Intro

OCR transcription for search; preserved printed pages are authoritative

# MANUAL OF

# PATENT

# EXAMINING PROCEDURE

3 RD
EDITION
Rev. 47

DEPARTMENT OF COMMERCE

UNITED STATES OF AMERICA

U.S. DEPARTMENT OF COMMERCE
Patent and Trademark Office

REEL NUMBER

2

BOOK NUMBERS

4033

<!-- PageBreak -->

<!-- PageHeader="Rev. 47, Jan. 1976" -->

U.S. DEPARTMENT OF COMMERCE
Patent and Trademark Office
Washington, D. C. 20231

## MANUAL OF PATENT EXAMINING PROCEDURE Third Edition

Instructions regarding Revision No. 47

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

Arrows are printed in the margin of pages to indicate
material changed, deleted, or added by this revision. Where
insertion of new material results in shifting of unchanged
material onto following pages, no arrows appear on such
pages but the revision number is cited at the bottom of
each page.

or

or

or

Line on which change begins.

Line on which change ends.

Line on which change both begins
and ends.

or
Opposite a blank space, indicates
deletion of material.

The notation " [R-47]" in the attached pages appears
either at the title or at the end of a section that has
been revised.

Louis O. Maassel
Editor, Manual of Patent
Examining Procedure

Change Notice Series No. 46-1 of December 10, 1975 may
be removed from the Manual since it has been incorporated
into the Manual by this revision.

<!-- PageFooter="Rev. 47, Jan. 1976" -->
<!-- PageBreak -->

Particular attention is called to the following sections:

Section

Change

301.01

Rule 12 revised.

402.01

Incorporates Change Notice 46-1 on hand delivery.

406

Wording of suggested paragraph revised and notice re death of attorney included at the end.

502

Incorporates Change Notice 46-1.

509

Rule 21 added as revised and rule 25 revised.

608.01

Sub-section on filing of non-English language applications added.

710.01 (a)

Clarification as to computation of extensions of time and 30 day periods.

710.02 (e)

Incorporates Change Notice 46-1 and adds mate- rial on extension of time.

714.13

Sub-section on Time for Response rewritten.

1105.03

Clarification of section relating to granting of motions to add counts.

1212

Clarification as to when Board of Appeals re- mands cases.

1214.01

Ability of Board of Appeals to remand applica- tion with an added record in a response to a rule 196 (b) rejection added.

1214.03

Rule 197 (b) revised.

1214.07

Clarified as to who considers petitions for re- opening after a Board of Appeals decision.

1303.01

Sub-section on Issue Batch Number added.

1309

Notice on printing of assignee's names added.

Appendix II

List of Decisions Cited updated.

<!-- PageBreak -->

### List of replacement pages :

Page No.

Rev. No.

Page No.

Rev. No.

Title Page

47-47

102.3

47

III

47

183-184

47-47

21-22

47-47

193-194

40-47

22.1

47

217-218

47-46

23-24

47-47

219-220

47-47

25-26

47-47

220.1-220.2

47-47

27-28

47-47

220.3-220.4

47-47

31-32

47-47

220.5-220.6

47-47

32.1-32.2

47-47

220.7-220.8

47-47

32.3-32.4

47-47

223-224

47-47

32.5-32.6

47-47

225-226

47-47

*32.7

47

226.1

47

44.1-44.2

47-47

228.1-228.2

47-47

89-90

47-47

239-240

45-47

90.1-90.2

47-47

253-254

47-47

90.3-90.4

47-47

255-256

47-47

102.1-102.2

47-47

*256.1

47

\* Added page

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## MANUAL OF PATENT EXAMINING PROCEDURE

Original Third Edition, dated November 1961
Latest Revision January 1976

· DEPARTMENT OF COMMERCE
MAUER STATES OF AMERICA

U.S. DEPARTMENT OF COMMERCE

PATENT AND TRADEMARK OFFICE

<!-- PageFooter="Rev. 47, Jan. 1976" -->
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The Patent and Trademark Office does not handle the sale of the Manual, distribution
of notices and revisions or change of address of those on the subscription list.

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

Inquiries relating to subscriptions should be directed to:
Superintendent of Documents
Customer's Service Department
P.O. Box 1533.
Washington, D.C. 20013

Orders for individual replacement pages not amounting to a complete revision of the
Manual should be sent to the following address :
Commissioner of Patents and Trademarks
Attn : Customer Services Division
Washington, D.C. 20231

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

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

Employees of the Patent and Trademark Office should direct their requests for the
Manual, replacement pages, notices, and revisions to the Scientific Library.

First Edition, November 1949

Revision 19. January 1969

Revision 1. November 1950

Revision 20. April 1969

Revision 2. December 1951

Revision 21. July 1969

Revision 3, May 1952

Revision 22. October 1969

Second Edition. November 1953

Revision 23. January 1970

Revision 1, April 1955

Revision 24. April 1970

Revision 2. June 1956

Revision 25. July 1970

Revision 3. June 1957

Revision 26. October 1970

Revision 4, July 1958

Revision 27. January 1971

Third Edition, November 1961

Revision 28, April 1971

Revision 1. January 1964

Revision 29. July 1971

Revision 2. November 1964

Revision 30, October 1971

Revision 3. January 1965

Revision 31. January 1972

Revision 4, April 1965

Revision 32. April 1972

Revision 5. July 1905

Revision 33. July 1972

Revision 6. October 1965

Revision 34, October 1972

Revision 7. January 1966

Revision 35. January 1973

Revision 8. April 1966

Revision 36, April 1973

Revision 9. July 1966

Revision 37, July 1973

Revision 10. October 1966

Revision 38, October 1973

Revision 11. January 1967

Revision 39, January 1974

Revision 12. April 1967

Revision 40, April 1974

Revision 13. July 1967

Revision 41, July 1974

Revision 14. October 1967

Revision 42, October 1974

Revision 15. January 1968

Revision 43, January 1975

Revision 16, April 1968

Revision 44, April 1975

Revision 17. July 1968

Revision 45, July 1975

Revision 18, October 1968

Revision 46, October 1975

Revision 47. January 1976

<!-- PageFooter="Rev. 47. Jan. 1976" -->
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## Foreword

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

A separate manual entitled "Trademark Manual of Examining Proce-
dure" is published by the Patent and Trademark Office as a reference work
for trademark cases.

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

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

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

Commissioner of Patents and Trademarks,
Editor, M.P.E.P.
Washington. D.C. 20231

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## Contents

Page

Checklist of Pages.

vi

Introduction

1

Chapter 100

Secrecy and Access

3

200

Types, Cross-Noting, and Status of Applications

7

300

Ownership and Assignment

21

400

Representative of Inventor or Owner

23

500

Receipt and Handling of Mail and Papers

31

600

Parts, Form and Content of Application

33

700

Examination of Applications.

61

800

Restriction; Double Patenting

117

900

Prior Art, Classification, Search

137

1000

Matters Decided by Various Patent and Trademark

Office Officials

159

1100

Interference

163

1200

Appeal

209

1300

Allowance and Issue

221

1400

Correction of Patents

229

1500

Design Patents.

235

1600

Plant Patents.

239

1700

Miscellaneous

243

Appendix I Partial List of Trademarks

247

Appendix II

List of Decisions Cited

253

Index

257

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## Checklist of Pages Needed To Form a Complete Set of the Third Edition as of Revision 46. DATES OF REVISIONS 31 and 33-46 All pages issued in other revisions have been revised.

Rev. No.

Date

Rev. No.

Date

31

Jan. 1972

40

Apr. 1974

33

July 1972

41

July 1974

34

Oct. 1972

42

Oct. 1974

35

Jan. 1973

43

Jan. 1975

36

Apr. 1973

44

Apr. 1975

37

July 1973

45

July 1975

38

Oct. 1973

46

Oct. 1975

39

Jan. 1974

Page

Revision No.

Page

Revision No.

Title Page (2 sides)

46-46

49-50

38-40

III

33

51-52

40-40

V-VI

46-46

52.1

40

VII

46

53-54

41-41

54.1

41

Introduction

55-56

44-44

1-2

41-41

56.1

44

Chapter 100

57-58

36-36

3-4

35-39

59-60

37-37

4.1-4.2

39-42

Chapter 700

4.3

39

61-62

37-43

5-6

42-42

63-64

43-43

Chapter 200

64.1

43

7-8

39-39

65-66

31-33

9-10

39-40

66.1-66.2

34-34

10.1-10.2

39-39

67-68

34-34

10.3-10.4

41-41

69-70

40-40

11-12

46-46

70.1-70.2

40-40

13-14

46-46

71-72

40-40

14.1-14.2

46-46

72.1-72.2

40-40

15-16

39-39

73-74

34-32

16.1-16.2

43-39

74.1

34

17-18

31-36

75-76

43-43

19-20

44-44

76.1-76.2

43-43

20.1

44

76.3-76.4

43-43

76.5

43

Chapter 300

77-78

42-42

21-22

43-43

78.1-78.2

45-45

22.1

43

79-80

45-45

81-82

36-36

Chapter 400

83-84

36-31

23-24

46-46

85-86

31-31

25-26

41-41

87-88

39-39

27-28

37-37

88.1

39

29-30

37-37

89-90

34-34

30.1-30.2

37-37

90.1-90.2

34-34

30.3

37

90.3

34

Chapter 500

91-92

45-45

31-32

45-45

92.1

45

32.1-32.2

45-45

93-94

45-45

32.3-32.4

45-45

94.1-94.2

45-45

32.5-32.6

46-46

94.3

45

95-96

37-37

Chapter 600

96.1-96.2

41-41

33-34

45-45

97-98

46-46

34.1-34.2

44-45

98.1

43

34.3

45

99-100

36-39

35-36

44-44

101-102

39-39

37-38

31-31

102.1-102.2

39-36

38.1

31

102.3

39

39-40

35-35

103-104

41-41

41-42

35-35

105-106

41-41

43-44

46-46

106.1

41

44.1-44.2

46-46

107-108

35-35

45-46

41-41

108.1

35

46.1

44

109-110

34-42

47-48

38-38

111-112

44-44

48.1-48.2

38-38

112.1

44

48.3-48.4

39-39

113-114

40-40

48.5

39

115-116

42-42

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Page

Revision No.

Page

Revision No.

116.1-116.2

42-43

Chapter 1200

116.3-116.4

43-43

209-210

43-43

Chapter 800

211-212

41-41

117-118

45-45

213-214

42-42

119-120

45-45

214.1

42

120.1-120.2

45-45

215-216

42-42

120.3

45

216.1

46

121-122

45-45

217-218

46-46

123-124

45-45

218.1

46

125-126

45-45

219-220

46-28

127-128

45-45

220.1-220.2

46-46

129-130

45-45

220.3-220.4

46-46

131

45

220.5-220.6

46-46

133-134

45-45

220.7-220. 8

46-46

135-136

45-38

Chapter 1300

Chapter 900

221-222

46-46

137-138

35-35

222.1

46

138.1-138.2

35-35

223-224

41-41

139-140

44-44

225-226

41-41

140.1

44

226.1

41

141-142

45-30

227-228

43-43

143-144

45-45

228.1-228.2

43-43

145-146

46-46

Chapter 1400

147-148

46-46

229-230

41-41

149

46

151-152

46-46

223-232

41-41

152.1

46

132.1

41

153-154

35-35

233-234

44-44

154.1-154.2

43-43

234.1-234.2

44-44

154.3-154.4

43-43

Chapter 1500

155-156

36-46

235-236

35-35

157-158

46-46

237-238

35-46

Chapter 1000

159-160

43-43

Chapter 1600

161-162

43-43

239-240

45-45

162.1-162.2

43-43

241-242

31-45

162.3

43

Chapter 1700

Chapter 1100

243-244

40-40

244.1-244.2

46-46

163-164

31-31

244.3

46

165-166

33-33

245-246

46-46

166.1

33

246.1-246.2

46-46

167-168

42-42

169-170

46-46

Appendix I

170.1

46

247-248

43-43

171-172

40-45

249-250

43-43

172.1

45

251

43

173-174

40-40

174.1

43

Appendix II

175-176

36-40

253-254

36-36

176.1-176.2

43-43

255-256

36-36

177-178

42-42

179-180

42-42

Index

257-258

44-44

181-182

45-45

259-260

44-44

182.1

45

261-262

44-44

183-184

40-40

263-264

44-44

185-186

43-43

265-266

44-44

186.1

43

267-268

44-44

187-188

31-31

269-270

44-44

189

40

271-272

44-44

273-274

44-44

191-192

omitted

275-276

44-44

193-194

40-40

277-278

44-44

194.1

40

279-280

44-44

195-196

38-38

281-282

44-44

197-198

38-38

283-284

44-44

199-200

37-37

285-286

44-44

42-42

287-288

44-44

201-202

289-290

44-44

203-204

35-35

291-292

44-44

205-206

omitted

293-294

44-44

207-208

omitted

295

44

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## Introduction

### Constitutional Basis

The Constitution of the United States pro-
vides :

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

### Statutes

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

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

By an Act of Congress approved July 19,
1952, which came into effect on January 1,
1953, the patent laws were revised and codi-
fied into their present form. With certain excep-
tions applying to applications filed and patents
issued before January 1, 1953, this law governs
all cases in the Patent Office. The patent law is
Title 35 of the United States Code, which con-
tains 96 sections numbered from 1 to 293, with
gaps in the numbering between various chapters
of the title. In referring to a particular section
of the patent code the citation is given, for
example, as, 35 U.S.C. 31. The pamphlet "Pat-
ent Laws" (available from the Superintendent
of Documents for 75 cents) reprints the patent
code and some additional statutes.

35 U.S.C. 1 Establishment. The Patent Office shall
continue as an office in the Department of Commerce,
where records, books, drawings, specifications, and
other papers and things pertaining to patents and to
trademark registrations shall be kept and preserved,
except as otherwise provided by law.

### Rules of Practice

One of the sections of the patent statute,
namely, 35 U.S.C. 6, authorizes the Commis-
sioner of Patents, subject to the approval of
the Secretary of Commerce, to establish regula-

\-

tions, not inconsistent with law, for the con-
duct of proceedings in the Patent Office.

Rule 351. Amendments to rules will be published. All
amendments to these rules will be published in the
Official Gazette and in the Federal Register.

Rule 352. Publication of notice of proposed amend-
ments. (a) Whenever required by law, and in other
cases whenever practicable, notice of proposed amend-
ments to these rules will be published in the Official
Gazette and in the Federal Register. If not published
with the notice, copies of the text will be furnished to
any person requesting the same. All comments, sug-
gestions, and briefs received within a time specified
in the notice will be considered before adoption of
the proposed amendments which may be modified in the
light thereof.

(b) Oral hearings may be held at the discretion of
the Commissioner.

These rules and the various amendments were
published in the Federal Register. In the Fed-
eral Register and in the Code of Federal Regula-
tions these rules are Part 1 of Title 37, Patents,
Trademarks and Copyrights, and the individual
rules, there called sections, are numbered with
the Part number and a decimal point prefixed
to the numbers to the rule number; thus section
1.33 in the Federal Register and the Code of
Federal Regulations is the same as rule 33. A
booklet entitled "37 Code of Federal Regula-
tions," published by the Office of the Federal
Register, contains all of the patent rules and
forms, as well as trademark rules and forms
and copyright rules. Persons desiring a copy
of the patent rules should order a copy of "37
Code of Federal Regulations" from the Super-
intendent of Documents.

The primary function of the Rules of Prac-
tice is to advise the public of the regulations
which have been established in accordance with
the statutes and which must be followed before
the Office. The Rules of Practice govern the
examiners, as well as applicants and their
attorneys.

### Commissioner's Orders and Notices

From time to time, the Commissioner of
Patents has issued Orders and Notices relating
to various specific situations that have arisen
in operating the Patent Office. Notices and
circulars of information or instructions have
also been issued by other Office Officials under
authority of the Commissioner. Orders and

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## MANUAL OF PATENT XAMINING PROCEDURE

Notices have served various purposes including
directions to the examiners giving them instruc-
tion, information, interpretations and the like.
Some may be for the information of the public.
advising what the Office will do under specified
circumstances.

### Decisions

In addition to the statutory regulations, the
actions taken by the examiner in the examina-
tion of applications for patents are to a great
extent governed by decisions on prior cases.
Applicants dissatisfied with an examiner's ac-
tion may have it reviewed. In general, that por-
tion of the examiner's action pertaining to
objections on formal matters may be reviewed
by petition to the Commissioner of Patents (see
§ 1002) and that portion of the examiner's ac-
tion pertaining to the rejection of claims on the
merits, may be reviewed by appeal to the Board
of Appeals (see § 1201). The distinction is set
forth in rules 181 and 191. In citing decisions
as authority for his actions. the examiner
should cite the decision in the manner set forth
in § 707.06.

## Publications Available from Superintendent of Documents

Orders should be addressed and remittances made
payable to Superintendent of Documents, U.S. Gov-
ernment Printing Office, Washington, D.C. 20402.

Patent Official Gazette. The official journal of the
Patent Office relating to patents. Issued each Tuesday,
simultaneously with the weekly issuance of patents.
it contains a selected figure of the drawings and an
abstract of each patent granted, indexes of patents, list
of patents available for license or sale. and general in-
formation such as orders, notices, changes in rules,
and changes in classification. Annual subscription
$211.00 ($52.75 additional for foreign mailing). Single
copy $4.10.

Annual Indexes. An index of the patents issued each
year is published in two volumes, one an alphabetical
index of patentees and the other an index by subject
matter of inventions. The two parts are sold separately.
Price varies from year to year, depending upon size of
the publication. An annual Index of Trademarks con-
tains an alphabetical index of trademark registrants,
registration numbers, dates published. classification of
goods for which registered. and decisions published
during the calendar year. Price varies from year to
year, depending upon size of the publication.

Guide for Patent Draftsmen. Patent Office require-
ments for patent drawings with illustrations. Price 30
cents.

Manual of Classification. A loose-leaf volume list-
ing the numbers and descriptive titles of the more than
300 classes and 66,000 subclasses used in the subject
classification of patents, with an index to the classi-
fications. Substitute and additional pages, which are
included in the subscription service, are issued from

time to time. Subscription $30.50 ($7.75 additional for
foreign mailing).

Manual of Patent Examining Procedure. A loose-leaf
manual which serves primarily as a detailed reference
work on patent examining practice and procedure for
the Patent Office's Examining Corps. Subscription serv-
ice includes basic manual. quarterly revisions, and
change notices. Subscription $19.50 ($5.00 additional
for foreign mailing ).

Patents and Intentions-An Information Aid to
Inventors. The purpose of this publication is to aid
inventors in deciding whether to apply for patents, in
obtaining patent protection. and in promoting their
inventions. Price 20 cents.

Patents: Spur to American Progress. Focuses on the
functioning of the patent system, outlining its purpose
and practices and charting the "how-to" path to patents.
It illustrates how the sysem nurtures discovery of data
and devices on which the American partnership of in-
ventor, industry, and the public builds prosperity. This
publication is one of the U.S. Department of Com-
merce's "Know Your Economic ABC's" series. Price 35
cents.

The Story of the United States Patent Office. Cites
important events in the development of the United
States patent system and lists chronologically inven-
tions having important effects on the economy. Price
35 cents.

Patent Laws. Compilation of patent laws in force.
Price 75 cents.

Patent Attorneys and Agents Registered to Practice
Before The U.S. Patent Office. An alphabetically and a
geographically arranged listing of patent attorneys and
agents registered to practice before the U.S. Patent Of-
fice. Price $2.85.

## Publications Available From the Patent Office

Orders should be addressed to U.S. Department of Com-
merce, Patent Office. Washington, D.C. 20231. Remit-
tances should be made payable to Commissioner of
Patents. Postage stamps, Superintendent of Docu-
ments coupons or other Government coupons are not
acceptable in payment of Patent Office fees.

Q & A About Patents. Brief. non-technical answers to
questions most frequently asked about patents. Free.

Q & A About Plant Patents. Same as above for plant
patents. Free.

General Information Concerning Patents. Contains a
vast amount of general information concerning the ap-
plication for and granting of patents, expressed in non-
technical language for the layman. Single copy free.
Multiple copies available from Superintendent of Docu-
ments. 45 cents each.

Patents. Copies of the specification and drawings of
all patents are available at 50 cents each, except design
patents. Design patents are 20 cents each. When order-
ing, identify the patent by the patent number, or give
full name of the inventor and approximate date of is-
suance of the patent.

Classification Definitions. Contain the changes in
classification of patents as well as definitions of new
and revised classes and sub-classes. Price is based upon
size of publication, minimum price 10 cents.

Weekly Class Sheets. Lists showing classification of
each patent in the weekly issue of the Patent Official
Gazette. Annual subscription, $5.

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