900

Printed page 1

Printed page 2

Printed page 3

Printed page 4

Printed page 5

Printed page 6

Printed page 7

Printed page 8

Printed page 9

Printed page 10

Printed page 11

Printed page 12

Printed page 13

Printed page 14

Printed page 15

Printed page 16

Printed page 17

Printed page 18

Printed page 19

Printed page 20

Printed page 21

Printed page 22

Printed page 23

Printed page 24

Printed page 25

OCR transcription for search; preserved printed pages are authoritative

# Chapter 900 Prior Art, Classification, Search

901
Prior Art

901.01
Canceled Matter in U.S. Patent Files

901.02
Abandoned Applications

901.03
Pending Applications

901.04
U.S. Patents

901.05
Foreign Patents

901.05 (a)
Citation Data

901.05 (b)
Other Significant Data

901.05 (c)
Obtaining Copies

901.05 (d)
Translation

901.06
Non-Patent Publications

901.06 (a)
Scientific Library

901.06 (b)
Borrowed Publications

901.06 (c)
Alien Property Custodian Publications

901.06 (d)
Abstracts, Abbreviatures and Defensive
Publications

901.07
Arrangement of Art in Examining Groups

901.08
Borrowing References

901.09
Missing Copies-Replacement

902
Official Publications and Indices of U.S. Patents

902.01
Manual of Classification

902.02
Definitions

902.02 (a)
Search Notes

902.02 (b)
Search Cards

902.03
U.S. Patent Classification Indices

902.03 (a)
Numerical

902.03 (b)
Blue Slips

902.03 (c)
Subclass Lists

902.03 (d)
Count

902.04
Classification Orders and Bulletins

903
Classification

903.01
Statutory Authority

903.02
Basis and Principles of Classification

903.02 (a)
New and Revised Classes

903.02(b)
Scope of a Class

903.03
Classification of Foreign Patents

903.04
Stamping Examiners' and Search Room
Copies

903.05
Transfer of U.S. Patents

903.06
Ordering Official Cross-References

903.06 (a)
Discovery of New Cross-References

903.07
Classifying and Cross-Referencing at Allow.
ance

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

903.07 (b)
Issuing in Another Group Without
Transfer

903.08
Applications-Assignment and Transfer

903.08 (a)
New Applications

903.08 (b)
Classification and Assignment to Examiner

903.08 (c)
Immediate Inspection of Amendments

903.08 (d)
Transfer Procedure

903.08 (e)
General Regulations Governing Applica-
tion Assignment

908.08 (f)
Patent Classifier's Decision

903.08 (g)
Transfer to Another Examining Group
after Decision

903.09
International Classification of Patents for
Inventions

904
How to Search

904.01
Analysis of Claims

904.01 (a)
Variant Embodiments within Scope of
Claim

904.01 (b)
Equivalents

904.01 (c)
Analogous Arts

904.01 (d )
Outlining Field of Search

904.02
Conducting the Search

905
Miscellaneous

905.01
Photocopy Orders

905.02
Soft Copy Orders

905.03
Orders for Patented and Abandoned Files

905.04
Marking Examiners' Copies of Patents

905.05
Charge for Pending Application Files

901 Prior Art [R-30]

Note rule 104 (a) in § 707.

## 901.01 Canceled Matter in U.S. Patent Files [R-18]

Canceled matter in the application file of a
U.S. patent is not a proper reference as of the
filing date under 35 U.S.C. 102e, see Ex parte
Stalego, 154 USPQ 52. However, matter can-
celed from the application file wrapper of a
U.S. patent may be used as prior art as of the
patent date in that it then constitutes prior
public knowledge under 35 U.S.C. 102(a).

## 901.02 Abandoned Applications [R-30]

Rule 108. Abandoned applications not cited. Aban-
doned applications as such will not be cited as ref-
erences except those which have become abandoned
as a result of the filing and acceptance of a request
under rule 139.

Where an abandoned application is referred
to in an issued U.S. patent the disclosure of the
application is incorporated by reference into the
disclosure of the patent and is available to the
public. See rule 14 (b).

In re Heritage, 1950 C.D. 419; 86 USPQ 160
holds that where a patent refers to and relies
upon the disclosure of a copending abandoned
application, such disclosure is available as a
reference. See also In re Lund et al., 153 USPQ
625; 54 CCPA 1361.

It has also been held that where the refer-
ence patent refers to a copending but aban-
doned application which discloses subject mat-
ter in common with the patent, the effective
date of the reference as to the common subject
matter is the filing date of the abandoned ap-

plication. Ex parte Clifford, 49 USPQ 152; Ex
parte Peterson, 63 USPQ 99; and In re Switzer
et al., 612 O.G. 11; 77 USPQ 156.

Published abstracts, abbreviatures and defen-
sive publications are references (§ 901.06 (d) ).

## 901.03 Pending Applications [R-30]

Except as provided in rule 11(b) pending
U.S. applications are preserved in secrecy (rule
14(a) ) and are not available as references.
However, claims in one application may be re-
jected on the claimed subject matter of a co-
pending application of the same inventive
entity. For applications having a common as-
signee and different inventive entities claiming
a single inventive concept see § 804.03.

Applications abandoned under rule 139 are
treated as pending applications for limited time
periods regarding interferences and the filing
of a continuing application. (See § 711.06.)

## 901.04 U.S. Patents [R-30]

The following different series of U.S. pat-
ents are being, or in the past have been issued.
The date of patenting given on the face of
each copy is the publication date and is the one
usually cited. The filing date, in most in-
stances also given on the face of the patent, is
ordinarily the effective date as a reference (35
U.S.C. 102 (e)).

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

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

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

A. I. Series. From 1838 to 1861, patents
covering an inventor's improvement on his own

patented device were given a separate series of
numbers preceded by "A.I." to indicate Addi-
tional Improvement. In citing, the letters
and the number must be given, e.g., A.I. 113.
About 300 such patents were issued.

Plant Patent Series. When the statutes were
amended to provide for patenting certain types
of plants (Chapter 1600) these patents were
given a separate series of numbers. In citing,
the letters "P.P." and the number must be given,
e.g., P.P. 13.

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

## 901.05 Foreign Patents

All countries do not issue their patent speci-
fications in printed form. In some countries,
there is a delay between the date of the patent
grant and the date of publication. Generally,
a foreign patent should not be cited as a refer-
ence unless the examiner has seen the patent.

Citation data pertaining to those countries
from which the most patent publications are re-
ceived are given in the following sections.
Additional information can be obtained from
the Scientific Library.

## 901.05 (a) Citation Data

Foreign patent publications that use Arabic
and Roman numerals in lieu of names to indi-
cate the date, show in order the day, month, and
year. Roman numerals always refer to the
month.

Japanese patent application publications
show the date in Arabic numerals, by indicating
in order the year of the reign of the present
Emperor, the month, and the day. To convert
the Japanese year of the Emperor to the West-
ern calendar year, add 1925 to the Japanese
year. For example : 40.3. 6= March 6, 1965.

Foreign language, alphabetical lists of the
names of the months, and of the names and ab-
breviations for the United States of America
are shown on the following page. The lists set
forth only selected, commonly encountered
foreign language names, and do not include
those which are similar to the English language
names and thus easily translatable.

In using the lists, identification of the foreign
language (except for Russian), is not necessary.
The translation into English is ascertained by
alphabetically locating the foreign language
name on the list.

The list of the foreign language names and
abbreviations for the United States is useful in
determining whether a foreign language patent
publication indicates the filing of a similar ap-
plication in the United States.

Alphabetical List of Selected Foreign Language Names of Months

agosto

August

maggio

May

goût

August

Mai

May

augusti

August

Maj

May

avřil

April

maja

May

březen

March

maraskuu

November

června

June

marca

March

červenen

July

mars

March

czerwca

June

Marts

March

décembre

December

März

March

dicembre

December

marzo

March

dubna

April

mei

May

elokuu

August

ottobre

October

febbraio

February

pazdziernika

October

Feber

February

prosinca

December

februari

February

října

October

février

February

settembre

September

gennaio

January

sierpnia

August

giugno

June

srpna

August

grudnia

December

stycznia

January

heinäkuu

July

syyskuu

September

helmikuu

February

tammikuu

January

huhtikuu

April

toukokuu

May

Jänner

January

unora

February

janvier

January

września

September

joulukuu

December

zari

September

juillet

July

juin

June

RUSSIAN

kesäkuu

June

kvetna

May

aBryCT

August

kwietnia

April

апрель

April

leden

January

декабрь

December

lipca

July

июль

July

listopad

November

июнь

June

listopada

November

май

May

lokakuu

October

MapT ноябрь

March November

luglio

July

октябрь

October

lutego

February

сентябрь

September

maaliskuu

March

февраль

February

maart

March

январь

January

Alphabetical List of Selected Foreign Language Names and Abbreviations for the United States of America

Amerikas Forenta Stater

Stati Uniti d'America

De Forenete Stater av Amerika

S.U.

EE. UU.

S.U.A.

E.U.

S.Z.A.

E.U.A.

V.St.A.

E. U.d'Am.

V.St.v.A.

Etats-Unis d'Amérique

Ver.St.V.Am(erika)

Sp.St.A.

Verenigde Staten Van Amerika

Spoj. St.Am.

Vereenigde Staten Van Noord-Amerika

Spojene Staty Americke

Vereinigten Staaten Von Amerika

Stany Zjednoczone Ameryki

Vorenede Stater i Amerika

ICIREPAT Country Identification Code Letters

Australia

France

Austria

Belgium

Great Britain

Poland

Canada

Hungary

Rumania

Switzerland

India

Finland

Czechoslovakia

Italy

USSR

Denmark

Japan

Sweden

East Germany

Netherlands

USA

Germany, Fed. Rep.

Norway

Yugoslavia

Ireland

## 901.05 (b) Other Significant Data [R-30]

Occasionally, the exact date of foreign pat-
enting becomes material. In the case of Aus-
tralia, Austria, East Germany, Great Britain,
India, Ireland and U.S.S.R., it does not appear
on the printed copies of the patents. If neces-
sary, this information can be secured from the
Scientific Library. For the effective dates of
Belgian patents, see the Memorandum of
March 2, 1959, which has been reproduced in 41
J.P.O.S. at page 440. For the effective dates of
Italian patents, see the Memorandum of October
25, 1960 distributed to all examiners and pub-
lished in 42 J.P.O.S. 795-8. Comments concern-
ing German, French and Belgian procedure in
granting patents are found in Ex parte Grusch-
witz et al., 138 USPQ 505. This case did not
involve anticipation but the bar of foreign
patenting under 35 U.S.C. 102(d). The Board
of Appeals has held that a Japanese application
was "patented" upon its publication date, Ex
parte Iizuka, 171 USPQ 50.

Some countries issue patents of addition and
they should be identified as such and, when
separately numbered as in France, the number
of the addition patent should be cited.

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

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

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

## FEDERAL REPUBLIC OF GERMANY

German allowed applications have been is-
sued in printed form beginning September 1,
1955. Those printed from this date up to De-
cember 31, 1956, are captioned "Patentan-
meldung." They should be cited as "German
printed applications" and identified by the name
of the applicant, the serial number of the appli-
cation, and the date of publication. The
applications printed after January 1, 1957,
are captioned "Auslegeschrift" and have an
additional number which is larger than 1,000,-
000 and which will be the number of the patent,
if issued. This new number should be used in-
stead of the original serial number. In addi-
tion to the above, data customarily given in cit-
ing foreign patents should be used.

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

## NETHERLANDS

Netherlands applications, unless withdrawn,
are printed beginning January 1, 1964. They
are captioned "Octrooiaanvrage". They should
be cited as Netherlands applications giving the
number, date of publication, "Datum van ter
inzagelling", name of applicant, "Aanvrager",
and data customarily given in citing foreign
patents.

## GREAT BRITAIN

Certain British applications had become void
and hence lack a date of acceptance. Neverthe-
less, they were given a number in the patent
series. The date of publication (year only) is
given following the statement "Printed for His
Majesty's Stationery Office," and this should
be cited.

British specifications prior to 1916 have
printed in large heavy type at the head of the
first page of the specification a number and
year, as 1451 A.D. 1912. This, together with
the name, as required by the rules, is always
the proper citation of the patent. The year
given at the head of the specification is either
the year of filing or the year of acceptance, but
in either case it is the official designation of
the patent.

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

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

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

### FRANCE

The date of recent French patents to be taken
as the effective date as a patent for reference
purposes is the date of the Official Bulletin of
the French Patent Office (Bulletin Officiel de la
Propriété Industrielle) in which the granting
of the patent was announced. This date does not
appear on the printed copies of the specifica-
tions of the patents. The printed copies give the
date the patent was granted (délivré) and the
number of the particular issue of the Official

901.05(c)

Bulletin in which the granting of the patent
was announced. The date of the issue of the
Bulletin, if needed, may be obtained from the
Bulletin itself in the Library and would be
about five or six weeks later than the granting
date. The granting date may be used for citation
purposes but if the precise date is critical the
effective date should also be given.

The date used as the effective date when the
patent is used as a patent (rather than as a
printed publication which date is later) has
been the date on which the patent was granted,
indicated on the printed copies by the word
"délivré", as was established by decisions of
the courts, the Commissioner of Patents, and
the Board of Appeals. Owing to a change in
the practice in the French Patent Office where-
by the specifications of granted patents are
now not available to the public until the date
of the Official Bulletin, it is necessary to apply
In re Af Ekenstam, 45 CCPA 1022, 256 F.2d
321, 1958 CD 402, 734 OG 290, 118 USPQ 349;
and use the date on which the specification be-
came available to the public as the effective
date as a reference. This practice will apply to
recent French patents, going back to number
1,148,401 announced in the Official Bulletin of
July 11, 1957 and back to patent of addition
number 67,251. No change in practice is indi-
cated with respect to French patents prior to
these numbers.

## SWITZERLAND

The effective dates of Swiss patents are dis-
cussed in Ex parte Reuge, 115 USPQ 51 and
in Ex parte Appeal No. 194-38, 1966 CD 31,
152 USPQ 70. It should be noted that two dif-
ferent systems are in operation in Switzerland.
The majority of patents are issued without
search and examination in the light of refer-
ences, and the date used for these is the publica-
tion (veröffentlicht, publié, pubblicato) date.
In two fields, inventions relating to time-keep-
ing, and inventions relating to the non-mechan-
ical treatment of textiles and fibers, applica-
tions are searched and examined in the light
of the prior art and the procedure differs from
that followed in the other cases; it follows, in
general, the procedure in the Federal Republic
of Germany as described in Ex parte Grusch-
witz et al., 1963 CD 859, 138 USPQ
505. Patents which have been issued under
the examination system can be recognized
from information given in the heading
which refers to the publication of the applica-
tion (the French and German language ap-
plications, Demande publiée and Gesuch be-
kanntgemacht, respectively). As in the German
practice, when a case is found allowable by the
examiner the application is published for oppo-

sition and the specification is issued in printed
form (also referred to as Auslegeschrift, Ger-
man and Mémoire expose, French). These
printed copies have not been received by the
U.S. Patent Office. If it becomes necessary in
connection with a Swiss patent issued under
the examination system to establish a date
earlier than the date the patent was granted,
the library can obtain a copy of the earlier
printed application from the Swiss Patent
Office.

# 901.05(c) Obtaining Copies [R-28]

Photocopies of foreign patents can be ordered
by an examiner for placement in the shoes of a
class in which he examines, if the patents would
be of frequent use in that class (§ 905.01).

# 901.05(d) Translation [R-30]

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

# 901.06 Non-Patent Publications [R- 28]

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

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

Science Abstracts of London, England pro-
vides the Patent Office with certain non-patent
literature. This literature includes the follow-
ing :

A. A copy of the full text of the article;

B. An English language abstract attached to
the full text of the article;

C. Bibliographic details;

D. United States Classification including
class and subclass, where necessary addi-

tional copies are provided. The Interna-
tional Patent Classification (I.P.C.) is
provided on each document by the Scien-
tific Library ;

E. A document identification number pre-
ceded by the alpha character S followed
by an eight digit number (e.g.
S00840001).

The United States classification as well as the
International Patent Classification (I.P.C.) is
placed on each document made of record and
stamped "RECORDED" by the Scientific Li-
brary. No change in status of the document (e.g.
changing classification, cancelling or adding of
copies) should be made unless the Scientific Li-
brary is notified. Form PO-1122 should be used
for this purpose. The form should include the
document identification number, group art unit,
status change and the name of the examiner. The
completed form should be forwarded to the For-
eign Patent Services and Records Section of the
Scientific Library. If the status change involves
placing additional copies of the document, the
document should be forwarded along with the
completed form to the Scientific Library where
the additional copies will be made. If the change
in classification places the "RECORDED" non-
patent literature document in another examin-
ing group, the completed PO-1122 form should
be attached to the document and forwarded to
the new group. The examiner in the new group
should complete the form and forward it to the
Scientific Library.

Where a non-patent literature reference with
a document identification number is cited, the
identification number and the class and subclass
should be included on the form PO-892.

The citation should be as follows:
(S00840001) Winslow, C.E.A. Fresh Air and
Ventilation N.Y., E. P. Dutton, 1926, p. 97-112,
TH 7658. W5, 315-22.

If the cited document has a document identi-
fication number, it is not necessary to enclose a
copy in the ROS folder.

# 901.06(a) Scientific Library [R-30]

35 U.S.C. 8. Library. The Commissioner shall main-
tain a library of scientific and other works and pe-
riodicals, both foreign and domestic, in the Patent
Office to aid the officers in the discharge of their duties.

The technical literature, foreign patents and
services supplied by the Scientific Library are
important to the examiner for two primary
reasons. In the first place, they provide ma-
terial which must be known or searched to de-
termine whether claims of applications are di-
rectly anticipated, and therefore unpatentable
under the provisions of 35 U.S.C. 102. In the
second place, in cases in which the primary

search indicates that there is some novelty as
compared to any single reference in the art, the
library handbooks, textbooks, periodicals, re-
ports and other materials assist in deciding the
question of patentable invention (35 U.S.C.
103). They enable the examiner to make a fur-
ther study to determine whether the features
novel in the particular combination searched
would be obvious to a person skilled in the art
from the general state of knowledge as reflected
in the technical literature.

## MATERIALS AVAILABLE Foreign Patents

The Library receives foreign patents by ex-
change from almost all countries (26 countries)
that print their patents. In most cases, two
copies are received: one for the examiners'
search files and one for the numerical set in the
Library. Since July, 1969, the numerical set for
the following countries has been placed on 16
mm microfilm reels: Canada, France (applica-
tions and patents), Germany (applications and
patents), Great Britain, Japan, Netherlands
(applications only ), U.S.S.R., and Switzerland.
The second copy of the foreign patent, with a
translation of the main claim or an English lan-
guage abstract, is sent to the examining group
(§ 903.03). Patents on which there is no date of
publication (Australia, France and Italy) show
the date of receipt in the Library. Soviet and
Bulgarian authors' certificates are date-stamped
even though a "date of publication" appears
thereon because there is some doubt whether
"publication" means "printing."

### Foreign Patent Journals

Most foreign countries issue official patent
and trademark journals corresponding to the
Official Gazette. Patent journals are shelved
under country names in the patent collections,
and with the numerical sets of those countries
which print their patents. Trademark jour-
nals are retained for only 4 months. Most coun-
tries issue name indexes; some also issue clas-
sified indexes. These are shelved with the
journals.

### Books

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

901.06(a)

Group has a great many manufacturers'
catalogs.

In selecting books and periodicals to be or-
dered, the Librarian and his staff obtain as-
sistance from members of the examining corps,
and suggestions concerning materials to be
obtained are welcomed at any time. A monthly
list of accessions is circulated to all examining
groups at the beginning of each month and
the books are placed on inspection in the Li-
brary for one week thereafter. Duplicate copies
of books on this list, or any other pertinent
book, may be ordered by examiners for use in
the groups by addressing a memorandum to the
Chief Librarian via the group director and the
cost code clearance officer.

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

### Technical Periodicals

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

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

An important part of the duties of each ex-
aminer involves constant inspection of non-
patent literature pertinent to the class or classes
that he examines. The Library has undertaken
to assist in this time-consuming activity. In one
subject area, articles are being pre-selected and
classified under the U.S. system by an outside
indexing service. In a subsection of the same
subject areas, articles are being pre-selected by
library staff members. Before addition to the
search files, selections must be assigned a code
number and microfilmed so that the library will
have a record of search file contents and can
reproduce material cited without pulling it
from the files or from the library shelves. Be-
fore adding any non-patent literature to the
files, examiners should forward the literature to

the Library for the assignment of code numbers
and for filming.

#### LIBRARY SERVICES Non-Patent Literature

Encyclopedic works, published indexes, and
abstracting vehicles which assist searches in
patents and technical literatures are constantly
increasing in number and quality. The Library
welcomes suggestions for acquisition of avail-
able or forthcoming aids to searching. In con-
ducting library searches, examiners are encour-
aged to supplement their own familiarity, skill,
and available time by queries addressed to the
Reference Section of the Library (Ext. 72957).

The Staff of the Reference Section (Ext.
72957) will assist examiners in the use of the
card catalogs and other resources of the Li-
brary, in pointing out publications which will
help examiners define the limits of the field of
search, and in providing information for use in
prior art searches. Upon request, it will provide
bibliographies on given subjects. It will also
accept requests for all information on specific
subjects defined by keywords and/or class and
subclass designation.

### Main Catalog

This card catalog is located in the Reference
Room and lists all materials in the Library, the
Law Library and examining groups except
patent specifications and government reports on
microfiche. If an examiner finds that the book
he desires is not on the shelf he may be able to
ascertain through the card catalog that another
copy is available elsewhere in the Office. Exam-
iners sometimes acquire material independently
of the Library, and it is important that any
such material should be sent to the Library's
Technical Processes Branch for cataloging to
assure that it may be recorded for the benefit of
the entire Office.

The Library of Congress classification scheme
is used in classifying the books and bound pe-
riodicals. A printed outline of this scheme is
kept on one of the reading tables on the second
floor and a shorter outline is posted on the end
of two of the book stacks. Examiners will find
the outline helpful in determining the general
subject area of the field in which they are inter-
ested. Catalog cards are made for the author,
title when distinctive, and subjects. Bound vol-
umes of periodicals are cataloged, classified and
maintained on the bookshelves, while those
which have not yet been bound are separately
located in alphabetical order in a small reading
room adjoining the Reference Room. Near the
main card catalog, there is a separate card list-

ing of bound periodicals and foreign patent and
trademark journals.

### Foreign Patent Information

Upon request made to the Foreign Patent
Services and Records Section (Ext. 73545) the
Library will procure individual typewritten
copies of patents from countries which issue,
but do not print them. Where applicable, the
dates of opening to inspection, of issuance and
of publication will be requested of the foreign
patent office. The copy of each patent so ac-
quired is retained in a special file in the Foreign
Patent Services and Records Section, and a
photocopy thereof is submitted to the examiner.
As requested by examiners, it performs searches
in foreign patent journals to ascertain the dates
of opening to public inspection, of grant or seal-
ing, and of publication of specified foreign pat-
ent applications. It will also make searches to
locate patents with an earlier date or in a more
familiar language.

Loan of Books and Other Publications
General

All Library materials other than the books
in the main reference collection in the Refer-
ence Room may be charged out at the cir-
culation desk. Materials should be kept as
briefly as possible, and ordinarily no longer
than two weeks. Since all library materials
are used for reference purposes, none may
be taken outside of the Patent Office. Ex-
aminers may use the Commerce Department
Library but may not charge out its books.
Books needed from that Library for official
use should be obtained through the Scientific
Library by means of interlibrary loan as de-
scribed in the following paragraph.

#### Interlibrary Loans

On request the Reference Section (Ext.
72959) will borrow from other libraries mate-
rials not available in the Scientific Library.
In return for this service, the Library loans
its materials to other libraries in the District
of Columbia so that occasionally an examiner
may find that the item he desires is unavail-
able. These materials which are out on inter-
library loan may be recalled for the examiner
if required for immediate use. To borrow
books from another library is costly in terms
of both time and effort; therefore, it is library
policy not to borrow materials unless strictly
pertinent to official use. Law books cannot be
borrowed by the Library for use by examiners
in connection with law courses.

When a book or periodical is borrowed from
another library, and cited in an Office action, a
photocopy of the portion cited should be or-
dered immediately and placed in an appropri-
ate class and subclass. This class and subclass
should be cited in the Office action.

Publication Dates

Requests pertaining to the earliest date of
publication or first distribution to the public
of publications and patents should be made to
the Reference Section. They can obtain the day
and month of publication claimed by the copy-
right owner for United States publications and
they will write to the foreign source.

##### Translations

Requests for Translations

Examiners may consult the translators in the
Reference Section at any time for oral assist-
ance in translating foreign patents or litera-
ture. Translations are made from all of the
principal European languages and from Jap-
anese. The Library will have required transla-
tions from other languages made elsewhere.
(Ext. 73193)

Card Index of Available Translations

This index lists all translations which have
been made by the Reference Section of the
Library and a few others gathered from mis-
cellaneous sources. The card file and over
10,000 translations of foreign patents and
trademarks with some periodical articles and
excerpts from books are located in the Refer-
ence Section. Translations, which are available
to examiners and non-Office personnel, are in-
dexed by country, patent or trademark number,
and patentee or author. A copy of any transla-
tions coming to an examiner from outside of
the Office should be furnished to the Reference
Section so that it may make a copy for its files.
In this case the source is indicated on the trans-
lation so that it will not be certified as an official
translation of the Patent Office.

# 901.06(b) Borrowed Publications [R-30]

See § 901.06 (a), Interlibrary Loans.

# 901.06(c) Alien Property Custodian Publications [R-23]

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

# 901.06(d)

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

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

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

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

# 901.06(d) Abstracts, Abbreviatures and Defensive Publications [R-23]

Abstracts and Abbreviatures are Patent Of-
fice publications of abandoned applications.
Defensive Publications (the O.G. defensive
publication and search copy) are Patent Office
publications of a provisionally abandoned ap-
plication wherein the applicant retains his
rights to an interference for a limited time
period of five years from the earliest effective
U.S. filing date. See §§ 711.06 and 711.06 (a).

Distinct numbers are assigned to all Defen-
sive Publications published after December 16,
1969, for example.

T
869

001
-Number series, 001-999 available
monthly,
O.G. volume number,
Document category, T for Tech-
nical disclosure.

Defensive Publications are included in sub-
class lists and subscription orders. The distinct
numbers are used for all official reference and
document copy requirements.

A conversion table from the application
serial number to the distinct number for all
Defensive Publications published before De-
cember 16, 1969 appears at 869 O.G. 687.

# 901.07 Arrangement of Art in Exam- ining Groups [R-30]

In the examining groups the U.S. patents are
arranged in shoes bearing appropriate labels,
each showing the class, sub-class, and usually
the lowest and highest numbered patents put in
the respective shoe. The patents should be ar-
ranged in numerical order.

Some U.S. copies are marked "Cross Ref-
erence." These are patents which are classified

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

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

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

# 901.08 Borrowing References [R- 23]

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

# 901.09 Missing Copies-Replacement [R-23]

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

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

## 902.01 Manual of Classification [R- 23]

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

All manual changes are effected by a series
of Classification Orders each of which is cur-

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

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

The Manual of Classification has the follow-
ing parts :

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

Classes Arranged by Examining Groups.

Classes Listed Alphabetically by title.

Classes Listed Numerically with titles.

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

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

## 902.02 Definitions [R-23]

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

Such definitions state the subject matter that
is found in each defined class and subclass

# 902.02(a)

much more explicitly than it is possible to
state in short class and subclass titles.

Each Examining Group has at least one set
of definitions and there are several sets in the
Public Search Room. Additional or replace-
ment sheets incorporating all changes and addi-
tions are issued from time to time and should be
promptly added to each set of definitions.

# 902.02(a) Search Notes

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

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

# 902.02(b) Search Cards [R-23]

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

# 902.03 U.S. Patent Classification In- dices [R-23]

A number of indices of U.S. patents are avail-
able and may be used to obtain classification
data of U.S. patents.

# 902.03 (a) Numerical [R-23]

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

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

In each of the above, there is a separate in-
dex for each series, X, 1836, AI, Re, PP and D.
For the present original classification, call Ext.
3951. For official cross references of a given
patent, call Ext. 3180.

# 902.03 (b) Blue Slips [R-23]

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

# 902.03(c) Subclass Lists

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

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

# 902.03(d) Count [R-23]

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

# 902.04 Classification Orders and Bul- letins [R-23]

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

Copies are distributed to all Examining
Groups for immediate use.

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

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

# 903 Classification

## 903.01 Statutory Authority [R-23]

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

35 U.S.C. 9. Classification of patents. The Com-
missioner may revise and maintain the classification

by subject matter of United States letters patent, and
such other patents and printed publications as may
be necessary or practicable, for the purpose of deter-
mining with readiness and accuracy the novelty of
inventions for which applications for patent are filed.

## 903.02 Basis and Principles of Classi- fication [R-23]

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

Unofficial subclasses and digests made by
Examiners, if made in accordance with the plan
of classification, could be defined and issued as
an official part of the classification. See § 905.02
for procedure for ordering patent copies for
use as unofficial cross-references.

Examiners establishing unofficial subclasses
or digests should consult the Patent Classifier
having jurisdiction of the class to the end that,
when the work is completed, it can be defined
and made official.

## 903.02 (a) New and Revised Classes [R-23]

The establishment of new classes or sub-
classes and the revision of old classes are done
under the supervision of a Patent Classifier.

The Classifier performing the reclassification
secures a set of patent copies of the present clas-
sification, by either ordering soft copies or bor-
rowing the Public Search Room copies. With
these copies, by study and successive groupings,
he develops an arrangement of the patents
which is satisfactory for searching.

The lines marking the confines of the new or
revised class and its subclasses are determined,
and appropriate definitions drawn. Then the
Examiner's and the Public Search Room's
copies of the patents included in the new class
are collected, arranged and stamped conform-
ably to the new classification. Oficial ernes-
references are also prepared and appropriately
stamped.

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

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

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

## 903.02 (b) Scope of a Class

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

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

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

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

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

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

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

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

# 903.03 Classification of Foreign Pat- ents [R-26]

Foreign patents are distributed by the Scien-
tific Library to the Examining Groups with
forms 1121 attached. The Examiner should
indicate the proper classification on both the
foreign patent and form 1121.

# 903.04

If the foreign patent is not properly classifia-
ble in his Group, the Examiner should suggest a
Group in which he considers it to be classifiable
if possible and return it to the Scientific Li-
brary. Any indication of classification made by
the Library is advisory only, and the final deci-
sion as to where the patent is to be placed is
made by the Examiner in whose art it is
classifiable.

All subclasses in which a copy of the foreign
patent is desired should be indicated on form
1121. The file clerk will order any necessary
additional copies and place the classification
indicated on form 1121 on them.

All foreign patents should be classified and
forms 1121 returned to the Scientific Library
by the due date indicated on form 1121.

If the Examiner desires to update the classifi-
cation of a foreign patent by changing, can-
celling or adding copies, he should notify the
Scientific Library by forwarding a completed
form PO-1122.

It is helpful if the copy is either folded or
disassembled and re-stapled so that the most
significant sheet of drawing is exposed when
the copy is in the shoe case. NOTE: Since the
Library retains copies of these and other for-
eign patents (See § 901.06(a)), a desired for-
eign patent, known by country and number,
can be inspected in the Library or photocopies
ordered.

The Search Center forwards to the Exam-
ining Groups all United Kingdom, French,
Swiss, German, Japanese and Soviet Union
patents or published applications and only
those other foreign patents or published appli-
cations which do not claim priority elsewhere.
Duplicates from these countries should be re-
tained in the files to comply with the minimum
documentation requirements of the proposed
Patent Cooperation Treaty.

Unnecessary duplicates should be destroyed.

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

The Library invites Examiners confronted
with language problems in classifying foreign-
language patents to call upon its translators for
oral language assistance to be provided at the
Examiners' desks. Examiners are accordingly
encouraged to request this help by contacting
the Translation Section by phone. Examiners
are privileged to ask for specific translators if
they so desire.

Time spent in classifying foreign patents is
allowed in computing an Examiner's output.
The method used in classifying foreign patents
and the assignment of such work among the

Examiners of the Group are left to the Super-
visory Primary Examiners. The hours spent by
each Examiner on this work are noted on the
individual Examiner's record of "Other" time
(PO-690E).

## 903.04 Stamping of Examiner's and Search Room Copies [R-23]

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

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

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

### 903.05 Transfer of U.S. Patents [R-23]

The transfer of official copies of U.S. patents,
either original or cross-reference, from one
class or subclass to another requires the ap-
proval of a Classifier.

Examiners must submit to the Documenta-
tion Division all questions of transfer of
patents.

When an Examiner desires to transfer offi-
cial copies of domestic patents to a different
class or subclass, he should have a memoran-
dum list prepared for signature of the Primary
Examiner of the numbers of all patents which
are to be transferred indicating only the class
and subclass into which each is to be placed.
Both originals and properly identified official
cross-references may be included in the same
list and these may involve transfers to or from
any number of different classes or subclasses.
Additional cross-reference copies of any listed
patent may also be requested. This list with the
Examiner's copies of the patents is routed
through any other Group involved for its
prompt approval or comment and is forwarded
to the Documentation Division.

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

Unauthorized transfers render the subclasses
in the Public Search Room no longer dupli-

cates of those in the Examiners' rooms, and
also render incorrect the official numerical index
and subclass lists.

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

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

# 903.06 Practice To Be Followed in Ordering Official Cross-Refer- ences [R-27]

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

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

b. The preferred mode of ordering a cross-
reference where the Examiner has a soft copy
with the pertinent portion marked, is to indi-
cate on the marked soft copy the class and
subclass in which it is thought it should be
cross-referenced. Such soft copy should be
forwarded to the Documentation Division
where it will be promptly inspected, the neces-
sary action taken and the soft copy returned
within two days of its receipt.

## 903.06(a) Discovery of New Cross- References [R-23]

Patents which are useful as references may be
found either in the course of a search or from
inspection of the Official Gazette each week.
Soft copies may be placed in the Examiner's
search files. See § 905.02. However, if they con-
tain disclosure properly classifiable in an official
subclass, they should be given the status of offi-
cial cross-references in accordance with § 903.06.

# 903.07 Classifying and Cross-Refer- encing at Allowance [R-27]

It is the duty of each Primary Examiner to
personally review the classification and cross-
referencing made by his assistants of every ap-
plication passed for issue and to print his full
name on the blue issue classification slip to show
that this review has been made.

Both the blue issue classification slip (PO-
270) and the file wrapper provide spaces for the
full names of the "Assistant Examiner" and
"Primary Examiner."

An Examiner with full signatory authority
who acts on an application himself and sends it
to issue should write his full name on the blue
issue slip and stamp and initial the file wrapper
only in the "Primary Examiner" space. A line
should be drawn through the "Assistant Exam-
iner" spaces on both the blue issue slip and the
file wrapper to make it clear that the absence of
an initial or signature in the box was not an
oversight.

The initial classification of pending applica-
tions and the drawings thereof will have been

indicated in pencil by the Supervisory Primary
Examiner. See § 903.08 (b).

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

Only the correct official classification should
be left on the file and drawing of each appli-
cation when passed for issue.

The Examiner fills out a blue issue classifica-
tion slip (PO-270) or a salmon slip (PO-328)
in the case of designs to indicate the class and
subclass in which the patent should be classified
and also the classes in which it should appear
as a cross reference. The Examiner should be
certain that all subclasses into which he places
cross-references are still in existence. The
Examiner attaches the blue issue classifica-
tion slip to the inside of the left fold of the file
wrapper to be forwarded to the Issue and
Gazette Branch.

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

All Examiners are requested to fill in the
class and subclass on the drawings in large
numerals using as much of the space provided
as feasible. In this way the filing of drawings
and subsequent retrieval by the Issue and
Gazette Branch will be greatly aided. See also
§ 1302.10.

The Supplement to the Manual of Classifica-
tion identifies all unofficial subclasses and
digests in all classes (excluding designs) which
were of record at the time the Supplement was
prepared. This Supplement is intended as an
interim publication only until the Manual of
Classification can be completely reprinted with
the unofficial subclasses and digests shown in
their proper relationship to their respective
classes.

All examiners must include unofficial subclass
designators on the blue issue slips (PO-270)
at the time of issue when appropriate (exclud-
ing design classes). This applies to both the
original classification and the cross-reference
classification. Any time that a patent is being
issued in or cross-referenced to a subclass con-

903.07(a)

taining unofficial subclasses, the alpha designa-
tion shown in the manual supplement for the
proper unofficial subclass must be included on
the blue issue slip. No other designation is
permissible. Inclusion of only the numeric
designation of an official subclass which in-
cludes unofficial subclasses is an incomplete and
improper entry on a blue issue slip. All official
subclasses which have unofficial subclasses are
now designated with an "R" (denoting residual)
and if the patent does not fit an indented un-
official subclass, the blue slip should include
the "R" designation. It is permissible to place
multiple copies of a patent into a single set of
unofficial subclasses.

When the original patent is classified in an
unofficial subclass (including the "R" subclass),
the front of the file wrapper and the drawing
should also include the alpha designation.

Digests should also be included on the blue
issue slip, but the original classification must
never be a digest. The indication for a copy of
a patent in a digest must be in the cross-
reference area of the blue issue slip and must
be identified by class number, alpha characters
DIG and appropriate digest number.

## RESUBMISSION

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

In the case of oversized patents, where only
a minor portion of the disclosure is pertinent
to the subclass in which a cross reference is to
be placed, the Examiner may indicate on the
issue classification slip that a digest of the
patent should be prepared, thus, 74-340 (di-
gest). After the hard copy is printed, the Issue
Section of the Documentation Service Branch
inquires of the Examiner as to which sheets of
the patent should constitute the digest. Where
an official Classification Order affects an appli-
cation already passed to issue, the Documenta-
tion Division makes the necessary changes on
the file wrapper, blue slip, and drawing, if any.
The Clerk of the Examining Group is notified
so that the Serial Register card may be simi-
larly changed.

Applications which already have been sent
to the printer will be classified by the Docu-
mentation Division at the time the patent issues.

# 903.07(a) Cross-Referencing-Keep Systematic Notes During Prosecution [R-23]

Throughout the examination of the case,
systematic notes should be kept as to cross-
references needed either due to claimed or un-
claimed disclosure. Examiners handling related
subject matter should be consulted during
prosecution (whether they handle larger un-
claimed combinations or claimed or unclaimed,
but disclosed, subcombinations), and asked if
cross-references are needed. A cross-reference
MUST be provided for all CLAIMED dis-
closure where possible and inserted on the blue
issue classification slip at time of issue.

# 903.07(b) Issuing in Another Exam- ining Group Without Transfer [R-23]

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

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

# 903.08 Applications: Assignment and Transfer [R-23]

The Examining Group to which an applica-
tion is assigned is responsible for its examina-
tion until such time as the application is offi-
cially transferred to another Group by the
Documentation Division.

The Primary Examiners have full authority
to accept any application submitted to them
that they believe is properly classifiable in a
class in their Art Unit.

# 903.08(a) New Applications [R-27]

New applications are assigned to the various
Examining Groups in the first instance by the
Application Branch.

Upon receiving an application from Applica-
tion Branch, the clerk in charge of processing
new applications, should date stamp the file
wrapper and the back of the docket register
card on the day the file is to be delivered to the
Supervisory Primary Examiner. The complete
application (file, drawing, and serial register
card) are then given to the appropriate Super-
visory Primary Examiner. The clerks should
not permit these cases to remain overnight be-
fore distributing.

If the Supervisory Primary Examiner de-
cides that the application properly belongs in
his Art Unit, it is processed as a new receipt.
See § 903.08 (b).

When a new application is received which,
in the opinion of the Primary Examiner, does
not belong to his Group, he may request trans-
fer to another Group. See § 903.08(d).

Form PO-447, "Transfer Request" consists

of five copies and is used as a transmittal, Group
charge and notification form.

If the search in connection with the first ac-
tion develops art showing proper classification
elsewhere, the transfer is initiated after a re-
sponse is received from applicant.

## BORDERLINE CLASSIFICATION

The classification assignment of an applica-
tion to the proper Examining Group, especially
when there is submission to and assignment by
the Office of Documentation, often involves a
borderline situation. Classifiers in the Office of
Documentation, when assigning such border-
line cases, will stamp the file wrapper directly
below the interference search box when it is
their considered opinion that the classification
of such an application should be reconsidered
on allowance. The stamp will indicate which
Documentation Division will reconsider the
case on a "Special" basis.

903.08(d)

### 903.08(b) Classification and Assign- ment to Examiner [R- 21]

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

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

#### 903.08(c) Immediate Inspection of Amendments [R-24]

Upon the receipt of an amendment which
makes a transfer proper, steps should be taken
promptly in accordance with the transfer pro-
cedure outlined in § 908.08(d).

# 903.08(d) Transfer Procedure [R- 26]

TRANSFERS BETWEEN ART UNITS WITHIN THE
SAME GROUP

Where there is a difference of opinion among
the Supervisory Primary Examiners as to as-
signment within the same Group, the matter is
submitted to the Documentation "Postman" for
resolution.

## TRANSFERS BETWEEN DIFFERENT GROUPS

Transfer of undocketed and docketed new and
amended applications may be requested between
Groups via the regular messenger service with-
out submission to, or approval by the Office
of Documentation. However, the forwarding
Group must send the application to the receiv-
ing Group with a transfer request, PO-447,
within one calendar week of receipt in the for-
warding Group. Amended applications must be
submitted within two weeks of the Group re-
ceipt date of the amendment. If an application
is not submitted within the time limit, it must
be classified, assigned and retained in the orig-
inal Group.

Exceptions to these time limits are:

1\. All new applications (docketed and un-
docketed) transferred to Group 220 purely for
security reasons.

2\. New undocketed applications which are
hand carried.

3\. New applications docketed prior to
July 14, 1970.

Where a Supervisory Primary Examiner be-
lieves an application does not belong in his
Group, he completes form PO-447 by giving a
full explanation of the reasons for classification
in the other Group Art Unit. In the space pro-
vided on the form at least one of the following
must be included :

(1) Identification of the controlling claim
examinable in another Group.

(2) Identification of any existing informal
transfer agreement.

(3) Other reasons-with full explanation.

The Supervisory Primary Examiner may give
the complete file with form PO-447 attached,
to his transfer clerk for forwarding by regular
messenger service, or he may obtain the docket
register card from the clerk and hand carry the
entire file to the other Group Art Unit.

If the receiving Examiner agrees to accept
the application, he initials the form PO-447
and the face of the file wrapper. The transfer
is effected by the clerk in the Group which ac-
cepts the application by transfer. Application
Branch is notified by PO-447(a) and the for-
warding Group is notified by PO-447 (e).

If the other Examiner does NOT agree to
accept the application within one week of re-
ceipt, he indicates his reasons and adds his
initials on the form PO-447 in any available
space. Where acceptance of an application is
refused by the second Group within one week
of receipt in the second Group, it may be sub-
mitted to the Documentation Division associ-
ated with the forwarding Group for decision.
If an application is not refused within the time
limit, the second Group must keep and examine
the application.

Transfer inquiry after expiration of the time
period may be made by hand carrying the ap-
plication directly to the second Group for pos-
sible acceptance. If it is accepted, the transfer
is effected, but if it is refused, the original
Group must keep and examine the application.

Transfer of amended applications (any ap-
plication having a response to an action by the
Patent Office) may be requested by using the
regular messenger service, if transfer is initi-
ated within two weeks from the Group receipt
date of the response. The procedure for request-
ing transfer of such an amended application is
similar to the procedure for requesting transfer
of a new case. The time limit for initiating
transfer of an amended application is two weeks
from the Group receipt date of the response.
The procedure for hand carrying an amended
application is also similar; if accepted after the

903.08(e)

two week period, the transfer may be effected,
but if refused the case remains in the initiating
Group. The time limit for refusing the transfer
of an amended case is one week, as for new
applications.

The question or need for a restriction re-
quirement does not enter into the determination
of transfer.

PROCEDURE IN THE DOCUMENTATION DIVISION

The Classifier may assign the application in
accordance with the forwarding Examiner's
recommendations or, when this is not appropri-
ate, to some other Group. He writes the assigned
class and Group Art Unit numbers and his ini-
tials on the face of the file wrapper and on PO-
447, briefly giving his reasons in the space pro-
vided on the form.

Where the change results in assignment of an
application to a class under the jurisdiction of
another Documentation Division, the Classifier
obtains the concurrence and signature on PO-
447 of a Classifier in the other Documentation
Division.

As heretofore, under certain circumstances a
Classifier may, contrary to controlling classifi-
cation rules, assign an application to a class or
Group which in his judgment is better equipped
to examine the application. This is fully
described in paragraph 6 and 9 of § 903.08 (e) ;
see also the last paragraph of § 903.08 (a).
Assignment by the Classifier becomes final, and
no transfer should be accepted without the
Classifier's initials on the face of the file
wrapper.

## RECONSIDERATIONS

The Supervisory Primary Examiner of the
Group Art Unit to which an application is trans-
ferred may request reconsideration provided
that Group Art Unit has not seen the applica-
tion before the transfer, if he believes the
Classifier's assignment is in error, by briefly
stating his reasons on a new form PO-447 and
sending it with the application to his Docu-
mentation Division. Only one such request will
be accepted. The Classifier having jurisdiction
of the class in which the application is assigned
considers the matter and writes his decision on
PO-447. However, reconsideration may not be
requested by a forwarding Group when an
application is returned by a Classifier for
examination.

Full clerical procedures for transfering ap-
plications are set forth in section 1205 of the
Manual of Clerical Procedure.

# 903.08(e) General Regulations Gov- erning the Assignment of Applications for Examina- tion [R-21]

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

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

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

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

4\. The location of the U.S. patents consti-
tuting the prior art is generally controlling
over all else. (Note: Where time permits, ob-
vious misplacements of the patents constituting
the prior art are corrected, but to straighten all

lines as the cases come up for assignment would
require the time of several men and would often
involve a reclassification of an entire class.)

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

6\. The Patent Classifiers are authorized in
all cases, where they evaluate the facts as war-
ranting it, to assign applications for examina-
tion to the Group best able to examine the same.
Since assignment for examination on this basis
will at times be contrary to classification of
patents containing the same character of
claims, the Patent Classifiers will indicate the
proper classification of the patent, if such claims
are allowed.

Thus in cases where there is a claim drawn to
hybrid or mixed subject matter and the Super-
visory Primary Examiner in one discipline
feels that the application requires consideration
by, or may be best examined by, a Group in one
of the other technical disciplines, Chemical,
Electrical, or Mechanical, he may submit the ap-
plication to his Patent Classifier who may
assign the application on a "best examinable"
basis, in accordance with this subsection.

Some examples of applications which may be
thus submitted include:

(1) An application containing a hybrid
claim wherein, for instance, a product is defined
merely in terms of the process for producing it.
See § 705.01 (e) (1).

(2) Where an application properly assigned
to a mechanical or electrical class contains at
least one claim to mixed subject matter, a part
of which is chemical, the application may be
assigned to the appropriate chemical Art Unit
for examination; or where the application is
properly assigned to a mechanical class and a
claim therein contains electrical subject matter,
the application may be assigned to the appro-
priate electrical Art Unit for examination.

As indicated earlier, when an application
which had been assigned for examination in ac-
cordance with this subsection ultimately is al-
lowed, it will be classified according to the con-
troling claim. In effect, assignment for exami-
nation may be on a "best examinable" basis, but
the patent will issue and be classified according
to the rules of superiority in classification ; thus,
the search file will have a constant set of rules
governing placement of patents therein.

Where an application is being reassigned
from one examining discipline to another, under
the provisions of this subsection, the Patent

Classifiers are authorized to require the first
Examiner to cite references pertinent to the
claimed features falling under the jurisdiction
of the art within his discipline. In those cases
wherein the application of the reference(s) is
not evident or clear, the first Examiner should
include a brief statement explaining the rela-
tion and possible application of the reference (s)
to the claim (s) ; in case of dispute as to the ne-
cessity of this procedure, the Patent Classifier
has power to require the statement.

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

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

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

10\. An Examiner seeking the transfer of a
case may make a search, both of his own class
and the class to which he thinks the case should
be transferred, and the Examiner in charge of
the Art Unit should exhibit the result of such
search to the Office of Documentation. This is
the way the expert knowledge of the Examiners
involved is utilized.

# 903.08 (f) Patent Classifier's Decision [R-23]

A Classifier in a Documentation Division de-
cides the question of the proper classification
of the application, and either (1) returns the
application to the Group which submitted it if
he denied the transfer request, or (2) forwards
the application to the Group to which it is
transferred.

# 903.08(g)

# MANUAL OF PATENT EXAMINING PROCEDURE

903.08(g)
Transfer to Another Ex-
amining Group After
Decision [R-23]

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

If the case is one which had been taken up for
action by an Examiner according to its effective
filing date, it should be treated as special by any
Examiner, Art Unit, or Group to which it is
transferred. See § 708.01.

## 903.09 International Classification of Patents for Inventions [R- 23]

The Council of Europe and the International
Bureau for the Protection of Industrial Prop-
erty (BIRPI), have promulgated an Interna-
tional Classification of Patents for inventions
(abbreviated "Int. Cl."). The full Int. Cl. des-
ignation must be placed in the indicated space
on the blue issue classification slip (form PO-
270) when an application is passed to issue.

### BASIC INTERNATIONAL CLASSIFICATION STRUCTURE

An overall picture of the International
Classification System breakdown is as follows:
Section
Subsection
Class
Subclass

Group
Subgroup
This can be graphically illustrated thus:

Section

Class
1

Subclass

A01b

21/16

Group

4
Subgroup

Section-Subsection

The International Classification is divided
into the following main sections bearing capital
letters A through H, and then, into subsections
(without any designating symbol) :

A. Human necessities:

Subsections: Agriculture

Foodstuffs and tobacco
Personal and domestic
articles
Health and amusement

B. Performing operations :
Subsections: Separating and mixing
Shaping
Printing
Transporting

C. Chemistry and metallurgy :
Subsections: Chemistry
Metallurgy

D. Textiles and paper :
Subsections: Textiles and flexible
materials not other-
wise provided for
Paper

E. Fixed constructions :
Subsections: Building

Mining

F. Mechanics, lighting, and heating:
Subsections: Engines and pumps
Engineering in general
Lighting and heating
Weapons; blasting

G. Physics:
Subsections: Instruments
Nucleonics

H. Electricity :
Subsection: Electricity

Class

Each section or subsection is divided into
classes which are designated by a two digit
number following the section designation.

Example :

A01-Agriculture; Forestry ; Animal Hus-
bandry; Hunting; Trapping; Fish-
ing

Subclass (Corresponding to U.S. Class)

Each class is divided into subclasses which
are designated by a lower case letter.

Example :

A01b-Soil working in agriculture or
forestry

Group (Corresponding to U.S. Mainline Sub-

class)

Each subclass is divided into units referred
to as groups which are identified by a number
to the left of a diagonal slash and 00 to the
right thereof.

Example :
A01b 1/00 Hand tools

Subgroups (Corresponding to U.S. Indented
Subclasses)

Groups may be divided into subgroups which
are designated by a number to the right of the
diagonal slash.

Example :

A01b 1/02-spades; shovels

## CLASSIFYING IN THE INTERNATIONAL CLASSIFICA- TION SYSTEM

Patents should be classified as far as possible
as a whole and not by separate classification of
constituent parts.

A. Selecting subclasses (Corresponding to U.S.
Class)

In the International Classification there often
occurs :

1\. A subclass providing for the inherent na-
ture or function of the invention, and

2\. a subclass for its intended field of use.

Preference must be given to the intended field
of use unless the invention is clearly specially
adapted to a particular intrinsic function for
which a class exists. The classifier must decide
whether the invention is specially adapted to
one field of use, or whether it is applicable to
more than one particular field. It may, of course,
be desirable to classify the invention in both
places (intrinsic function and intended field of
use) ; especially when the choice of a single
place rests on the classifier's opinion rather
than on fact. More detailed treatment of this
problem may be found in paragraphs 20, 21 in
the "Forward and Guide" in Volume 1 of the
Int. Cl.

B. Selecting Groups (Corresponding to U.S.
Mainline Subclasses)

There are no firm rules of hierarchy. Fre-
quently, there will be two or more groups which
seem equally relevant, requiring a choice be-
tween them or classification in more than one
group. Contrary to U.S. practice, in which the
more comprehensive subject matter appears
first in the schedule, in the Int. CI, these in-
ventions may be found in the lower part of the
schedule.

### C. Selecting Subgroups (Corresponding to U.S. Indented Subclasses)

An invention should be classified in the lowest
(most indented) subgroup which is compre-
hensive to embrace all essential features of the
invention.

## U.S .- INTERNATIONAL CLASSIFICATION CONCORDANCE

The Office of Search Systems and Documen-
tation has prepared a concordance between the

U.S. classes and subclasses and the International
Classification. It is well recognized that the
two systems are conceptually different; the
U.S. system being based primarily on structure
and function while the International Classifi-
cation is primarily industry and profession ori-
ented. With this in mind, it will be seen that
a complete one to one concordance between the
two systems cannot be attained. The concord-
ance then must be recognized as a guide to be
used in conjunction with the International
Classification Manual, and not as a translation
list. An indication on the concordance may re-
fer to only one relevant group, and not neces-
sarily the only group in which the patent can
or should be classified.

It is further recognized that the concordance
may be incomplete in some areas and contain
errors in other areas. Therefore, if corrections
need to be made in the concordance, the Exam-
ining Corps is requested to report any suggested
changes to the Administrator, Office of Search
Systems and Documentation, Room 2-8A11.

Continuing revision is envisaged to improve
the International Classification system and to
take account of technical development. A for-
mal adoption of modifications, however, is not
expected to take place at shorter intervals than
about five years.

### GENERAL

1\. International Classification will be placed
on all issuing applications and Defensive Pub-
lication documents.

2\. Each person involved in placing Interna-
tional Classification on patents should read
pages ix to xxxiii in the front of Volume 1 of
the International Classification of Patents
Manual.

3\. As indicated above the International Clas-
sification of Patents of the issuing application
should be placed on the blue issue classification
slip (Form PO-270) in the space headed "In-
ternational Classification."

4\. It is required that one International Clas-
sification and no more than three (3) be placed
on all cases. It is required that the full elabo-
ration be designated (e.g. A01c 5/00).

904.01 (d)

#### 904 How to Search [R-24]

The Examiner, after having obtained a
thorough understanding of the invention dis-
closed and claimed in the application, then
searches the prior art as disclosed in patents
and other printed documents, Any such docu-
ment used in the rejection of a claim is called
a "reference."

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

#### 904.01 Analysis of Claims [R-24]

The breadth of the claims in the application
should always be carefully noted; that is, the
Examiner should be fully aware of what the
claims do not call for, as well as what they do
require. There is always danger of reading
into the claim limitations imported from the
specification or drawing.

#### 904.01(a) Variant Embodiments Within Scope of Claim

· Substantially every claim includes within its
breadth or scope of definition one or more vari-
ant embodiments not disclosed by applicant,
which would anticipate the terms of the defini-
tion. The claim must be so analyzed and
understood that any such variant encountered
during the search will be recognized and
selected.

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

## 904.01(b) Equivalents [R-24]

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

## 904.01(c) Analogous Arts [R-24]

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

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

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

## 904.01(d) Outlining Field of Search [R-24]

In outlining a field of search the Examiner
should note every class and subclass that may
have material pertinent to the subject matter as
claimed. Every subclass and digest pertinent
to each type of invention claimed should be
listed, from the largest combination through
the various subcombinations to the most ele-
mentary part. The search should extend to all
probable areas relevant to the claimed subject
matter and should cover the disclosed features
which might reasonably be expected to be
claimed.

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

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

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

### 904.02 Conducting the Search [R- 24]

It is a prerequisite to a speedy and just de-
termination of the issues involved in the ex-
amination of an application that a careful and
comprehensive search, commensurate with the
limitations appearing in the most detailed
claims in the case, be made in preparing the first
action on the merits so that the second action on
the merits can be made final or the application
allowed with no further searching other than to
update the original search. It is normally not
enough that references be selected to meet only
the terms of the claims alone, especially if only
broad claims are presented; but the search
should, insofar as possible, also cover all sub-
ject matter which the Examiner reasonably
anticipates might be incorporated into appli-
cant's amendment. A complete search should
result if applicant included, at the time of filing,
claims varying from the broadest to which he
believes he is entitled to the most detailed that
he would be willing to accept.

It thus results that the Examiner finds ref-
erences that, while not needed for treating the
claims before him, would be useful for fore-
stalling the possible presentation of claims to
other subject matter regarded by applicant as
his invention, and claimable with the subject
matter being currently claimed, but shown to
be old by these references.

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

The best reference should always be the one
used. Sometimes the best reference will have a

publication date less than a year prior to the
application filing date, hence it will be open to
being overcome under Rule 131. In these cases,
if a second reference exists which cannot be so
overcome and which, though inferior, is an ade-
quate basis for rejection, the claims should be
additionally rejected thereon.

In all references considered, including non-
patent, foreign patents and domestic patents,
the Examiner should study the specification or
description sufficiently to determine the full
value of the reference disclosure relative to the
claimed or claimable subject matter.

## 905 Miscellaneous

### 905.01 Photocopy Orders [R-24]

Patents and/or applications received from
Germany since October 1, 1968 and from Japan,
France and U.S.S.R. since July 1, 1969 are not
in numerical sequence. Inasmuch as the Patent
Office supplies orders for copies of these foreign
documents from master microfilm reels made
up on weekly or other periodic publishing
sequences, all orders must include the country,
patent or application number, and the publica-
tion date (if known) of the ordered document.
Reference should be made to § 901.05 (a)
to assist in determining the publication date of
the commonly encountered foreign patents and
applications.

All orders for photocopies on PO-250 orig-
inating in the Examining Groups must be au-
thorized by an Examiner having full or partial
signatory authority in the box headed "PRI-
MARY EXAMINER (Signature)". The
stamped name of the authorizing Examiner will
be indication of authority for Reproduction
Section. Handwritten signatures should not
be used.

### 905.02 Soft Copy Orders [R-24]

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

### UPDATING OF UNOFFICIAL PATENT LISTINGS

All unofficial patent copies in Official sub-
classes and Digests have been recorded as of the
summer of 1969. In order that each search file
be complete as to unofficial patent copies at the

time of converting from paper files to aperture
card files, it is necessary that each unofficial
patent copy subsequently added to the search
file be recorded.

Therefore, when ordering unofficial patent
copies to be placed in the search file the Exam-
iner should indicate the intended classification
designation of the patent on form PO-14 "Ex-
aminer's Order for Soft Copy" under the head-
ing "NOTES".

The Group clerical staff should forward the
completed PO-14's to the Administrator of
Documentation who will record the patent
number and intended classification designation
and in turn forward the PO-14s to the Patent
Copy Sales Branch.

Should the "NOTES" space of form PO-14
be blank upon receipt by Documentation, it will
be assumed that the Examiner does not wish the
patent to be recorded.

Because of the cost of printing copies of
patents, economy should be exercised in their
use. No soft copies should, however, be returned
to Patent Copy Sales Branch by Examiners.
[R-27]

### 905.03 Orders for Patented and Aban- doned Files [R-22]

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

Patented and abandoned files may be ob-
tained in the Record Room and Abandoned
File Unit respectively, by filing out Charge
Form (PO-125), and leaving this Form with
the clerk in charge. The file should be promptly
returned when the Examiner has finished with
it. Where a patented file is needed for the pur-
pose of reissue or interference, this information
should be given to the Record Room upon ob-
taining the file, and as soon as these matters have
been disposed of, the file should be returned to
the Record Room.

When an interference is declared between a
patent and an application and the interference
is forwarded to the Board of Patent Interfer-
ences, the clerk in charge of the Record Room
should be informed in order that the charge
may be changed and the location of the file
known at all times.

Examiners may expedite service in obtaining
abandoned files and patented files by ordering
them by telephone.

When ordering a patented file from the Rec-
ord Room, the name of the person ordering the

file should appear on the Form PO-125. It is
important that the Patent Number be stated
rather than the Serial Number of the applica-
tion which matured into the patent. An Ex-
aminer ordering a patented file should also place
his Art Unit number on the Form. If the nota-
ton "HOLD" is marked on the Form PO-125
the case will be held at the Record Room and in
the absence of such notation it will be sent to
the Art Unit indicated. If ordered by phone,
the Examiner may appear at the Record Room
to complete the Form PO-125 and to pick up
the file or he may request the delivery of the file
by regular Office Messenger Service. If the need
for the file is not urgent, Examiner time may be
saved by sending a Form PO-125, completed in
the manner indicated above, to the Record Room
by regular Office Messenger Service. The file
will be delivered by the same Messenger Serv-
ice to the Art Unit indicated on the form or it
will be held at the Record Room only if so re-
quested on the Form.

Patent Copy Sales Branch has charge of the
drawings in patented cases. Canceled sheets,
however, are not retained with the patented
drawings but are filed with the "Abandoned
Files and Drawings."

### 905.04 Marking Examiners' Copies of Patents

When the Examiners' copies of patents are
sent to their respective Art Units to be filed,
they should be routed across the appropriate
Examiners' desks prior to placement in the
shoes. The Assistant Examiners who examined
the application should mark in ink on the face
of the drawings, or the specifications where
there are no drawings, such features as may be
deemed advantageous in aiding understanding
of the patents in future searches.

### 905.05 Charge for Pending Applica- tion Files [R-22]

Whenever an application file is temporarily
removed from the Group or Branch having
jurisdiction thereof Charge Form PO-125
must be completed, and left with the clerk in
charge.

Whenever a file is removed from the Group
application file rack for use by an Examiner
assigned to that Group, but not having jurisdic-
tion of that file, cardboard Form OF-25 should
be inserted in place of the borrowed file.

All files should be returned promptly to their
proper location.

Printed page 1

Printed page 2

Printed page 3

Printed page 4

Printed page 5

Printed page 6

Printed page 7

Printed page 8

Printed page 9

Printed page 10

Printed page 11

Printed page 12

Printed page 13

Printed page 14

Printed page 15

Printed page 16

Printed page 17

Printed page 18

Printed page 19

Printed page 20

Printed page 21

Printed page 22

Printed page 23

Printed page 24

Printed page 25

OCR transcription for search; preserved printed pages are authoritative

Continue sua pesquisa no ChatGPT ou Claude