1000

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1000 Matters Decided By Various Patent Office Officials

1001 Statutory Authority of Commissioner
1001.01 Modes of Exercising Authority
1002 Petitions to the Commissioner

1002.01 Procedure

1002.02 Delegation of Authority to Decide Petitions

1002.02 (a)
Petitions Decided by the Assistant Com-
missioner for Patent Examining

1002.02 (b)
Petitions Decided by the Deputy Assist-
ant Commissioner for Patent Exam-
ining

1002.02 (c)
Petitions and Requests Decided by the
Group Directors

1002.02(d)
Requests Decided by the Supervisory
Primary Examiners

1002.02 (e)
Requests Decided by the Examining
Group Appeal Clerks

1002.02 (f)
Petitions Decided by the Chairman of
the Board of Patent Interferences

1002.02 (g)
Petitions Decided by the Patent Inter-
ference Examiners

1002.02 (h)
Petitions Decided by the Special Assist-
ant to the Assistant Commissioner for
Patent Examining

1002.02 (i)
Petitions Decided by the Assistant Com-
missioner for Appeals, Legislation
and Trademarks

1002.02 (j)
Petitions Decided by the Board of Ap-
peals

1002.02 (k)
Petitions Decided by the Solicitor

1002.02 (1)

Requests Decided by the Decisions and
Certificates of Correction Unit

1002.02 (m)
Petitions Decided by the Chairman,
Committee on Enrollment

1003
Matters Submitted to the Group Directors
1004
Actions Which Require the Attention of the Pri-
mary Examiner

1005 Partial Signatory Authority

# 1001 Statutory Authority of Commis- sioner [R-32]

35 U.S.C. 3. Officers and employees. A Commis-
sioner of Patents, one first assistant commissioner, two
assistant commissioners, and not more than fifteen
examiners-in-chief, shall be appointed by the President,
by and with the advice and consent of the Senate.
The assistant commissioners shall perform the duties
pertaining to the office of commissioner assigned to

them by the Commissioner. The first assistant commis-
sioner, or, in the event of a vacancy in that office, the
assistant commissioner senior in date of appointment,
shall fill the office of Commissioner during a vacancy
in that office until a Commissioner is appointed and
takes office. The Secretary of Commerce, upon the
nomination of the Commissioner in accordance with
law, shall appoint all other officers and employees.

The Secretary of Commerce may vest in himself the
functions of the Patent Office and its officers and em-
ployees specified in this title and may from time to
tme authorize their performance by any other officer
or employee. The Secretary of Commerce is authorized
to fix the per annum rate of basic compensation of each
examiner-in-chief in the Patent Office at not in excess
of the maximum scheduled rate provided for positions
in grade 17 of the General Schedule of the Classifica-
tion Act of 1949, as amended.

35 U.S.C. 6. Duties of Commissioner. The Commis-
sioner, under the direction of the Secretary of Com-
merce, shall superintend or perform all duties required
by law respecting the granting and issuing of patents
and the registration of trademarks; and he shall have
charge of property belonging to the Patent Office. He
may, subject to the approval of the Secretary of Com-
merce, establish regulations, not inconsistent with law,
for the conduct of proceedings in the Patent Office.

# 1001.01 Modes of Exercising Author- ity [R-27]

The Commissioner's authority to review and
supervise the work of the Office is exercised by
the promulgation of the Rules of Practice; is-
suance of orders, notices and memoranda stat-
ing Office policies and modes for effectuating
these policies; decisions on petitions by appli-
cants, and by the designation of particular
cases which must be submitted to the Commis-
sioner or other officials authorized by the Com-
missioner. The present chapter deals with the
latter two items.

Rule 181, paragraph (g), states "The Com-
missioner may delegate to appropriate Patent
Office officials the determination of petitions
under this rule, with the exception of petitions
under rule 183."

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# 1002 Petitions to the Commissioner [R-32]

Rule 181. Petition to the Commissioner. (a) Peti-
tion may be taken to the Commissioner (1) from any
action or requirement of any examiner in the ex parte
prosecution of an application which is not subject to
appeal to the Board of Appeals or to the court; (2)
in cases in which a statute or the rules specify that
the matter is to be determined directly by or reviewed
by the Commissioner; and (3) to invoke the super-
visory authority of the Commissioner in appropriate
circumstances.

(h) Any such petition must contain a statement of
the facts involved and the point or points to be re-
viewed and the action requested. Briefs or memo-
randa, if any, in support thereof should accompany or
be embodied in the petition; and where facts are to
be proven, the proof in the form of affidavits or decla-
rations (and exhibits, if any) must accompany the
petition.

(c) When a petition is taken from an action or
requirement of an examiner in the ex parte prosecution
of an application, it may be required that there have
been a proper request for reconsideration (rule 111)
and a repeated action by the examiner. The examiner
may be directed by the Commissioner to furnish a
written statement, within a specified time, setting forth
the reasons for his decision upon the matters avered
in the petition, supplying a copy thereof to the peti-
tioner.

(d) No fee is required for a petition to the Commis-
sioner except in the case of a petition to revive an
abandoned application (rule 137) or for the delayed
payment of an issue fee (rule 317).

(e) Oral hearings will not be granted except when
considered necessary by the Commissioner.

(f) Except as otherwise provided in these rules,
any such petition not filed within two months from the
action complained of, may be dismissed as untimely.
The mere filing of a petition will not stay the period
for reply to an examiner's action which may be run-
ning against an application, nor act as a stay of other
proceedings.

(g) The Commissioner may delegate to appropriate
Patent Office officials the determination of petitions
under this rule, with the exception of petitions under
rule 183.

Rule 182. Questions not specifically provided for.
All cases not specifically provided for in these rules
will be decided in accordance with the merits of each
case by or under the authority of the Commissioner,
and such decision will be communicated to the. inter-
ested parties in writing.

Rule 183. Suspension of rules. In an extraordinary
situation, when justice requires, any requirement of
these rules which is not a requirement of the statutes
may be suspended or waived by the Commissioner in
person on petition of the interested party, subject to
such other requirements as may be imposed.

Rule 184. Reconsideration of cases decided by former
Commissioners. Cases which have been decided by
one Commissioner will not be reconsidered by his suc-
cessor except in accordance with the principles which
govern the granting of new trials.

Petitions on appealable matters ordinarily
are not entertained. See § 1201.

The mere filing of a petition will not stay the
period for replying to an examiner's action
which may be running against an application,
nor act as a stay of other proceedings (rule
181(f)). For example, if a petition to vacate
a final rejection as premature is filed within
two months from the date of the final rejection.
the period for response to the final rejection is
not extended even if the petition is not reached
for decision within that period. However, if the
petition is granted and the applicant has filed
an otherwise full response to the rejection
within the period for response, the case is not
abandoned.

Rule 181 (f) now provides that any petition
under that rule which is not filed "within two
months from the action complained of" may be
dismissed as untimely. Often, the "action com-
plained of", for example, a requirement for a
new drawing, is included in the same letter as
an action on the merits of the claims, the latter
having a three months period for response.
Under such circumstances, if applicant requests
reconsideration, under rule 111(b), of the re-
quirement for a new drawing, the examiner's
action on this request, if adverse, establishes the
beginning of the two month period for filing the
petition. The petition must be filed within this
period even though the period for response to
the rejection of the claims may extend beyond
the two month period.

## 1002.01 Procedure [R-21]

Petitions, together with the respective appli-
cation files, are sent to the Office of the Com-
missioner or other official having the delegated
authority to decide the petition. The petition
may be referred to the examiner for a formal
statement under rule 181 (c) or for an informal
memorandum.

Where a formal statement under rule 181 (c)
is made, a copy thereof is mailed to the peti-
tioner by the examiner unless the latter is
otherwise directed, and the file and petition,
accompanied by the original copy of his state-
ment, are returned to the official handling the
petition. If an informal memorandum is re-
quested, no copy thereof is mailed to the peti-
tioner by the examiner. After the decision has
been rendered, the decision is entered on the

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"Contents" of the file wrapper which is then re-
turned to the primary examiner, who will act
in accordance with the decision.

## 1002.02 Delegation of Authority to Decide Petitions [R-32]

Petitions to the Commissioner are decided in
accordance with the following delegation of
authority.

In any case in which the authority to decide
the petition has been delegated as indicated in
§§ 1002.02(a)-(m), the decision may be viewed
as a final agency decision for the purposes of
court review where such review is proper.

The authority to decide certain types of peti-
tions for suspension of rules of practice under
rule 183 of the Rules of Practice in Patent Cases
and rule 2.148 of the Trademark Rules of Prac-
tice has been delegated to the Assistant Com-
missioner for Patent Examining and the Assist-
ant Commissioner for Appeals, Legislation and
Trademarks. The petitions falling within each
of these delegations are set forth in the listings
in §§ 1002.02 (a) and (i). Certain types of such
petitions falling within the authority delegated
to the Assistant Commissioner for Patent Ex-
amining have ben assigned by him to the Dep-
uty Assistant Commissioner for Patent Exam-
ing and this assignment is reflected in the
listings in § 1002.02(b).

In accordance with rule 181 (g) the authority
to decide petitions to the Commissioner, not
otherwise delegated, has been delegated to var-
ious Patent Office officials. Generally, these offi-
cials will decide petitions as specified in the fol-
lowing sections for the effective operation of the
Patent Office. Also listed are certain petitions
which are not, strictly speaking, to the Commis-
sioner but have been committed by statute or
rule to the designated officials. Not included
herein are petitions under 37 C.F.R., Part 100,
for reconsideration of Commissioner's decisions
on patent rights of government employees, since
authority to act on these petitions has been
reserved to the Commissioner and has not been
delegated.

Authority not herein delegated has been re-
served to the Commissioner and may be dele-
gated to appropriate officials on an ad hoc basis.

1002.02 (a) Petitions Decided by the
Assistant Commissioner
for Patent Examining
[R-32]

1\. Petitions related to public use proceedings.
Rule 292.

2\. Petitions to make a patent application spe-
cial on the ground of :

(a) prospective manufacture;

(b) infringement; or

(c) inability to interest capital. § 708.02.

3\. Petitions under rule 183 for suspension of
rules relating to patent examining and interfer-
ences not otherwise covered.

4\. Petitions to expunge papers from patent
application files or patent files.

5\. Petitions to strike patent applications.
Rule 56.

6\. Petitions to withhold from issue the patent
application of a winning party of an interfer-
ence.

7\. Petitions for extension of time to seek
court review from a decision of the Board of
Patent Interferences under rule 304.

8\. Petitions relating to decisions of the Board
of Patent Interferences.

1002.02(b)
Petitions Decided by the
Deputy Assistant Commis-
sioner for Patent Exam-
ing [R-32]

1\. Petitions to revive an abandoned patent
application. Rule 137, § 711.03 (c).

2\. Petitions under rule 183 for suspension of
rules relating to the examining of patent appli-
cations.

3\. Petitions to invoke the supervisory author-
ity of the Commissioner in matters within the
responsibility of the Patent Examining Opera-
tion.

4\. Petitions to withdraw patent applications
from issue. Rule 313, § 1308.

5\. Petitions for acceptance of late priority
papers in patent applications. Rule 55, §§ 201.14
(a) and (c).

6\. Petitions for deferment of issuance of
patents.

7\. Petitions for express abandonment of pat-
ent applications after Notice of Allowance.

8\. Petitions to accept late payment of issue
fees. Rule 316, § 712.

9\. Petitions to accept late payment of addi-
tional issue fees. Rule 317, § 712.

10\. Petitions relating to disclaimers in pat-
ents and patent applications under rule 321.

11\. Petitions relating to assignments and is-
suance of patents. § 1308.

12\. Petitions to invoke the supervisory au-
thority of the Commissioner in matters concern-
ing the Office of Administration.

13\. Petitions under rule 183 for suspension of
rules in patent matters administered by the
Office of Administration.

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# MANUAL OF PATENT EXAMINING PROCEDURE

1002.02(c)

1002.02(c)
Petitions and Requests
Decided by the Group Di-
rectors [R-32]

1\. Petitions to make patent applications spe-
cial : § 708.02

(a) on the ground of applicant's age or state
of health;

(b) a division, continuation or continuation-
in-part of an earlier application;

(c) under the Environmental Quality Pro-
gram;

(d) under the Special Examining Procedure
for certain new applications-accelerated
examination.

2\. Petitions to reopen prosecution of patent
applications after decision by the Board of Ap-
peals, where no court action has been filed.
§ 1214.07.

3\. Petitions from a final decision of examiner
requiring restriction in patent applications.
Rule 144, § 818.03 (c).

4\. Petitions invoking the supervisory author-
ity of the Commissioner involving any ex parte
action or requirement in a patent application by
the examiner which is not subject to appeal, as
for example :

(a) prematureness of final rejection, § 706.07
(c) ;

(b) refusal to enter an amendment, rule 127,
§ 714.19;

(c) holding of abandonment, §§ 711.03 (c)
and (d) ; .

(d) requirement to cancel "new matter" from
specification, § 608.04 (c) ;

(e) petitions relative to formal sufficiency
and propriety of affidavits under rules
131, 132, and 204;

(f) petitions to institute an interference
under rule 205.

5\. Petitions under rule 212 for concurrent ex
parte and inter partes prosecution of patent
applications. § 1103.

6\. Petitions for return of original oaths of
patent applications. § 604.04 (a).

7\. Requests for second or subsequent exten-
sions of a set shortened statutory period under
rule 136(b). § 710.02(e).

8\. Requests for interviews with the examiner
after a patent application has been sent to issue.
§ 713.10.

9\. Requests for a defensive publication
(denial). § 711.06.

10\. Petitions concerning appealed patent ap-
plications before transfer of jurisdiction to the
Board of Appeals (e.g., second or subsequent
extension of time for filing an appeal brief).
§ 1206.

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11\. Petitions for a second or subsequent sus-
pension of action in patent applications under
rule 103. § 709.

12\. Petitions for license to file patent appli-
cations in foreign countries (limited to the
group director of Group 220).

13\. Petitions to reinstate appeals dismissed
by the group appeals clerk.

1002.02(d)
Requests Decided by the
Supervisory Primary Ex-
aminers [R-32]

Requests for defensive publication (ap-
proval). § 711.06.

1002.02 (e)
Requests Decided by the
Examining Group Appeal
Clerks [R-32]

First request for a one-month extension of
time to file the appeal brief or reply brief in
appeals to the Board of Appeals. § 1206.

1002.02 (f) Petitions Decided by the
Chairman of the Board of
Patent Interferences
[R-32]

1\. Petitions in patent interferences from an
action by a primary examiner or from an inter-
locutory action by the patent interference ex-
aminer under 35 U.S.C. 135 (c).

2\. Petitions to accept late settlement papers
in patent interferences.

3\. Petitions for acceptance of priority papers
in patent applications involved in an interfer-
ence.

1002.02(g)
Petitions Decided by the
Patent Interference Ex-
aminers [R-32]

1\. Petitions for access to patent applications
related to an interference or having an inter-
ference background. § 103.

2\. Petitions for access to unopened prelimi-
nary statements under rule 227 (d).

1002.02 (h) Petitions Decided by the
Special Assistant to the
Assistant Commissioner
for Patent Examining
[R-32]

1\. Petitions for filing date. § 506.

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2\. Petitions relating to filing and issuance
of divisional reissue applications. Rule 177,
§ 1401.10 (a).

1002.02(i) Petitions Decided by the
Assistant Commissioner
for Appeals, Legislation
and Trademarks [R-32]

1\. Petitions to revive abandoned patent ap-
plications for reinstating an appeal under rule
192 where jurisdiction had transferred to the
Board of Appeals.

2\. Petitions to reopen prosecution in patent
applications under rule 198 after court action
has been filed for review of a decision of the
Board of Appeals. § 1214.07.

3\. Petitions to refund appeal fees in patent
applications.

4\. Petitions invoking the exercise of super-
visory authority over the Board of Appeals,
e.g .:

(a) to clarify a decision after the Board of
Appeals has declined to do so;

(b) to have an appeal considered after the
Board has suspended action on the
appeal;

(c) to reinstate appeals dismissed by the
Board of Appeals.

5\. Petitions under rule 183 for suspension of
rules relating to appeals before the Board of
Appeals, e.g .:

(a) Requests for extension of the time set in
rule 197 (b) for filing a petition for reconsidera-
tion of a Board decision. § 1214.03.

(b) Petition for an extension of the time set
by rule 304 for seeking court review of a Board
of Appeals decision. § 1216.

6\. Petitions from the refusal of the Board of
Appeals to postpone oral patent appeal hear-
ings. § 1209.

7\. Petitions from the refusal of the Board of
Appeals to suspend Proceedings in patent
appeals.

8\. Petitions to remand to the examiner to
enter an amendment under rule 193 (b) in re-
sponse to a new ground of rejection in the
examiner's answer.

9\. Petitions for a change in the Rules of
Practice in Patent Cases relating to appeals
before the Board of Appeals.

1002.02 (j) Petitions Decided by the
Board of Appeals [R-
32]

1\. Petitions or requests for extension of time
to file an amendment under rule 196(b).
§ 1214.01.

2\. Petitions under rule 197(b) for a rehear-
ing, or reconsideration or modification of a deci-
sion of the Board of Appeals. § 1214.03.

3\. Petitions to make special patent applica-
tions within the jurisdiction of the Board of
Appeals. § 708.02.

4\. Petitions or requests for extensions of time
to file a supplemental reply brief responding to
a supplemental examiner's answer under rule
193(b). § 1208.01.

## 1002.02 (k) Petitions Decided by the Solicitor [R-32]

1\. Petitions for access to patent applications
except applications involved in or related to an
interference. §§ 103 and 104.

2\. Petitions for access to agreements filed
under 35 U.S.C. 135 (c).

3\. Petitions from refusal to issue certificates
of correction. §§ 1402 to 1402.02.

4\. Petitions for extension of time in court
matters. 35 U.S.C. 142, 145, 146.

5\. Petitions for withdrawal of attorney. Rule
36, § 402.06.

6\. Petitions for acceptance of patent applica-
tions under rule 47. § 409.03.

7\. Petitions involving deceased inventors.
§§ 409.01 (a) and (b).

8\. Petitions under rule 324 to correct errors
in joining inventors in a patent. § 1402.01.

9\. Petitions relating to ex parte questions in
cases before the Court of Customs and Patent
Appeals.

1002.02 (1) Requests Decided by the
Decisions and Certificates
of Correction Unit [R-
32]

Requests for certificates of correction under
rule 322 or 323 except for denials on grounds
requiring consideration by the Solicitor. §§ 1402
and 1402.01.

1002.02 (m)
Petitions Decided by the
Chairman, Committee on
Enrollment [R-32]

1\. Petitions relating to registration under
rule 341.

2\. Petitions for special recognition under rule
342\.

3\. Petitions for exceptions to undertakings
under rule 341(g). § 1702.

4\. Petitions for recognition in trademark
cases under rule 2.12(c) of the Trademark
Rules of Practice.

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## 1003 Matters Submitted to Group Di- rectors [R-32]

The following is a list of matters which re-
quire the approval of the appropriate group
director, together with a reference to the sec-
tion of this manual where such matters are more
fully treated.

1\. Applications filed without drawings where
there is a doubt as to the need for drawings
before granting a filing date. § 608.02.

2\. Return of papers entered on the "Con-
tents" of the file wrapper. See §§ 201.14 (c) and
717.01.

3\. Return of papers containing discourteous
remarks. See § 714.25.

4\. Certain rejections on double patenting of
divisional (or parent) case when restriction or
election of species has previously been required.
§ 804.04.

5: Request for patentability report. § 705.01
(e).

6\. Actions on amendments after allowance
(rule 312) except the correction of mere formal
matters under Order No. 3311. See §§ 714.16 to
714.16(e), and 1101.02 (g).

7\. Letters to an applicant of an allowed ap-
plication informing him of a proposal to
request withdrawal of said application from
issue for the purpose of rejecting a claim or
claims as fully met by, or obviously unpatent-
able over a new reference. § 1308.01.

8\. Second or subsequent attempts at conver-
sion of an application (addition or removal of
an inventor under rule 45), or simultaneous
addition and removal of inventors. See § 201.03.

9\. Entry of a patent claim copied outside the
time limit set requires the approval of the ap-
propriate group director. See § 1101.02(f).

10\. Actions which hold unpatentable claims
copied from a patent for interference purposes
where the grounds relied upon are equally ap-
plicable to the patentee. § 1101.02(f).

11\. Interferences between applications nei-
ther of which is in condition for allowance.
§ 1101.01 (c).

12\. Letters requesting jurisdiction of appli-
cations involved in interference. § 1101.01(o).

13\. Letters to an applicant suggesting claims
for purposes of interference, the adoption of
which by the applicant would result in the with-
drawal of an application from issue. § 1101.01
(o).

14\. Amendments presented after decision by
the Board of Appeals as to which the primary
examiner recommends entry as placing the
application in condition for allowance. See
§ 1214.07.

15\. New ground of rejection or objection or
new reference cited in examiner's answer on
appeal. Prior approval of the group director
must be obtained before the answer is written
and the file copy of the answer must be stamped
"approved" by the group director if it meets
with his approval. See § 1208.01.

16\. Examiner's answers containing a new in-
terpretation of law. See § 1208.

17\. Letters to an applicant indicating a defect
in his appeal brief. § 1206.

The group director should also be consulted
in situations such as the one spelled out in
§ 1208.01, where it must be decided whether to
fully reopen the ex parte prosecution after
appeal or to proceed by introducing a new
ground of rejection in the examiner's answer.
Such consultation would ordinarily be confined
to questions of policy as to whether the best in-
terests of the applicant as well as the Office
would be served by reopening the prosecution
or extending the term to reply to the answer.

All unusual questions of practice may be re-
ferred to the group directors.

### 1004 Actions Which Require the Atten- tion of the Primary Examiner [R-32]

There are some questions which existing prac-
tice requires the primary examiner to be per-
sonally responsible for. The following actions
fall in this category :

Third action on any case (§ 707.02(a) ).

Action on a case pending 5 or more years
(§ 707.02 (a)).

Final rejection (§ 706.07).

Initiating an interference (§ 1101.01(c)).

First request for extension of time (§ 710.02
(e)).

Disposition of an amendment in a case in
interference looking to the formation of an-
other interference involving that application
(§ 1111.05).

Decisions on interference motions under
rule 231; also, actions taken under rule 237
(§§ 1105.02 to 1105.05).

Rejection of a previously allowed claim
(§ 706.04).

Proposed rejection of a copied patent claim.
(If applicable to a patentee, see § 1101.02(f).)

Classification of allowed cases (§ 903.07).

Holding of abandonment for insufficient
response (§ 711.03 (a)).

Suspension of examiner's action (§ 709).

Treatment of newly filed application which
obviously fails to comply with 35 U.S.C. 112
(§ 702.01).

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Consideration of the advisability of a pat-
entability report (§ 705.01).

Requirements for restriction (§ 803.01).

Withdrawal of final rejection (§§ 706.07(d)
and 706.07 (e) ).

All examiner's answers on appeal (§ 1208).

Note also § 1208.01 where a new ground
of rejection or objection is raised, or a new refer-
ence is cited, in the answer.

Decision on reissue oath or declaration.
(§ 1401.08).

Decision on affidavits or declarations under
rule 131 (§ 715.08) and under rule 132 (§ 716).

For a list of actions that are to be submitted
to the group directors, see §§ 1002.02(c) and
1003.

## 1005 Partial Signatory Authority [R-32]

Examiners who are delegated partial signa-
tory authority are expected to sign their own
actions with the exception of the following
actions which require the signature of the pri-
mary examiner :

Allowances
Quayle actions

Final rejections (§ 706.07).

Actions on amendments submitted after final
rejection (§ 714.12).

Examiners' answers on appeal (§ 1208).

Interference declarations or modifications
(§§ 1102.01 (a) and 1106).

Decisions on interference motions (§ 1105.06).

Actions suggesting claims for interference
purposes (§ 1101.01 (j) ).

Actions involving copied patent claims
(§ 1101.02(f)).

Actions reopening prosecution (§ 1214.07).

Requests for withdrawal from issue (§ 1308).
Rule 312 amendments (§ 714.16).

Rejection of previously allowed claim
(§ 706.04).

Final holding of abandonment for insufficient
response (§ 711.03 (a) ).

Actions based on affidavit or declaration
evidence (rules 131 and 132) (§§ 715.08
and 716).

Suspension of examiner's action (§ 709).

Reissue cases (decisions on reissue oath or
declaration) (§ 1401.08) ).

Requests for an extension of time (§ 710.02
(e)).

Examiner's amendments (§ 1302.04).

Restriction requirements (§ 803.01).

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