion for the purpose of setting up the new
interference. The Examiner submits his re-
quest for jurisdiction to the Supervisory Ex-
aminer for approval, assuming of course that
the existing interference is still pending before
the Board of Patent Interferences. Form at
1112.06(a).

If the amendment presents allowable claims
directed to an invention claimed in a patent or
in a pending application in issue or ready for
issue, the Examiner requests jurisdiction of the
file, as above, setting forth in his request the
reason why immediate jurisdiction of the file
is required by him, and when the file is re-
ceived, enters the amendment and takes the
proper steps to initiate the second interference.

Where in the opinion of the Examiner, the
proposed amendment does not put the applica-
tion in condition for interference with another
application not involved in the interference,
the amendment is placed in the file and marked
"not entered" and the applicant is informed
why it will not be now entered and acted upon.
See form at 1112.10. Where the amendment
copies claims of a patent not involved in the

interference and which the Examiner believes
are not patentable to the applicant, and where
the application is open to further ex parte
prosecution, jurisdiction of the file should be
obtained, the amendment entered and the
claims rejected, setting a time limit for re-
sponse. If reconsideration is requested and
rejection made final a time limit for appeal
should be set. Where the application at the
time of forming the interference was closed
to further ec parte prosecution and the dis-
closure of the application will, prima facie,
not support the copied patent claims or where
copied patent claims are drawn to a nonelected
invention, the amendment will not be entered
and the applicant will be so informed, giving
very briefly the reason for the nonentry, of the
amendment. See Letter Form 1112.10.

### 1111.06 Notice of Rule 231(a) (3) Motion Relating to Applica- tion Not Involved in Interfer- ence

Whenever a party in interference brings a
motion under Rule 231 (a) (3) affecting an ap-
plication not already included in the interfer-
ence, the Examiner of Interferences should at
once send the Primary Examiner a written no-
tice of such motion and the Primary Examiner
should place this notice in said application file.
(Basis: Order 3244.)

The notice is customarily sent to the group
which declared the interference since the ap-
plication referred to in the motion is generally
examined in the same group. However, if the
application is not being examined in the same
group, then the correct group should be ascer-
tained and the notice forwarded to that group.

This notice serves several useful and essen-
tial purposes, and due attention must be given
to it when it is received. First, the Examiner
is cautioned by this notice not to consider ex
parte, questions which are pending before the
Office in inter partes proceedings involving the
same applicant or party in interest. Second,
if the application which is the subject of the
motion is in issue and the last date for paying
the final fee will not permit determination of
the motion, it will be necessary to withdraw
the application from issue. Form at 1112.04.
Third, if the application contains an affidavit
under Rule 131, this must be sealed because
the opposing parties have access to the ap-
plication.

### 1111.07 Conversion of Application From Joint to Sole or Sole to Joint

Although, for simplicity, the subject of this
section is titled "Conversion of Application
from Joint to Sole or Sole to Joint," it in-
cludes all cases where an application is con-
verted to decrease or increase the number of
applicants. See 201.03.

If conversion is attempted after declaration
of an interference but prior to expiration of the
time set for filing motions, the matter is treated
as an inter partes matter, subject to opposition.
That is, the filing of conversion papers during
this period whether or not accompanied by a
formal motion will be treated as a motion under
Rule 231 (a) (5) and will be transmitted to the
Primary Examiner for decision after expiration
of the time within which reply briefs may be
filed, along with any other motions which may
have been filed. If conversion is permitted,
redeclaration will be accomplished as in other
cases on the basis of the decision on motions.

If conversion is attempted after the close of
the motion period but prior to the taking of
any testimony, the Interference Examiner may,
at his discretion, either transmit the matter to
the Primary Examiner for determination or
defer consideration thereof to final hearing for
determination by the Board of Patent Inter-
ferences. If transmitted to the Primary Ex-
aminer, the matter is treated as outlined in the
preceding paragraph. Forms for converting
a joint application to a sole are given at
1112.09(m) to 1112.09(p) and these forms
may be suitably modified to apply to the situ-
ation where an application with three or more
applicants is converted to a joint application
with a lesser number of applicants or where
an application is converted to increase the
number of applicants.

If conversion is attempted after the taking
of testimony has commenced, the Interference
Examiner will generally defer consideration
of the matter to final hearing for determina-
tion by the Board of Patent Interferences.

In any case where the Examiner must de-
cide the question of converting an application
he must, of course, determine whether the le-
gal requirements for such conversion have
been satisfied, just as in the ordinary ex parte
treatment of the matter.

A party may occasionally seek to substitute
an application with a lesser or greater number
of applicants for the application originally in-
volved in the interference. Such substitution
is treated in the same manner as the conversion
of an involved application as described above.

#### 1111.08 Reissue Application Filed While Patent Is in Interfer- ence

Care should be taken that a reissue of a pat-
ent should not be granted while the patent is
involved in an interference without approval
of the Commissioner.

If an application for reissue of a patent is
filed while the patent is involved in interfer-
ence, that application must be called to the
attention of the Commissioner before any ac-
tion by the Examiner is taken thereon. (Ba-
sis: Order 3193.)

Such an application should be promptly for-
warded to the Office of the Solicitor with
an appropriate memorandum. A letter with
titling relative to the interference is placed in
the interference file by the Commissioner and
copies thereof are placed in the reissue appli-
cation and mailed to the parties to the inter-
ference. This letter gives notice of the filing
of the reissue application and generally in-
cludes a paragraph of the following nature:

The reissue application will be open to in-
spection by the opposing party during the in-
terference and may be separately prosecuted
during the interference, but will not be passed
to issue until the final determination of the
interference, except upon the approval of the
Commissioner.

#### 1111.09 Suit Under 35 U.S.C. 146 by Losing Party

When a losing party to an interference gives
notice in his application that he has filed a
civil action under the provisions of 35 U.S.C.
146, relative to the interference, that notice
should be called to the attention of the inter-
ference Service Branch in order that a notation
thereof can be made on the index of the

interference. (Notice of January 29, 1930,
Revised.)

When notice is received of the filing of a
suit under 35 U.S.C. 146, further action is
withheld on the application of the party filing
the suit. No letter to that effect need be sent.

## 1111.10 Benefit of Foreign Filing Date

If a request for the benefit of a foreign filing
date under 35 U.S.C. 119 or under Section 1
of Public Law 690 is filed while an applica-
tion is involved in interference, the papers are
to be placed in the application file in the same
manner as amendments received during inter-
ference, and appropriate action taken after the
termination of the interference.

A party is not given the benefit of a foreign
filing date in the original declaration of an
interference, even though favorable action had
been stated in previous ex parte prosecution.
The party having a foreign filing date should
therefore file a motion to shift the burden of
proof or for benefit of that filing date under
Rule 231(a) (4) and the matter is then consid-
ered on an inter partes basis.

### 1111.11 Patentability Reports

The question of Patentability Reports rarely
arises in interference proceedings but the
proper occasion therefor may occur in decid-
ing motions. If appropriate, Patentability
Report practice may be utilized in deciding
motions and the procedure should follow as
closely as possible the ex parte Patentability
Report practice.

### 1111.12 Certified Copies of Part of an Application

This practice has been discontinued with the
cancellation of former Rule 241.

(

## 1111.13 Consultation With Interfer- ence Examiner

In addition to the consultation required in
connection with certain motion decisions in
1105.01, the Examiner should consult with a
Patent Interference Examiner or a member of
the Board of Patent Interferences in any case
of doubt or where the practice appears to be
obscure or confused. In view of their spe-
cialized experience they may be able to suggest
a course of action which will avoid considerable
difficulty in the future treatment of the case.

## 1111.14 Correction of Error in Join- ing Inventor

Requests for certificates correcting the mis-
joinder or nonjoinder of inventors in a patent
are referred to the Solicitor's Office for consid-
eration. If the patent is involved in interfer-
ence when the request is filed, the matter will be
considered inter partes. Service of the request
on the opposing party will be required and any
paper filed by an opposing party addressed to
the request will be considered if filed within 20

days of service of a copy of the request on the
opposing party. Following this 20 days, the
Law Examiner will consider the matter to the
extent of determining whether the request
prima facie conforms to applicable law and
policy. During the interference, a copy of any
decision concerning the request will be sent to
the opposing party as well as to the requesting
party. Issuance of the certificate will be with-
held until the interference is terminated since
evidence adduced in the interference may have a
bearing on the question of joinder. See also
1402.01.

## 1112 Letter Forms Used in Interfer- ences

Forms are found in Chapter 600 of the
Manual of Clerical Procedure which gives de-
tails as to the stationery to be used, number of
copies, typing format and handling.

1112.01 Letter to Law Examiner Sub-
mitting Proposed Interfer-
ence for Correspondence
Under Rule 202

This correspondence is no longer instituted.

1112.02

## MANUAL OF PATENT EXAMINING PROCEDURE

### 1112.02 Letter Suggesting Claims for Interference

ADDRESS ONLY
THE COMMISSIONER OF PATENTS
WASHINGTON, D.C. 20231

U.S. DEPARTMENT OF COMMERCE
PATENT OFFICE
WASHINGTON

Paper No.

Evan C. Stone
Press Building
Washington, D. C.
20007

Cited References Charge Data (If applicable)

Deposit Account No.

No. of Copies

In Reply Please Refer To:

Applicant:
John Wentworth et al

Ser. No.

202,705

Filed

July 1, 1965

For

STRETCH YARN

SHORTENED TIME FOR REPLY

Please find below a communication from the EXAMINER in charge of this application.

Commissioner of Patents.

The following claim(s) found allowable, is (are)
suggested for the purpose of interference:
APPLICANT SHOULD MAKE THE CLAIM(S) BY
(allow not less than 30 days). FAILURE TO DO SO WILL BE
CONSIDERED A DISCLAIMER OF THE SUBJECT MATTER INVOLVED
UNDER THE PROVISIONS OF RULE 203.

Examiner

WCJONES : pcf

W07-2804

### 1112.03 Same Attorney or Agent in Applications of Conflicting Interests

This is usually added to the letter suggesting claims :

Attention is called to the fact that the attorney (or agent) in this application is also the
attorney (or agent) in an application of another party and of different ownership claiming
substantially the same patentable invention as claimed in the above-identified application.

# INTERFERENCE

1112.04

## 1112.04 Letter Requesting Withdrawal From Issue

Form CD-121
UNITED STATES GOVERNMENT
(11-63)
(Pres, by
A.O. 206-10
Memorandum

U.S. DEPARTMENT OF COMMERCE
PATENT OFFICE

TO
: Mr.
و
Director, Operation
\-

DATE:

In reply refer to:

FROM :

,
Primary Examiner

SUBJECT: Withdrawal from Issue:
S.N.
Filed
(allowed)
It is requested that the above-entitled application
be withdrawn from issue for the purpose of
(Examiner provides necessary reason, or designates one of
a - f below).

The final fee has (or has not) been paid.

Respectfully,

Examiner

JCWILLIAMS: fwa

a.
interference, another party having made claims
suggested to him from this application.

b.
interference, on the basis of claims
(specify) copied from Pat. No.
.
c. ... interference, applicant having made claims
suggested to him.

d. ... rejecting claims
(specify) on the implied
disclaimer resulting from failure to make the
claims suggested to him under Rule 203.

e.
... deciding a motion under Rule 234 involving this
application, the date set for the motion ,being
subsequent to the ultimate date for paying the
final fee.

f. ... deciding a motion under Rule 231(a) (3) involv-
ing this application, the final fee having been
paid, or, the motion cannot be decided prior to
the ultimate date for paying the final fee.

## 1112.05 Declaration Papers

### 1112.05(a) Initial Interference Memorandum

U.S. DEPARTMENT OF COMMERCE
PATENT OFFICE
WASHINGTON

### INTERFERENCE-INITIAL MEMORANDUM

EXAMINERS INSTRUCTIONS - Please do not have this form typewritten. Complete the items below by hand (pen and ink), and
forward to the Group Clerk. The parties need not be listed in any specific order.

BOARD OF INTERFERENCES: An interference is found to exist between the following cases:

1\.

LAST NAME OF FIRST LISTED "APPLICANT"

« Jones et al

If applicable, check and/or fill in appropriate paragraphs
from M.P.E.P. 1102.01(a)

☒
After termination of this interference, this application
will be held subject to further examination under Rule
266.

SERIAL NUMBER

918, 6.13

FILED (Mo., Day, Year)

June 10, 1965

The following claims

16/12/13

Accorded benefit of
SERIAL NUMBER

FILED (Mo., Day, Yoar)

will be held subject to rejection as unpatentable over the
issue in the event of an award of priority adverse to
applicant.

2\.

LAST NAME OF FIRST LISTED "APPLICANT"
Smith et al (Pat. )

If applicable, check and/or fill in appropriate paragraphs
from M P.E.P. 1102.01(a)

☐
Atter termination of this interference, this application
will be held subject to further examination under Rule
266.

SERIAL NUMBER

816,322

FILED (Mo., Day, Your)

May 15, 196 5

Accorded benefit of

SERIAL NUMBER

FILED (Mo., Day, Your)

The following claims
will be held subject to rejection as unpatentable over the
issue in the event of an award of priority adverse to
applicant.

3\.

LAST NAME OF FIRST LISTED ** APPLICANT"*
vidama (Pat.)

SERIAL NUMBER

FILED (Mo., Day, Year)

713.042

ape . 3, 1965

☐
After termination of this interference, this application
will be held subject to further examination under Rule
266.

Accorded benefit of
SERIAL NUMBER

FILED (Mo., Day, Yomr)

The following claims
will be held subject to rejection as unparentable over the
issue in the event of an award of priority adverse to
applicant.

4\.

LAST NAME OF FIRST LISTED "APPLICANT"

Parker

If applicable, check and/ar fill in appropriate paragraphs
from M.P.E.P. 1102.01(a)

SERIAL NUMBER
618,312

FILED (Mo., Day, Yoar)

Mar, 12, 1965

Accordod benefit of

SERIAL NUMBER

FILED (Mo., Day, Your)

605,111

aps. 1, 1964

The following claims
will be held subject to rejection as unpatentable over the
issue in the event of an award of priority adverse to
applicant.

The relation of the counts to the claims of the respective parties (Indicate those modified) ☒

COUNTS

NAME OF PARTY Sopes et al.

NAME OF PARTY Smith et al

NAME OF, PARTY adamo

NANE OF PARTY Parker

( (m)

3 (m)

Have modified counts not appearing in any application typed on a separate sheet and attach to this form. ☒

GROUP 930

June 18, 1969 DATE

SIGNATURE OF PRIMARY EXAMINER Fielder V. Holomon

Clerk's Instructions: 1. If a patent is involved, obtain a citle report and include a copy. ☒ 2. Return transmittal slip PO-261 or PO-262 to the Board of Appeals. ☒

FORM PO-850 (0-051

If applicable, check and/or fill in appropriate paragraphs
from M.P.E.P. 1102.01(c)

☒
After termination of this interference, this application
will be held subject to further examination under Rule
266.

13 /4/ 29

# INTERFERENCE

1112.06

1112.06 Requests for Jurisdiction

1112.06(a) Request for Jurisdiction of Application Involved in Interference

A.O. 206-10

Form CD-121
(11-63)
UNITED STATES GOVERNMENT
(Pres. by
Memorandum

U.S. DEPARTMENT OF COMMERCE
PATENT OFFICE

TO
:
Mr.
₱
Group Manager, Group

DATE:

In reply refer to:

FROM

Examiner

SUBJECT:
Request for Jurisdiction:
Application of
John T. Mckibben
Serial No. 385,963
Knitting Machine
Filed July 1, 1965

Jurisdiction of the above-entitled application
now involved in Interference No. 88, 262, Mckibben v. Tapes,
1
is requested for the purpose of
(The Examiner provides
reason or indicates the appropriate item a-d below).
.

Respectfully,

Examiner

J. WILLIAMS : pof

(a) Suggesting claims thereto for interference
with another party and of entering such claims if
made, and of initiating such additional interference.
(b) Entering an amendment which puts the appli-
cation in condition for another interference, and of
initiating such other interference.
(c) Initiating another interference, another
party having made claims suggested to him from this
application.
(d) Entering and taking action on claims copied
from Patent No. to , with which applicant
requests an interference.

1 Note alphabetical arrangement.

## MANUAL OF PATENT EXAMINING PROCEDURE

### 1112.08 Primary Examiner Initiating Dissolution of Interference Rule 237(a)

This form is to be used in all cases except when the interference is before the Primary
Examiner for determination of a motion.

ADDRESS ONLY
THE COMMISSIONER OF PATENTS
WASHINGTON, D.C. 20231

U.S. DEPARTMENT OF COMMERCE
PATENT OFFICE
WASHINGTON

In re Intf. No. 98,000

John Willard

Luther Stone

Under the provisions of Rule 237, your attention
is called to the following patents :

197,520
Jolien
1-1897
1,637,468
Moran
4-1950
214-26

214-26

Counts 1 and 2 are considered unpatentable over
either of these references for the following reasons :

(The Examiner discusses the references. )

Examiner

MMWard :pcf
Copies to :
John Jones
133 Fifth Avenue
New York, New York 11346
Leonard Smith
460 Munsey Building
Washington, D. C. 20641

#### PATENTEE INVOLVED

If one of the parties is a patentee, no reference should be made to the patent claims nor to
the fact that such claims correspond to the counts. See 1101.02(f), last paragraph. However,
this restriction does not apply to claims of the application. Language such as the following is
suggested : "Applicant's claims are considered fully met by (or unpatentable over) the-
reference." (Basis: Notice of October 3, 1962.)

## 1112.09 Redeclarations

These are now handled in the Interference Section of Docket Branch.

### 1112.10 Letter Denying Entry of Amendment Seeking Further Interference (With application or patent not involved in present interference)

ADDRESS ONLY
THE COMMISSIONER OF PATENTS
WASHINGTON, D.C. 20231

Paper No.
4.

U.S. DEPARTMENT OF COMMERCE
PATENT OFFICE
WASHINGTON

Charles A. Donnelly
123 Main Street
Dayton, Ohio 65497

In Reply Please Refer To:

Applicant:

Richard A. Green

Ser. No.

521,316

Filed

July 1, 1965

For
PIPE CONNECTOR

Cited References Charge Data (If applicable)

Deposit Account No.

No. of Copics

- -

Please find below a communication from the EXAMINER in charge of this application.
Commissioner of Patents.

\-
The amendment filed
has not now been
entered since it does not place the case in condition for
another interference.

(Follow with appropriate paragraph, e.g., (a) or
(b) below:)

a) Applicant has no right to make claims
because (state reason briefly.) (Use where applicant cannot
make claims for interference with another application or
where applicant clearly cannot make claims of a patent. )

(b) Claims
are directed to a species
which is not presently allowable in this case.

Examiner

ZGREEN:ns
W07-2802

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