Chapter    700  Examination of Applications
---SECTION---701 Statutory Authority for Examination

35 U.S.C. 131 Examination of application.

The Commissioner shall cause an examination to be made of the
application and the alleged new invention; and if on such examination it
appears that the applicant is entitled to a patent under the law, the
Commissioner shall issue a patent therefor.

The main conditions precedent to the grant of a patent to an applicant
are set forth in  35 U.S.C. 101, 102 and 103.

35 U.S.C. 101 Inventions patentable.

Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.

Form Paragraph 7.04 copies  35 U.S.C. 101.

35 U.S.C. 100 Definitions.

When used in this title unless the context otherwise indicates  -

(a) The term "invention" means invention or discovery.

(b) The term " process"  means process, art or method, and includes a
new use of a known process, machine, manufacture, composition of matter,
or material.

(c) The terms "United States" and "this country" mean the United States
of America, its territories and possessions.

(d) The word "patentee" includes not only the patentee to whom the
patent was issued but also the successors in title to the patentee.

---SECTION---702 Requisites of the Application

When a new application is assigned in the examining group, the examiner
should review the contents of the application to determine if the
application meets the requirements of  35 U.S.C. 111(a). Any matters
affecting the filing date or abandonment of the application, such as
lack of an oath or declaration, filing fee, or claims should be checked
before the application is placed in the storage racks to await the first
action.

The examiner should be careful to see that the application meets all the
requisites set forth in MPEP Chapter 600 both as to formal matters and
as to the completeness and clarity of the disclosure. If all of the
requisites are not met, applicant may be called upon for necessary
amendments. Such amendments, however, must not include new matter.

---SECTION---702.01 Obviously Informal Cases

When an application is reached for its first Office action and it is
then discovered to be impractical to give a complete action on the
merits because of an informal or insufficient disclosure, the following
procedure may be followed:

(A) A reasonable search should be made of the invention so far as it can
be understood from the disclosure, objects of invention and claims and
any apparently pertinent art cited.  In the rare case in which the
disclosure is so incomprehensible as to preclude a reasonable search the
Office action should clearly inform applicant that no search was made;

(B) Informalities noted by the Office of Initial Patent Examination
(OIPE) and deficiencies in the drawing should be pointed out by means of
attachments to the Office action (see MPEP Section  707.07(a));

(C) A requirement should be made that the specification be revised to
conform to idiomatic English and United States practice;

(D) The claims should be rejected as failing to define the invention in
the manner required by  35 U.S.C. 112 if they are informal. A blanket
rejection is usually sufficient.

The examiner should attempt to point out the points of informality in
the specification and claims. The burden is on the applicant to revise
the application to render it in proper form for a complete examination.

If a number of obviously informal claims are filed in an application,
such claims should be treated as being a single claim for fee and
examination purposes.

It is obviously to applicant's advantage to file the application with an
adequate disclosure and with claims which conform to the U.S. Patent and
Trademark Office usages and requirements. This should be done whenever
possible. If, however, due to the pressure of a Convention deadline or
other reasons, this is not possible, applicants are urged to submit
promptly, preferably within 3 months after filing, a preliminary
amendment which corrects the obvious informalities. The informalities
should be corrected to the extent that the disclosure is readily
understood and the claims to be initially examined are in proper form,
particularly as to dependency, and otherwise clearly define the
invention. "New matter" must be excluded from these amendments since
preliminary amendments do not enjoy original disclosure status.  See
MPEP Section  608.04(b).

Whenever, upon examination, it is found that the terms or phrases or
modes of characterization used to describe the invention are not
sufficiently consonant with the art to which the invention pertains, or
with which it is most nearly connected, to enable the examiner to make
the examination specified in  37 CFR 1.104, the examiner should make a
reasonable search of the invention so far as it can be understood from
the disclosure. The action of the examiner may be limited to a citation
of what appears to be the most pertinent prior art found and a request
that applicant correlate the terminology of the specification with
art-accepted terminology before further action is made.

Use form paragraph 7.01 where the terminology is such that a proper
search cannot be made.

7.01 Use of Terminology, Cannot Be Examined

A preliminary examination of this application reveals that it includes
terminology which is so different from that which is generally accepted
in the art to which this invention pertains that a proper search of the
prior art cannot be made.  For example: [1]

Applicant is required to provide a clarification of these matters or
correlation with art-accepted terminology so that a proper comparison
with the prior art can be made.  Applicant should be careful not to
introduce any new matter into the disclosure (i.e., matter which is not
supported by the disclosure as originally filed).

A shortened statutory period for reply to this action is set to expire
ONE MONTH or THIRTY DAYS, whichever is longer,  from the mailing date of
this letter.

Examiner Note:

1. Use this or paragraph 7.02 when a proper search cannot be made.
However, see MPEP Section  702.01 which requires a reasonable search.

2. In bracket 1, fill in an appropriate indication of the terminology,
properties, units of data, etc. that are the problem as well as the
pages of the specification involved.

3. For the procedure to be followed when only the drawing is informal,
see MPEP Section Section  608.02(a) and  608.02(b).

Use form paragraph 7.02 where the application is so incomprehensible
that a reasonable search cannot be made.

7.02 Disclosure Is Incomprehensible

The disclosure is objected to under  37 CFR 1.71, as being so
incomprehensible as to preclude a reasonable search of the prior art by
the examiner.  For example, the following items are not understood: [1]

Applicant is required to submit an amendment which clarifies the
disclosure so that the examiner may make a proper comparison of the
invention with the prior art.

Applicant should be careful not to introduce any new matter into the
disclosure (i.e., matter which is not supported by the disclosure as
originally filed).

A shortened statutory period for reply to this action is set to expire
ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of
this letter.

Examiner Note:

1. Use this paragraph when a search cannot be made.

2. In bracket 1, indicate the page numbers and features which are not
understood.

3. See form paragraphs 6.28 and 6.30 for improper idiomatic English.

Use form paragraph 7.03 where the invention cannot be understood because
of illegible handwritten pages.

7.03 Pages Are Illegible

The examiner cannot understand the invention because certain portions of
the disclosure are illegible.  The illegible portion(s) consist of [1].

Applicant is required to submit an appropriate amendment rectifying this
deficiency.  In the alternative, a substitute specification under  37
CFR 1.125(b), may be filed.  The substitute specification must be
accompanied by: (1) a statement that the substitute specification
contains no new matter; and (2) a marked-up copy showing the amendments
to be made via the substitute specification relative to the
specification at the time the substitute specification is filed.

A shortened statutory period for reply to this action is set to expire
ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of
this letter.

Examiner Note:

1. In bracket 1, identify the portions of the specification which are
illegible.

2. This form paragraph is to be used only when the invention cannot be
understood because of the illegible material, see MPEP Section  702.01.

3. See Chapter 1700 for handwritten specifications filed by pro se
applicants.

4. Use form paragraph 7.02 when the disclosure is incomprehensible.

For the procedure to be followed when only the drawing is informal, see
MPEP Section  608.02(a) and Section  608.02(b).

---SECTION---703 "General Information Concerning Patents"

The pamphlet "General Information Concerning Patents" for use by
applicants contemplating the filing or prosecution of their own
applications, may be purchased from the Superintendent of Documents,
U.S. Government Printing Office, Washington, D.C. 20402. The pamphlet is
also available from the PTO Web page at:  http://www.uspto.gov.

---SECTION---704 Search

After reading the specification and claims, the examiner searches the
prior art.  The subject of searching is more fully treated in MPEP
Chapter 900. See especially MPEP Section  904 through Section  904.02.
The invention should be thoroughly understood before a search is
undertaken. However, informal cases, or those which can only be
imperfectly understood when they come up for action in their regular
turn are also given a search, in order to avoid piecemeal prosecution.

PREVIOUS EXAMINER'S SEARCH

When an examiner is assigned to act on an application which has received
one or more actions by some other examiner, full faith and credit should
be given to the search and action of the previous examiner unless there
is a clear error in the previous action or knowledge of other prior art.
In general the second examiner should not take an entirely new approach
to the case or attempt to reorient the point of view of the previous
examiner, or make a new search in the mere hope of finding something.
See MPEP Section  719.05.

---SECTION---705 Patentability Reports

Where an application, properly assigned to one examining group, is found
to contain one or more claims,   per se, classifiable in one or more
other groups, which claims are not divisible inter se or from the claims
which govern classification of the application in the first group, the
application may be referred to the other group or groups concerned for a
report as to the patentability of certain designated claims. This report
is known as a Patentability Report (P.R.) and is signed by the primary
examiner in the reporting group.

The report, if legibly written, need not be typed.

Note that the Patentability Report practice is only to be used in
extraordinary circumstances. See MPEP Section  705.01(e).

---SECTION---705.01 Instructions re Patentability Reports

When an application comes up for any action and the primary examiners
involved (i.e., from both the requesting and the requested group) agree
that a Patentability Report is necessary, and if the Group Director of
the requesting group approves, the application is forwarded to the
proper group with a memorandum attached, for instance, "For
Patentability Report from group -- as to claims --."

---SECTION---705.01(a) Nature of P.R., Its Use and Disposal

The primary examiner in the group from which the Patentability Report is
requested, if he or she approves the request, will direct the
preparation of the Patentability Report. This Patentability Report is
written or typed on a memorandum form and will include the citation of
all pertinent references and a complete action on all claims involved.
The field of search covered should be endorsed on the file wrapper by
the examiner making the report. When an examiner to whom an application
has been forwarded for a Patentability Report is of the opinion that
final action is in order as to the referred claims, he or she should so
state. The Patentability Report when signed by the primary examiner in
the reporting group will be returned to the group to which the
application is regularly assigned and placed in the file wrapper.

The examiner preparing the Patentability Report will be entitled to
receive an explanation of the disclosure from the examiner to whom the
case is assigned to avoid duplication of work.

If the primary examiner in a reporting group is of the opinion that a
Patentability Report is not in order, he or she should so advise the
primary examiner in the forwarding group.

DISAGREEMENT AS TO CLASSIFICATION

Conflict of opinion as to classification may be referred to a patent
classifier for decision.

If the primary examiner in the group having jurisdiction of the
application agrees with the Patentability Report, he or she should
incorporate the substance thereof in his or her action, which action
will be complete as to all claims. The Patentability Report in such a
case is not given a paper number but is allowed to remain in the file
until the application is finally disposed of by allowance or
abandonment, at which time it should be removed.

DISAGREEMENT ON PATENTABILITY REPORT

If the primary examiner does not agree with the Patentability Report or
any portion thereof, he or she may consult with the primary examiner
responsible for the report. If agreement as to the resulting action
cannot be reached, the primary examiner having jurisdiction of the case
need not rely on the Patentability Report but may make his or her own
action on the referred claims, in which case the Patentability Report
should be removed from the file.

APPEAL TAKEN

When an appeal is taken from the rejection of claims, all of which are
examinable in the group preparing a Patentability Report, and the
application is otherwise allowable, formal transfer of the application
to said group should be made for the purpose of appeal only. The
receiving group will take jurisdiction of the application and prepare
the examiner's answer. At the time of allowance, the application may be
sent to issue by said group with its classification determined by the
controlling claims remaining in the case.

---SECTION---705.01(b) Sequence of Examination

In the event that the supervisory patent examiners concerned in a P.R.
case cannot agree as to the order of examination by their groups, the
supervisory patent examiner having jurisdiction of the application will
direct that a complete search be made of the art relevant to his or her
claims prior to referring the application to another group for report.
The group to which the application is referred will be advised of the
results of this search.

If the supervisory patent examiners are of the opinion that a different
sequence of search is expedient, the order of search should be
correspondingly modified.

---SECTION---705.01(c) Counting and Recording P.R.'s

The forwarding of the application for a Patentability Report is not to
be treated as a transfer by the forwarding group. When the P.R. is
completed and the application is ready for return to the forwarding
group, it is not counted either as a receipt or action by transfer.
Credit, however, is given for the time spent.

The date status of the application in the reporting group will be
determined on the basis of the dates in the group of original
jurisdiction. To ensure orderly progress in the reported dates, a timely
reminder should be furnished to the group making the P.R.

---SECTION---705.01(d) Duplicate Prints of Drawings

In Patentability Report applications having drawings, the examiner to
whom the case is assigned will furnish to the group to which the
application is referred, prints of such sheets of the drawings as are
applicable, for interference search purposes. That this has been done
may be indicated by a pencil notation on the file wrapper.

When an application that has had Patentability Report prosecution is
passed for issue or becomes abandoned, NOTIFICATION of this fact will AT
ONCE be given by the group having jurisdiction of the application to
each group that submitted a Patentability Report. The examiner of each
such reporting group will note the date of allowance or abandonment on
the duplicate set of prints. At such time as these prints become of no
value to the reporting group, they may be destroyed.

---SECTION---705.01(e) Limitation as to Use

The above outlined Patentability Report practice is not obligatory and
should be resorted to only where it will save total examiner time or
result in improved quality of action due to specialized knowledge.  A
saving of total examiner time that is required to give a complete
examination of an application is of primary importance.  Patentability
Report practice is based on the proposition that when plural,
indivisible inventions are claimed, in some instances either less time
is required for examination, or the results are of better quality, when
specialists on each character of claimed invention treat the claims
directed to their specialty. However, in many instances a single
examiner can give a complete examination of as good quality on all
claims, and in less total examiner time than would be consumed by the
use of the Patentability Report practice.

Where claims are directed to the same character of invention but differ
in scope only, prosecution by Patentability Report is never proper.

Exemplary situation where Patentability Reports are ordinarily not
proper are as follows:

(A) Where the claims are related as a manufacturing process and a
product defined by the process of manufacture. The examiner having
jurisdiction of the process can usually give a complete, adequate
examination in less total examiner time than would be consumed by the
use of a Patentability Report.

(B) Where the claims are related as product and a process which involves
merely the fact that a product having certain characteristics is made.
The examiner having jurisdiction of the product can usually make a
complete and adequate examination.

(C) Where the claims are related as a combination distinguished solely
by the characteristics of a subcombination and such subcombination, per
se. The examiner having jurisdiction of the subcombination can usually
make a complete and adequate examination.

Where it can be shown that a Patentability Report will save total
examiner time, one is permitted with the approval of the Group Director
of the group to which the application is assigned. The "Approved" stamp
should be impressed on the memorandum requesting the Patentability
Report.

---SECTION---705.01(f) Interviews With Applicants

In situations where an interview is held on an application in which a
Patentability Report has been adopted, the reporting group may be called
on for assistance at the interview when it concerns claims treated by
them. See MPEP Section  713 to Section  713.10 regarding interviews in
general.

---SECTION---706 Rejection of Claims

After the application has been read and the claimed invention
understood, a prior art search for the claimed invention is made. With
the results of the prior art search, including any references provided
by the applicant, the patent application should be reviewed and analyzed
in conjunction with the state of the prior art to determine whether the
claims define a useful, novel, nonobvious, and enabled invention that
has been clearly described in the specification. The goal of examination
is to clearly articulate any rejection early in the prosecution process
so that the applicant has the opportunity to provide evidence of
patentability and otherwise reply completely at the earliest
opportunity. The examiner then reviews all the evidence, including
arguments and evidence responsive to any rejection before issuing the
next Office action.

Although this part of the Manual explains the procedure in rejecting
claims, the examiner should never overlook the importance of his or her
role in allowing claims which properly define the invention.

37 CFR 1.104 Nature of examination.

                  +++   

(c) Rejection of claims.

(1) If the invention is not considered patentable, or not considered
patentable as claimed, the claims, or those considered unpatentable will
be rejected.

(2) In rejecting claims for want of novelty or for obviousness, the
examiner must cite the best references at his or her command. When a
reference is complex or shows or describes inventions other than that
claimed by the applicant, the particular part relied on must be
designated as nearly as practicable.  The pertinence of each reference,
if not apparent, must be clearly explained and each rejected claim
specified.

(3) In rejecting claims the examiner may rely upon admissions by the
applicant, or the patent owner in a reexamination proceeding, as to any
matter affecting patentability and, insofar as rejections in
applications are concerned, may also rely upon facts within his or her
knowledge pursuant to paragraph (d)(2) of this section.

(4) Subject matter which is developed by another person which qualifies
as prior art only under  35 U.S.C. 102(f) or (g) may be used as prior
art under  35 U.S.C. 103 against a claimed invention unless the entire
rights to the subject matter and the claimed invention were commonly
owned by the same person or organization or subject to an obligation of
assignment to the same person or organization at the time the claimed
invention was made.

(5) The claims in any original application naming an inventor will be
rejected as being precluded by a waiver in a published statutory
invention registration naming that inventor if the same subject matter
is claimed in the application and the statutory invention registration.
The claims in any reissue application naming an inventor will be
rejected as being precluded by a waiver in a published statutory
invention registration naming that inventor if the reissue application
seeks to claim subject matter:

(i) Which was not covered by claims issued in the patent prior to the
date of publication of the statutory invention registration; and

(ii) Which was the same subject matter waived in the statutory invention
registration.

                  +++   

UNIFORM APPLICATION OF THE PATENTABILITY STANDARD

The standards of patentability applied in the examination of claims must
be the same throughout the Office. In every art, whether it be
considered "complex," "newly developed," "crowded," or "competitive,"
all of the requirements for patentability (e.g., novelty, usefulness and
unobviousness, as provided in  35 U.S.C. 101, 102, and 103) must be met
before a claim is allowed. The mere fact that a claim recites in detail
all of the features of an invention (i.e., is a "picture" claim) is
never, in itself, justification for the allowance of such a claim.

An application should not be allowed , unless and until issues pertinent
to patentability have been raised and resolved in the course of
examination and prosecution, since otherwise the resultant patent would
not justify the statutory presumption of validity (35 U.S.C. 282), nor
would it "strictly adhere" to the requirements laid down by Congress in
the 1952 Act as interpreted by the Supreme Court.  The standard to be
applied in all cases is the "preponderance of the evidence" test. In
other words, an examiner should reject a claim if, in view of the prior
art and evidence of record, it is more likely than not that the claim is
unpatentable.

DEFECTS IN FORM OR OMISSION OF A LIMITATION; CLAIMS OTHERWISE ALLOWABLE

When an application discloses patentable subject matter and it is
apparent from the claims and the applicant's arguments that the claims
are intended to be directed to such patentable subject matter, but the
claims in their present form cannot be allowed because of defects in
form or omission of a limitation, the examiner should not stop with a
bare objection or rejection of the claims. The examiner's action should
be constructive in nature and when possible should offer a definite
suggestion for correction.

PATENTABLE SUBJECT MATTER DISCLOSED BUT NOT CLAIMED

If the examiner is satisfied after the search has been completed that
patentable subject matter has been disclosed and the record indicates
that the applicant intends to claim such subject matter, he or she may
note in the Office action that certain aspects or features of the
patentable invention have not been claimed and that if properly claimed
such claims may be given favorable consideration.

RECONSIDERATION OF CLAIMS AFTER REPLY BY APPLICANT

37 CFR 1.112 Reconsideration before final action.

After reply by applicant or patent owner (Section  1.111) to a non-final
action, the application or patent under reexamination will be
reconsidered and again examined.  The applicant or patent owner will be
notified if claims are rejected, or objections or requirements made, in
the same manner as after the first examination.  Applicant or patent
owner may reply to such Office action in the same manner provided in
Section  1.111, with or without amendment, unless such Office action
indicates that it is made final (Section  1.113).

37 CFR 1.112 provides for the reconsideration and continued examination
of an application or a patent under reexamination after reply by the
applicant or the patent owner.   If claims are rejected, or objections
or requirements made, applicant or patent owner will be notified in the
same manner as after the first examination.  Applicant or patent owner
may reply to such Office action in the same manner provided in  37 CFR
1.111, with or without amendment, unless such Office action indicates
that it is made final (37 CFR 1.113).

REJECTIONS IN STATUTORY INVENTION REGISTRATIONS

See MPEP Chapter 1100 for rejection of claims in an application for a
Statutory Invention Registration.

---SECTION---706.01 Contrasted With Objections

The refusal to grant claims because the subject matter as claimed is
considered unpatentable is called a "rejection."  The term "rejected"
must be applied to such claims in the examiner's action. If the form of
the claim (as distinguished from its substance) is improper, an
"objection" is made. An example of a matter of form as to which
objection is made is dependency of a claim on a rejected claim, if the
dependent claim is otherwise allowable. See MPEP Section  608.01(n). The
practical difference between a rejection and an objection is that a
rejection, involving the merits of the claim, is subject to review by
the Board of Patent Appeals and Interferences, while an objection, if
persisted, may be reviewed only by way of petition to the Commissioner.

Similarly, the Board will not hear or decide issues pertaining to
objections and formal matters which are not properly before the Board.
These formal matters should not be combined in appeals to the Board.

---SECTION---706.02 Rejection on Prior Art

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to
patent.

A person shall be entitled to a patent unless -

(a) the invention was known or used by others in this country, or
patented or described in a printed publication in this or a foreign
country, before the invention thereof by the applicant for a patent, or

(b) the invention was patented or described in a printed publication in
this or a foreign country or in public use or on sale in this country,
more than one year prior to the date of application for patent in the
United States, or

(c) he has abandoned the invention, or

(d) the invention was first patented or caused to be patented, or was
the subject of an inventor's certificate, by the applicant or his legal
representatives or assigns in a foreign country prior to the date of the
application for patent in this country on an application for patent or
inventor's certificate filed more than twelve months before the filing
of the application in the United States, or

(e) the invention was described in a patent granted on an application
for patent by another filed in the United States before the invention
thereof by the applicant for patent, or on an international application
by another who has fulfilled the requirements of paragraphs (1), (2),
and (4) of section 371(c) of this title before the invention thereof by
the applicant for patent, or

(f) he did not himself invent the subject matter sought to be patented,
or

(g) before the applicant's invention thereof the invention was made in
this country by another who had not abandoned, suppressed, or concealed
it. In determining priority of invention there shall be considered not
only the respective dates of conception and reduction to practice of the
invention, but also the reasonable diligence of one who was first to
conceive and last to reduce to practice, from a time prior to conception
by the other.

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

(a) A patent may not be obtained though the invention is not identically
disclosed or described as set forth in section 102 of this title, if the
differences between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains.  Patentability
shall not be negatived by the manner in which the invention was made.

(b)(1) Notwithstanding subsection (a), and upon timely election by the
applicant for patent to proceed under this subsection, a
biotechnological process using or resulting in a composition of matter
that is novel under section 102 and nonobvious under subsection (a) of
this section shall be considered nonobvious if-

(A) claims to the process and the composition of matter are contained in
either the same application for patent or in separate applications
having the same effective filing date; and

(B) the composition of matter, and the process at the time it was
invented, were owned by the same person or subject to an obligation of
assignment to the same person.

(2) A patent issued on a process under paragraph (1)-

(A) shall also contain the claims to the composition of matter used in
or made by that process, or

(B) shall, if such composition of matter is claimed in another patent,
be set to expire on the same date as such other patent, notwithstanding
section 154

(3) For purposes of paragraph (1), the term `biotechnological process'
means-

(A) a process of genetically altering or otherwise inducing a single- or
multi-celled organism to-

(i) express an exogenous nucleotide sequence,

(ii) inhibit, eliminate, augment, or alter expression of an endogenous
nucleotide sequence or

(iii) express a specific physiological characteristic not naturally
associated with said organism;

(B) cell fusion procedures yielding a cell line that expresses a
specific protein, such as a monoclonal antibody; and

(C) a method of using a product produced by a process defined by
subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).

(c) Subject matter developed by another person, which qualifies as prior
art only under subsection (f) or (g) of section 102 of this title, shall
not preclude patentability under this section where the subject matter
and the claimed invention were, at the time the invention was made,
owned by the same person or subject to an obligation of assignment to
the same person.

By far the most frequent ground of rejection is on the ground of
unpatentability in view of the prior art, that is, that the claimed
subject matter is either not novel under  35 U.S.C. 102, or else it is
obvious under  35 U.S.C. 103. The language to be used in rejecting
claims should be unequivocal. See MPEP Section  707.07(d).

CHOICE OF PRIOR ART; BEST AVAILABLE

Prior art rejections should ordinarily be confined strictly to the best
available art. Exceptions may properly be made, for example, where:

(A) the propriety of a  35 U.S.C. 102 or 103 rejection depends on a
particular interpretation of a claim;

(B) a claim is met only in terms by a reference which does not disclose
the inventive concept involved; or

(C) the most pertinent reference seems likely to be antedated by a  37
CFR 1.131 affidavit or declaration.

Such rejections should be backed up by the best other art rejections
available. Merely cumulative rejections, i.e., those which would clearly
fall if the primary rejection were not sustained, should be avoided.

See also MPEP Section  707.05.

REEXAMINATION

For scope of rejections in reexamination proceedings see MPEP Section
2258.

DISTINCTION BETWEEN 35 U.S.C. 102 AND 103

The distinction between rejections based on  35 U.S.C. 102 and those
based on  35 U.S.C. 103 should be kept in mind. Under the former, the
claim is anticipated by the reference. No question of obviousness is
present. In other words, for anticipation under  35 U.S.C. 102, the
reference must teach every aspect of the claimed invention either
explicitly or impliedly. Any feature not directly taught must be
inherently present.  Whereas, in a rejection based on  35 U.S.C. 103,
the reference teachings must somehow be modified in order to meet the
claims. The modification must be one which would have been obvious to
one of ordinary skill in the art at the time the invention was made. See
MPEP Section  2131 -  Section  2146 for guidance on patentability
determinations under  35 U.S.C. 102 and 103.

DETERMINING THE EFFECTIVE FILING DATE OF THE APPLICATION

The effective filing date of a U.S. application may be determined as
follows:

(A) If the application is a continuation or divisional of one or more
earlier U.S. applications and if the requirements of  35 U.S.C. 120 have
been satisfied, the effective filing date is the same as the earliest
filing date in the line of continuation or divisional applications.

(B) If the application is a continuation-in-part of an earlier U.S.
application, any claims in the new application not supported by the
specification and claims of the parent application have an effective
filing date equal to the filing date of the new application. Any claims
which are fully supported under  35 U.S.C. 112 by the earlier parent
application have the effective filing date of that earlier parent
application.

(C) If the application claims foreign priority under  35 U.S.C.
119(a)-(d), the effective filing date is the filing date of the U.S.
application, unless situation 1 or 2 as set forth above applies. The
filing date of the foreign priority document is not the effective filing
date, although the filing date of the foreign priority document may be
used to overcome certain references.  See MPEP Section  706.02(b) and
Section  2136.05.

(D) If the application is entitled to priority under  35 U.S.C. 119(e)
from a provisional application, the effective filing date is the filing
date of the provisional application.

See MPEP Section  1893.03(b) for determining the effective filing date
of an application filed under  35 U.S.C. 371.  See MPEP Section
201.11(a) and Section  1895 for determining the effective filing date of
a continuation, divisional, or continuation-in-part of a PCT application
designating the U.S. See also MPEP Section  1895.01 and Section  1896
which discuss differences between applications filed under  35 U.S.C.
111(a) and  35 U.S.C. 371.

---SECTION---706.02(a) Rejections Under 35 U.S.C. 102(a), (b), or (e);
Printed Publication or Patent

Once the examiner conducts a search and finds a printed publication or
patent which discloses the claimed invention, the examiner should
determine whether the rejection should be made under  35 U.S.C. 102(a),
(b), or (e).

In order to determine which section of  35 U.S.C. 102 applies, the
effective filing date of the application must be determined and compared
with the date of the reference. See MPEP Section  706.02 regarding
determination of effective filing date of the application.

DETERMINING THE REFERENCE ISSUE OR PUBLICATION DATE

The examiner must also determine the issue or publication date of the
reference so that a proper comparison between the application and
reference dates can be made. Where the last day of the year dated from
the date of publication falls on a Saturday, Sunday or Federal holiday,
the publication is not a statutory bar under  35 U.S.C. 102(b) if the
application was filed on the next succeeding business day. Ex parte
Olah, 131 USPQ 41 (Bd. App. 1960)  (The Board in Olah held that  35
U.S.C. 21(b) is applicable to the filing of an original application for
patent and that applicant's own activity will not bar a patent if the
1-year grace period expires on a Saturday, Sunday, or Federal holiday
and the application's U.S. filing date is the next succeeding business
day.) Despite changes to  37 CFR 1.6(a)(2) and 1.10 which permit the PTO
to accord a filing date to an application as of the date of deposit as
"Express Mail" with the U.S. Postal Service in accordance with  37 CFR
1.10 (e.g., a Saturday filing date), the rule changes do not affect
applicant's concurrent right to defer the filing of an application until
the next business day when the last day for "taking any action" falls on
a Saturday, Sunday, or Federal holiday (e.g., the last day of the 1-year
grace period falls on a Saturday).  It should also be noted that a
magazine is effective as a printed publication under  35 U.S.C. 102(b)
as of the date it reached the addressee and not the date it was placed
in the mail. Protein Foundation Inc. v. Brenner, 260 F. Supp. 519, 151
USPQ 561 (D.D.C. 1966). See MPEP Section  707.05(f). For foreign patents
see MPEP Section  901.05. See MPEP Section  2124,  Section  2126, and
Section  2128 -  Section  2128.02 for case law relevant to reference
date determination.

DETERMINING WHETHER TO APPLY 35 U.S.C. 102(a), (b), or (e)

First, the examiner should consider whether the reference qualifies as
prior art under  35 U.S.C. 102(b) because this section results in a
statutory bar to obtaining a patent.  If the publication or issue date
of the reference is more than 1 year prior to the effective filing date
of the application (MPEP Section  706.02), the reference qualifies as
prior art under  35 U.S.C. 102(b).

If the publication or issue date of the reference is too recent for  35
U.S.C. 102(b) to apply, then the examiner should consider  35 U.S.C.
102(e).  For  35 U.S.C. 102(e) to apply:

(A) The reference must be a U.S. Patent with a filing date earlier than
the effective filing date of the application. Note that, for purposes of
35 U.S.C. 102(e), the filing date of the reference patent which has
issued on an application entitled to priority from a provisional
application under  35 U.S.C. 119(e) is the filing date of the
provisional application, except for a patent granted on an international
application (PCT) in which applicant has fulfilled the requirements of
paragraphs (1), (2) and (4) of  35 U.S.C. 371.  The filing date of a
patent granted on such a  35 U.S.C. 371 application is the date on which
paragraphs (1), (2) and (4) of  35 U.S.C. 371 have been fulfilled; and

(B) The inventive entity of the application must be different than that
of the reference. Note that, where there are joint inventors, only one
inventor need be different for the inventive entities to be different
and a rejection under  35 U.S.C. 102(e) is applicable even if there are
some common inventors.

If  35 U.S.C. 102(e) does not apply, then the examiner should consider
35 U.S.C. 102(a).  For  35 U.S.C. 102(a) to apply, the reference must
have a publication date earlier in time than the effective filing date
of the application, and must not be applicant's own work.

---SECTION---706.02(b) Overcoming a 35 U.S.C. 102 Rejection Based on a
Printed Publication or Patent

A rejection based on  35 U.S.C. 102(b) can be overcome by:

(A) Persuasively arguing that the claims are patentably distinguishable
from the prior art; or

(B) Amending the claims to patentably distinguish over the prior art.

A rejection based on  35 U.S.C. 102(e) can be overcome by:

(A) Persuasively arguing that the claims are patentably distinguishable
from the prior art;

(B) Amending the claims to patentably distinguish over the prior art;

(C) Filing an affidavit or declaration under  37 CFR 1.132 showing that
the reference invention is not by "another."  See MPEP Section
715.01(a),  Section  715.01(c), and Section  716.10;

(D) Filing an affidavit or declaration under  37 CFR 1.131 showing prior
invention, if the reference is not a U.S. patent (or application in the
case of a provisional rejection) claiming the same patentable invention
as defined in  37 CFR 1.601(n). See MPEP Section  715 for more
information on  37 CFR 1.131 affidavits.  When the claims of the
reference and the application are directed to the same invention or are
obvious variants, an affidavit or declaration under  37 CFR 1.131 is not
an acceptable method of overcoming the rejection. Under these
circumstances, the examiner must determine whether a double patenting
rejection or interference is appropriate.  If there is a common assignee
or inventor between the application and patent, a double patenting
rejection must be made.  See MPEP Section  804.  If there is no common
assignee or inventor and the rejection under  35 U.S.C. 102(e) is the
only possible rejection, the examiner must determine whether an
interference should be declared.  See MPEP Chapter 2300 for more
information regarding interferences;

(E) Perfecting a claim to priority under  35 U.S.C. 119(a)-(d).  The
foreign priority filing date must antedate the reference and be
perfected. The filing date of the priority document is not perfected
unless applicant has filed a certified priority document in the
application (and an English language translation, if the document is not
in English) (see  37 CFR 1.55) and the examiner has established that the
priority document satisfies the enablement and description requirements
of  35 U.S.C. 112, first paragraph; or

(F) Perfecting priority under  35 U.S.C. 119(e) by amending the
specification of the application to contain a specific reference to a
provisional application in accordance with  37 CFR 1.78(a)(4).

A rejection based on  35 U.S.C. 102(a) can be overcome by:

(A) Persuasively arguing that the claims are patentably distinguishable
from the prior art;

(B) Amending the claims to patentably distinguish over the prior art;

(C) Filing an affidavit or declaration under  37 CFR 1.131.  See MPEP
Section  715 for information on the requirements of  37 CFR 1.131
affidavits.

(D) Filing an affidavit or declaration under  37 CFR 1.132 showing that
the reference invention is not by "another." See MPEP Section
715.01(a),  Section  715.01(c), and Section  716.10;

(E) Perfecting a claim to priority under  35 U.S.C. 119(a)-(d) as
explained in reference to  35 U.S.C. 102(e) above;

(F) Perfecting priority under  35 U.S.C. 119(e) by amending the
specification of the application to contain a specific reference to a
provisional application in accordance with  37 CFR 1.78(a)(4).

---SECTION---706.02(c) Rejections Under 35 U.S.C. 102(a) or (b);
Knowledge by Others or Public Use or Sale

An applicant may make an admission, or submit evidence of sale of the
invention or knowledge of the invention by others, or the examiner may
have personal knowledge that the invention was sold by applicant or
known by others in this country.  The language "in this country" means
in the United States only and does not include other WTO or NAFTA member
countries. In these cases the examiner must determine if  35 U.S.C.
102(a) or 102(b) applies. See MPEP Section  2133.03 for a discussion of
case law treating the "public use" and "on sale" statutory bars.

If the activity is by an entity other than the inventors or assignee,
such as sale by another, manufacture by another or disclosure of the
invention by applicant to another then both  35 U.S.C. 102(a) and (b)
may be applicable. If the evidence only points to knowledge within the
year prior to the effective filing date then  35 U.S.C. 102(a) applies.
However, no rejection under  35 U.S.C. 102(a) should be made if there is
evidence that applicant made the invention and only disclosed it to
others within the year prior to the effective filing date.

35 U.S.C. 102(b) is applicable if the activity occurred more than 1 year
prior to the effective filing date of the application. See MPEP Section
2133.03 for a discussion of "on sale" and "public use" bars under  35
U.S.C. 102(b).

Note that as an aid to resolving public use or on sale issues, as well
as to other related matters of  35 U.S.C. 102(b) activity, an applicant
may be required to answer specific questions posed by the examiner and
to explain or supplement any evidence of record. See  35 U.S.C. 132,  37
CFR 1.104(a)(2). Information sought should be restricted to that which
is reasonably necessary for the examiner to render a decision on
patentability.

A 1- or 2-month time period should be set by the examiner for any reply
to the requirement, unless the requirement is part of an Office action
having a shortened statutory period, in which case the period for reply
to the Office action will also apply to the requirement. If applicant
fails to reply in a timely fashion to a requirement for information, the
application will be regarded as abandoned. 35 U.S.C. 133.  See MPEP
Section  2133.03.

If there is not enough information on which to base a public use or on
sale rejection, the examiner should make a requirement for more
information. Form paragraph 7.104 can be used.

7.104 Requirement for Information, Public Use or Sale

An issue of public use or on sale activity has been raised in this
application.  In order for the examiner to properly consider
patentability of the claimed invention under  35 U.S.C. 102(b),
additional information regarding this issue is required as follows: 
[1]

Applicant is reminded that failure to fully reply to this requirement
for information will result in a holding of abandonment.

Examiner Note:

1. Information sought should be restricted to that which is reasonably
necessary for the examiner to render a decision on patentability.  See
MPEP Section  2133.03.

2. A one or two month time period should be set by the examiner for
reply to the requirement unless it is part of an Office action having an
SSP, in which case the period for reply will apply also to the
requirement.

3. If sufficient evidence already exists to establish a prima facie case
of public use or on sale, use form paragraph 7.16 to make a rejection
under  35 U.S.C. 102(b).  See MPEP Section  2133.03.

---SECTION---706.02(d) Rejections Under 35 U.S.C. 102(c)

Under  35 U.S.C. 102(c), abandonment of the "invention" (as
distinguished from abandonment of an application) results in loss of
right to a patent.  See MPEP Section  2134 for case law which sets forth
the criteria for abandonment under  35 U.S.C. 102(c).

---SECTION---706.02(e) Rejections Under 35 U.S.C. 102(d)

35 U.S.C. 102(d) establishes four conditions which, if all are present,
establish a statutory bar against the granting of a patent in this
country:

(A) The foreign application must be filed more than 12 months before the
effective filing date of the United States application. See MPEP Section
706.02 regarding determination of the effective filing date of the
application.

(B) The foreign and United States applications must be filed by the same
applicant, his or her legal representatives or assigns.

(C) The foreign application must have actually issued as a patent or
inventor's certificate (e.g., granted by sealing of the papers in Great
Britain) before the filing in the United States. It need not be
published but the patent rights granted must be enforceable.

(D) The same invention must be involved.

If such a foreign patent or inventor's certificate is discovered by the
examiner, the rejection is made under  35 U.S.C. 102(d) on the ground of
statutory bar.

See MPEP Section  2135.01 for case law which further clarifies each of
the four requirements of  35 U.S.C. 102(d).

SEARCHING FOR 35 U.S.C. 102(d) PRIOR ART

The examiner should only undertake a search for an issued foreign patent
for use as  35 U.S.C. 102(d) prior art if there is a reasonable
possibility that a foreign patent covering the same subject matter as
the U.S. application has been granted to the same inventive entity
before the U.S. effective filing date, i.e., the time period between
foreign and U.S. filings is greater than the usual time it takes for a
patent to issue in the foreign country.  Normally, the probability of
the inventor's foreign patent issuing before the U.S. filing date is so
slight as to make such a search unproductive.  However, it should be
kept in mind that the average pendency varies greatly between foreign
countries.  In Belgium, for instance, a patent may be granted in just a
month after its filing, while in Japan the patent may not issue for a
decade.

The search for a granted patent can be accomplished on an electronic
database either by the examiner or by the staff of the Scientific and
Technical Information Center.  See MPEP Section  901.06(a), paragraph
IV.B., for more information on online searching. The document must be a
patent or inventor's certificate and not merely a published or laid open
application.

---SECTION---706.02(f) Provisional Rejections Under 35 U.S.C. 102(e);
Reference Is a Copending U.S. Patent Application

If a copending U.S. patent application discloses subject matter which
would anticipate the claims in another pending U.S. application which
has a different inventive entity, the examiner should determine whether
a provisional  35 U.S.C. 102(e) rejection can be made.

I. COPENDING U.S. APPLICATIONS HAVING AT LEAST ONE COMMON INVENTOR OR
ARE COMMONLY ASSIGNED

If (1) at least one common inventor exists between the applications or
the applications are commonly assigned and (2) the effective filing
dates are different, then a provisional rejection of the later filed
application should be made. The provisional rejection is appropriate
because if the earlier filed application becomes a patent it would
constitute actual prior art under  35 U.S.C. 102.  Since neither
application is published at the time of the provisional rejection, the
rejection must be made under  35 U.S.C. 102(e).

A provisional rejection under  35 U.S.C. 102(e) can be overcome in the
same manner that a  35 U.S.C. 102(e) rejection can be overcome.  See
MPEP Section  706.02(b).  The provisional rejection can also be overcome
by abandoning the applications and filing a new application containing
the subject matter of both.

Form paragraph 7.15.01 should be used when making a provisional
rejection under  35 U.S.C. 102(e).

7.15.01 Provisional Rejection, 35 U.S.C. 102(e) - Common Assignee or At
Least One Common Inventor

Claim  [1] provisionally rejected under  35 U.S.C. 102(e) as being
anticipated by copending Application No. [2] which has a common [3] with
the instant application.

Based upon the earlier effective U.S. filing date of the copending
application, it would constitute prior art under  35 U.S.C. 102(e), if
patented.  This provisional rejection under  35 U.S.C. 102(e) is based
upon a presumption of future patenting of the copending application.
[4].

This provisional rejection under  35 U.S.C. 102(e) might be overcome
either by a showing under  37 CFR 1.132 that any invention disclosed but
not claimed in the copending application was derived from the inventor
of this application and is thus not the invention "by another," or by an
appropriate showing under  37 CFR 1.131.

This rejection may not be overcome by the filing of a terminal
disclaimer.  See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed.
Cir. 1991).

Examiner Note:

1. This paragraph is used to provisionally reject over a copending
application with an earlier filing date that discloses the claimed
invention.  The copending application must have either a common assignee
or at least one common inventor.

2. If the claims are obvious over the invention disclosed in the other
copending application, use paragraph 7.21.01.

3. In bracket 3, insert either --assignee--  or --inventor--.

4. In bracket 4, an appropriate explanation may be provided in support
of the examiner's position on anticipation, if necessary.

5. If the claims of the copending application conflict with the claims
of the instant application, a provisional double patenting rejection
should also be given using paragraphs 8.30 and 8.32.

6. If evidence is additionally of record to show that either invention
is prior art unto the other under  35 U.S.C. 102(f) or (g), a rejection
using paragraphs 7.13 and/or 7.14 should also be made.

II. COPENDING APPLICATIONS HAVING NO COMMON INVENTOR OR ASSIGNEE

If there is no common assignee or common inventor, the confidential
status of applications under  35 U.S.C. 122 must be maintained and no
rejection can be made relying on the earlier filed application as prior
art under  35 U.S.C. 102(e). If the filing dates of the applications are
within 6 months of each other (3 months for simple subject matter) then
interference may be proper. See MPEP Chapter 2300. Otherwise, the
application with the earliest effective U.S. filing date must be allowed
to issue. After the allowed application is published, it can be used as
a reference in a rejection under  35 U.S.C. 102(e) in the still pending
application.

---SECTION---706.02(g) Rejections Under 35 U.S.C. 102(f)

35 U.S.C. 102(f) bars the issuance of a patent where an applicant did
not invent the subject matter being claimed and sought to be patented.
See also,  35 U.S.C. 101, which requires that whoever invents or
discovers is the party who may obtain a patent for the particular
invention or discovery.  The examiner must presume the applicants are
the proper inventors unless there is proof that another made the
invention and that applicant derived the invention from the true
inventor.

See MPEP Section  2137 -  Section  2137.02 for more information on the
substantive requirements of rejections under  35 U.S.C. 102(f).

---SECTION---706.02(h) Rejections Under 35 U.S.C. 102(g)

35 U.S.C. 102(g) bars the issuance of a patent where another made the
invention in the United States before applicant and had not abandoned,
suppressed, or concealed it.  This section of  35 U.S.C. 102 forms a
basis for interference practice.  See MPEP Chapter 2300 for more
information on interference procedure. See MPEP Section  2138 -  Section
2138.07 for more information on the requirements of  35 U.S.C. 102(g).

---SECTION---706.02(i) Form Paragraphs for Use in Rejections Under 35
U.S.C. 102

The following form paragraphs should be used in making the appropriate
rejections.

Note that the particular part of the refence relied upon to support the
rejection should be identified.

7.07 Statement of Statutory Basis, 35 U.S.C. 102

The following is a quotation of the appropriate paragraphs of  35 U.S.C.
102 that form the basis for the rejections under this section made in
this Office action:

A person shall be entitled to a patent unless --

Examiner Note:

1. The statute is no longer being re-cited in all Office actions.  It is
only required in first actions on the merits and final rejections.
Where the statute is not being cited in an action on the merits, use
paragraph 7.103.

2. Paragraphs 7.07 to 7.14 are to be used ONLY ONCE in a given Office
action.

7.08 102(a), Activity by Another Before Invention by Applicant

(a) the invention was known or used by others in this country, or
patented or described in a printed publication in this or a foreign
country, before the invention thereof by the applicant for a patent.

Examiner Note:

This paragraph must be preceded by paragraph 7.07.

7.09 102(b), Activity More Than One Year Prior to Filing

(b) the invention was patented or described in a printed publication in
this or a foreign country or in public use or on sale in this country,
more than one year prior to the date of application for patent in the
United States.

Examiner Note:

This paragraph must be preceded by paragraph 7.07, and may be preceded
by paragraph 7.08.

7.10 102(c), Invention Abandoned

(c) he has abandoned the invention.

Examiner Note:

This paragraph must be preceded by paragraph 7.07, and may be preceded
by one or more of paragraphs 7.08 and 7.09.

7.11 102(d), Foreign Patenting

(d) the invention was first patented or caused to be patented, or was
the subject of an inventor's certificate, by the applicant or his legal
representatives or assigns in a foreign country prior to the date of the
application for patent in this country on an application for patent or
inventor's certificate filed more than twelve months before the filing
of the application in the United States.

Examiner Note:

This paragraph must be preceded by paragraph 7.07, and may be preceded
by one or more of paragraphs 7.08 to 7.10.

7.12 102(e), Patent to Another with Earlier Filing Date

(e) the invention was described in a patent granted on an application
for patent by another filed in the United States before the invention
thereof by the applicant for patent, or on an international application
by another who has fulfilled the requirements of paragraphs (1), (2),
and (4) of section 371(c) of this title before the invention thereof by
the applicant for patent.

Examiner Note:

This paragraph must be preceded by paragraph 7.07, and may be preceded
by one or more of paragraphs 7.07 to 7.11.

7.13 102(f), Applicant Not the Inventor

(f) he did not himself invent the subject matter sought to be patented.

Examiner Note:

This paragraph must be preceded by paragraph 7.07, and may be preceded
by one or more of paragraphs 7.08 to 7.12.

7.14 102(g), Priority of Invention

(g) before the applicant's invention thereof the invention was made in
this country by another who had not abandoned, suppressed, or concealed
it.  In determining priority of invention there shall be considered not
only the respective dates of conception and reduction to practice of the
invention, but also the reasonable diligence of one who was first to
conceive and last to reduce to practice, from a time prior to conception
by the other.

Examiner Note:

This paragraph must be preceded by paragraph 7.07, and may be preceded
by one or more of paragraphs 7.08 to 7.13.

7.15 Rejection, 35 U.S.C. 102(a), (b) Patent or Publication, and (g)

Claim  [1] rejected under  35 U.S.C. 102([2]) as being [3] by [4].

Examiner Note:

1. In bracket 2, insert the appropriate paragraph letter or letters of
35 U.S.C 102 in parentheses. If paragraph (e) of  35 U.S.C. 102 is
applicable, use form paragraph 7.15.02.

2. In bracket 3,  insert either --clearly anticipated-- or
--anticipated-- with an explanation at the end of the paragraph.

3. In bracket 4, insert the prior art relied upon.

4. This rejection must be preceded either by paragraph 7.07 and
paragraphs 7.08, 7.09, and 7.14 as appropriate, or by paragraph 7.103.

5. If  35 U.S.C. 102(e) is also being applied, this paragraph must be
followed by either form paragraph 7.15.02 or 7.15.03.

7.15.01 Provisional Rejection, 35 U.S.C. 102(e) - Common Assignee or At
Least One Common Inventor

Claim  [1] provisionally rejected under  35 U.S.C. 102(e) as being
anticipated by copending Application No. [2] which has a common [3] with
the instant application.

Based upon the earlier effective U.S. filing date of the copending
application, it would constitute prior art under  35 U.S.C. 102(e), if
patented.  This provisional rejection under  35 U.S.C. 102(e) is based
upon a presumption of future patenting of the copending application.
[4].

This provisional rejection under  35 U.S.C. 102(e) might be overcome
either by a showing under  37 CFR 1.132 that any invention disclosed but
not claimed in the copending application was derived from the inventor
of this application and is thus not the invention "by another," or by an
appropriate showing under  37 CFR 1.131.

This rejection may not be overcome by the filing of a terminal
disclaimer.  See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed.
Cir. 1991).

Examiner Note:

1. This paragraph is used to provisionally reject over a copending
application with an earlier filing date that discloses the claimed
invention.  The copending application must have either a common assignee
or at least one common inventor.

2. If the claims are obvious over the invention disclosed in the other
copending application, use paragraph 7.21.01.

3. In bracket 3, insert either --assignee--  or --inventor--.

4. In bracket 4, an appropriate explanation may be provided in support
of the examiner's position on anticipation, if necessary.

5. If the claims of the copending application conflict with the claims
of the instant application, a provisional double patenting rejection
should also be given using paragraphs 8.30 and 8.32.

6. If evidence is additionally of record to show that either invention
is prior art unto the other under  35 U.S.C. 102(f) or (g), a rejection
using paragraphs 7.13 and/or 7.14 should also be made.

7.15.02 Rejection, 35 U.S.C. 102(e), Common Assignee or Inventor(s)

Claim  [1] rejected under  35 U.S.C. 102(e) as being anticipated by [2].

The applied reference has a common [3] with the instant application.
Based upon the earlier effective U.S. filing date of the reference, it
constitutes prior art under  35 U.S.C. 102(e).  This rejection under  35
U.S.C. 102(e) might be overcome either by a showing under  37 CFR 1.132
that any invention disclosed but not claimed in the reference was
derived from the inventor of this application and is thus not the
invention "by another," or by an appropriate showing under  37 CFR
1.131.

Examiner Note:

1. This paragraph is used to reject over a patent with an earlier filing
date that discloses but does not claim the same invention.  The patent
must have either a common assignee or a common inventor.

2. In bracket 3, insert either --assignee--  or  --inventor--.

7.15.03 Rejection, 35 U.S.C. 102(e), No Common Assignee or Inventor(s)

Claim  [1] rejected under  35 U.S.C. 102(e) as being [2] by [3].

Examiner Note:

1. This paragraph is used to reject over a patent with an earlier filing
date that discloses but does not claim the same invention.  The patent
must have neither a common assignee nor a common inventor.

2. In bracket 2,  insert either --clearly anticipated-- or
--anticipated-- with an explanation at the end of the paragraph.

3. In bracket 3, insert the prior art relied upon.

7.16 Rejection, 35 U.S.C. 102(b), Public Use or on Sale

Claim  [1] rejected under  35 U.S.C. 102(b) based upon a public use or
sale of the invention. [2]

Examiner Note:

1. This paragraph must be preceded either by paragraphs 7.07 and 7.09 or
by paragraph 7.103.

2. A full explanation of the evidence establishing a public use or sale
must be provided in bracket 2.

7.17 Rejection, 35 U.S.C. 102(c), Abandonment of Invention

Claim  [1] rejected under  35 U.S.C. 102(c) because the invention has
been abandoned. [2]

Examiner Note:

1. This paragraph must be preceded either by paragraph 7.07 and 7.10 or
by paragraph 7.103.

2. In bracket 2, insert a full explanation of the evidence establishing
abandonment of the invention.  See MPEP Section  2134.

7.18 Rejection, 35 U.S.C. 102(d), Foreign Patenting

Claim  [1] rejected under  35 U.S.C. 102(d) as being barred by
applicant's   [2].

[3]

Examiner Note:

1. This paragraph must be preceded either by paragraphs 7.07 and 7.11 or
by paragraph 7.103.

2. In bracket 3, insert an explanation of this rejection which must
include appropriate dates and how they make the foreign patent available
under  35 U.S.C. 102(d).

3. Refer to MPEP Section  2135 for applicable  35 U.S.C. 102(d) prior
art.

7.19 Rejection, 35 U.S.C. 102(f), Applicant Not the Inventor

Claim  [1] rejected under  35 U.S.C. 102(f) because the applicant did
not invent the claimed subject matter. [2]

Examiner Note:

1. This paragraph must be preceded either by paragraphs 7.07 and 7.13 or
by paragraph 7.103.

2. In bracket 2, insert an explanation of the supporting evidence
establishing that applicant was not the inventor.  See MPEP Section
2137.

---SECTION---706.02(j) Contents of a 35 U.S.C. 103  Rejection

35 U.S.C. 103 authorizes a rejection where, to meet the claim, it is
necessary to modify a single reference or to combine it with one or more
other references. After indicating that the rejection is under  35
U.S.C. 103, the examiner should set forth in the Office action:

(A) the relevant teachings of the prior art relied upon, preferably with
reference to the relevant column or page number(s) and line number(s)
where appropriate,

(B) the difference or differences in the claim over the applied
reference(s),

(C) the proposed modification of the applied reference(s) necessary to
arrive at the claimed subject matter, and

(D) an explanation why one of ordinary skill in the art at the time the
invention was made would have been motivated to make the proposed
modification.

To establish a prima facie case of obviousness, three basic criteria
must be met. First, there must be some suggestion or motivation, either
in the references themselves or in the knowledge generally available to
one of ordinary skill in the art, to modify the reference or to combine
reference teachings. Second, there must be a reasonable expectation of
success. Finally, the prior art reference (or references when combined)
must teach or suggest all the claim limitations. The teaching or
suggestion to make the claimed combination and the reasonable
expectation of success must both be found in the prior art and not based
on applicant's disclosure. In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438
(Fed. Cir. 1991).  See MPEP Section  2143 -  Section  2143.03 for
decisions pertinent to each of these criteria.

The initial burden is on the examiner to provide some suggestion of the
desirability of doing what the inventor has done. "To support the
conclusion that the claimed invention is directed to obvious subject
matter, either the references must expressly or impliedly suggest the
claimed invention or the examiner must present a convincing line of
reasoning as to why the artisan would have found the claimed invention
to have been obvious in light of the teachings of the references." Ex
parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Inter. 1985).  See MPEP
Section  2144 -  Section  2144.09 for examples of reasoning supporting
obviousness rejections.

Where a reference is relied on to support a rejection, whether or not in
a minor capacity, that reference should be positively included in the
statement of the rejection. See In re Hoch, 428 F.2d 1341, 1342 n.3 166
USPQ 406, 407 n. 3 (CCPA 1970).

It is important for an examiner to properly communicate the basis for a
rejection so that the issues can be identified early and the applicant
can be given fair opportunity to reply. Furthermore, if an initially
rejected application issues as a patent, the rationale behind an earlier
rejection may be important in interpreting the scope of the patent
claims. Since issued patents are presumed valid (35 U.S.C. 282) and
constitute a property right (35 U.S.C. 261), the written record must be
clear as to the basis for the grant.  Since patent examiners cannot
normally be compelled to testify in legal proceedings regarding their
mental processes (see MPEP Section  1701.01), it is important that the
written record clearly explain the rationale for decisions made during
prosecution of the application.

See MPEP Section  2141 -  Section  2144.09 generally for guidance on
patentability determinations under  35 U.S.C. 103, including a
discussion of the requirements of   Graham v. John Deere, 383 U.S. 1,
148 USPQ 459 (1966). See MPEP Section  2145 for consideration of
applicant's rebuttal arguments. See MPEP Section  706.02(l) for a
discussion of  35 U.S.C. 103(c).

---SECTION---706.02(k) Provisional Rejection  (Obviousness) Under  35
U.S.C. 102(e)/103

Where two applications of different inventive entities are copending and
the filing dates differ, a provisional rejection under  35 U.S.C.
102(e)/103 should be made in the later filed application if the
applications have a common assignee or a common inventor. Otherwise the
confidential status of applications under  35 U.S.C. 122 must be
maintained. Such a rejection alerts the applicant that he or she can
expect an actual rejection on the same ground if one of the applications
issues and also lets applicant know that action must be taken to avoid
the rejection.

This gives applicant the opportunity to analyze the propriety of the
rejection and possibly avoid the loss of rights to desired subject
matter.  Provisional rejections of the obviousness type under  35 U.S.C.
102(e)/103 are rejections applied to copending applications having
different effective filing dates wherein each application has a common
assignee or a common inventor. The earlier filed application, if
patented, would constitute prior art under  35 U.S.C. 102(e). The
rejection can be overcome by:

(A) Arguing patentability over the earlier filed application;

(B) Combining the subject matter of the copending applications into a
single application claiming benefit under  35 U.S.C. 120 of the prior
applications and abandoning the copending applications (Note that a
claim in a subsequently filed application that relies on a combination
of prior applications may not be entitled to the benefit of an earlier
filing date under  35 U.S.C. 120 since  35 U.S.C. 120 requires that the
earlier filed application contain a disclosure which complies with  35
U.S.C. 112, first paragraph for each claim in the subsequently filed
application.   Studiengesellschaft Kohle m.b.H. v. Shell Oil Co., 112
F.3d 1561, 42 USPQ2d 1674 (Fed. Cir. 1997).);

(C) Filing an affidavit or declaration under  37 CFR 1.132 showing that
any unclaimed invention disclosed in the copending application was
derived from the inventor of the other application and is thus not
invention "by another" (see MPEP Section  715.01(a),  Section
715.01(c), and Section  716.10); or

(D) Filing an affidavit or declaration under  37 CFR 1.131 showing a
date of invention prior to the effective U.S. filing date of the
copending application. See MPEP Section  715.

Where the applications are claiming the same patentable invention, a
terminal disclaimer and an affidavit or declaration under  37 CFR 1.130
may be used to overcome a rejection under  35 U.S.C. 103  in a common
ownership situation if the earlier filed application has matured into a
patent.  See MPEP Section  718.

If a provisional rejection is made and the copending applications are
combined into a single application and the resulting single application
is subject to a restriction requirement, the divisional application
would not be subject to a provisional or actual rejection under  35
U.S.C. 102(e)/103 since the provisions of  35 U.S.C. 121 preclude the
use of a patent issuing therefrom as a reference against the other
application. Additionally, the resulting continuation-in-part is
entitled to  35 U.S.C. 120 benefit of each of the prior applications.
This is illustrated in Example 2, below.

The following examples are instructive as to the application of  35
U.S.C. 102(e)/103:

Example 1. Assumption: Employees A and B work for C, each with knowledge
of the other's work, and with obligation to assign inventions to C while
employed.

SITUATIONS	RESULTS

 1.	A invents X and later files application. 	This is permissible.

 2.	B modifies X to XY.   	B files application before A's filing  	No
35 U.S.C. 102(f)/103 or 102(g)/103 rejection; provisional  35 U.S.C.
102(e)/103 rejection applies.  Provisional double patenting rejection
made.

 3.	B's patent issues.	A's claims rejected under  35 U.S.C. 102(e)/103
and double patenting.

 4.	A files  37 CFR 1.130 affidavit to disqualify 	B's patent as prior
art where the same 	patentable invention is being claimed. 	Terminal
disclaimer filed under 37 CFR 	1.321(c). 	Rejection under  35 U.S.C.
102(e)/103 may be overcome and double patenting rejection may be
overcome if inventions X and XY are commonly owned and all requirements
of  37 CFR 1.130 and 1.321 are met.

In situation (2.) above, the result is a provisional rejection by the
examiner under  35 U.S.C. 102(e)/103.  The rejection is provisional
since the subject matter and the prior art are pending applications.

Example 2. Assumption: Employees A and B work for C, each with knowledge
of the other's work, and with obligation to assign inventions to C while
employed.

SITUATIONS	RESULTS

 1.	A invents X and files application. 	This is permissible.

 2.	B modifies X to XY after A's application is filed.   	B files
application establishing that A and B were 	both under obligation to
assign inventions to C at 	the time the inventions were made. 	
Provisional  35 U.S.C. 102(e)/103 rejection made; provisional double
patenting rejection made; no  35 U.S.C. 102(f)/103 or 102(g)/103
rejection made.

 3.	A and B file continuing application claiming 	priority to their
earlier applications and abandon 	the earlier applications.	Assume it is
proper that restriction be required between X and XY.

 4.	X is elected and patent issues on X with 	divisional application
being timely filed on XY. 	No rejection of divisional application under
35 U.S.C. 102(e)/103 in view of  35 U.S.C. 121.

EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON
OWNERSHIP IS ESTABLISHED

The disclosure of an earlier filed patent application which issues as a
patent continues to be prior art under  35 U.S.C. 102(e) against a later
invented and filed application of another inventor even though the
patent and the later invention were owned by, or subject to, an
obligation of assignment to the same person at the time the later
invention was made.  See MPEP Section  706.02(l) for examination of
applications of different inventive entities where common ownership has
not been established.

Once the examiner checks the applications and it is established from the
record that common ownership existed at the time the later invention was
made, he or she should:

(A) examine the applications as to all grounds except  35 U.S.C. 102(f)
and (g) as they apply through 35 U.S.C. 103,

(B) examine the applications for double patenting, including double
patenting of the obviousness type, and make a provisional double
patenting rejection, if appropriate (See   In re Mott, 539 F.2d 1291,
190 USPQ 536 (CCPA 1976)),

(C) examine the later filed application under  35 U.S.C. 102(e) as it
applies through  35 U.S.C. 103 and make a provisional rejection under
35 U.S.C. 102(e)/ 35 U.S.C. 103 in the later filed application, if
appropriate, and

(D) permit the applicant of the later filed application to file an
affidavit or declaration under  37 CFR 1.131, or a terminal disclaimer
and an affidavit or declaration under  37 CFR 1.130 if the same
patentable invention is being claimed (see MPEP Section  715.05 and
Section  718), or an affidavit or declaration under  37 CFR 1.132
showing the invention is not "by another," to overcome the provisional
or actual  35 U.S.C. 102(e)/ 35 U.S.C. 103 rejection, if appropriate,
and a terminal disclaimer to overcome the provisional or actual
rejection on double patenting of the obviousness type. An affidavit or
declaration under  37 CFR 1.130 cannot be used to overcome a provisional
35 U.S.C. 102(e)/103 rejection. See MPEP Section  718.

The practice of rejecting claims on the ground of double patenting in
commonly owned applications of different inventive entities is in
accordance with existing case law and prevents an organization from
obtaining two or more patents with different expiration dates covering
nearly identical subject matter. See MPEP Section  804 for guidance on
double patenting issues.  In accordance with established patent law
doctrines, double patenting rejections can be overcome in certain
circumstances by disclaiming, pursuant to the existing provisions of  37
CFR 1.321, the terminal portion of the term of the later patent and
including in the disclaimer a provision that the patent shall be
enforceable only for and during the period the patent is commonly owned
with the application or patent which formed the basis for the rejection,
thereby eliminating the problem of extending patent life.

The following example is illustrative:

ASSUMPTION: Employees A and B work for C, each with knowledge of the
other's work, and with obligation to assign inventions to C while
employed:

SITUATIONS	RESULTS

 1.	A invents X and files application with assignment 	to C recorded in
PTO showing C's ownership at 	the time the invention X was made.	This is
permissible.

 2.	A and B modify X to XY and file application with 	assignment
recorded in PTO showing C's 	ownership at the time the invention XY was 	
made.  	Provisional double patenting rejections of the obviousness type
may be made.  Provisional rejection under  35 U.S.C. 102(e)/103 may be
made in later filed application.

 3.	A and B file terminal disclaimers to overcome 	provisional double
patenting and insufficient  	 37 CFR 1.131 affidavit to overcome
provisional 	 35 U.S.C. 102(e)/103 rejection.	Examiner finds  37 CFR
1.131 affidavit insufficient; accepts terminal disclaimers.

 4.	A and B file continuing application disclosing and 	claiming both X
and XY and claiming 35 U.S.C. 	120 benefit of both prior applications;
both prior 	applications are then abandoned.	This is permissible.

EXAMINATION OF CONTINUING APPLICATION COMMONLY OWNED WITH ABANDONED
PARENT APPLICATION TO WHICH BENEFIT IS CLAIMED UNDER 35 U.S.C. 120

An application claiming the benefit of a prior filed copending national
or international application under  35 U.S.C. 120 must name as an
inventor at least one inventor named in the prior filed application. The
prior filed application must also disclose the named inventor's
invention claimed in at least one claim of the later filed application
in the manner provided by the first paragraph of  35 U.S.C. 112.  This
practice contrasts with the practice in effect prior to November 8, 1984
(the date of enactment of Public Law 98-622) where the inventorship
entity in each of the applications was required to be the same for
benefit under  35 U.S.C. 120.

So long as the applications have at least one inventor in common and the
other requirements are met, the Office will permit a claim for  35
U.S.C. 120 benefit without any additional submissions or notifications
from applicants regarding inventorship differences.

In addition to the normal examination conducted by the examiner, he or
she must examine the earlier filed application to determine if the
earlier and later applications have at least one inventor in common and
that the other  35 U.S.C. 120 requirements are met. The claim for  35
U.S.C. 120 benefit will be permitted without examination of the earlier
application for disclosure and support of at least one claim of the
later filed application under  35 U.S.C. 112, first paragraph unless it
becomes necessary to do so, for example, because of an intervening
reference.

EXAMINATION OF COMMONLY OWNED PENDING APPLICATIONS HAVING DIFFERENT
INVENTIVE ENTITIES CLAIMING BENEFIT UNDER 35 U.S.C. 120

See MPEP Section  706.02(l) for examination of applications of different
inventive entities where common ownership is not established.

Commonly owned applications of different inventive entities may be
rejected on the ground of double patenting. Despite the fact that a
later filed application claims  35 U.S.C. 120 benefit to an earlier
application, a double patenting rejection may also be appropriate so
long as at least one inventor is common to each application. The
rejection based on a pending application would be a provisional
rejection since no patent has issued.

If the applications are commonly owned, a rejection of the applications
on the ground of double patenting can be overcome by an appropriate
terminal disclaimer as long as the identical invention is not being
claimed. See In re Robeson, 331 F.2d 610, 141 USPQ 485 (CCPA 1964) and
In re Kaye, 332 F.2d 816, 141 USPQ 829 (CCPA 1964).

The following example is illustrative:

ASSUMPTION:  Employees A and B work for C, each with knowledge of the
other's work, and with obligation to assign inventions to C while
employed.

SITUATIONS	RESULTS

 1.	A invents X, A and B together invent XY.	This is permissible.

 2.	A later files application on X with assignment 	to C.	This is
permissible.

 3.	A and B later file application on XY with 	assignment to C.	Examiner
may make provisional rejection of A and B's application on grounds of
double patenting and  35 U.S.C. 102(e)/103 in view of A's application.

 4.	A and B file  37 CFR 1.130 affidavit to disqualify 	A's application
as prior art where same patentable 	invention claimed, and terminal
disclaimers in 	both applications.	An affidavit under  37 CFR 1.130
cannot be used to overcome a provisional rejection.

---SECTION---706.02(l) Rejections Under 35 U.S.C. 102(f)/103 and 35
U.S.C. 102(g)/103; 35 U.S.C. 103(c)

37 CFR 1.104 Nature of examination.

                  +++   

(c) Rejection of claims.

                  +++   

(4) Subject matter which is developed by another person which qualifies
as prior art only under  35 U.S.C. 102(f) or (g) may be used as prior
art under  35 U.S.C. 103 against a claimed invention unless the entire
rights to the subject matter and the claimed invention were commonly
owned by the same person or organization or subject to an obligation of
assignment to the same person or organization at the time the claimed
invention was made.

                  +++   

37 CFR 1.104(c)(4) basically reiterates the requirements of  35 U.S.C.
103(c) which provides that subject matter developed by another which
qualifies as "prior art" only under subsections  35 U.S.C. 102(f) or  35
U.S.C. 102(g) is not to be considered when determining whether an
invention sought to be patented is obvious under  35 U.S.C. 103,
provided the subject matter and the claimed invention were commonly
owned at the time the invention was made. Note that if the prior art is
published and the inventive entity is not identical then  35 U.S.C.
102(e)/103 will apply and the prior art will not be disqualified under
35 U.S.C. 103(c).

The subject matter that is disqualified as prior art under  35 U.S.C.
103 is strictly limited to subject matter that A) qualifies as prior art
only under  35 U.S.C. 102(f) or  35 U.S.C. 102(g), and B) was commonly
owned with the claimed invention at the time the invention was made. If
the subject matter that qualifies as prior art only under  35 U.S.C.
102(f) or  35 U.S.C. 102(g) was not commonly owned at the time of the
invention, the subject matter is not disqualified as prior art under  35
U.S.C. 103. See OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396,
1403-04, 43 USPQ2d 1641, 1646 (Fed. Cir. 1997) ("We therefore hold that
subject matter derived from another not only is itself unpatentable to
the party who derived it under Section  102(f), but, when combined with
other prior art, may make a resulting obvious invention unpatentable to
that party under a combination of Section Section  102(f) and 103.")  If
the subject matter qualifies as prior art under any other subsection
(e.g., subsection  35 U.S.C. 102(a),  35 U.S.C. 102(b), or  35 U.S.C.
102(e)) it will not be disqualified as prior art under  35 U.S.C.
103(c).

It is important to recognize that  35 U.S.C. 103(c) applies only to
consideration of prior art for purposes of obviousness under  35 U.S.C.
103.  It does not apply to or affect subject matter which qualifies as
prior art under  35 U.S.C. 102. A patent applicant urging that subject
matter is disqualified has the burden of establishing that it was
commonly owned at the time the claimed invention was made. Absent proper
evidence of common ownership at the time the later invention was made,
the appropriate rejection under  35 U.S.C. 102(f) or  35 U.S.C. 102(g)
as it applies through  35 U.S.C. 103 should be made.

Information learned from or transmitted to persons outside the
organization is not disqualified as prior art. The term "subject matter"
will be construed broadly, in the same manner the term is construed in
the remainder of  35 U.S.C. 103. The term "another" as used in  35
U.S.C. 103 means any inventive entity other than the inventor and would
include the inventor and any other persons. The term "developed" is to
be read broadly and is not limited by the manner in which the
development occurred. The term "commonly owned" means wholly owned by
the same person, persons, or organization at the time the invention was
made.

Inventors of subject matter not commonly owned at the time of the
invention, but currently commonly owned, may file as joint inventors in
a single application.  However, the claims in such an application are
not protected from a  35 U.S.C. 102(f)/103 or  35 U.S.C. 102(g)/103
rejection. Applicants in such cases have an obligation pursuant to  37
CFR 1.56 to point out the inventor and invention dates of each claim and
the lack of common ownership at the time the later invention was made to
enable the examiner to consider the applicability of a  35 U.S.C.
102(f)/103 or  35 U.S.C. 102(g)/103 rejection. The examiner will assume,
unless there is evidence to the contrary, that applicants are complying
with their duty of disclosure.

Foreign applicants will sometimes combine the subject matter of two or
more related applications with different inventors into a single U.S.
application naming joint inventors.  The examiner will make the
assumption, absent contrary evidence, that the applicants are complying
with their duty of disclosure if no information is provided relative to
invention dates and common ownership at the time the later invention was
made.  Such a claim for  35 U.S.C. 119(a)-(d) benefit based upon the
foreign filed applications is appropriate and  35 U.S.C. 119(a)-(d)
benefit can be accorded based upon each of the foreign filed
applications.

I. DEFINITION OF COMMON OWNERSHIP

In order to be disqualified as prior art under  35 U.S.C. 103(c), the
subject matter which would otherwise be prior art to the claimed
invention and the claimed invention must be commonly owned at the time
the claimed invention was made.

The term "commonly owned" is intended to mean that the subject matter
which would otherwise be prior art to the claimed invention and the
claimed invention are entirely or wholly owned by the same person,
persons, or organization at the time the claimed invention was made. If
the person, persons, or organization owned less than 100 percent of the
subject matter which would otherwise be prior art to the claimed
invention, or less than 100 percent of the claimed invention, then
common ownership would not exist. Common ownership requires that the
person, persons, or organization own 100 percent of the subject matter
and 100 percent of the claimed invention. As long as principal ownership
rights to either the subject matter or the claimed invention reside in
different persons or organizations common ownership does not exist. A
license of the claimed invention to another by the owner where basic
ownership rights are retained would not defeat ownership.

The requirement for common ownership at the time the claimed invention
was made is intended to preclude obtaining ownership of subject matter
after the claimed invention was made in order to disqualify that subject
matter as prior art against the claimed invention.

The question of whether common ownership exists at the time the claimed
invention was made is to be determined on the facts of the particular
case in question. Actual ownership of the subject matter and the claimed
invention by the same individual or organization or a legal obligation
to assign both the subject matter and the claimed invention to the same
individual or organization must be in existence at the time the claimed
invention was made in order for the subject matter to be disqualified as
prior art. A moral or unenforceable obligation would not evidence common
ownership.

Under  35 U.S.C. 103(c), an applicant's admission that subject matter
was developed prior to applicant's invention would not make the subject
matter prior art to applicant if the subject matter qualifies as prior
art only under sections  35 U.S.C. 102(f) or  35 U.S.C. 102(g), and if
the subject matter and the claimed invention were commonly owned at the
time the invention was made. See In re Fout, 675 F.2d 297, 213 USPQ 532
(CCPA 1982), for a decision involving an applicants' admission which was
used as prior art against their application. If the subject matter and
invention were not commonly owned, an admission that the subject matter
is prior art would be usable under  35 U.S.C. 103.

The burden of establishing that subject matter is disqualified as prior
art under  35 U.S.C. 103(c) is intended to be placed and reside upon the
person or persons urging that the subject matter is disqualified. For
example, a patent applicant urging that subject matter is disqualified
as prior art under  35 U.S.C. 103(c),  would have the burden of
establishing that it was commonly owned at the time the claimed
invention was made. The patentee in litigation would likewise properly
bear the same burden placed upon the applicant before the Patent and
Trademark Office. To place the burden upon the patent examiner or the
defendant in litigation would not be appropriate since evidence as to
common ownership at the time the claimed invention was made might not be
available to the patent examiner or the defendant in litigation, but
such evidence, if it exists, should be readily available to the patent
applicant or the patentee.

In view of  35 U.S.C. 103(c), the Commissioner has reinstituted in
appropriate circumstances the practice of rejecting claims in commonly
owned applications of different inventive entities on the grounds of
double patenting. Such rejections can be overcome in appropriate
circumstances by the filing of terminal disclaimers. This practice has
been judicially authorized. See In re Bowers, 359 F.2d 886, 149 USPQ 57
(CCPA 1966). The use of double patenting rejections which then could be
overcome by terminal disclaimers preclude patent protection from being
improperly extended while still permitting inventors and their assignees
to obtain the legitimate benefits from their contributions.  See also
MPEP Section  804.

The following examples are provided for illustration only:

Example 1

Parent Company owns 100% of Subsidiaries A and B

- inventions of A and B are commonly owned.

Example 2

Parent Company owns 100% of Subsidiary A and 90% of Subsidiary B

- inventions of A and B not commonly owned.

Example 3

If same person owns subject matter and invention at time invention was
made, license to another may be made without the subject matter becoming
prior art.

Example 4

Different Government inventors retaining certain rights (e.g. foreign
filing rights) in separate inventions owned by Government precludes
common ownership of inventions.

Example 5

Company A and Company B form joint venture Company C. Employees of A
while working for C with an obligation to assign inventions to C, invent
invention #1, employees of B while working for C with an obligation to
assign inventions to C, invent invention #2, with knowledge of #1.

Question:  Are #1 and #2 commonly owned at the time the later invention
was made so as to preclude a rejection under  35 U.S.C. 102(f) or (g) in
view of  35 U.S.C. 103?

Answer:  Yes-An official of company C can sign an affidavit that C owned
both inventions.

The examiner must examine the application as to all grounds except  35
U.S.C. 102(f) and (g) as they apply through  35 U.S.C. 103 only if the
application file(s) establishes common ownership at the time the later
invention was made. Thus, it is necessary to look to the time at which
common ownership exists. If common ownership does not exist at the time
the later invention was made, the earlier invention is not disqualified
as potential prior art under 35 U.S.C. 102(f) and (g) as they apply
through  35 U.S.C. 103. An invention is "made" when conception is
complete as defined in Mergenthaler v. Scudder, 11 App. D.C. 264, 81
O.G. 1417, 1897 C.D. 724 (D.C. Cir. 1897); In re Tansel, 253 F.2d 241,
117 USPQ 188 (CCPA 1958). Common ownership at the time the invention was
made for purposes of obviating a  35 U.S.C. 102(f)/ 35 U.S.C. 103 or  35
U.S.C. 102(g)/ 35 U.S.C. 103 rejection may be established irrespective
of whether the invention was made in the United States or abroad. The
provisions of  35 U.S.C. 104, however, will continue to apply to other
proceedings in the Patent and Trademark Office, e.g. in an interference
proceeding, with regard to establishing a date of invention by knowledge
or use thereof, or other activity with respect thereto, in a foreign
country. The foreign filing date will continue to be used for
interference purposes under  35 U.S.C. 119(a)-(d) and  35 U.S.C. 365.

II. EVIDENCE REQUIRED TO ESTABLISH COMMON OWNERSHIP

It is important to recognize just what constitutes sufficient evidence
to establish common ownership at the time the invention was made.  The
common ownership must be shown to exist at the time the later invention
was made.  A statement of present common ownership is not sufficient. In
re Onda, 229 USPQ 235 (Comm'r Pat. 1985).

A. Nature of the Showing

37 CFR 1.104 Nature of examination.

(a) Examiner's action.

                  +++   

(5) Copending applications will be considered by the examiner to be
owned by, or subject to an obligation of assignment to, the same person
if:

(i) The application files refer to assignments recorded in the Patent
and Trademark Office in accordance with Part 3 of this chapter which
convey the entire rights in the applications to the same person or
organization; or

(ii) Copies of unrecorded assignments which convey the entire rights in
the applications to the same person or organization are filed in each of
the applications; or

(iii) An affidavit or declaration by the common owner is filed which
states that there is common ownership and states facts which explain why
the affiant or declarant believes there is common ownership, which
affidavit or declaration may be signed by an official of the corporation
or organization empowered to act on behalf of the corporation or
organization when the common owner is a corporation or other
organization; or

(iv) Other evidence is submitted which establishes common ownership of
the applications.

                  +++   

37 CFR 1.104(a)(5) specifies the nature of the showing necessary before
the examiner would consider copending applications to be owned by, or
subject to an obligation of assignment to, the same person for purposes
of  35 U.S.C. 102(f)/103,  35 U.S.C. 102(g)/103 and  37 CFR 1.104(c)(4).
If common ownership does not exist at the time the later invention was
made, the earlier invention is not disqualified as potential prior art
under  35 U.S.C. 102(f) and (g) as they apply through  35 U.S.C. 103.

The rule permits the necessary showing to be made in different
alternative ways. The necessary showing will be considered by the
examiner to be present if the application files refer to assignments
which are recorded in the Patent and Trademark Office in accordance with
37 CFR Part 3 as long as the assignments conveyed the entire rights in
the applications to the same person or organization.

A second alternative which can be used, if assignments have not been
recorded, permits the examiner to consider copies of unrecorded
assignments filed in each of the applications by the applicants as long
as the unrecorded assignments convey the entire rights in the
applications to the same person or organization. The submission of
copies of assignment agreements that were filed in the Office and that
were executed at the time the application was filed would not be
sufficient to disqualify the earlier invention as potential prior art
against the later invention unless the assignment document itself
contained language which indicate the relevant dates involved and
established that the inventions were commonly owned at the time the
later invention was made. Absent specific language in the assignment
document which would establish that the inventions claimed in the
applications were commonly owned at the time the later invention was
made, the attorney/applicants would have to supply additional evidence
or showings establishing common ownership at the time the later
invention was made. This additional evidence or showing might take the
form of an affidavit or declaration by the common owner which refers to
the assignment and further avers that the inventors of the subject
matter of the applications were all under an obligation to assign the
inventions to the common owner at the time the later invention was made,
e.g., by virtue of employment agreements. The affidavit or declaration
might also include copies of the employment agreements although the
submission of the copies of the employment agreements would not be
essential as long as unqualified averments are made that the inventions
were commonly owned at the time the later invention was made.

A third alternative permits an affidavit or declaration to be filed by
the common owner stating that there is common ownership and stating
facts which explain why the affiant or declarant believes there is
common ownership. Under this alternative, sufficient facts will have to
be presented in order to enable the examiner to conclude that a prima
facie case of common ownership exists. It is expected that the most
common form of submission to establish common ownership at the time the
later invention was made will be verified statements, i.e., oaths or
declarations from the common owner. It should be emphasized that such
oaths or declarations must be executed by the common owner or someone
empowered to act on behalf of the common owner.

The fourth alternative permits other evidence to be used which would
establish common ownership of the applications, e.g., a court decision
determining the owner.

B. Showing by Affidavit or Declaration; Who May Sign on Behalf of an
Organization

The terms "person" and "organization" in the rule would include
circumstances where the ownership resided in more than one person and/or
organization as long as the applications are owned jointly by the same
owners. 37 CFR 1.104(a)(5)(iii) also provides that where the common
owner is a corporation or other organization an affidavit or declaration
averring common ownership may be signed by an official of the
corporation or organization who is empowered to act on behalf of the
corporation or organization. The requirements of  37 CFR 3.73(b) do not
apply. A mere power of attorney to prosecute a patent application will
not make an individual an official of the corporation or organization or
empower the individual to act on behalf of the corporation or
organization for purposes of averring common ownership. However, such an
affidavit could be made by a patent attorney, patent agent, or other
individual if the attorney, agent, or other individual has been
appointed in writing by the corporation or organization as an official
of the corporation or organization specifically empowered to make
affidavits or declarations on its behalf averring to common ownership.
In circumstances where such a written appointment has been given to a
patent attorney, patent agent, or other individual, that person could
then make affidavits or declarations averring to common ownership as
long as the affidavit or declaration referred to an attached copy of the
written appointment and averred that the authority is still in effect.
Under this practice the original signed copy of the written appointment
would be retained by the affiant or declarant unless the Patent and
Trademark Office specifically required it to be filed. Unless some
question arose as to the authority of the individual to make the
averment as to common ownership, the Patent and Trademark Office would
ordinarily not need to require the original signed copy of the written
appointment. While this practice should simplify the establishing of
common ownership by necessitating only one original signed written
appointment, corporations and other organizations must exercise care
that the written appointment is only given to those persons who are in a
position to know that common ownership does in fact exist and can
therefore properly make affirmative representations to that effect to
the Patent and Trademark Office.

III. EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE
COMMON OWNERSHIP IS NOT ESTABLISHED

See MPEP Section  706.02(k) for examination of applications of different
inventive entities where common ownership is established.

Where the applications do not establish common ownership, the examiner
will:

(A) assume that the applications are not commonly owned;

(B) examine the applications on all grounds other than any conflict
between the applications;

(C) consider the applicability of  35 U.S.C. 102(f)/103 or  35 U.S.C.
102(g)/103 if one application refers to the other or if one inventor is
common to both applications. If there is no cross-reference or common
inventor between the applications it would be inappropriate for the
examiner to refer to one application in the other in view of  35 U.S.C.
122;

(D) consider interference if appropriate; and

(E) suspend the later filed application if it is otherwise allowable
until the earlier filed application is abandoned or issues as a patent
and then reject the later filed application under  35 U.S.C. 102(e)/103,
if appropriate.

---SECTION---706.02(m) Form Paragraphs for Use in Rejections Under 35
U.S.C. 103

The following form paragraphs should be used in making the appropriate
rejections under  35 U.S.C. 103.

7.20 Statement of Statutory Basis, 35 U.S.C. 103(a)

The following is a quotation of  35 U.S.C. 103(a) which forms the basis
for all obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically
disclosed or described as set forth in section 102 of this title, if the
differences between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains.  Patentability
shall not be negatived by the manner in which the invention was made.

Examiner Note:

1. The statute is not to be cited in all Office actions.  It is only
required in first actions on the merits employing  35 U.S.C. 103(a) and
final rejections. Where the statute is being applied, but is not cited
in an action on the merits, use paragraph 7.103.

2. This paragraph should only be used ONCE in a given Office action.

3. This paragraph must precede paragraphs 7.20.01 - 7.22 when this
paragraph is used to cite the statute in first actions and final
rejections.

7.20.01 103(a) Rejection Using Art Disqualified Under 102 (f) or (g)

Applicant has provided evidence in this file showing that the invention
was owned by, or subject to an obligation of assignment to, the same
entity as [1] at the time this invention was made.  Accordingly,   [2]
is disqualified as prior art through  35 U.S.C. 102(f) or (g) in any
rejection under  35 U.S.C. 103(a) in this application.  However, this
applied art additionally qualifies as prior art under subsection [3] of
35 U.S.C. 102 and accordingly is not disqualified as prior art under  35
U.S.C. 103(a).

Applicant may overcome the applied art either by a showing under  37 CFR
1.132 that the invention disclosed therein was derived from the
invention of this application, and is therefore, not the invention "by
another," or by antedating the applied art under  37 CFR 1.131.

Examiner Note:

1. This paragraph must be included following paragraph 7.20 in all
actions containing rejections under  35 U.S.C. 103(a) using art that is
disqualified under 103(c) using 102(f) or (g), but which qualifies under
another section of  35 U.S.C. 102.

2. In brackets 1 and 2, identify the commonly owned applied art (patent
or co-pending application).

3. In bracket 3, insert --(a)-- or --(e)-- as appropriate.

7.20.02 Joint Inventors, Common Ownership Presumed

This application currently names joint inventors.  In considering
patentability of the claims under  35 U.S.C. 103(a), the examiner
presumes that the subject matter of the various claims was commonly
owned at the time any inventions covered therein were made absent any
evidence to the contrary.  Applicant is advised of the obligation under
37 CFR 1.56 to point out the inventor and invention dates of each claim
that was not commonly owned at the time a later invention was made in
order for the examiner to consider the applicability of  35 U.S.C.
103(c) and potential  35 U.S.C. 102(f) or (g) prior art under  35 U.S.C.
103(a).

Examiner Note:

This paragraph must be used in all applications with joint inventors
(unless the claims are clearly restricted to only one claimed invention,
e.g., only a single claim is presented in the application).

7.21 Rejection, 35 U.S.C. 103(a)

Claim  [1] rejected under  35 U.S.C. 103(a) as being unpatentable over 
[2].

Examiner Note:

1. This paragraph must be preceded by either form paragraph 7.20 or form
paragraph 7.103.

2. An explanation of the rejection applying the Graham v. Deere test
must follow this form paragraph.

3. If this rejection relies upon art that is disqualified under  35
U.S.C. 102(f) or (g) based upon the common ownership of the invention,
paragraph 7.20.01 must follow this paragraph.

4. If this rejection is a provisional  35 U.S.C. 103(a) rejection based
upon a copending application that would comprise prior art under  35
U.S.C. 102(e) if patented, use paragraph 7.21.01 instead of this
paragraph.

7.21.01 Provisional Rejection, 35 U.S.C. 103(a), Common Assignee or at
Least One Common Inventor

Claim  [1] provisionally rejected under  35 U.S.C. 103(a) as being
obvious over copending Application No.   [2] which   has a common   [3]
with the instant application.  Based upon the earlier effective U.S.
filing date of the copending application, it would constitute prior art
under  35 U.S.C. 102(e) if patented.  This provisional rejection under
35 U.S.C. 103(a) is based upon a presumption of future patenting of the
conflicting application. [4]

This provisional rejection might be overcome either by a showing under
37 CFR 1.132 that any invention disclosed but not claimed in the
copending application was derived from the inventor of this application
and is thus not the invention "by another," or by a showing of a date of
invention for the instant application prior to the effective U.S. filing
date of the copending application under  37 CFR 1.131.

Examiner Note:

1. This paragraph is used to provisionally reject claims not patentably
distinct from the disclosure in a copending application having an
earlier U.S. filing date and also having either a common assignee or at
least one common inventor.

2. If the claimed invention is fully disclosed in the copending
application, use paragraph 7.15.01.

3. In bracket 3, insert either  --assignee--  or  --inventor--.

4. In bracket 4, insert explanation of obviousness.

5. If the claimed invention is also claimed in the copending
application, a provisional obviousness double patenting rejection should
additionally be made using paragraph 8.33 and 8.37.

6. If evidence indicates that the copending application is also prior
art under  35 U.S.C. 102(f) or (g) and the copending application has not
been disqualified as prior art in a  35 U.S.C. 103(a) rejection based
upon common ownership, a rejection should additionally be made under  35
U.S.C. 103(a) using paragraph 7.21 (e.g., applicant has named the prior
inventor in response to a requirement made using paragraph 8.28).

7.21.02 Rejection, 35 U.S.C. 103(a), Common Assignee or at Least One
Common Inventor

Claim  [1] rejected under  35 U.S.C. 103(a) as being obvious over [2].

The applied reference has a common [3] with the instant application.
Based upon the earlier effective U.S. filing date of the reference, it
constitutes prior art under  35 U.S.C. 102(e).  This rejection under  35
U.S.C. 103(a) might be overcome by: (1) a showing under  37 CFR 1.132
that any invention disclosed but not claimed in the reference was
derived from the inventor of this application and is thus not an
invention "by another"; (2) a showing of a date of invention for the
claimed subject matter of the application which corresponds to subject
matter disclosed but not claimed in the reference, prior to the
effective U.S. filing date of the reference under  37 CFR 1.131; or (3)
an oath or declaration under  37 CFR 1.130 stating that the application
and reference are currently owned by the same party and that the
inventor named in the application is the prior inventor under  35 U.S.C.
104, together with a terminal disclaimer in accordance with  37 CFR
1.321(c). [4]

Examiner Note:

1. This paragraph is used to reject over a patent with an earlier filing
date that discloses the claimed invention.  The patent must have either
a common assignee or at least one common inventor.

2. In bracket 3, insert either --assignee-- or --inventor--.

3. In bracket 4, insert explanation of obviousness.

7.22 Rejection, 35 U.S.C. 103(a), Further in View Of

Claim  [1] rejected under  35 U.S.C. 103(a) as being unpatentable over 
[2] as applied to claim   [3] above, and further in view of [4].

Examiner Note:

1. This paragraph must be preceded by paragraph 7.21.

2. An explanation of the rejection applying the Graham v. Deere test
must follow this form paragraph.

7.23 Graham v. Deere, Test for Obviousness

The factual inquiries set forth in Graham v.   John Deere Co., 383 U.S.
1, 148 USPQ 459 (1966), that are applied for establishing a background
for determining obviousness under  35 U.S.C. 103(a) are summarized as
follows:

1.	Determining the scope and contents of the prior art.

2.	Ascertaining the differences between the prior art and the claims at
issue.

3.	Resolving the level of ordinary skill in the pertinent art.

4.	Considering objective evidence present in the application indicating
obviousness or nonobviousness.

Examiner Note:

This paragraph may be used, if appropriate, in response to an argument
of the use of Graham v. Deere.

7.27 Rejection, 35 U.S.C. 102 or 103(a)

Claim  [1] rejected under  35 U.S.C. 102([2]) as anticipated by or, in
the alternative, under  35 U.S.C. 103(a) as obvious over [3].

Examiner Note:

1. This paragraph is NOT intended to be commonly used as a substitute
for a rejection under  35 U.S.C. 102.  In other words, a single
rejection under either  35 U.S.C. 102 or  35 U.S.C. 103(a) should be
made whenever possible using appropriate form paragraphs 7.15 to 7.19,
7.21 and 7.22.  Examples of circumstances where this paragraph may be
used are as follows:

a. When the interpretation of the claim(s) is or may be in dispute,
i.e., given one interpretation, a rejection under  35 U.S.C. 102 is
appro priate and given another interpretation, a rejection under  35
U.S.C. 103(a) is appropriate. See MPEP Section Section  2111- 2116.01
for guidelines on claim interpretation.

b. When the reference discloses all the limitations of a claim except a
property or function, and the examiner cannot determine whether or not
the reference inherently possesses properties which anticipate or render
obvious the claimed invention but has basis for shifting the burden of
proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594
(CCPA 1980).  See MPEP Section Section  2112- 2112.02.

c. When the reference teaches a small genus which places a claimed
species in the possession of the public as in In re Schaumann, 572 F.2d
312, 197 USPQ 5 (CCPA 1978), and the species would have been obvious
even if the genus were not sufficiently small to justify a rejection
under  35 U.S.C. 102. See MPEP Section Section  2131.02 and  2144.08 for
more information on anticipation and obviousness of species by a
disclosure of a genus.

d. When the reference teaches a product that appears to be the same as,
or an obvious variant of, the product set forth in a product-by-process
claim although produced by a different process.  See In re Marosi, 710
F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695,
227 USPQ 964 (Fed. Cir. 1985).  See also MPEP Section  2113.

e. When the reference teaches all claim limitations except a means plus
function limitation and the examiner is not certain wheth er the element
disclosed in the reference is an equivalent to the claimed element and
therefore anticipatory, or whether the prior art element is an obvious
variant of the claimed element.  See MPEP Section Section  2183- 2184.

f. When the ranges disclosed in the reference and claimed by applicant
overlap in scope but the reference does not contain a specific example
within the claimed range.  See the concurring opinion in Ex parte Lee,
31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993).  See MPEP Section
2131.03.

2. If the interpretation of the claim(s) renders the claim(s)
indefinite, a rejection under  35 U.S.C. 112, 2nd paragraph, may be
appropriate.

3. In bracket 2, insert the appropriate paragraph letter(s) in
parenthesis.

4. A full explanation should follow this form paragraph.

5. This paragraph must be preceded by 7.07, one or more of paragraphs
7.08 to 7.14 as appropriate, and paragraph 7.20 or paragraph 7.103.

---SECTION---706.02(n) Biotechnology Process Applications; 35 U.S.C.
103(b)

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

                  +++   

(b)(1) Notwithstanding subsection (a), and upon timely election by the
applicant for patent to proceed under this subsection, a
biotechnological process using or resulting in a composition of matter
that is novel under section 102 and nonobvious under subsection (a) of
this section shall be considered nonobvious if-

(A) claims to the process and the composition of matter are contained in
either the same application for patent or in separate applications
having the same effective filing date; and

(B) the composition of matter, and the process at the time it was
invented, were owned by the same person or subject to an obligation of
assignment to the same person.

(2) A patent issued on a process under paragraph (1)-

(A) shall also contain the claims to the composition of matter used in
or made by that process, or

(B) shall, if such composition of matter is claimed in another patent,
be set to expire on the same date as such other patent, notwithstanding
section 154.

(3) For purposes of paragraph (1), the term "biotechnological process"
means-

(A) a process of genetically altering or otherwise inducing a single- or
multi-celled organism to-

(i) express an exogenous nucleotide sequence,

(ii) inhibit, eliminate, augment, or alter expression of an endogenous
nucleotide sequence or

(iii) express a specific physiological characteristic not naturally
associated with said organism;

(B) cell fusion procedures yielding a cell line that expresses a
specific protein, such as a monoclonal antibody; and

(C) a method of using a product produced by a process defined by
subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).

                  +++   

35 U.S.C. 103(b) is applicable to biotechnological processes only. 35
U.S.C. 103(b) precludes a rejection of process claims which involve the
use or making of certain nonobvious biotechnological compositions of
matter under  35 U.S.C. 103(a).

35 U.S.C. 103(b) requires that:

(A) the biotechnological process and composition of matter be contained
in either the same application or in separate applications having the
same effective filing date;

(B) both the biotechnological process and composition of matter be owned
or subject to an assignment to the same person at the time the process
was invented;

(C) a patent issued on the process also contain the claims to the
composition of matter used in or made by the process, or, if the process
and composition of matter are in different patents, the patents expire
on the same date;

(D) the biotechnological process falls within the definition set forth
in  35 U.S.C. 103(b); and

(E) a timely election be made to proceed under the provisions of  35
U.S.C. 103(b).

An election to proceed under  35 U.S.C. 103(b) shall be made by way of
petition under  37 CFR 1.182. The petition must establish that all the
requirements set forth in  35 U.S.C. 103(b) have been satisfied.

An election will normally be considered timely if it is made no later
than the earlier of either the payment of the issue fee or the filing of
an appeal brief in an application which contains a composition of matter
claim which has not been rejected under  35 U.S.C.  102 or 103.

In an application where at least one composition of matter claim has not
been rejected under  35 U.S.C.  102 or 103, a  35 U.S.C. 103(b) election
may be made by submitting the petition and an amendment requesting entry
of process claims which correspond to the composition of matter claim.

For applications pending on or after November 1, 1995, in which the
issue fee has been paid prior to March 26, 1996, the timeliness
requirement for an election under  35 U.S.C. 103(b) will be considered
satisfied if the conditions of  37 CFR 1.312(b) are met.  However, if a
patent is granted on an application entitled to the benefit of  35
U.S.C. 103(b) without an election having been made as a result of error
without deceptive intent, patentees may file a reissue application to
permit consideration of process claims which qualify for  35 U.S.C.
103(b) treatment.

See MPEP Section  2116.01 for a discussion of the Federal Circuit's
decisions in In re Ochiai, 71 F.3d 1565, 37 USPQ 1127 (Fed. Cir. 1995)
and In re Brouwer, 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996) which
address the general issue of whether an otherwise conventional process
could be patented if it were limited to making or using a nonobvious
product.  In view of the Federal Circuit's decisions in Ochiai and
Brouwer, an applicant's need to rely upon  35 U.S.C. 103(b) should be
rare.  See also 1184 O G  86 (Comm'r Pat. 1996). See  35 U.S.C. 282 for
the effect of a determination of nonobviousness under  35 U.S.C.
103(b)(1) on the presumption of validity.

---SECTION---706.03 Rejections Not Based on Prior Art

The primary object of the examination of an application is to determine
whether or not the claims are patentable over the prior art. This
consideration should not be relegated to a secondary position while
undue emphasis is given to nonprior art or "technical" rejections.
Effort in examining should be concentrated on truly essential matters,
minimizing or eliminating effort on technical rejections which are not
really critical. Where a major technical rejection is proper (e.g., lack
of proper disclosure, undue breadth, utility, etc.) such rejection
should be stated with a full development of the reasons rather than by a
mere conclusion coupled with some stereotyped expression.

Rejections based on nonstatutory subject matter are explained in MPEP
Section  706.03(a),  Section  2105,  Section  2106 -  Section  2106.02,
and Section  2107 -  Section  2107.02. Rejections based on subject
matter barred by the Atomic Energy Act are explained in MPEP Section
706.03(b). Rejections based on duplicate claims are addressed in MPEP
Section  706.03(k), and double patenting rejections are addressed in
MPEP Section  804. See MPEP Section  706.03(o) for rejections based on
new matter. Foreign filing without a license is discussed in MPEP
Section  706.03(s). Disclaimer, after interference or public use
proceeding, res judicata, and reissue are explained in MPEP Section
706.03(u) to Section  706.03(x). Rejections based on  35 U.S.C. 112 are
discussed in MPEP Section  2161 -  Section  2174. IF THE LANGUAGE IN THE
FORM PARAGRAPHS IS INCORPORATED IN THE LETTER TO STATE THE REJECTION,
THERE WILL BE LESS CHANCE OF A MISUNDERSTANDING AS TO THE GROUNDS OF
REJECTION.

---SECTION---706.03(a) Rejections under 35 U.S.C. 101

Patents are not granted for all new and useful inventions and
discoveries. The subject matter of the invention or discovery must come
within the boundaries set forth by  35 U.S.C. 101, which permits patents
to be granted only for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof."

The term "process" as defined in  35 U.S.C. 100, means process, art or
method, and includes a new use of a known process, machine, manufacture,
composition of matter, or material.

See MPEP Section  2105 for patentability of microorganisms and MPEP
Section  2106 -  Section  2106.02 for patentability of mathematical
algorithms or computer programs.

LACK OF UTILITY

A rejection on the ground of lack of utility includes the more specific
grounds of inoperativeness, involving perpetual motion, frivolous,
fraudulent, and against public policy. The statutory basis for this
rejection is  35 U.S.C. 101. See MPEP Section  706.03(a)(1) for
guidelines governing rejections for lack of utility. See MPEP Section
2107 -  Section  2107.02 for legal precedent governing the utility
requirement.

Decisions have determined the limits of the statutory classes. Examples
of subject matter not patentable under the Statute follow:

PRINTED MATTER

For example, a mere arrangement of printed matter, though seemingly a
"manufacture," is rejected as not being within the statutory classes.
See In re Miller, 418 F.2d 1392, 164 USPQ 46 (CCPA 1969); Ex parte
Gwinn, 112 USPQ 439 (Bd. App. 1955); and In re Jones, 373 F.2d 1007, 153
USPQ 77 (CCPA 1967).

NATURALLY OCCURRING ARTICLE

Similarly, a thing occurring in nature, which is substantially
unaltered, is not a "manufacture." A shrimp with the head and digestive
tract removed is an example. Ex parte Grayson, 51 USPQ 413 (Bd. App.
1941).

SCIENTIFIC PRINCIPLE

A scientific principle, divorced from any tangible structure, can be
rejected as not within the statutory classes. O'Reilly v. Morse, 56 U.S.
(15 How.) 62 (1854).

This subject matter is further limited by the Atomic Energy Act
explained in MPEP Section  706.03(b). Use Form Paragraphs 7.04 through
7.05.03 to reject under  35 U.S.C. 101.

7.04 Statement of Statutory Basis, 35 U.S.C. 101

35 U.S.C. 101 reads as follows:

Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.

Examiner Note:

This paragraph must precede the first use of  35 U.S.C. 101 in all first
actions on the merits and final rejections.

7.05 Rejection, 35 U.S.C. 101, -Heading Only- (Utility, Non-Statutory,
Inoperative)

Claim  [1] rejected under  35 U.S.C. 101 because

Examiner Note:

1. This form paragraph must be followed by any one of paragraphs
7.05.01- 7.05.03 or another appropriate reason.

2. Explain the rejection following the recitation of the statute and the
use of form paragraphs 7.05.01-7.05.03 or other reason.

3. See MPEP Section Section  706.03(a) and  2105- 2107.02 for other
situations.

4. This paragraph must be preceded by paragraph 7.04 in first actions
and final rejections.

7.05.01 Rejection, 35 U.S.C. 101, Non-Statutory

the claimed invention is directed to non-statutory subject matter. [1]

Examiner Note:

In bracket 1, insert identification of non-statutory subject matter.

7.05.02 Rejection, 35 U.S.C. 101, Utility Lacking

the claimed invention lacks patentable utility. [1]

Examiner Note:

In bracket 1, provide explanation of lack of utility, such as, for
example, that which is frivolous, fraudulent,  against public policy, or
lacks proper chemical specificity, etc.  See MPEP Section Section
706.03(a) and  2105- 2107.02.

7.05.03 Rejection, 35 U.S.C. 101, Inoperative

the disclosed invention is inoperative and therefore lacks utility. [1]

Examiner Note:

In bracket 1, explain why invention is inoperative.

7.05.04 Utility Rejections Under 35 U.S.C. 101 and 35 U.S.C. 112, First
Paragraph

Claim  [1] rejected under  35 U.S.C. 101 because the claimed invention
is not supported by either a [2] asserted utility or a well established
utility.

[3]

Claim  [4] also rejected under  35 U.S.C. 112, first paragraph.
Specifically, since the claimed invention is not supported by either a
[5] asserted utility or a well established utility for the reasons set
forth above, one skilled in the art clearly would not know how to use
the claimed invention.

Examiner Note:

Format A:

(a) Insert the same claim numbers in brackets 1 and 4.

(b) Insert --specific-- in inserts 2 and 5.

(c)	 In bracket 3, insert the explanation as to why the claimed
invention is not supported by either a specific asserted utility or a
well established utility.  Include within the insert the following
statement:  --Note, because the claimed invention is not supported by a
specific asserted utility for the reasons set forth above, credibility
cannot be assessed.--.

(d) Format A is to be used when there is no asserted utility and when
there is an asserted utility but that utility is not specific.

Format B:

(a)	Insert the same claim numbers in brackets 1 and 4.

(b) Insert --credible-- in inserts 2 and 5.

(c)	 In bracket 3, insert the explanation as to why the claimed
invention is not supported by either a credible asserted utility or a
well established utility.

For claims that have multiple utilities, some of which are not specific,
some of which are not credible, but none of which are specific and
credible:

(a)	Insert the same claim numbers in brackets 1 and 4.

(b)	Insert --specific asserted utility, a credible-- in inserts 2 and 5.

(c)	In bracket 3, insert the explanation as to why the claimed invention
is not supported by either a specific asserted utility, a credible
asserted utility or a well established utility.  Each utility should be
addressed.  Include within the insert the following statement for those
utilities which are not specific:  --Note, because such a utility for
the claimed invention is not specific for the reasons set forth above,
credibility cannot be assessed for that utility.--.

1. In each case, a separate rejection under  35 U.S.C. 112, first
paragraph, enablement should be made using the factors set forth in In
re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988) and an undue
experimentation analysis.  See MPEP Section Section  2164- 2164.08(c).

2. A utility that is inoperative should be treated as being not credible
since a utility that is inoperative cannot be credible.

---SECTION---706.03(a)(1) Guidelines For Examination of Applications for
Compliance With the Utility Requirement of 35 U.S.C. 101 and 35 U.S.C.
112

The following guidelines establish the policies and procedures to be
followed by Office personnel when examining applications for compliance
with the utility requirements of  35 U.S.C. 101 and  35 U.S.C. 112. The
guidelines also address issues that may arise during examination of
applications claiming protection for inventions in the field of
biotechnology and human therapy.  See MPEP Section  2107-  Section
2107.02 for a discussion of the legal precedent governing utility
rejections.

GUIDELINES

Office personnel must adhere to the following procedures when reviewing
applications for compliance with the useful invention (utility)
requirement of  35 U.S.C. 101 and  35 U.S.C. 112, first paragraph:

(A) Determine what the applicant has invented and is seeking to patent:

(1) Ensure that the claims define statutory subject matter (e.g., a
process, a machine, a manufacture, or a composition of matter); and

(2) Review the complete specification, including the detailed
description of the invention, any specific embodiments that have been
disclosed, the claims, and any specific utilities that have been
asserted for the invention.

(B) Review the specification and claims to determine if the applicant
has asserted any credible utility for the claimed invention.

(1) If the applicant has asserted that the claimed invention is useful
for any particular purpose (i.e., a "specific utility") and that
assertion would be considered credible by a person of ordinary skill in
the art, do not impose a rejection based on lack of utility. Credibility
is to be assessed from the perspective of one of ordinary skill in the
art in view of any evidence of record (e.g., data, statements, opinions,
references, etc.) that is relevant to the applicant's assertions. An
applicant must provide only one credible assertion of specific utility
for any claimed invention to satisfy the utility requirement.

(2) If the invention has a well-established utility, regardless of any
assertion made by the applicant, do not impose a rejection based on lack
of utility. An invention has a well-established utility if a person of
ordinary skill in the art would immediately appreciate why the invention
is useful based on the characteristics of the invention (e.g.,
properties of a product or obvious application of a process).

(3) If the applicant has not asserted any specific utility for the
claimed invention and it does not have a well-established utility,
impose a rejection under  35 U.S.C. 101, emphasizing that the applicant
has not disclosed a specific utility for the invention. Also impose a
separate rejection under  35 U.S.C. 112, first paragraph, on the basis
that the applicant has not shown how to use the invention due to lack of
disclosure of a specific utility. The  35 U.S.C. 101 and 112 rejections
should shift the burden to the applicant to:

(i) explicitly identify a specific utility for the claimed invention,
and

(ii) indicate where support for the asserted utility can be found in the
specification.

Review the subsequently asserted utility by the applicant using the
standard outlined in paragraph (B)(1) above, and ensure that it is fully
supported by the original disclosure.

(C) If no assertion of specific utility for the claimed invention made
by the applicant is credible, and the claimed invention does not have a
well-established utility, reject the claim(s) under  35 U.S.C. 101 on
the grounds that the invention as claimed lacks utility. Also reject the
claims under  35 U.S.C. 112, first paragraph, on the basis that the
disclosure fails to teach how to use the invention as claimed. The  35
U.S.C. 112, first paragraph, rejection imposed in conjunction with a  35
U.S.C. 101 rejection should incorporate by reference the grounds of the
corresponding  35 U.S.C. 101 rejection and should be set out as a
rejection distinct from any other rejection under  35 U.S.C. 112, first
paragraph, not based on lack of utility for the claimed invention.

To be considered appropriate by the Office, any rejection based on lack
of utility must include the following elements:

(1) A prima facie showing that the claimed invention has no utility.  A
prima facie showing of no utility must establish that it is more likely
than not that a person skilled in the art would not consider credible
any specific utility asserted by the applicant for the claimed
invention. A prima facie showing must contain the following elements:

(i) a well-reasoned statement that clearly sets forth the reasoning used
in concluding that the asserted utility is not credible;

(ii) support for factual findings relied upon in reaching this
conclusion; and

(iii) support for any conclusions regarding evidence provided by the
applicant in support of an asserted utility.

(2) Specific evidence that supports any fact-based assertions needed to
establish the prima facie showing. Whenever possible, Office personnel
must provide documentary evidence (e.g., scientific or technical
journals, excerpts from treatises or books, or U.S. or foreign patents)
as the form of support used in establishing the factual basis of a prima
facie showing of no utility according to items (1)(ii) and (1)(iii)
above. If documentary evidence is not available, Office personnel shall
note this fact and specifically explain the scientific basis for the
factual conclusions relied on in sections (1)(ii) and (1)(iii).

(D) A rejection based on lack of utility should not be maintained if an
asserted utility for the claimed invention would be considered credible
by a person of ordinary skill in the art in view of all evidence of
record.

Once a prima facie showing of no utility has been properly established,
the applicant bears the burden of rebutting it. The applicant can do
this by amending the claims, by providing reasoning or arguments, or by
providing evidence in the form of a declaration under  37 CFR 1.132 or a
printed publication, that rebuts the basis or logic of the prima facie
showing. If the applicant replies to the prima facie rejection, Office
personnel shall review the original disclosure, any evidence relied upon
in establishing the prima facie showing, any claim amendments and any
new reasoning or evidence provided by the applicant in support of an
asserted utility. It is essential for Office personnel to recognize,
fully consider and respond to each substantive element of any reply to a
rejection based on lack of utility. Only where the totality of the
record continues to show that the asserted utility is not credible
should a rejection based on lack of utility be maintained.

If the applicant satisfactorily rebuts a prima facie rejection based on
lack of utility under  35 U.S.C. 101, withdraw the  35 U.S.C. 101
rejection and the corresponding rejection imposed under  35 U.S.C. 112,
first paragraph, per paragraph (C) above.

Office personnel are reminded that they must treat as true a statement
of fact made by an applicant in relation to an asserted utility, unless
countervailing evidence can be provided that shows that one of ordinary
skill in the art would have a legitimate basis to doubt the credibility
of such a statement. Similarly, Office personnel must accept an opinion
from a qualified expert that is based upon relevant facts whose accuracy
is not being questioned; it is improper to disregard the opinion solely
because of a disagreement over the significance or meaning of the facts
offered.

---SECTION---706.03(b) Barred by Atomic Energy Act

A limitation on what can be patented is imposed by the Atomic Energy Act
of 1954. Section 151(a) (42 U.S.C. 2181(a) thereof reads in part as
follows:

No patent shall hereafter be granted for any invention or discovery
which is useful solely in the utilization of special nuclear material or
atomic energy in an atomic weapon.

The terms "atomic energy" and "special nuclear material" are defined in
Section 11 of the Act (42 U.S.C. 2014).

Sections 151(c) and 151(d) (42 U.S.C. 2181(c) and (d)) set up categories
of pending applications relating to atomic energy that must be brought
to the attention of the Department of Energy. Under  37 CFR 1.14(c),
applications for patents which disclose or which appear to disclose, or
which purport to disclose, inventions or discoveries relating to atomic
energy are reported to the Department of Energy and the Department will
be given access to such applications, but such reporting does not
constitute a determination that the subject matter of each application
so reported is in fact useful or an invention or discovery or that such
application in fact discloses subject matter in categories specified by
the Atomic Energy Act.

All applications received in the Patent and Trademark Office are
screened by Group 3640 personnel, under  37 CFR 1.14(c), in order for
the Commissioner to fulfill his responsibilities under section 151(d)
(42 U.S.C. 2181(d) of the Atomic Energy Act. Papers subsequently added
must be inspected promptly by the examiner when received to determine
whether the application has been amended to relate to atomic energy and
those so related must be promptly forwarded to Licensing and Review in
Group 3640.

All rejections based upon sections 151(a)(42 U.S.C. 2181(a), 152 (42
U.S.C. 2182), and 155 (42 U.S.C. 2185) of the Atomic Energy Act must be
made only by Group 3640 personnel.

---SECTION---706.03(c) Rejections Under 35 U.S.C. 112, First Paragraph

Rejections based on the first paragraph of  35 U.S.C. 112 are discussed
in MPEP Section  2161 -  Section  2165.04. For a discussion of the
utility requirements of  35 U.S.C. 112, first paragraph, and  35 U.S.C.
101, see MPEP Section  706.03(a)(1) and Section  2107 -  Section
2107.02. The appropriate form paragraphs 7.30.01 and  7.31.01 through
7.33.01 should be used in making rejections under  35 U.S.C. 112, first
paragraph.

7.30.01 Statement of Statutory Basis, 35 U.S.C. 112, First Paragraph

The following is a quotation of the first paragraph of  35 U.S.C. 112:

The specification shall contain a written description of the invention,
and of the manner and process of making and using it, in such full,
clear, concise, and exact terms as to enable any person skilled in the
art to which it pertains, or with which it is most nearly connected, to
make and use the same and shall set forth the best mode contemplated by
the inventor of carrying out his invention.

Examiner Note:

1. The statute is no longer being re-cited in all Office actions.  It is
only required in first actions on the merits and final rejections.
Where the statute is not being cited in an action on the merits, use
paragraph 7.103.

2. Paragraphs 7.30.01 and 7.30.02 are to be used ONLY ONCE in a given
Office action.

7.31.01 Rejection, 35 U.S.C. 112, 1st Paragraph, Description
Requirement, Including New Matter Situations

Claim  [1] rejected under  35 U.S.C. 112, first paragraph, as containing
subject matter which was not described in the specification in such a
way as to reasonably convey to one skilled in the relevant art that the
inventor(s), at the time the application was filed, had possession of
the claimed invention. [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. In bracket 2, identify (by suitable reference to page and line
numbers and/or drawing figures) the subject matter not properly
described in the application as filed, and provide an explanation of
your position.  The explanation should include any questions the
examiner asked which were not satisfactorily resolved and consequently
raise doubt as to possession of the claimed invention at the time of
filing.

Form Paragraph 7.31.02 should be used when it is the examiner's position
that nothing within the scope of the claims is enabled. In such a
rejection, the examiner should explain all the reasons why nothing
within the scope of the claim is enabled.  To make sure all relevant
issues are raised, this should include any issues regarding the breadth
of the claims relative to the guidance in the disclosure.

7.31.02 Rejection, 35 U.S.C. 112, 1st Paragraph: Enablement

Claim  [1] rejected under  35 U.S.C. 112, first paragraph, as containing
subject matter which was not described in the specification in such a
way as to enable one skilled in the art to which it pertains, or with
which it is most nearly connected, to make and/or use the invention.
[2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. If the problem is one of scope, form paragraph 7.31.03 should be
used.

3. In bracket 2, identify the claimed subject matter for which the
specification is not enabling along with an explanation as to why the
specification is not enabling. The explanation should include any
questions the examiner may have asked which were not satisfactorily
resolved and consequently raise doubt as to enablement.

4. Where an essential component or step of the invention is not recited
in the claims, use form paragraph 7.33.01.

Form paragraph 7.31.03 should be used when it is the examiner's position
that something within the scope of the claims is enabled but the claims
are not limited to that scope.

7.31.03 Rejection, 35 U.S.C. 112, 1st Paragraph: Scope of Enablement

Claim  [1] rejected under  35 U.S.C. 112, first paragraph, because the
specification, while being enabling for [2], does not reasonably provide
enablement for [3].  The specification does not enable any person
skilled in the art to which it pertains, or with which it is most nearly
connected, to [4] the invention commensurate in scope with these claims.
[5]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. This paragraph is to be used when the scope of the claims is not
commensurate with the scope of the enabling disclosure.

3. In bracket 2, identify the claimed subject matter for which the
specification is enabling.  This may be by reference to specific
portions of the specification.

4. In bracket 3, identify aspect(s) of the claim(s) for which the
specification is not enabling.

5. In bracket 4, fill in only the appropriate portion of the statute,
i.e., one of the following: --make--, --use--, or --make and use--.

6. In bracket 5, identify the problem along with an explanation as to
why the specification is not enabling.  The explanation should include
any questions posed by the examiner which were not satisfactorily
resolved and consequently raise doubt as to enablement.

7.31.04 Rejection, 35 U.S.C. 112, 1st Paragraph: Best Mode Requirement

Claim  [1] rejected under  35 U.S.C. 112, first paragraph, because the
best mode contemplated by the inventor has not been disclosed.  Evidence
of concealment of the best mode is based upon [2].

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. In bracket 2, insert the basis for holding that the best mode has
been concealed, e.g., the quality of applicant's disclosure is so poor
as to effectively result in concealment.

3. Use of this form paragraph should be rare.  See MPEP Section Section
2165- 2165.04.

Form paragraph 7.33.01 should be used when it is the examiner's position
that a feature considered critical or essential by applicant to the
practice of the claimed invention is missing from the claim.

7.33.01 Rejection, 35 U.S.C. 112, 1st Paragraph, Essential Subject
Matter Missing From Claims (Enablement)

Claim  [1] rejected under  35 U.S.C. 112, first paragraph, as based on a
disclosure which is not enabling. [2] critical or essential to the
practice of the invention, but not included in the claim(s) is not
enabled by the disclosure.  See In re Mayhew, 527 F.2d 1229, 188 USPQ
356 (CCPA 1976). [3]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. In bracket 2, recite the subject matter omitted from the claims.

3. In bracket 3, give the rationale for considering the omitted subject
matter critical or essential.

4. The examiner shall cite the statement, argument, date, drawing, or
other evidence which demonstrates that a particular feature was
considered essential by the applicant, is not reflected in the claims
which are rejected.

---SECTION---706.03(d) Rejections Under 35 U.S.C. 112, Second Paragraph

Rejections under  35 U.S.C. 112, second paragraph, are discussed in MPEP
Section  2171 -  Section  2174. Form paragraphs 7.30.02 and 7.34 through
7.35.01 should be used to reject under  35 U.S.C. 112, second paragraph.

7.30.02 Statement of Statutory Basis, 35 U.S.C. 112, Second Paragraph

The following is a quotation of the second paragraph of  35 U.S.C. 112:

The specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the
applicant regards as his invention.

Examiner Note:

1. The statute is no longer being re-cited in all Office actions.  It is
only required in first actions on the merits and final rejections.
Where the statute is not being cited in an action on the merits, use
paragraph 7.103.

2. Paragraphs 7.30.01 and 7.30.02 are to be used ONLY ONCE in a given
Office action.

7.34 Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure To Claim
Applicant's Invention

Claim  [1] rejected under  35 U.S.C. 112, second paragraph, as failing
to set forth the subject matter which applicant(s) regard as their
invention.  Evidence that claim  [2] fail(s) to correspond in scope with
that which applicant(s) regard as the invention can be found in Paper
No. [3] filed [4].  In that paper, applicant has stated [5], and this
statement indicates that the invention is different from what is defined
in the claim(s) because [6].

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. This paragraph is to be used only where applicant has stated,
somewhere other than in the application, as filed, that the invention is
something different from what is defined in the claim(s).

3. In brackets 3 and 4, identify the submission by applicant (which is
not the application, as filed, but may be in the remarks by applicant,
in the brief, in an affidavit, etc.) by Paper No. and the date the paper
was filed in the PTO.

4. In bracket 5, set forth what applicant has stated in the submission
to indicate a different invention.

5. In bracket 6, explain how the statement indicates an invention other
than what is being claimed.

7.34.01 Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure To Particularly
Point out and Distinctly Claim (Indefinite)

Claim  [1] rejected under  35 U.S.C. 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention.

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.2.
This paragraph should be followed by one or more of the following form
paragraphs 7.34.02 - 7.34.06, as applicable.  If none of these form
paragraphs are appropriate, a full explanation of the deficiency of the
claims should be supplied.  Whenever possible, identify the particular
term(s) or limitation(s) which render the claim(s) indefinite and state
why such term or limitation renders the claim indefinite. If the scope
of the claimed subject matter can be determined by one having ordinary
skill in the art, a rejection using this form paragraph would not be
appropriate.  See MPEP Section Section   2171-  2174 for guidance.  See
also form paragraph 17.07 for Pro Se applicants.

7.34.02 Terminology Used Inconsistent with Accepted Meaning

While applicant may be his or her own lexicographer, a term in a claim
may not be given a meaning repugnant to the usual meaning of that term.
See In re Hill, 161 F.2d 367, 73 USPQ 482 (CCPA 1947).  The term "  [1]"
in claim [2] is used by the claim to mean "  [3]", while the accepted
meaning is "  [4]."

Examiner Note:

1. In bracket 3, point out the meaning that is assigned to the term by
applicant's claims, taking into account the entire disclosure.

2. In bracket 4, point out the accepted meaning of the term.  Support
for the examiner's stated accepted meaning should be provided through
the citation of an appropriate reference source, e.g., textbook or
dictionary.  See MPEP Section  2173.05(a).

3. This form paragraph must be preceded by form paragraph 7.34.01.

7.34.03 Relative Term - Term of Degree Rendering Claim Indefinite

The term "  [1]" in claim [2] is a relative term which renders the claim
indefinite.  The term "  [1]" is not defined by the claim, the
specification does not provide a standard for ascertaining the requisite
degree, and one of ordinary skill in the art would not be reasonably
apprised of the scope of the invention. [3]

Examiner Note:

1. In bracket 3, explain which parameter, quantity, or other limitation
in the claim has been rendered indefinite by the use of the term
appearing in bracket 1.

2. This form paragraph must be preceded by form paragraph 7.34.01.

7.34.04 Broader Range/Limitation And Narrow Range/Limitation in Same
Claim

A broad range or limitation together with a narrow range or limitation
that falls within the broad range or limitation (in the same claim) is
considered indefinite, since the resulting claim does not clearly set
forth the metes and bounds of the patent protection desired.  Note the
explanation given by the Board of Patent Appeals and Interferences in Ex
parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to
where broad language is followed by "such as" and then narrow language.
The Board stated that this can render a claim indefinite by raising a
question or doubt as to whether the feature introduced by such language
is (a) merely exemplary of the remainder of the claim, and therefore not
required, or (b) a required feature of the claims.  Note also, for
example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App.
1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche,
86 USPQ 481 (Bd. App. 1949).  In the present instance, claim [1] recites
the broad recitation [2], and the claim also recites [3] which is the
narrower statement of the range/limitation.

Examiner Note:

1. In bracket 2, insert the broader range/limitation and where it
appears in the claim; in bracket 3, insert the narrow range/limitation
and where it appears.  This form paragraph may be modified to fit other
instances of indefiniteness in the claims.

2. This form paragraph must be preceded by form paragraph 7.34.01.

7.34.05 Lack of Antecedent Basis in the Claims

Claim [1] recites the limitation [2] in [3].  There is insufficient
antecedent basis for this limitation in the claim.

Examiner Note:

1. In bracket 2, insert the limitation which lacks antecedent basis, for
example --said lever-- or --the lever--.

2. In bracket 3, identify where in the claim(s) the limitation appears,
for example, --line 3--, --the 3rd paragraph of the claim--, --the last
2 lines of the claim--, etc.

3. This form paragraph should ONLY be used in aggravated situations
where the lack of antecedent basis makes the scope of the claim
indeterminate.  It must be preceded by form paragraph 7.34.01.

7.34.06 Use Claims

Claim [1] provides for the use of [2], but, since the claim does not set
forth any steps involved in the method/process, it is unclear what
method/process applicant is intending to encompass.  A claim is
indefinite where it merely recites a use without any active, positive
steps delimiting how this use is actually practiced.  Claim [3] is
rejected under  35 U.S.C. 101 because the claimed recitation of a use,
without setting forth any steps involved in the process, results in an
improper definition of a process, i.e., results in a claim which is not
a proper process claim under  35 U.S.C. 101.  See for example Ex parte
Dunki, 153 USPQ 678 (Bd. App. 1967) and Clinical Products, Ltd. v. 
Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).

Examiner Note:

1. In bracket 2, insert what is being used.  For example, insert --the
monoclonal antibodies of claim 4--, where the claim recites "a method
for using monoclonal antibodies of claim 4 to purify interferon."

2. See MPEP Section  2173.05(q).

3. This form paragraph must be preceded by form paragraph 7.34.01.

7.34.07 Claims Are a Literal Translation

The claims are generally narrative and indefinite, failing to conform
with current U.S. practice.  They appear to be a literal translation
into English from a foreign document and are replete with grammatical
and idiomatic errors.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

7.34.08 Indefinite Claim Language: "For Example"

Regarding claim  [1], the phrase "for example" renders the claim
indefinite because it is unclear whether the limitation(s) following the
phrase are part of the claimed invention.  See MPEP Section  2173.05(d).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

7.34.09 Indefinite Claim Language: "Or The Like"

Regarding claim  [1], the phrase "or the like" renders the claim(s)
indefinite because the claim(s) include(s) elements not actually
disclosed (those encompassed by "or the like"), thereby rendering the
scope of the claim(s) unascertainable.  See MPEP Section  2173.05(d).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

7.34.10 Indefinite Claim Language: "Such As"

Regarding claim  [1], the phrase "such as" renders the claim indefinite
because it is unclear whether the limitations following the phrase are
part of the claimed invention.  See MPEP Section  2173.05(d).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

7.34.11 Modifier of "Means" Lacks Function

Regarding claim  [1], the word "means" is preceded by the word(s) "
[2]" in an attempt to use a "means" clause to recite a claim element as
a means for performing a specified function.  However, since no function
is specified by the word(s) preceding "means," it is impossible to
determine the equivalents of the element, as required by  35 U.S.C. 112,
sixth paragraph.  See Ex parte Klumb, 159 USPQ 694 (Bd. App. 1967).

Examiner Note:

1. It is necessary for the words which precede "means" to convey a
function to be performed.  For example, the phrase "latch means" is
definite because the word "latch" conveys the function "latching." In
general, if the phrase can be restated as "means for ________," and it
still makes sense, it is definite.  In the above example, "latch means"
can be restated as "means for latching. "This is clearly definite.
However, if "conduit means" is restated as  "means for conduiting, " the
phrase makes no sense because the word "conduit" has no functional
connotation, and the phrase is indefinite.

2. This form paragraph must be preceded by form paragraph 7.34.01.

7.34.12 Essential Steps Omitted

Claim  [1] rejected under  35 U.S.C. 112, second paragraph, as being
incomplete for omitting essential steps, such omission amounting to a
gap between the steps.  See MPEP Section  2172.01.  The omitted steps
are: [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. In bracket 2, recite the steps omitted from the claims.

3. Give the rationale for considering the omitted steps critical or
essential.

7.34.13 Essential Elements Omitted

Claim  [1] rejected under  35 U.S.C. 112, second paragraph, as being
incomplete for omitting essential elements, such omission amounting to a
gap between the elements.  See MPEP Section  2172.01.  The omitted
elements are: [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. In bracket 2, recite the elements omitted from the claims.

3. Give the rationale for considering the omitted elements critical or
essential.

7.34.14 Essential Cooperative Relationships Omitted

Claim  [1] rejected under  35 U.S.C. 112, second paragraph, as being
incomplete for omitting essential structural cooperative relationships
of elements, such omission amounting to a gap between the necessary
structural connections.  See MPEP Section  2172.01.  The omitted
structural cooperative relationships are: [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. In bracket 2, recite the structural cooperative relationships of
elements omitted from the claims.

3. Give the rationale for considering the omitted structural cooperative
relationships of elements being critical or essential.

7.35 Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure To Particularly
Point Out And Distinctly Claim - Omnibus Claim

Claim [1] rejected under  35 U.S.C. 112, second paragraph, as being
indefinite in that it fails to point out what is included or excluded by
the claim language.  This claim is an omnibus type claim.

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. Use this paragraph to reject an "omnibus" type claim.  No further
explanation is necessary.

3. See MPEP Section  1302.04(b) for cancellation of such a claim by
examiner's amendment upon allowance.

4. An example of an omnibus claim is: "A device substantially as shown
and described."

7.35.01 Trademark or Trade Name as a Limitation in the Claim

Claim [1] contains the trademark/trade name [2].  Where a trademark or
trade name is used in a claim as a limitation to identify or describe a
particular material or product, the claim does not comply with the
requirements of  35 U.S.C. 112, second paragraph.  See Ex parte Simpson,
218 USPQ 1020 (Bd. App. 1982).  The claim scope is uncertain since the
trademark or trade name cannot be used properly to identify any
particular material or product.  A trademark or trade name is used to
identify a source of goods, and not the goods themselves.  Thus, a
trademark or trade name does not identify or describe the goods
associated with the trademark or trade name.  In the present case, the
trademark/trade name is used to identify/describe [3] and, accordingly,
the identification/description is indefinite.

Examiner Note:

1. In bracket 2, insert the trademark/trade name and where it is used in
the claim.

2. In bracket 3, specify the material or product which is identified or
described in the claim by the trademark/trade name.

---SECTION---706.03(k) Duplicate Claims

Inasmuch as a patent is supposed to be limited to only one invention or,
at most, several closely related indivisible inventions, limiting an
application to a single claim, or a single claim to each of the related
inventions might appear to be logical as well as convenient. However,
court decisions have confirmed applicant's right to restate (i.e., by
plural claiming) the invention in a reasonable number of ways. Indeed, a
mere difference in scope between claims has been held to be enough.

Nevertheless, when two claims in an application are duplicates, or else
are so close in content that they both cover the same thing, despite a
slight difference in wording, it is proper after allowing one claim to
object to the other claim under  37 CFR 1.75 as being a substantial
duplicate of the allowed claim.

Form paragraphs 7.05.05 and 7.05.06 may be used where duplicate claims
are present in an application.

7.05.05 Duplicate Claims, Warning

Applicant is advised that should claim  [1] be found allowable, claim
[2] will be objected to under  37 CFR 1.75 as being a substantial
duplicate thereof.  When two claims in an application are duplicates or
else are so close in content that they both cover the same thing,
despite a slight difference in wording, it is proper after allowing one
claim to object to the other as being a substantial duplicate of the
allowed claim.  See MPEP Section  706.03(k).

Examiner Note:

1. Use this form paragraph whenever two claims are found to be
substantial duplicates, but they are not allowable.  This will give the
applicant an opportunity to correct the problem and avoid a later
objection.

2. If the claims are allowable, use form paragraph 7.05.06.

7.05.06 Duplicate Claims, Objection

Claim  [1] objected under  37 CFR 1.75 as being a substantial duplicate
of claim  [2].  When two claims in an application are duplicates or else
are so close in content that they both cover the same thing, despite a
slight difference in wording, it is proper after allowing one claim to
object to the other as being a substantial duplicate of the allowed
claim.  See MPEP Section  706.03(k).

Examiner Note:

If the duplicate claims are not allowable, use form paragraph 7.05.05.

See MPEP Section  804 for double patenting rejections of inventions not
patentable over each other.

---SECTION---706.03(m) Nonelected Inventions

See MPEP Section  821 to Section  821.03 for treatment of claims held to
be drawn to nonelected inventions.

---SECTION---706.03(o) New Matter

35 U.S.C. 132 Notice of rejection; reexamination.

Whenever, on examination, any claim for a patent is rejected, or any
objection or requirement made, the Commissioner shall notify the
applicant thereof, stating the reasons for such rejection, or objection
or requirement, together with such information and references as may be
useful in judging of the propriety of continuing the prosecution of his
application; and if after receiving such notice, the applicant persists
in his claim for a patent, with or without amendment, the application
shall be reexamined. No amendment shall introduce new matter into the
disclosure of the invention.

In amended cases, subject matter not disclosed in the original
application is sometimes added and a claim directed thereto. Such a
claim is rejected on the ground that it recites elements without support
in the original disclosure under  35 U.S.C. 112, first paragraph,
Waldemar Link, GmbH & Co. v. Osteonics Corp. 32 F.3d 556, 559, 31 USPQ2d 
1855, 1857 (Fed. Cir. 1994);   In re Rasmussen, 650 F.2d 1212, 211 USPQ
323 (CCPA 1981). See MPEP Section  2163.06 -  Section  2163.07(b) for a
discussion of the relationship of new matter to  35 U.S.C. 112, first
paragraph. New matter includes not only the addition of wholly
unsupported subject matter, but may also include adding specific
percentages or compounds after a broader original disclosure, or even
the omission of a step from a method. See MPEP Section  608.04 to
Section  608.04(c). See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA
1976) and MPEP Section  2163.05 for guidance in determining whether the
addition of specific percentages or compounds after a broader original
disclosure constitutes new matter.

In the examination of an application following amendment thereof, the
examiner must be on the alert to detect new matter.  35 U.S.C. 132
should be employed as a basis for objection to amendments to the
abstract, specification, or drawings attempting to add new disclosure to
that originally disclosed on filing.

If subject matter capable of illustration is originally claimed and it
is not shown in the drawing, the claim is not rejected but applicant is
required to add it to the drawing.  See MPEP Section  608.01(l).

If new matter is added to the specification, it should be objected to by
using Form Paragraph 7.28.

7.28 Objection to New Matter Added to Specification

The amendment filed [1] is objected to under  35 U.S.C. 132 because it
introduces new matter into the disclosure. 35 U.S.C. 132 states that no
amendment shall introduce new matter into the disclosure of the
invention.  The added material which is not supported by the original
disclosure is as follows: [2].

Applicant is required to cancel the new matter in the reply to this
Office action.

Examiner Note:

1. This form paragraph is not to be used in reissue applications; use
form paragraph 14.22.01 instead.

2. In bracket 2, identify the new matter by page and the line numbers
and/or drawing figures and provide an appropriate explanation of your
position.  This explanation should address any statement by applicant to
support the position that the subject matter is described in the
specification as filed.  It should further include any unresolved
questions which raise a doubt as to the possession of the claimed
invention at the time of filing.

3. If new matter is added to the claims, or affects the claims, a
rejection under  35 U.S.C. 112, first paragraph, using form paragraph
7.31.01 should also be made.  If new matter is added only to a claim, an
objection using this paragraph should not be made, but the claim should
be rejected using form paragraph 7.31.01.  As to any other appropriate
prior art or  35 U.S.C. 112 rejection, the new matter must be considered
as part of the claimed subject matter and can not be ignored.

---SECTION---706.03(s) Foreign Filing Without License

35 U.S.C. 182 Abandonment of invention for unauthorized disclosure.

The invention disclosed in an application for patent subject to an order
made pursuant to section 181 of this title may be held abandoned upon
its being established by the Commissioner that in violation of said
order the invention has been published or disclosed or that an
application for a patent therefor has been filed in a foreign country by
the inventor, his successors, assigns, or legal representatives, or
anyone in privity with him or them, without the consent of the
Commissioner. The abandonment shall be held to have occurred as of the
time of violation. The consent of the Commissioner shall not be given
without the concurrence of the heads of the departments and the chief
officers of the agencies who caused the order to be issued.  A holding
of abandonment shall constitute forfeiture by the applicant, his
successors, assigns, or legal representatives, or anyone in privity with
him or them, of all claims against the United States based upon such
invention.

35 U.S.C. 184 Filing of application in foreign country.

Except when authorized by a license obtained from the Commissioner a
person shall not file or cause or authorize to be filed in any foreign
country prior to six months after filing in the United States an
application for patent or for the registration of a utility model,
industrial design, or model in respect of an invention made in this
country.  A license shall not be granted with respect to an invention
subject to an order issued by the Commissioner pursuant to section 181
of this title without the concurrence of the head of the departments and
the chief officers of the agencies who caused the order to be issued.
The license may be granted retroactively where an application has been
filed abroad through error and without deceptive intent and the
application does not disclose an invention within the scope of section
181 of this title.

The term "application" when used in this chapter includes applications
and any modifications, amendments, or supplements thereto, or divisions
thereof.

The scope of a license shall permit subsequent modifications,
amendments, and supplements containing additional subject matter if the
application upon which the request for the license is based is not, or
was not, required to be made available for inspection under section 181
of this title and if such modifications, amendments, and supplements do
not change the general nature of the invention in a manner which would
require such application to be made available for inspection under such
section 181.  In any case in which a license is not, or was not,
required in order to file an application in any foreign country, such
subsequent modifications, amendments, and supplements may be made,
without a license, to the application filed in the foreign country if
the United States application was not required to be made available for
inspection under section 181 and if such modifications, amendments, and
supplements do not, or did not, change the general nature of the
invention in a manner which would require the United States application
to have been made available for inspection under such section 181.

35 U.S.C. 185 Patent barred for filing without license.

Notwithstanding any other provisions of law any person, and his
successors, assigns, or legal representatives,shall not receive a United
States patent for an invention if that person, or his successors,
assigns, or legal representatives shall, without procuring the license
prescribed in section 184 of this title, have made, or consented to or
assisted another's making, application in a foreign country for a patent
or for the registration of a utility model, industrial design, or model
in respect of the invention. A United States patent issued to such
person, his successors, assigns, or legal representatives shall be
invalid, unless the failure to procure such license was through error
and without deceptive intent, and the patent does not disclose subject
matter within the scope of section 181 of this title.

If, upon examining an application, the examiner learns of the existence
of a corresponding foreign application which appears to have been filed
before the United States application had been on file for 6 months, and
if the invention apparently was made in this country, he shall refer the
application to Licensing and Review Section of Group 3640, calling
attention to the foreign application. Pending investigation of the
possible violation, the application may be returned to the examining
group for prosecution on the merits. When it is otherwise in condition
for allowance, the application will be again submitted to Licensing and
Review Section of Group 3640 unless the latter has already reported that
the foreign filing involves no bar to the United States application.

If it should be necessary to take action under  35 U.S.C. 185, Licensing
and Review Section of Group 3640 will request transfer of the
application to it.

---SECTION---706.03(u) Disclaimer

Claims may be rejected on the ground that applicant has disclaimed the
subject matter involved. Such disclaimer may arise, for example, from
the applicant's failure to:

(A) make claims suggested for interference with another application
under  37 CFR 1.605 (See MPEP Section  2305.02),

(B) copy a claim from a patent when suggested by the examiner (MPEP
Section  2305.02), or

(C) respond or appeal, within the time limit fixed, to the examiner's
rejection of claims copied from a patent (see MPEP Section  2307.02).

The rejection on disclaimer applies to all claims not patentably
distinct from the disclaimed subject matter as well as to the claims
directly involved.

Rejections based on disclaimer should be made by using one of Form
Paragraphs 7.48 and 7.49.

7.48 Failure To Present Claims for Interference

Claim  [1] rejected under 35 U.S.C. [2] based upon claim  [3] of Patent
No. [4].

Failure to present claims and/or take necessary steps for interference
purposes after notification that interfering subject matter is claimed
constitutes a disclaimer of the subject matter.  This amounts to a
concession that, as a matter of law, the patentee is the first inventor
in this country.  See In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA
1975).

Examiner Note:

1. This paragraph should be used only after applicant has been notified
that interference proceedings must be instituted before the claims can
be allowed and applicant has refused to copy the claims.

2. In bracket 2, insert --102(g)--  or --102(g)/103(a)--.

3. In bracket 4, insert the patent number, and --in view of _____-- if
another reference is also relied upon.  When the rejection is under  35
U.S.C. 103(a), the examiner's basis for a finding of obviousness should
be included.  Note that interferences may include obvious variants, see
MPEP Section  2306.

7.49 Rejection, Disclaimer, Failure To Appeal

Claim  [1] stand finally disposed of for failure to reply to or appeal
from the examiner's rejection of such claim(s) presented for
interference within the specified time.  See  37 CFR 1.661 and 1.663.

---SECTION---706.03(v) After Interference or Public Use Proceeding

For rejections following an interference, see MPEP Section  2363.03.

The outcome of public use proceedings may also be the basis of a
rejection. See  37 CFR 1.292 and In re Kaslow, 707 F.2d 1366, 217 USPQ
1089 (Fed. Cir. 1983).

Upon termination of a public use proceeding including a case also
involved in an interference, in order for a prompt resumption of the
interference proceedings, a notice should be sent to the Board of Patent
Appeals and Interferences notifying them of the disposition of the
public use proceeding.

---SECTION---706.03(w) Res Judicata

Res judicata may constitute a proper ground for rejection. However, as
noted below, the Court of Customs and Patent Appeals has materially
restricted the use of res judicata rejections. It should be applied only
when the earlier decision was a decision of the Board of Appeals or any
one of the reviewing courts and when there is no opportunity for further
court review of the earlier decision.

The timely filing of a second application copending with an earlier
application does not preclude the use of   res judicata as a ground of
rejection for the second application claims.

When making a rejection on   res judicata, action should ordinarily be
made also on the basis of prior art, especially in continuing
applications. In most situations the same prior art which was relied
upon in the earlier decision would again be applicable.

In the following cases a rejection of a claim on the ground of res
judicata was sustained where it was based on a prior adjudication,
against the inventor on the same claim, a patentably nondistinct claim,
or a claim involving the same issue.

In re Freeman, 30 F.3d 1459, 31 USPQ 2d 1444 (Fed. Cir. 1994).

Edgerton v. Kingland, 168 F. 2d 121, 75 USPQ 307 (D.C. Cir. 1947).

In re Szwarc, 319 F.2d 277, 138 USPQ 208 (CCPA 1963).

In re Katz, 467 F.2d 939, 167 USPQ 487 (CCPA 1970) (prior decision by
District Court).

In the following cases for various reasons, res judicata rejections were
reversed.

In re Fried, 312 F.2d 930, 136 USPQ 429 (CCPA 1963) (differences in
claims).

In re Szwarc, 319 F.2d 277, 138 USPQ 208 (CCPA 1963) (differences in
claim).

In re Hellbaum, 371 F.2d 1022, 152 USPQ 571 (CCPA 1967) (differences in
claims).

In re Herr, 377 F.2d 610, 153 USPQ 548 (CCPA 1967) (same claims, new
evidence, prior decision by CCPA).

In re Kaghan, 387 F.2d 398, 156 USPQ 130 (CCPA 1967) (prior decision by
Board of Appeals, final rejection on prior art withdrawn by examiner "to
simplify the issue," differences in claims; holding of waiver based on
language in MPEP at the time).

In re Craig, 411 F.2d 1333, 162 USPQ 157 (CCPA 1969) (Board of Appeals
held second set of claims patentable over prior art).

In re Fisher, 427 F.2d 833, 166 USPQ 18 (CCPA 1970) (difference in
claims).

In re Russell, 439 F.2d 1228, 169 USPQ 426 (CCPA 1971) (new evidence,
rejection on prior art reversed by court).

In re Ackermann, 444 F.2d 1172, 170 USPQ 340 (CCPA 1971) (prior decision
by Board of Appeals, new evidence, rejection on prior art reversed by
court).

Plastic Contact Lens Co. v. Gottschalk, 484 F.2d 837, 179 USPQ 262 (D.C.
Cir. 1973) (follows In re Kaghan).

---SECTION---706.03(x) Reissue

The examination of reissue applications is covered in MPEP Chapter 1400.

35 U.S.C. 251 forbids the granting of a reissue "enlarging the scope of
the claims of the original patent" unless the reissue is applied for
within 2 years from the grant of the original patent. This is an
absolute bar and cannot be excused. This prohibition has been
interpreted to apply to any claim which is broader in any respect than
the claims of the original patent. Such claims may be rejected as being
barred by  35 U.S.C. 251. However, when the reissue is applied for
within 2 years, the examiner does not go into the question of undue
delay.

The same section permits the filing of a reissue application by the
assignee of the entire interest only in cases where it does not "enlarge
the scope of the claims of the original patent." Such claims which do
enlarge the scope may also be rejected as barred by the statute. In In
re Bennett, 766 F.2d 524, 226 USPQ 413 (Fed. Cir. 1985), however, the
court permitted the erroneous filing by the assignee in such a case to
be corrected.

A defective reissue oath affords a ground for rejecting all the claims
in the reissue application. See MPEP Section  1444.

Note that a reissue application is "special" and remains so even if
applicant does not make a prompt reply.

---SECTION---706.04 Rejection of Previously Allowed Claims

A claim noted as allowable shall thereafter be rejected only after the
proposed rejection has been submitted to the primary examiner for
consideration of all the facts and approval of the proposed action.

Great care should be exercised in authorizing such a rejection.  See 
Ex parte Grier, 1923 C.D. 27, 309 O.G. 223 (Comm'r Pat. 1923); Ex parte
Hay, 1909 C.D. 18, 139 O.G. 197 (Comm'r Pat. 1909).

PREVIOUS ACTION BY DIFFERENT EXAMINER

Full faith and credit should be given to the search and action of a
previous examiner unless there is a clear error in the previous action
or knowledge of other prior art. In general, an examiner should not take
an entirely new approach or attempt to reorient the point of view of a
previous examiner, or make a new search in the mere hope of finding
something.

Because it is unusual to reject a previously allowed claim, the examiner
should point out in his or her letter that the claim now being rejected
was previously allowed by using Form Paragraph 7.50.

7.50 Claims Previously Allowed, Now Rejected, New Art

The indicated allowability of claim  [1] is withdrawn in view of the
newly discovered reference(s) to   [2].  Rejection(s) based on the newly
cited reference(s) follow.

Examiner Note:

1. In bracket 2, insert the name(s) of the newly discovered reference.

2. Any action including this form paragraph requires the signature of a
Primary Examiner.  MPEP Section  1004.

---SECTION---706.05 Rejection After Allowance of Application

See MPEP Section  1308.01 for a rejection based on a reference.

---SECTION---706.06 Rejection of Claims Copied From Patent

See MPEP Section  2307.02.

---SECTION---706.07 Final Rejection

37 CFR 1.113 Final rejection or action.

(a) On the second or any subsequent examination or consideration by the
examiner the rejection or other action may be made final, whereupon
applicant's or patent owner's reply is limited to appeal in the case of
rejection of any claim (Section  1.191), or to amendment as specified in
Section  1.116. Petition may be taken to the Commissioner in the case of
objections or requirements not involved in the rejection of any claim
(Section  1.181).  Reply to a final rejection or action must include
cancellation of, or appeal from the rejection of, each rejected claim.
If any claim stands allowed, the reply to a final rejection or action
must comply with any requirements or objections as to form.

(b) In making such final rejection, the examiner shall repeat or state
all grounds of rejection then considered applicable to the claims in the
application, clearly stating the reasons in support thereof.

Before final rejection is in order a clear issue should be developed
between the examiner and applicant. To bring the prosecution to as
speedy conclusion as possible and at the same time to deal justly by
both the applicant and the public, the invention as disclosed and
claimed should be thoroughly searched in the first action and the
references fully applied; and in reply to this action the applicant
should amend with a view to avoiding all the grounds of rejection and
objection. Switching from one subject matter to another in the claims
presented by applicant in successive amendments, or from one set of
references to another by the examiner in rejecting in successive actions
claims of substantially the same subject matter, will alike tend to
defeat attaining the goal of reaching a clearly defined issue for an
early termination, i.e., either an allowance of the case or a final
rejection.

While the rules no longer give to an applicant the right to "amend as
often as the examiner presents new references or reasons for rejection,"
present practice does not sanction hasty and ill-considered final
rejections. The applicant who is seeking to define his or her invention
in claims that will give him or her the patent protection to which he or
she is justly entitled should receive the cooperation of the examiner to
that end, and not be prematurely cut off in the prosecution of his or
her application. But the applicant who dallies in the prosecution of his
or her application, resorting to technical or other obvious subterfuges
in order to keep the application pending before the primary examiner,
can no longer find a refuge in the rules to ward off a final rejection.

The examiner should never lose sight of the fact that in every case the
applicant is entitled to a full and fair hearing, and that a clear issue
between applicant and examiner should be developed, if possible, before
appeal. However, it is to the interest of the applicants as a class as
well as to that of the public that prosecution of an application be
confined to as few actions as is consistent with a thorough
consideration of its merits.

Neither the statutes nor the Rules of Practice confer any right on an
applicant to an extended prosecution; Ex parte Hoogendam, 1939 C.D. 3,
499 O.G.3, 40 USPQ 389 (Comm'r Pat. 1939).

STATEMENT OF GROUNDS

In making the final rejection, all outstanding grounds of rejection of
record should be carefully reviewed, and any such grounds relied on in
the final rejection should be reiterated. They must also be clearly
developed to such an extent that applicant may readily judge the
advisability of an appeal unless a single previous Office action
contains a complete statement supporting the rejection.

However, where a single previous Office action contains a complete
statement of a ground of rejection, the final rejection may refer to
such a statement and also should include a rebuttal of any arguments
raised in the applicant's reply. If appeal is taken in such a case, the
examiner's answer should contain a complete statement of the examiner's
position. The final rejection letter should conclude with Form Paragraph
7.39.

7.39 Action Is Final

THIS ACTION IS MADE FINAL.  Applicant is reminded of the extension of
time policy as set forth in  37 CFR 1.136(a).

A shortened statutory period for reply to this final action is set to
expire THREE MONTHS from the mailing date of this action.  In the event
a first reply is filed within TWO MONTHS of the mailing date of this
final action and the advisory action is not mailed until after the end
of the THREE-MONTH shortened statutory period, then the shortened
statutory period will expire on the date the advisory action is mailed,
and any extension fee pursuant to  37 CFR 1.136(a) will be calculated
from the mailing date of the advisory action.  In no event, however,
will the statutory period for reply expire later than SIX MONTHS from
the mailing date of this final action.

Examiner Note:

1. This paragraph should not be used in reissue litigation cases (SSP- 1
month) or in reexamination proceedings (SSP- 1 or 2 months).

2. 37 CFR 1.136(a) should not be available in a reissue litigation case
and is not available in reexamination proceedings.

The Office Action Summary Form PTOL-326 should be used in all Office
actions up to and including final rejections.

For amendments filed after final rejection, see MPEP Section  714.12 and
Section  714.13.

For final rejection practice in reexamination proceedings see MPEP
Section  2271.

---SECTION---706.07(a) Final Rejection, When Proper on Second Action

Due to the change in practice as affecting final rejections, older
decisions on questions of prematureness of final rejection or admission
of subsequent amendments do not necessarily reflect present practice.

Under present practice, second or any subsequent actions on the merits
shall be final, except where the examiner introduces a new ground of
rejection that is neither necessitated by applicant's amendment of the
claims nor based on information submitted in an information disclosure
statement filed during the period set forth in  37 CFR 1.97(c) with the
fee set forth in  37 CFR 1.17(p). Where information is submitted in an
information disclosure statement during the period set forth in  37 CFR
1.97(c) with a fee, the examiner may use the information submitted,
e.g., a printed publication or evidence of public use, and make the next
Office action final whether or not the claims have been amended,
provided that no other new ground of rejection which was not
necessitated by amendment to the claims is introduced by the examiner.
See MPEP Section  609 paragraph (B)(2). Furthermore, a second or any
subsequent action on the merits in any application or patent undergoing
reexamination proceedings will not be made final if it includes a
rejection, on newly cited art, other than information submitted in an
information disclosure statement filed under  37 CFR 1.97(c) with the
fee set forth in  37 CFR 1.17 (p), of any claim not amended by applicant
or patent owner in spite of the fact that other claims may have been
amended to require newly cited art.

A second or any subsequent action on the merits in any application or
patent involved in reexamination proceedings should not be made final if
it includes a rejection, on prior art not of record, of any claim
amended to include limitations which should reasonably have been
expected to be claimed. See MPEP Section  904 et seq. For example, one
would reasonably expect that a rejection under  35 U.S.C. 112 for the
reason of incompleteness would be replied to by an amendment supplying
the omitted element.

See MPEP Section  809.02(a) for actions which indicate generic claims as
not allowable.

In the consideration of claims in an amended case where no attempt is
made to point out the patentable novelty, the examiner should be on
guard not to allow such claims. See MPEP Section  714.04. The claims may
be finally rejected if, in the opinion of the examiner, they are clearly
open to rejection on grounds of record.

Form Paragraph 7.40 should be used where an action is made final
including new grounds of rejection necessitated by applicant's
amendment.

7.40 Action Is Final, Necessitated by Amendment

Applicant's amendment necessitated the new ground(s) of rejection
presented in this Office action.  Accordingly, THIS ACTION IS MADE
FINAL.  See MPEP Section  706.07(a).  Applicant is reminded of the
extension of time policy as set forth in  37 CFR 1.136(a).

A shortened statutory period for reply to this final action is set to
expire THREE MONTHS from the mailing date of this action.  In the event
a first reply is filed within TWO MONTHS of the mailing date of this
final action and the advisory action is not mailed until after the end
of the THREE-MONTH shortened statutory period, then the shortened
statutory period will expire on the date the advisory action is mailed,
and any extension fee pursuant to  37 CFR 1.136(a) will be calculated
from the mailing date of the advisory action.  In no event, however,
will the statutory period for reply expire later than SIX MONTHS from
the mailing date of this final action.

Examiner Note:

1. This paragraph should not be used in reissue litigation cases (SSP- 1
month) or in reexamination proceedings (SSP- 1 or 2 months).

2. 37 CFR 1.136(a) should not be available in a reissue litigation case
and is not available in reexamination proceedings.

7.40.01 Action Is Final, Necessitated by IDS With Fee

Applicant's submission of an information disclosure statement under  37
CFR 1.97(c) with the fee set forth in  37 CFR 1.17(p) on [1] prompted
the new ground(s) of rejection presented in this Office action.
Accordingly, THIS ACTION IS MADE FINAL.  See MPEP Section  609(B)(2)(i).
Applicant is reminded of the extension of time policy as set forth in
37 CFR 1.136(a).

A shortened statutory period for reply to this final action is set to
expire THREE MONTHS from the mailing date of this action.  In the event
a first reply is filed within TWO MONTHS of the mailing date of this
final action and the advisory action is not mailed until after the end
of the THREE-MONTH shortened statutory period, then the shortened
statutory period will expire on the date the advisory action is mailed,
and any extension fee pursuant to  37 CFR 1.136(a) will be calculated
from the mailing date of the advisory action.  In no event, however,
will the statutory period for reply expire later than SIX MONTHS from
the mailing date of this final action.

Examiner Note:

1. This paragraph should not be used and a final rejection is improper
where there is another new ground of rejection introduced by the
examiner which was not necessitated by amendment to the claims.

2. In bracket 1, insert the filing date of the information disclosure
statement containing the identification of the item of information used
in the new ground of rejection.

---SECTION---706.07(b) Final Rejection, When Proper on First Action

The claims of a new application may be finally rejected in the first
Office action in those situations where (A) the new application is a
continuing application of, or a substitute for, an earlier application,
and (B) all claims of the new application (1) are drawn to the same
invention claimed in the earlier application, and (2) would have been
properly finally rejected on the grounds and art of record in the next
Office action if they had been entered in the earlier application.

However, it would not be proper to make final a first Office action in a
continuing or substitute application where that application contains
material which was presented in the earlier application after final
rejection or closing of prosecution but was denied entry because (A) new
issues were raised that required further consideration and/or search, or
(B) the issue of new matter was raised.

Further, it would not be proper to make final a first Office action in a
continuation-in-part application where any claim includes subject matter
not present in the earlier application.

A request for an interview prior to first action on a continuing or
substitute application should ordinarily be granted.

A first action final rejection should be made by using Form Paragraphs
7.41 or 7.41.03, as appropriate.

7.41 Action Is Final, First Action

This is a   [1] of applicant's earlier Application No. [2].  All claims
are drawn to the same invention claimed in the earlier application and
could have been finally rejected on the grounds and art of record in the
next Office action if they had been entered in the earlier application.
Accordingly, THIS ACTION IS MADE FINAL even though it is a first action
in this case.  See MPEP Section  706.07(b).  Applicant is reminded of
the extension of time policy as set forth in  37 CFR 1.136(a).

A shortened statutory period for reply to this final action is set to
expire THREE MONTHS from the mailing date of this action.  In the event
a first reply is filed within TWO MONTHS of the mailing date of this
final action and the advisory action is not mailed until after the end
of the THREE-MONTH shortened statutory period, then the shortened
statutory period will expire on the date the advisory action is mailed,
and any extension fee pursuant to  37 CFR 1.136(a) will be calculated
from the mailing date of the advisory action.  In no event, however,
will the statutory period for reply expire later than SIX MONTHS from
the mailing date of this final action.

Examiner Note:

1. In bracket 1, insert either --continuation-- or --substitute--, as
appropriate.

2. If an amendment was refused entry in the parent case on the grounds
that it raised new issues or new matter, this paragraph cannot be used.
See MPEP Section  706.07(b).

3. This paragraph should not be used in reissue litigation cases (SSP- 1
month) or in reexamination proceedings (SSP-1 or 2 months).

4. 37 CFR 1.136(a) should not be available in a reissue litigation case
and is not available in reexamination proceedings.

7.41.03 Action Is Final, First Action Following Submission Under 37 CFR
1.53(d), Continued Prosecution Application (CPA)

All claims are drawn to the same invention claimed in the parent
application prior to the filing of this Continued Prosecution
Application under  37 CFR 1.53(d) and could have been finally rejected
on the grounds and art of record in the next Office action. Accordingly,
THIS ACTION IS MADE FINAL even though it is a first action after the fil
ing under  37 CFR 1.53(d). Applicant is reminded of the extension of
time policy as set forth in  37 CFR 1.136(a).

A shortened statutory period for reply to this final action is set to
expire THREE MONTHS from the mailing date of this action. In the event a
first reply is filed within TWO MONTHS of the mailing date of this final
action and the advisory action is not mailed until after the end of the
THREE-MONTH shortened statutory period, then the shortened statutory
period will expire on the date the advisory action is mailed, and any
extension fee pursuant to  37 CFR 1.136(a) will be calculated from the
mailing date of the advisory action. In no event, however, will the
statutory period for reply expire later than SIX MONTHS from the mailing
date of this final action.

Examiner Note:

1. This form paragraph is for a first action final rejection in a
Continued Prosecution Application filed under  37 CFR 1.53(d).

2. This form paragraph must be preceded by one of form paragraphs 2.30
or 2.35, as appropriate.

---SECTION---706.07(c) Final Rejection, Premature

Any question as to prematureness of a final rejection should be raised,
if at all, while the application is still pending before the primary
examiner. This is purely a question of practice, wholly distinct from
the tenability of the rejection. It may therefore not be advanced as a
ground for appeal, or made the basis of complaint before the Board of
Patent Appeals and Interferences. It is reviewable by petition under  37
CFR 1.181. See MPEP Section  1002.02(c).

---SECTION---706.07(d) Final Rejection, Withdrawal of,	 Premature

If, on request by applicant for reconsideration, the primary examiner
finds the final rejection to have been premature, he or she should
withdraw the finality of the rejection.

Form Paragraph 7.42 should be used when withdrawing the finality of the
rejection of the last Office action.

7.42 Withdrawal of Finality of Last Office Action

Applicant's request for reconsideration of the finality of the rejection
of the last Office action is persuasive and, therefore, the finality of
that action is withdrawn.

---SECTION---706.07(e) Withdrawal of Final Rejection,  General

See MPEP Section  714.12 and Section  714.13 for amendments after final
rejection.

Once a final rejection that is not premature has been entered in an
application/reexamination proceeding, it should not be withdrawn at the
applicant's or patent owner's request except on a showing under  37 CFR
1.116(b). Further amendment or argument will be considered in certain
instances. An amendment that will place the case either in condition for
allowance or in better form for appeal may be admitted.  Also,
amendments complying with objections or requirements as to form are to
be permitted after final action in accordance with  37 CFR 1.116(a).

The examiner may withdraw the rejection of finally rejected claims. If
new facts or reasons are presented such as to convince the examiner that
the previously rejected claims are in fact allowable or patentable in
the case of reexamination, then the final rejection should be withdrawn.
Occasionally, the finality of a rejection may be withdrawn in order to
apply a new ground of rejection.

Although it is permissible to withdraw a final rejection for the purpose
of entering a new ground of rejection, this practice is to be limited to
situations where a new reference either fully meets at least one claim
or meets it except for differences which are shown to be completely
obvious. Normally, the previous rejection should be withdrawn with
respect to the claim or claims involved.

The practice should not be used for application of subsidiary
references, or of cumulative references, or of references which are
merely considered to be better than those of record.

When a final rejection is withdrawn, all amendments filed after the
final rejection are ordinarily entered.

New grounds of rejection made in an Office action reopening prosecution
after the filing of an appeal brief require the approval of the
supervisory patent examiner.  See MPEP Section  1002.02(d).

---SECTION---706.07(f) Time for Reply to Final Rejection

The time for reply to a final rejection is as follows:

(A) All final rejections setting a 3-month shortened statutory period
(SSP) for reply should contain one of form paragraphs 7.39, 7.40,
7.40.01, 7.41, or 7.41.03 advising applicant that if the reply is filed
within 2 months of the date of the final Office action, the shortened
statutory period will expire at 3 months from the date of the final
rejection or on the date the advisory action is mailed, whichever is
later. Thus, a variable reply period will be established.  In no event
can the statutory period for reply expire later than 6 months from the
date of the final rejection.

(B) If the form paragraph setting a variable reply period is
inadvertently not included in the final Office action, the SSP for reply
will end 3 months from the date of the final Office action and cannot be
extended other than by making a petition and paying a fee pursuant to
37 CFR 1.136(a). However, if an advisory action is mailed in such a case
where the reply to the final action has been filed within 2 months, the
examiner should vacate the original SSP and reset the period for reply
to correspond with the Office policy set forth in the Notice entitled
"Procedure for Handling Amendments Under  37 CFR 1.116," 1027 O.G. 71
(Feb. 8, 1983). See paragraph (F) below.

(C) This procedure of setting a variable reply period in the final
rejection dependent on when applicant files a first reply to a final
Office action does not apply to situations where a SSP less than 3
months is set, e.g., reissue litigation applications (1-month SSP) or
any reexamination proceeding.

ADVISORY ACTIONS

(D) Where the final Office action sets a variable reply period as set
forth in paragraph (A) above AND applicant files a complete first reply
to the final Office action within 2 months of the date of the final
Office action, the examiner must determine if the reply:

(1) places the application in condition for allowance - then the
application should be processed as an allowance and no extension fees
are due;

(2) places the application in condition for allowance except for matters
of form which the examiner can change without authorization from
applicant,  MPEP Section  1302.04 - then the application should be
amended as required and processed as an allowance and no extension fees
are due; or

(3) does not place the application in condition for allowance - then the
advisory action should inform applicant that the SSP for reply expires 3
months from the date of the final rejection or as of the mailing date of
the advisory action, whichever is later, by checking the appropriate box
at the top portion of the Advisory Action form, PTOL-303.

If PTOL-303 is not used, then use Form Paragraph 7.67.01 on all advisory
actions where a first complete reply has been filed within 2 months of
the date of the final Office action.

7.67.01 Advisory After Final, Heading, 1st Reply Filed Within 2 Months

The shortened statutory period for reply expires THREE MONTHS from the
mailing date of the final rejection or as of the mailing date of this
advisory action, whichever is later.  In no event, however, will the
statutory period for reply expire later than SIX MONTHS from the mailing
date of the final rejection.

Any extension fee required pursuant to  37 CFR 1.17 will be calculated
from the date that the shortened statutory period for reply expires as
set forth above.

Examiner Note:

1. This paragraph should be used in all advisory actions if:

a. it was the FIRST reply to the to the final rejection, and

b. it was filed within two months of the date of the final rejection.

2. If a notice of appeal has been filed, also use paragraph 7.68.

3. DO NOT USE THIS FORM PARAGRAPH FOR REEXAMINATION PROCEEDINGS.

4. Follow with form paragraph 7.41.01 if transitional provisions of  37
CFR 1.129(a) are applicable.

(E) Where the final Office action sets a variable reply period as set
forth in paragraph (A) above, and applicant does NOT file a complete
first reply to the final Office action within 2 months, examiners should
use Form Paragraph 7.67.

(F) Where the final Office action does not set a variable reply period
as set forth in paragraph (A) above AND applicant does file a complete
first reply to the final Office action within 2 months, and if an
advisory action is necessary and cannot be mailed within 3 months of the
final Office action, the examiner should vacate the original SSP and
reset the reply period to expire on the mailing date of the advisory
action by using form paragraph 7.67.02.  In no case can the statutory
period for reply expire later than 6 months from the date of the final
Office action. Note that Form Paragraph 7.67.02 can be used with the
advisory action (preferable) or after the advisory action is mailed to
correct the error of not setting a variable reply period.

7.67.02 Advisory After Final, Heading, No Variable SSP Set in Final

Since the first reply to the final Office action was filed within TWO
MONTHS of the mailing date of that action and the advisory action was
not mailed within THREE MONTHS of that date, the THREE-MONTH shortened
statutory period for reply set in the final Office action is hereby
vacated and reset to expire as of the mailing date of this advisory
action.  See Notice entitled "Procedure for Handling Amendments Under
37 CFR 1.116," published in the Official Gazette at 1027 O.G. 71,
February 8, 1983.  In no event, however, will the statutory period for
reply expire later than SIX MONTHS from the mailing date of the final
Office action.

Any extension fee required pursuant to  37 CFR 1.17 will be calculated
from the mailing date of the advisory action.

Examiner Note:

1. This paragraph should be used in all advisory actions where:

a. the reply is a first reply to the final action;

b. the reply was filed within two months of the mailing date of the
final; and

c. the final action failed to inform applicant of a variable SSP beyond
the normal three month period, as is set forth in form paragraphs 7.39
to 7.41.

2. If the final action set a variable SSP, do not use this paragraph,
use paragraph 7.67.01 instead.

3. If a notice of appeal has been filed, also use paragraph 7.68.

4. Follow with form paragraph 7.41.01 if transitional provisions of  37
CFR 1.129(a) are applicable.

(G) When an advisory action properly contains either form paragraph
7.67.01 or 7.67.02, the time for applicant to take further action
(including the calculation of extension fees under  37 CFR 1.136(a))
begins to run 3 months from the date of the final rejection, or from the
date of the advisory action, whichever is later. Extension fees cannot
be prorated for portions of a month. In no event can the statutory
period for reply expire later than 6 months from the date of the final
rejection. For example, if applicant initially replies within 2 months
from the date of mailing of a final rejection and the examiner mails an
advisory action before the end of 3 months from the date of mailing of
the final rejection, the shortened statutory period will expire at the
end of 3 months from the date of mailing of the final rejection. In such
case, any extension fee would then be calculated from the end of the
3-month period. If the examiner, however, does not mail an advisory
action until after the end of the 3-month period, the shortened
statutory period will expire on the date the examiner mails the advisory
action and any extension fee would be calculated from that date.

EXAMINER'S AMENDMENTS

(H) Where a complete first reply to a final Office action has been filed
within 2 months of the final Office action, an examiner's amendment to
place the application in condition for allowance may be made without the
payment of extension fees even if the examiner's amendment is made more
than 3 months from the date of the final Office action.  Note that an
examiner's amendment may not be made more than 6 months from the date of
the final Office action, as the application would be abandoned at that
point by operation of law.

(I) Where a complete first reply to a final Office action has not been
filed within 2 months of the final Office action, applicant's
authorization to make an amendment to place the application in condition
for allowance must be made either within the 3 month shortened statutory
period or within an extended period for reply that has been petitioned
and paid for by applicant pursuant to  37 CFR 1.136(a). However, an
examiner's amendment correcting only formal matters which are identified
for the first time after a reply is made to a final Office action would
not require any extension fee, since the reply to the final Office
action put the application in condition for allowance except for the
correction of formal matters, the correction of which had not yet been
required by the examiner.

(J) An extension of time under  37 CFR 1.136(a) requires a petition for
an extension and the appropriate fee provided for in  37 CFR 1.17. Where
an extension of time is necessary to place an application in condition
for allowance (e.g., when an examiner's amendment is necessary after the
shortened statutory period for reply has expired), applicant may file
the required petition and fee or give authorization to the examiner to
make the petition of record and charge a specified fee to a deposit
account. When authorization to make a petition for an extension of time
of record is given to the examiner, the authorization must be given
before the extended period expires. The authorization must be made of
record in an examiner's amendment by indicating the name of the person
making the authorization, when the authorization was given, the deposit
account number to be charged, the length of the extension requested and
the amount of the fee to be charged to the deposit account. Form
Paragraph 13.02.02 should be used. 

13.02.02 Extension of Time and Examiner's Amendment Authorized by
Telephone

An extension of time under  37 CFR 1.136(a) is required in order to make
an examiner's amendment which places this application in condition for
allowance.  During a telephone conversation conducted on [1], [2]
requested an extension of time for [3] MONTH(S) and authorized the
Commissioner to charge Deposit Account No. [4] the required fee of $
[5] for this extension and authorized the following examiner's
amendment.  Should the changes and/or additions be unacceptable to
applicant, an amendment may be filed as provided by  37 CFR 1.312.  To
ensure consideration of such an amendment, it MUST be submitted no later
than the payment of the issue fee.

Examiner Note:

See MPEP Section  706.07(f), item 10 which explains when an extension of
time is needed in order to make amendments to place the application in
condition for allowance.

PRACTICE AFTER FINAL

(K) Replies after final should be processed and considered promptly by
all Office personnel.

(L) Replies after final should not be considered by the examiner unless
they are filed within the SSP or are accompanied by a petition for an
extension of time and the appropriate fee (37 CFR 1.17 and  37 CFR
1.136(a)). See also MPEP Section  710.02(e). This requirement also
applies to supplemental replies filed after the first reply.

(M) Interviews may be conducted after the expiration of the shortened
statutory period for reply to a final Office action but within the
6-month statutory period for reply without the payment of an extension
fee.

(N) Formal matters which are identified for the first time after a reply
is made to a final Office action and which require action by applicant
to correct may be required in an   Ex parte Quayle action if the
application is otherwise in condition for allowance. No extension fees
would be required since the reply puts the application in condition for
allowance except for the correction of formal matters - the correction
of which had not yet been required by the examiner.

(O) If prosecution is to be reopened after a final Office action has
been replied to, the finality of the previous Office action should be
withdrawn to avoid the issue of abandonment and the payment of extension
fees. For example, if a new reference comes to the attention of the
examiner which renders unpatentable a claim indicated to be allowable,
the Office action should begin with a statement to the effect: "The
finality of the Office action mailed is hereby withdrawn in view of the
new ground of rejection set forth below." Form Paragraph 7.42 could be
used in addition to this statement.

---SECTION---706.07(g) Transitional After-Final Practice

37 CFR 1.129 Transitional procedures for limited examination after final
rejection and restriction practice.

(a) An applicant in an application, other than for reissue or a design
patent, that has been pending for at least two years as of June 8, 1995,
taking into account any reference made in such application to any
earlier filed application under  35 U.S.C. 120, 121 and 365(c), is
entitled to have a first submission entered and considered on the merits
after final rejection under the following circumstances: The Office will
consider such a submission, if the first submission and the fee set
forth in Section  1.17(r) are filed prior to the filing of an appeal
brief and prior to abandonment of the application. The finality of the
final rejection is automatically withdrawn upon the timely filing of the
submission and payment of the fee set forth in Section  1.17(r). If a
subsequent final rejection is made in the application, applicant is
entitled to have a second submission entered and considered on the
merits after the subsequent final rejection under the following
circumstances: The Office will consider such a submission, if the second
submission and a second fee set forth in Section  1.17(r) are filed
prior to the filing of an appeal brief and prior to abandonment of the
application. The finality of the subsequent final rejection is
automatically withdrawn upon the timely filing of the submission and
payment of the second fee set forth in Section  1.17(r). Any submission
filed after a final rejection made in an application subsequent to the
fee set forth in Section  1.17(r) having been twice paid will be treated
as set forth in Section  1.116. A submission as used in this paragraph
includes, but is not limited to, an information disclosure statement, an
amendment to the written description, claims or drawings and a new
substantive argument or new evidence in support of patentability.

                  +++   

(c) The provisions of this section shall not be applicable to any
application filed after June 8, 1995.

In order to facilitate the completion of prosecution of applications
pending in the PTO as of June 8, 1995 and to ease the transition between
a 17-year patent term and a 20-year patent term, Public Law 103-465
provided for the further limited reexamination of an application pending
for 2 years or longer as of June 8, 1995, taking into account any
reference made in the application to any earlier filed application under
35 U.S.C. 120, 121, or 365(c). The further limited reexamination permits
applicants to present for consideration, as a matter of right upon
payment of a fee, a submission after a final rejection has been issued
on an application.  An applicant will be able to take advantage of this
provision on two separate occasions provided the submission and fee are
presented prior to the filing of the Appeal Brief and prior to
abandonment of the application. This will have the effect of enabling an
applicant to essentially reopen prosecution of the pending application
on two separate occasions by paying a fee for each occasion, and avoid
the impact of refiling the application to obtain consideration of
additional claims and/or information relative to the claimed subject
matter. The transitional after-final practice is only available to
applications filed on or before June 8, 1995 and it is not available for
reissue or design applications or reexamination proceedings.

The following flowchart illustrates the transitional after-final
procedures set forth in  37 CFR 1.129(a).

[GRAPHIC]

Effective June 8, 1995, in any pending application having an actual or
effective filing date of June 8, 1993 or earlier, applicant is entitled,
under  37 CFR 1.129(a), to have a first submission after final rejection
entered and considered on the merits, if the submission and the fee set
forth in  37 CFR 1.17(r) are filed prior to the filing of an Appeal
Brief under  37 CFR 1.192 and prior to abandonment. For an application
entering national stage under  35 U.S.C. 371 or an application filed
under  35 U.S.C. 111(a) claiming benefit under  35 U.S.C. 120 of a PCT
application designating the U.S., the PCT internation al filing date
will be used to determine whether the ap plication has been pending for
at least 2 years as of June 8, 1995.

Form Paragraph 7.41.01 may be used to notify ap plicant that the
application qualifies under  37 CFR 1.129(a).

7.41.01 Transitional After Final Practice, First Submission (37 CFR
1.129(a))

This application is subject to the provisions of Public Law 103-465,
effective June 8, 1995.  Accordingly, since this application has been
pending for at least two years as of June 8, 1995, taking into account
any reference to an earlier filed application under  35 U.S.C. 120, 121
or 365(c), applicant, under  37 CFR 1.129(a), is entitled to have a
first submission entered and considered on the merits if, prior to
abandonment, the submission and the fee set forth in  37 CFR 1.17(r) are
filed prior to the filing of an appeal brief under  37 CFR 1.192.  Upon
the timely filing of a first submission and the appropriate fee of $
[1] for a [2] entity under  37 CFR 1.17(r), the finality of the previous
Office action will be withdrawn. If a notice of appeal and the appeal
fee set forth in  37 CFR 1.17(e) were filed prior to or with the payment
of the fee set forth in  37 CFR 1.17(r), the payment of the fee set
forth in  37 CFR 1.17(r) by applicant will be construed as a request to
dismiss the appeal and to continue prosecution under  37 CFR 1.129(a).
In view of  35 U.S.C. 132, no amendment considered as a result of
payment of the fee set forth in  37 CFR 1.17(r) may introduce new matter
into the disclosure of the application.

If applicant has filed multiple proposed amendments which, when entered,
would conflict with one another, specific instructions for entry or
non-entry of each such amendment should be provided upon payment of any
fee under  37 CFR 1.17(r).

Examiner Note:

1. This form paragraph may follow any of form paragraphs 7.39- 7.41,
7.67-7.67.02, 7.72-7.78 or 7.80 in any application filed prior to June
9, 1995, which has been pending for at least two years as of June 8,
1995, taking into account any reference under  35 U.S.C. 120, 121 or
365(c) to a previously filed application and no previous fee has been
paid under  37 CFR 1.17(r).

2. This form paragraph should NOT be used in a design or reissue
application,  or in a reexamination proceeding.

3. In bracket 1, insert the current fee for a large or small entity, as
appropriate.

4. In bracket 2, insert --small-- or --large--, depending on the current
status of the application.

The submission under  37 CFR 1.129(a) may comprise, but is not limited
to, an information disclosure statement, an amendment to the written
description, claims or drawings, a new substantive argument and/or new
evidence. No amendment considered as a result of payment of the fee set
forth in  37 CFR 1.17(r) may introduce new matter into the disclosure of
the application.  35 U.S.C. 132. In view of the fee set forth in  37 CFR
1.17(r), any information disclosure statement previously refused
consideration in the application because of applicant's failure to
comply with  37 CFR 1.97(c) or (d) will be treated as though it has been
filed within one of the time periods set forth in  37 CFR 1.97(b) and
will be considered without the petition and petition fee required in  37
CFR 1.97(d), if it complies with the requirements of  37 CFR 1.98.

If the application qualifies under  37 CFR 1.129(a), that is, it was
filed on or before June 8, 1995 and the application has an effective
U.S. filing date of June 8, 1993 or earlier, the examiner must check to
see if the submission and  37 CFR 1.17(r) fee were filed prior to the
filing of the Appeal Brief and   prior to abandonment of the
application.  If an amendment was timely filed in reply to the final
rejection but the fee set forth in  37 CFR 1.17(r) did not accompany the
amendment, examiners will continue to consider these amendments in an
expedited manner as set forth in MPEP Section  714.13 and issue an
advisory action notifying applicant whether the amendment has been
entered.  If the examiner indicated in an advisory action that the
amendment has not been entered, applicant may then pay the fee set forth
in  37 CFR 1.17(r) and any necessary fee to avoid abandonment of the
application and obtain entry and consideration of the amendment as a
submission under  37 CFR 1.129(a). If the submission and the fee set
forth in  37 CFR 1.17(r) were timely filed in reply to the final
rejection and no advisory action has been issued prior to the payment of
the fee set forth in  37 CFR 1.17(r), no advisory action will be
necessary. The examiner will notify applicant that the finality of the
previous office action has been withdrawn pursuant to  37 CFR 1.129(a).
It is noted that if the submission is accompanied by a "conditional"
payment of the fee set forth in  37 CFR 1.17(r), i.e., an authorization
to charge the fee set forth in  37 CFR 1.17(r) to a deposit account in
the event that the submission would not otherwise be entered, the PTO
will treat the conditional payment as an unconditional payment of the
37 CFR 1.17(r) fee.

The finality of the final rejection is automatically withdrawn upon the
timely filing of the submission and payment of the fee set forth in  37
CFR 1.17(r).  Upon the timely payment of the fee set forth in  37 CFR
1.17(r), all previously unentered submissions, submissions filed with
the  37 CFR 1.17(r) fee, and any submissions filed prior to the mailing
of the next Office action will be entered. Any conflicting amendments
should be clarified for entry by the applicant upon payment of the  37
CFR 1.17(r) fee. Absent specific instructions for entry, all submissions
filed as of the date of the withdrawal of the finality of the previous
final action will be entered in the order in which they were filed. Form
paragraph 7.42.01 should be used to notify applicant that the finality
of the previous Office action has been withdrawn.

7.42.01 Withdrawal of Finality of Last Office Action - Transitional
Application Under 37 CFR 1.129(a)

Since this application is eligible for the transitional procedure of  37
CFR 1.129(a), and the fee set forth in  37 CFR 1.17(r) has been timely
paid, the finality of the previous Office action has been withdrawn
pursuant to  37 CFR 1.129(a).  Applicant's [1] submission after final
filed on [2] has been entered.

Examiner Note:

Insert --first-- or --second-- in bracket 1.

If a Notice of Appeal and the appeal fee set forth in  37 CFR 1.17(b)
were filed prior to or with the payment of the fee set forth  37 CFR
1.17(r), the payment of the fee set forth in  37 CFR 1.17(r) by
applicant is construed as a request to dismiss the appeal and to
continue prosecution under  37 CFR 1.129(a).

Upon the timely payment of the fee set forth in  37 CFR 1.17(r), if the
examiner determines that the submission is not fully responsive to the
previous Office action, e.g., if the submission only includes an
information disclosure statement, applicant will be given a new
shortened statutory period of 1 month or 30 days, whichever is longer,
to submit a complete reply. Form Paragraph 7.42.02 should be used.

7.42.02 Nonresponsive Submission Filed Under 37 CFR 1.129(a)

The timely submission   under  37 CFR 1.129(a) filed on [1] is not fully
responsive to the prior Office action because [2].  Since the submission
appears to be a bona fide attempt to provide a complete reply to the
prior Office action, applicant is given a shortened statutory period of
ONE MONTH or THIRTY DAYS from the mailing date of this letter, whichever
is longer, to submit a complete reply.  This shortened statutory period
supersedes the time period set in the prior Office action.  This time
period may be extended pursuant to  37 CFR 1.136(a).  If a notice of
appeal and the appeal fee set forth in  37 CFR 1.17(e) were filed prior
to or with the payment of the fee set forth in  37 CFR 1.17(r), the
payment of the fee set forth in  37 CFR 1.17(r) by applicant is
construed as a request to dismiss the appeal and to continue prosecution
under  37 CFR 1.129(a).  The appeal stands dismissed.

Examiner Note:

The reasons why the examiner considers the submission not to be fully
responsive must be set forth in bracket 2.

After submission and payment of the fee set forth in  37 CFR 1.17(r),
the next Office action on the merits may be made final only under the
conditions for making a first action in a continuing application final
set forth in MPEP Section  706.07(b).

Form Paragraph 7.42.03 may be used if it is appropriate to make the
first action final following a submission under  37 CFR 1.129(a).

7.42.03 Action Is Final, First Action Following Submission Under 37 CFR
1.129(a)

All claims are drawn to the same invention claimed in the application
prior to the entry of the submission under  37 CFR 1.129(a) and could
have been finally rejected on the grounds and art of record in the next
Office action if they had been entered in the application prior to entry
under  37 CFR 1.129(a).  Accordingly, THIS ACTION IS MADE FINAL even
though it is a first action after the submission under  37 CFR 1.129(a).
See MPEP Section  706.07(b).  Applicant is reminded of the extension of
time policy as set forth in  37 CFR 1.136(a).

A shortened statutory period for reply to this final action is set to
expire THREE MONTHS from the mailing date of this action.  In the event
a first reply is filed within TWO MONTHS of the mailing date of this
final action and the advisory action is not mailed until after the end
of the THREE-MONTH shortened statutory period, then the shortened
statutory period will expire on the date the advisory action is mailed,
and any extension fee pursuant to  37 CFR 1.136(a) will be calculated
from the mailing date of the advisory action.  In no event, however,
will the statutory period for reply expire later than SIX MONTHS from
the mailing date of this final action.

Examiner Note:

Also use form paragraph 7.41.02 if this is a final rejection following a
first submission under  37 CFR 1.129(a).

If a subsequent final rejection is made in the application, applicant
would be entitled to have a second submission entered and considered on
the merits under the same conditions set forth for consideration of the
first submission.  Form Paragraph 7.41.02 should be used.

7.41.02 Transitional After Final Practice, Second Submission (37 CFR
1.129(a))

Since the fee set forth in  37 CFR 1.17(r) for a first submission
subsequent to a final rejection has been previously paid, applicant,
under  37 CFR 1.129(a), is entitled to have a second submission entered
and considered on the merits if, prior to abandonment, the second
submission and the fee set forth in  37 CFR 1.17(r) are filed prior to
the filing of an appeal brief under  37 CFR 1.192.  Upon the timely
filing of a second submission and the appropriate fee of $  [1] for a
[2] entity under  37 CFR 1.17(r), the finality of the previous Office
action will be withdrawn.  If a notice of appeal and the appeal fee set
forth in  37 CFR 1.17(e) were filed prior to or with the payment of the
fee set forth in  37 CFR 1.17(r), the payment of the fee set forth in
37 CFR 1.17(r) by applicant will be construed as a request to dismiss
the appeal and to continue prosecution under  37 CFR 1.129(a).  In view
of  35 U.S.C. 132, no amendment considered as a result of payment of the
fee set forth in  37 CFR 1.17(r) may introduce new matter into the
disclosure of the application.

Examiner Note:

1. This form paragraph is to follow any of form paragraphs 7.39- 7.41 in
any application filed prior to June 9, 1995, which has been pending for
at least two years as of June 8, 1995, taking into account any reference
under  35 U.S.C. 120, 121 or 365(c) to a previously filed application
and a first submission fee has been previously paid under  37 CFR
1.17(r).

2. This form paragraph should NOT be used in a design or reissue
application or in a reexamination proceeding.

3. In bracket 1, insert the current fee for a large or small entity, as
appropriate.

4. In bracket 2, insert --small-- or --large--, depending on the current
status of the application.

5. If the fee set forth in  37 CFR 1.17(r) has been twice paid, the
provisions of  37 CFR 1.129(a) are no longer available.

Any submission filed after a final rejection made in the application
subsequent to the fee set forth in  37 CFR 1.17(r) having been twice
paid will be treated in accordance with the current after-final practice
set forth in  37 CFR 1.116.

---SECTION---707 Examiner's Letter or Action

37 CFR 1.104 Nature of examination.

(a)  	Examiner's action.

(1) On taking up an application for examination or a patent in a
reexamination proceeding, the examiner shall make a thorough study
thereof and shall make a thorough investigation of the available prior
art relating to the subject matter of the claimed invention.  The
examination shall be complete with respect both to compliance of the
application or patent under reexamination with the applicable statutes
and rules and to the patentability of the invention as claimed, as well
as with respect to matters of form, unless otherwise indicated.

(2) The applicant, or in the case of a reexamination proceeding, both
the patent owner and the requester, will be notified of the examiner's
action.  The reasons for any adverse action or any objection or
requirement will be stated and such information or references will be
given as may be useful in aiding the applicant, or in the case of a
reexamination proceeding the patent owner, to judge the propriety of
continuing the prosecution.

(3) An international-type search will be made in all national
applications filed on and after June 1, 1978.

(4) Any national application may also have an international-type search
report prepared thereon at the time of the national examination on the
merits, upon specific written request therefor and payment of the
international-type search report fee set forth in Section  1.21(e). The
Patent and Trademark Office does not require that a formal report of an
international-type search be prepared in order to obtain a search fee
refund in a later filed international application.

(5) Copending applications will be considered by the examiner to be
owned by, or subject to an obligation of assignment to, the same person
if:

(i) The application files refer to assignments recorded in the Patent
and Trademark Office in accordance with Part 3 of this chapter which
convey the entire rights in the applications to the same person or
organization; or

(ii) Copies of unrecorded assignments which convey the entire rights in
the applications to the same person or organization are filed in each of
the applications; or

(iii) An affidavit or declaration by the common owner is filed which
states that there is common ownership and states facts which explain why
the affiant or declarant believes there is common ownership, which
affidavit or declaration may be signed by an official of the corporation
or organization empowered to act on behalf of the corporation or
organization when the common owner is a corporation or other
organization; or

(iv) Other evidence is submitted which establishes common ownership of
the applications.

(b) Completeness of examiner's action.  The examiner's action will be
complete as to all matters, except that in appropriate circumstances,
such as misjoinder of invention, fundamental defects in the application,
and the like, the action of the examiner may be limited to such matters
before further action is made.  However, matters of form need not be
raised by the examiner until a claim is found allowable.

(c) Rejection of claims.

(1) If the invention is not considered patentable, or not considered
patentable as claimed, the claims, or those considered unpatentable will
be rejected.

(2) In rejecting claims for want of novelty or for obviousness, the
examiner must cite the best references at his or her command. When a
reference is complex or shows or describes inventions other than that
claimed by the applicant, the particular part relied on must be
designated as nearly as practicable.  The pertinence of each reference,
if not apparent, must be clearly explained and each rejected claim
specified.

(3) In rejecting claims the examiner may rely upon admissions by the
applicant, or the patent owner in a reexamination proceeding, as to any
matter affecting patentability and, insofar as rejections in
applications are concerned, may also rely upon facts within his or her
knowledge pursuant to paragraph (d)(2) of this section.

(4) Subject matter which is developed by another person which qualifies
as prior art only under  35 U.S.C. 102(f) or (g) may be used as prior
art under  35 U.S.C. 103 against a claimed invention unless the entire
rights to the subject matter and the claimed invention were commonly
owned by the same person or organization or subject to an obligation of
assignment to the same person or organization at the time the claimed
invention was made.

(5) The claims in any original application naming an inventor will be
rejected as being precluded by a waiver in a published statutory
invention registration naming that inventor if the same subject matter
is claimed in the application and the statutory invention registration.
The claims in any reissue application naming an inventor will be
rejected as being precluded by a waiver in a published statutory
invention registration naming that inventor if the reissue application
seeks to claim subject matter:

(i) Which was not covered by claims issued in the patent prior to the
date of publication of the statutory invention registration; and

(ii) Which was the same subject matter waived in the statutory invention
registration.

(d)  	Citation of references.

(1) If domestic patents are cited by the examiner, their numbers and
dates, and the names of the patentees must be stated. If foreign
published applications or patents are cited, their nationality or
country, numbers and dates, and the names of the patentees must be
stated, and such other data must be furnished as may be necessary to
enable the applicant, or in the case of a reexamination proceeding, the
patent owner, to identify the published applications or patents cited.
In citing foreign published applications or patents, in case only a part
of the document is involved, the particular pages and sheets containing
the parts relied upon must be identified. If printed publications are
cited, the author (if any), title, date, pages or plates, and place of
publication, or place where a copy can be found, shall be given.

(2) When a rejection in an application is based on facts within the
personal knowledge of an employee of the Office, the data shall be as
specific as possible, and the reference must be supported, when called
for by the applicant, by the affidavit of such employee, and such
affidavit shall be subject to contradiction or explanation by the
affidavits of the applicant and other persons.

(e)  	Reasons for allowance. If the examiner believes that the record of
the prosecution as a whole does not make clear his or her reasons for
allowing a claim or claims, the examiner may set forth such reasoning.
The reasons shall be incorporated into an Office action rejecting other
claims of the application or patent under reexamination or be the
subject of a separate communication to the applicant or patent owner.
The applicant or patent owner may file a statement commenting on the
reasons for allowance within such time as may be specified by the
examiner. Failure to file such a statement does not give rise to any
implication that the applicant or patent owner agrees with or acquiesces
in the reasoning of the examiner.

For Office actions in reexamination proceedings, see MPEP Section  2260.

Under the current first action procedure, the examiner signifies on the
Office Action Summary Form PTOL-326 certain information including the
period set for reply, any attachments, and a "Summary of Action," which
is the position taken on all the claims.

Current procedure also allows the examiner, in the exercise of his or
her professional judgment to indicate that a discussion with applicant's
or patent owner's representative may result in agreements whereby the
application or patent under reexamination may be placed in condition for
allowance and that the examiner will telephone the representative within
about 2 weeks. Under this practice the applicant's or patent owner's
representative can be adequately prepared to conduct such a discussion.
Any resulting amendment may be made either by the applicant's or patent
owner's attorney or agent or by the examiner in an examiner's amendment.
It should be recognized that when extensive amendments are necessary it
would be preferable if they were filed by the attorney or agent of
record, thereby reducing the professional and clerical workload in the
Office and also providing the file wrapper with a better record,
including applicant's arguments for allowability as required by  37 CFR
1.111.

The list of references cited appears on a separate form, Notice of
References Cited, PTO-892 (copy in MPEP Section  707.05) attached to
applicant's copies of the action. Where applicable, Notice of
Draftsperson's Patent Drawing Revision, PTO-948 and Notice of Informal
Patent Application, PTO-152 are attached to the first action.

The attachments have the same paper number and are to be considered as
part of the Office action.

Replies to Office actions should include the 4-digit art unit number and
the examiner's name to expedite handling within the Office.

In accordance with the patent statute, "Whenever, on examination, any
claim for a patent is rejected, or any objection . . . made",
notification of the reasons for rejection and/or objection together with
such information and references as may be useful in judging the
propriety of continuing the prosecution (35 U.S.C. 132) should be given.

When considered necessary for adequate information, the particular
figure(s) of the drawing(s), and/or page(s) or paragraph(s) of the
reference(s), and/or any relevant comments briefly stated should be
included. For rejections under  35 U.S.C. 103, the way in which a
reference is modified or plural references are combined should be set
out.

In exceptional cases, as to satisfy the more stringent requirements
under  37 CFR 1.104(c)(2), and in pro se cases where the inventor is
unfamiliar with patent law and practice, a more complete explanation may
be needed.

Objections to the disclosure, explanation of references cited but not
applied, indication of allowable subject matter, requirements (including
requirements for restriction if applicable) and any other pertinent
comments may be included. Office Action Summary form PTOL-326, which
serves as the first page of the Office action (although a Form PTOL-90
may be used as a coversheet for the correspondence address and the mail
date of the Office action), is to be used with all first actions and
will identify any allowed claims.

One of Form Paragraphs 7.100, 7.101 should conclude all actions.

7.100 Name And Number of Examiner To Be Contacted

Any inquiry concerning this communication should be directed to [1] at
telephone number (703) [2].

Examiner Note:

1. This form paragraph, form paragraph 7.101, or form paragraph 7.102
should be used at the conclusion of all actions.

2. In bracket 1, insert the name of the examiner designated to be
contacted first regarding inquiries about the Office action.  This could
be either the non-signatory examiner preparing the action or the
signatory examiner.

3. In bracket 2, insert the individual phone number of the examiner to
be contacted.

7.101 Telephone Inquiry Contacts- Non 5/4/9 Schedule

Any inquiry concerning this communication or earlier communications from
the examiner should be directed to [1] whose telephone number is (703) 
[2].  The examiner can normally be reached on [3] from [4] to [5].

If attempts to reach the examiner by telephone are unsuccessful, the
examiner's supervisor, [6], can be reached on (703) [7].  The fax phone
number for the organization where this application or proceeding is
assigned is (703) [8].

Any inquiry of a general nature or relating to the status of this
application or proceeding should be directed to the receptionist whose
telephone number is (703)   [9].

Examiner Note:

1. In bracket 1, insert your name.

2. In bracket 2, insert your individual phone number.

3. In bracket 3, insert the days that you work every week, e.g.
"Monday-Thursday" for an examiner off every Friday.

4. In brackets 4 and 5, insert your normal duty hours, e.g. "6:30 AM -
5:00 PM."  Do not insert the core hours .

5. In bracket 6, insert your SPE's name.

6. In bracket 7, insert your SPE's phone number.

7. In bracket 8, insert the appropriate fax number for your
organization.

8. In bracket 9, insert the telephone number for your receptionist.

7.102 Telephone Inquiry Contacts- 5/4/9 Schedule

Any inquiry concerning this communication or earlier communications from
the examiner should be directed to [1] whose telephone number is (703) 
[2].  The examiner can normally be reached on [3] from [4] to [5]. The
examiner can also be reached on alternate [6].

If attempts to reach the examiner by telephone are unsuccessful, the
examiner's supervisor, [7], can be reached on (703) [8].  The fax phone
number for the organization where this application or proceeding is
assigned is (703) [9].

Any inquiry of a general nature or relating to the status of this
application or proceeding should be directed to the receptionist whose
telephone number is (703)    [10].

Examiner Note:

1. In bracket 1, insert your name.

2. In bracket 2, insert your individual phone number.

3. In bracket 3, insert the days that you work every week, e.g.
"Monday-Thursday" for an examiner off on alternate Fridays.

4. In brackets 4 and 5, insert your normal duty hours, e.g. "6:30 AM -
4:00 PM."  Do not insert the core hours.

5. In bracket 6, insert the day in each pay-period that is your
compressed day off, e.g. "Fridays" for an examiner on a 5/4/9 work
schedule with the first Friday off.

6. In bracket 7, insert your SPE's name.

7. In bracket 8, insert your SPE's phone number.

8. In bracket 9, insert the appropriate fax number for your
organization.

9. In bracket 10, insert the telephone number for your receptionist.

Where the text of sections of Title 35, U.S. Code was previously
reproduced in an Office action, Form Paragraph 7.103 may be used.

7.103 Statute Cited in Prior Action

The text of those sections of Title 35, U.S. Code not included in this
action can be found in a prior Office action.

Form PTO-326. Office Action Summary[GRAPHIC]

---SECTION---707.01 Primary Examiner Indicates Action for New Assistant

After the search has been completed, action is taken in the light of the
references found. Where the assistant examiner has been in the Office
but a short time, it is the duty of the primary examiner to go into the
case thoroughly. The usual procedure is for the assistant examiner to
explain the invention and discuss the references which he or she regards
as most pertinent. The primary examiner may indicate the action to be
taken, whether restriction or election of species is to be required, or
whether the claims are to be considered on their merits. If action on
the merits is to be given, the examiner may indicate how the references
are to be applied in cases where the claim is to be rejected, or
authorize allowance if it is not met in the references and no further
field of search is known.

---SECTION---707.02(a) Applications Up for Third Action and 5-Year
Applications

The supervisory patent examiners should impress their assistants with
the fact that the shortest path to the final disposition of an
application is by finding the best references on the first search and
carefully applying them.

The supervisory patent examiners are expected to personally check on the
pendency of every application which is up for the third or subsequent
official action with a view to finally concluding its prosecution.

Any application that has been pending five years should be carefully
studied by the supervisory patent examiner and every effort made to
terminate its prosecution. In order to accomplish this result, the
application is to be considered "special" by the examiner.

---SECTION---707.05 Citation of References

37 CFR 1.104 Nature of examination.

                  +++   

(d)  	Citation of references.

(1) If domestic patents are cited by the examiner, their numbers and
dates, and the names of the patentees must be stated. If foreign
published applications or patents are cited, their nationality or
country, numbers and dates, and the names of the patentees must be
stated, and such other data must be furnished as may be necessary to
enable the applicant, or in the case of a reexamination proceeding, the
patent owner, to identify the published applications or patents cited.
In citing foreign published applications or patents, in case only a part
of the document is involved, the particular pages and sheets containing
the parts relied upon must be identified. If printed publications are
cited, the author (if any), title, date, pages or plates, and place of
publication, or place where a copy can be found, shall be given.

(2) When a rejection in an application is based on facts within the
personal knowledge of an employee of the Office, the data shall be as
specific as possible, and the reference must be supported, when called
for by the applicant, by the affidavit of such employee, and such
affidavit shall be subject to contradiction or explanation by the
affidavits of the applicant and other persons.

During the examination of an application or reexamination of a patent,
the examiner should cite appropriate prior art which is nearest to the
subject matter defined in the claims. When such prior art is cited, its
pertinence should be explained.

The examiner must fully consider all the prior art references (alone and
in combination) cited in the appli cation or reexamination, including
those cited by the ap plicant in a properly submitted Information
Disclosure Statement.

Form Paragraph 7.96 may be used as an introductory sentence.

7.96 Citation of Relevant Prior Art

The prior art made of record and not relied upon is considered pertinent
to applicant's disclosure. [1]

Examiner Note:

When such prior art is cited, its relevance should be explained in
bracket 1 in accordance with MPEP Section  707.05.

Effective June 8, 1995, Public Law 103-465 amended  35 U.S.C. 154 to
change the term of a patent to 20 years measured from the filing date of
the earliest U.S. application for which benefit under  35 U.S.C. 120,
121 or 365(c) is claimed. The 20-year patent term applies to all utility
and plant patents issued on applications filed on or after June 8, 1995.
As a result of the 20-year patent term, it is expected, in certain
circumstances, that applicants may cancel their claim to priority by
amending the specification to delete any references to prior
applications. Therefore, examiners should search all applications based
on the actual U.S. filing date of the application rather than on the
filing date of any parent U.S. application for which priority is
claimed. Examiners should cite of interest all material prior art having
an effective filing date after the filing date of the U.S. parent
application but before the actual filing date of the application being
examined.

Allowed applications should generally contain a citation of pertinent
prior art for printing in the patent, even if no claim presented during
the prosecution was considered unpatentable over such prior art. Only in
those instances where a proper search has not revealed any prior art
relevant to the claimed invention is it appropriate to send a case to
issue with no art cited. In the case where no prior art is cited, the
examiner must write "None" on a form PTO-892 and insert it in the file
wrapper. Where references have been cited during the prosecution of
parent applications and a continuing application, having no newly cited
references, is ready for allowance, the cited references of the parent
applications should be listed on a form PTO-892. The form should then be
placed in the file of the continuing application.  See MPEP Section
1302.12.  In a continued prosecution application filed under  37 CFR
1.53(d) or a file wrapper continuing application filed under former  37
CFR 1.62, it is not necessary to prepare a new form PTO-892 since the
form from the parent application is in the same file wrapper and will be
used by the printer.

In all continuation and continuation-in-part applications, the parent
applications should be reviewed for pertinent prior art.

Applicants and/or applicants' attorney in PCT related national
applications may wish to cite the material citations from the PCT
International Search Report by an information disclosure statement under
37 CFR 1.97 and 1.98 in order to ensure consideration by the examiner.

In those instances where no information disclosure statement has been
filed by the applicant and where documents are cited in the
International Search Report but neither a copy of the documents nor an
English translation (or English family member) is provided, the examiner
may exercise discretion in deciding whether to take necessary steps to
obtain the copy and/or translation.

Copies of documents cited will be provided as set forth in MPEP Section
707.05(a). That is, copies of documents cited by the examiner will be
provided to applicant   except where the documents:

(A) are cited by applicant in accordance with MPEP Section  609,
Section  707.05(b), and Section  708.02;

(B) have been referred to in applicant's disclosure statement;

(C) are cited and have been provided in a parent application; or

(D) are U. S. Patents which are cited at allowance (MPEP Section
1302.04).

---SECTION---707.05(a) Copies of Cited References

Copies of cited references (except as noted below) are automatically
furnished without charge to applicant together with the Office action in
which they are cited. Copies of the cited references are also placed in
the application file for use by the examiner during the prosecution.

Copies of references cited by applicant in accordance with MPEP Section
609,  Section  707.05(b) and Section  708.02 are not furnished to
applicant with the Office action. Additionally, copies of references
cited in continuation applications if they had been previously cited in
the parent application are not furnished. The examiner should check the
left hand column of form PTO-892 if a copy of the reference is not to be
furnished to the applicant.

Copies of foreign patent documents and nonpatent literature (NPL) which
are cited by the examiner at the time of allowance will be furnished to
applicant with the Office action, and copies of the same will also be
retained in the file. This will apply to all allowance actions,
including first action allowances and Ex Parte Quayle actions.

In the rare instance where no art is cited in a continuation
application, all the references cited during the prosecution of the
parent application will be listed at allowance for printing in the
patent.

To assist in providing copies of references, the examiner should:

(A) Write the citation of the references on form PTO-892, "Notice of
References Cited";

(B) Place the form PTO-892 in the front of the file wrapper;

(C) Include in the application file wrapper all of the references cited
by the examiner which are to be furnished to the applicant and which
have been obtained from the classified search file;

(D) Make two copies of each reference which is to be supplied and which
has been located in a place other than the classified search file (e.g.,
textbooks, bound magazines, personal search material, etc.). Using red
ink identify one copy as "File Copy" and the other copy as "Applicant's
Copy". Both copies should be placed in the application file wrapper;

(E) Turn the application in to the Technical Support Staff for counting.
Any application which is handed in without all of the required
references will be returned to the examiner. The missing reference(s)
should be obtained and the file returned to the Technical support Staff
as quickly as possible.

In the case of design applications, procedures are the same as set forth
in MPEP Section  707.05 (a)-(g) except that less than the entire
disclosure of a cited U.S. utility patent may be supplied with the
action by the Design Group. Copies of all sheets of drawings relied on
and of the first page of the specification are furnished without charge.
Any other subject matter, including additional pages of specification
relied on by the examiner will be provided without charge. Where an
applicant desires a complete copyof a cited U.S. patent, it may be
obtained through Patent and Trademark Copy Sales at the usual charge.

Form PTO-892. Notice of References Cited[GRAPHIC]

---SECTION---707.05(b) Citation of Related Art by Applicants

MPEP Section  609 sets forth positive guidelines for applicants, their
attorneys and agents who desire to submit prior art for consideration by
the Patent and Trademark Office.

Submitted citations will not in any way diminish the obligation of
examiners to conduct independent prior art searches, or relieve
examiners of citing pertinent prior art of which they may be aware,
whether or not such art is cited by the applicant.

Prior art submitted by applicant in the manner provided in MPEP Section
609 will not be supplied with an Office action.

---SECTION---707.05(c) Order of Listing

In citing references for the first time, the identifying data of the
citation should be placed on form PTO-892 "Notice of References Cited",
a copy of which will be attached to the Office action. No distinction is
to be made between references on which a claim is rejected and those
formerly referred to as "pertinent". With the exception of applicant
submitted citations,  MPEP Section  609 and Section  708.02, it is
recommended that the pertinent features of references which are not used
as a basis for rejection, be pointed out briefly.

See MPEP Section  1302.12.

---SECTION---707.05(d) Reference Cited in Subsequent Actions

Where an applicant in an amendatory paper refers to a reference that is
subsequently relied upon by the examiner, such reference shall be cited
by the examiner in the usual manner using a form PTO-892, "Notice of
References Cited", unless applicant has listed the reference on a
PTO-1449 that has been initialled by the examiner.

---SECTION---707.05(e) Data Used in Citing References

37 CFR 1.104(d) (see also MPEP Section  707.05 and Section  901.05(a))
requires the examiner to give certain data when citing references. The
patent number, patent date, name of the patentee, class and subclass are
to be given in the citation of U.S. patents.  This information is listed
on the "Notice of References Cited" form PTO-892 (Copy at MPEP Section
707.05). See MPEP Section  901.04 for details concerning the various
series of U.S. patents and how to cite them. Note that patents of the
X-Series (dated prior to July 4, 1836) are not to be cited by number.
Some U.S. patents issued in 1861 have two numbers thereon. The larger
number should be cited.

In the rare instance where no art is cited ina continuation application,
all the references cited during the
prosecution of the parent application will be listed at allowance for
printing in the patent. See MPEP Section  707.05(a).

CROSS-REFERENCES

Official cross-references should be marked "X".

FOREIGN PATENTS AND PUBLISHED APPLICATIONS

In citing foreign patents, the patent number, citation date, name of the
country, name of the patentee, and U.S. class and subclass, if
appropriate, must be given. Foreign patents searched in those Examining
Groups filing by International Patent Classification (IPC) will be cited
using the appropriate IPC subclass/group/subgroup. On the file wrapper
"Searched" box and PTO-892, the IPC subclass shall be cited in the space
provided for "Class", and IPC group/subgroup shall be cited in the space
provided for "Subclass".

In actions where references are furnished, and less than the entire
disclosure is relied upon, the sheet and page numbers specifically
relied upon and the total number of sheets of drawing and pages of
specification must be included (except applicant submitted citations).
If the entire disclosure is relied on, the total number of sheets and
pages are not included, and the appropriate columns on the PTO-892 are
left blank.

Publications such as German allowed applications and Belgian and
Netherlands printed specifications should be similarly handled.

See MPEP Section  901.05(a) for a chart in which foreign language terms
indicative of foreign patent and publication dates to be cited are
listed.

PUBLICATIONS

See MPEP Section  711.06(a) for citation of abstracts, abbreviatures and
defensive publications. See MPEP Section  901.06(c) for citation of
Alien Property Custodian publications. In citing a publication,
sufficient information should be given to determine the identity and
facilitate the location of the publication. For books, the data required
by  37 CFR 1.104(d) (MPEP Section  707.05) with the specific pages
relied on identified together with the Scientific and Technical
Information Center (STIC) call number will suffice. The call number
appears on the "spine" of the book if the book is thick enough and, in
any event, on the back of the title page. Books on interlibrary loan
will be marked with the call numbers of the other library, of course.
THIS NUMBER SHOULD NOT BE CITED. The same convention should be followed
in citing articles from periodicals. The call number should be cited for
periodicals owned by the Scientific Library, but not for periodicals
borrowed from other libraries. In citing periodicals, information
sufficient to identify the article includes the author(s) and title of
the article and the title, volume number issue number, date, and pages
of the periodical. If the copy relied on is located only in the group
making the action (there may be no call number), the additional
information, "Copy in Group - -" should be given.

The following are examples of nonpatent bibliographical citations:

(A) For books:

Winslow. C. E. A. Fresh Air and Ventilation. N.Y., E. P. Dutton, 1926.
p. 97-112. TI17653.W5.

(B) For parts of books:

Smith, J. F. "Patent Searching." in: Singer, T.E.R.,   Information and
Communication Practice in Industry (New York, Reinhold, 1958), pp.
157-165. T 175.S5.

(C) For encyclopedia articles:

Calvert, R. "Patents (Patent Law)." in: Encyclopedia of Chemical
Technology (1952 ed.), vol. 9, pp. 868-890. Ref. TP9.E68.

(D) For sections of handbooks:

Machinery's Handbook, 16th ed. New York, International Press, 1959. pp.
1526-1527. TJ151.M3 1959.

(E) For periodical articles:

Noyes, W. A. A Climate for Basic Chemical Research

Chemical & Engineering News, Vol. 38, no. 42 (Oct. 17, 1960), pp. 91-95.
TP1.I418.

Titles of books and periodicals SHOULD NOT be abbreviated.

A citation to P.S.E.B.M. is meaningless. References are to be cited so
that anyone reading a patent may identify and retrieve the publications
cited. Give as much bibliographic information as possible, but at least
enough to identify the publication. For books, minimal information
includes the author, title and date. For periodicals, at least the title
of the periodical, the volume number, date, and pages should be given.
These minimal citations may be made ONLY IF the complete bibliographic
details are unknown or unavailable.

If the original publication is located outside the Office, the examiner
should immediately make or order a photocopy of at least the portion
relied upon and indicate the class and subclass in which it will be
filed, if any.

---SECTION---707.05(f) Effective Dates of Declassified Printed Matter

In using declassified material as references there are usually two
pertinent dates to be considered, namely, the printing date and the
publication date. The printing date in some instances will appear on the
material and may be considered as that date when the material was
prepared for limited distribution. The publication date is the date of
release when the material was made available to the public. See Ex parte
Harris, 79 USPQ 439 (Comm'r Pat. 1948). If the date of release does not
appear on the material, this date may be determined by reference to the
Office of Technical Services, Department of Commerce.

In the use of any of the above noted material as an anticipatory
publication, the date of release following declassification is the
effective date of publication within the meaning of the statute.

For the purpose of anticipation predicated upon prior knowledge under
35 U.S.C. 102(a) the above noted declassified material may be taken as
prima facie evidence of such prior knowledge as of its printing date
even though such material was classified at that time. When so used the
material does not constitute an absolute statutory bar and its printing
date may be antedated by an affidavit or declaration under  37 CFR
1.131.

---SECTION---707.05(g) Incorrect Citation of References

Where an error in citation of a reference is brought to the attention of
the Office by applicant, a letter correcting the error, together with a
correct copy of the reference, is sent to applicant. See MPEP Section
710.06. Where the error is discovered by the examiner, applicant is also
notified and the period for reply restarted. In either case, the
examiner is directed to correct the error, in ink, in the paper in which
the error appears, and place his or her initials on the margin of such
paper, together with a notation of the paper number of the action in
which the citation has been correctly given. See MPEP Section  710.06.

Form paragraphs 7.81-7.83 may be used to correct citations or copies of
references cited.

7.81 Correction Letter Re Last Office Action

In response to applicant's   [1] regarding the last Office action, the
following corrective action is taken.

The period for reply of [2] MONTHS set in said Office action is
restarted to begin with the mailing date of this letter.

Examiner Note:

1. In bracket 1, insert --telephone inquiry of _____-- or
--communication dated ______--.

2. In bracket 2, insert new period for reply.

3. This paragraph must be followed by one or more of paragraphs 7.82,
7.82.01 or 7.83.

4. Before restarting the period, the SPE should be consulted.

7.82 Correction of Reference Citation

	The reference [1] was not correctly cited in the last Office action.
The correct citation is shown on the attached PTO-892.

Examiner Note:

1. Every correction MUST be reflected on a corrected or new PTO-892.

2. This paragraph must follow paragraph 7.81.

3. If a copy of the PTO-892 is being provided without correction, use
paragraph 7.83 instead of this paragraph.

4. Also use form paragraph 7.82.01 if reference copies are being
supplied.

7.82.01 Copy of Reference(s) Furnished

Copies of the following references not previously supplied are enclosed:

Examiner Note:

1. The reference copies being supplied must be listed following this
paragraph.

2. This paragraph must be preceded by paragraph 7.81 and may also be
used with paragraphs 7.82 or 7.83

7.83 Copy of Office Action Supplied

[1] of the last Office action is enclosed.

Examiner Note:

1. In bracket 1, explain what is enclosed.  For example:

a. "A corrected copy"

b. "A complete copy"

c. A specific page or pages, e.g., "Pages 3-5"

d. "A Notice of References Cited, Form PTO-892"

2. This paragraph should follow paragraph 7.81 and may follow paragraphs
7.82 and 7.82.01.

In any case otherwise ready for issue, in which the erroneous citation
has not been formally corrected in an official paper, the examiner is
directed to correct the citation by examiner's amendment accompanying
the Notice of Allowability form PTOL-37.

If a FOREIGN patent is incorrectly cited: for example, the wrong country
is indicated or the country omitted from the citation, the General
Reference Branch of the Scientific and Technical Library may be helpful.
The date and number of the patent are often sufficient to determine the
correct country which granted the patent.

---SECTION---707.06 Citation of Decisions, Orders Memorandums, and
Notices

In citing court decisions, the USPQ citation should be given and, when
it is convenient to do so, the U.S., CCPA or Federal Reporter citation
should also be provided.

The citation of manuscript decisions which are not available to the
public should be avoided.

It is important to recognize that a federal district court decision that
has been reversed on appeal cannot be cited as authority.

In citing a manuscript decision which is available to the public but
which has not been published, the tribunal rendering the decision and
complete data identifying the paper should be given. Thus, a decision of
the Board of Patent Appeals and Interferences which has not been
published but which is available to the public in the patented file
should be cited, as "  Ex parte - - , decision of the Board of Patent
Appeals and Interferences, Patent No. - - - , paper No. - - , - - -
pages."

Decisions found only in patented files should be cited only when there
is no published decision on the same point.

When a Commissioner's order, notice or memorandum not yet incorporated
into this manual is cited in any official action, the title and date of
the order, notice or memorandum should be given. When appropriate other
data, such as a specific issue of the Journal of the Patent and
Trademark Office Society or of the Official Gazette in which the same
may be found, should also be given.

---SECTION---707.07 Completeness and Clarity of Examiner's Action

37 CFR 1.104 Nature of examination.

                  +++   

(b) Completeness of examiner's action.  The examiner's action will be
complete as to all matters, except that in appropriate circumstances,
such as misjoinder of invention, fundamental defects in the application,
and the like, the action of the examiner may be limited to such matters
before further action is made.  However, matters of form need not be
raised by the examiner until a claim is found allowable.

                  +++   

Form Paragraphs 7.37 through 7.38 may be used where applicant's
arguments are not persuasive or are moot.

7.37 Arguments Are Not Persuasive

Applicant's arguments filed [1] have been fully considered but they are
not persuasive. [2]

Examiner Note:

1. The examiner must address all arguments which have not already been
responded to in the statement of the rejection.

2. In bracket 2, provide explanation as to non-persuasiveness.

7.38 Arguments Are Moot Because of New Ground(s) of Rejection

Applicant's arguments with respect to claim   [1] have been considered
but are moot in view of the new ground(s) of rejection.

Examiner Note:

The examiner must, however, address any arguments presented by the
applicant which are still relevant to any references being applied.

7.37.01 Unpersuasive Argument: Age of Reference(s)

In response to applicant's argument based upon the age of the
references, contentions that the reference patents are old are not
impressive absent a showing that the art tried and failed to solve the
same problem notwithstanding its presumed knowledge of the references.
See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37.

7.37.02 Unpersuasive Argument: Bodily Incorporation

In response to applicant's argument that [1], the test for obviousness
is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of
the references.  Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.
See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).

Examiner Note:

1. In bracket 1, briefly restate applicant's arguments with respect to
the issue of bodily incorporation.

2. This form paragraph must be preceded by form paragraph 7.37.

7.37.03 Unpersuasive Argument: Hindsight Reasoning

In response to applicant's argument that the examiner's conclusion of
obviousness is based upon improper hindsight reasoning, it must be
recognized that any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning.  But so long as it takes
into account only knowledge which was within the level of ordinary skill
at the time the claimed invention was made, and does not include
knowledge gleaned only from the applicant's disclosure, such a
reconstruction is proper.  See In re McLaughlin, 443 F.2d 1392, 170 USPQ
209 (CCPA 1971).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37.

7.37.04 Unpersuasive Argument: No Suggestion To Combine

In response to applicant's argument that there is no suggestion to
combine the references, the examiner recognizes that obviousness can
only be established by combining or modifying the teachings of the prior
art to produce the claimed invention where there is some teaching,
suggestion, or motivation to do so found either in the references
themselves or in the knowledge generally available to one of ordinary
skill in the art.  See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed.
Cir. 1988) and In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir.
1992).  In this case, [1].

Examiner Note:

1. In bracket 1, explain where the motivation for the rejection is
found, either in the references, or in the knowledge generally available
to one of ordinary skill in the art.

2. This form paragraph must be preceded by form paragraph 7.37.

7.37.05 Unpersuasive Argument: Nonanalogous Art

In response to applicant's argument that [1] is nonanalogous art, it has
been held that a prior art reference must either be in the field of
applicant's endeavor or, if not, then be reasonably pertinent to the
particular problem with which the applicant was concerned, in order to
be relied upon as a basis for rejection of the claimed invention.  See
In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).  In this
case, [2].

Examiner Note:

1. In bracket 1, enter the name of the reference which applicant alleges
is nonanalogous.

2. In bracket 2, explain why the reference is analogous art.

3. This form paragraph must be preceded by form paragraph 7.37.

7.37.06 Unpersuasive Argument: Number of References

In response to applicant's argument that the examiner has combined an
excessive number of references, reliance on a large number of references
in a rejection does not, without more, weigh against the obviousness of
the claimed invention.  See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885
(Fed. Cir. 1991).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37.

7.37.07 Unpersuasive Argument: Applicant Obtains Result Not Contemplated
by Prior Art

In response to applicant's argument that [1], the fact that applicant
has recognized another advantage which would flow naturally from
following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious.  See Ex
parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).

Examiner Note:

1. In bracket 1, briefly restate applicant's arguments with respect to
the issue of results not contemplated by the prior art.

2. This form paragraph must be preceded by form paragraph 7.37.

7.37.08 Unpersuasive Argument: Arguing Limitations Which Are Not Claimed

In response to applicant's argument that the references fail to show
certain features of applicant's invention, it is noted that the features
upon which applicant relies (i.e., [1]) are not recited in the rejected
claim(s).  Although the claims are interpreted in light of the
specification, limitations from the specification are not read into the
claims.  See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir.
1993).

Examiner Note:

1. In bracket 1, recite the features upon which applicant relies, but
which are not recited in the claim(s).

2. This form paragraph must be preceded by form paragraph 7.37.

7.37.09 Unpersuasive Argument: Intended Use

In response to applicant's argument that [1], a recitation of the
intended use of the claimed invention must result in a structural
difference between the claimed invention and the prior art in order to
patentably distinguish the claimed invention from the prior art.  If the
prior art structure is capable of performing the intended use, then it
meets the claim.  In a claim drawn to a process of making, the intended
use must result in a manipulative difference as compared to the prior
art.  See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ
458, 459 (CCPA 1963).

Examiner Note:

1. In bracket 1, briefly restate applicant's arguments with respect to
the issue of intended use.

2. This form paragraph must be preceded by form paragraph 7.37.

7.37.10 Unpersuasive Argument: Limitation(s) in Preamble

	In response to applicant's arguments, the recitation [1] has not been
given patentable weight because the recitation occurs in the preamble.
A preamble is generally not accorded any patentable weight where it
merely recites the purpose of a process or the intended use of a
structure, and where the body of the claim does not depend on the
preamble for completeness but, instead, the process steps or structural
limitations are able to stand alone.  See In re Hirao, 535 F.2d 67, 190
USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478,
481 (CCPA 1951).

Examiner Note:

1. In bracket 1, briefly restate the recitation about which applicant is
arguing.

2. This form paragraph must be preceded by form paragraph 7.37.

7.37.11 Unpersuasive Argument: General Allegation of Patentability

Applicant's arguments fail to comply with  37 CFR 1.111(b) because they
amount to a general allegation that the claims define a patentable
invention without specifically pointing out how the language of the
claims patentably distinguishes them from the references.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37.

7.37.12 Unpersuasive Argument: Novelty Not Clearly Pointed Out

Applicant's arguments do not comply with  37 CFR 1.111(c) because they
do not clearly point out the patentable novelty which he or she thinks
the claims present in view of the state of the art disclosed by the
references cited or the objections made.  Further, they do not show how
the amendments avoid such references or objections.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37.

7.37.13 Unpersuasive Argument: Arguing Against References Individually

In response to applicant's arguments against the references
individually, one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of
references.  See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981);
In re Merck &   Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37.

---SECTION---707.07(a) Complete Action on Formal Matters

Forms are placed in informal applications listing informalities noted by
the Draftsperson (form PTO-948) and the Office of Initial Patent
Examination (form PTO-152). Each of these forms comprises an original
for the file record and a copy to be mailed to applicant as a part of
the examiners first action. They are specifically referred to as
attachments to the action and are marked with its paper number. In every
instance where these forms are to be used, they should be mailed with
the examiner's first action, and any additional formal requirements
which the examiner desires to make should be included in the first
action.

When any formal requirement is made in an examiner's action, that action
should, in all cases where it indicates allowable subject matter, call
attention to  37 CFR 1.111(b) and state that a complete reply must
either comply with all formal requirements or specifically traverse each
requirement not complied with.

7.43.03 Allowable Subject Matter, Formal Requirements Outstanding

As allowable subject matter has been indicated, applicant's reply must
either comply with all formal requirements or specifically traverse each
requirement not complied with.  See  37 CFR 1.111(b) and MPEP Section
707.07(a).

Examiner Note:

This paragraph would be appropriate when changes must be made prior to
allowance.  For example, when there is a requirement for drawing
corrections that have to be submitted for approval or when corrections
to the specification have to be made prior to allowance.

---SECTION---707.07(b) Requiring New Oath

See MPEP Section  602.02.

---SECTION---707.07(c) Draftsperson's Requirement

See MPEP Section  707.07(a); also MPEP Section  608.02(a), (e), and (s).

---SECTION---707.07(d) Language To Be Used In Rejecting Claims

Where a claim is refused for any reason relating to the merits thereof
it should be "rejected" and the ground of rejection fully and clearly
stated, and the word "reject" must be used. The examiner should
designate the statutory basis for any ground of rejection by express
reference to a section of 35 U.S.C. in the opening sentence of each
ground of rejection. If the claim is rejected as too broad, the reason
for so holding should be given; if rejected as indefinite the examiner
should point out wherein the indefiniteness resides; or if rejected as
incomplete, the element or elements lacking should be specified, or the
applicant be otherwise advised as to what the claim requires to render
it complete.

See MPEP Section  706.02 (i), (j), and (m) for language to be used.

Everything of a personal nature must be avoided. Whatever may be the
examiner's view as to the utter lack of patentable merit in the
disclosure of the application examined, he or she should not express in
the record the opinion that the application is, or appears to be, devoid
of patentable subject matter. Nor should he or she express doubts as to
the allowability of allowed claims or state that every doubt has been
resolved in favor of the applicant in granting him the claims allowed.

The examiner should, as a part of the first Office action on the merits,
identify any claims which he or she judges, as presently recited, to be
allowable and/or should suggest any way in which he or she considers
that rejected claims may be amended to make them allowable. If the
examiner does not do this, then by implication it will be understood by
the applicant or his or her attorney or agent that in the examiner's
opinion, as presently advised, there appears to be no allowable claim
nor anything patentable in the subject matter to which the claims are
directed.

IMPROPERLY EXPRESSED REJECTIONS

An omnibus rejection of the claim "on the references and for the reasons
of record" is stereotyped and usually not informative and should
therefore be avoided. This is especially true where certain claims have
been rejected on one ground and other claims on another ground.

A plurality of claims should never be grouped together in a common
rejection, unless that rejection is equally applicable to all claims in
the group.

---SECTION---707.07(e) Note All Outstanding Requirements

In taking up an amended application for action the examiner should note
in every letter all the requirements outstanding against the
application. Every point in the prior action of an examiner which is
still applicable must be repeated or referred to, to prevent the implied
waiver of the requirement.

As soon as allowable subject matter is found, correction of all
informalities then present should be required.

---SECTION---707.07(f) Answer All Material Traversed

Where the requirements are traversed, or suspension thereof requested,
the examiner should make proper reference thereto in his or her action
on the amendment.

Where the applicant traverses any rejection, the examiner should, if he
or she repeats the rejection, take note of the applicant's argument and
answer the substance of it.

If a rejection of record is to be applied to a new or amended claim,
specific identification of that ground of rejection, as by citation of
the paragraph in the former Office letter in which the rejection was
originally stated, should be given.

ANSWERING ASSERTED ADVANTAGES

After an Office action, the reply (in addition to making amendments,
etc.) may frequently include arguments and affidavits to the effect that
the prior art cited by the examiner does not teach how to obtain or does
not inherently yield one or more advantages (new or improved results,
functions or effects), which advantages are urged to warrant issue of a
patent on the allegedly novel subject matter claimed.

If it is the examiner's considered opinion that the asserted advantages
are without significance in determining patentability of the rejected
claims, he or she should state the reasons for his or her position in
the record, preferably in the action following the assertion or argument
relative to such advantages. By so doing the applicant will know that
the asserted advantages have actually been considered by the examiner
and, if appeal is taken, the Board of Patent Appeals and Interferences
will also be advised.

The importance of answering such arguments is illustrated by In re
Herrmann, 261 F.2d 598, 120 USPQ 182 (CCPA 1958) where the applicant
urged that the subject matter claimed produced new and useful results.
The court noted that since applicant's statement of advantages was not
questioned by the examiner or the Board of Appeals, it was constrained
to accept the statement at face value and therefore found certain claims
to be allowable.  See also In re Soni, 54 F.3d 746, 751, 34 USPQ2d 1684,
1688 (Fed Cir. 1995) (Office failed to rebut applicant's argument).

---SECTION---707.07(g) Piecemeal Examination

Piecemeal examination should be avoided as much as possible. The
examiner ordinarily should reject each claim on all valid grounds
available, avoiding, how ever, undue multiplication of references. (See
MPEP Section  904.02.) Major technical rejections on grounds such as
lack of proper disclosure, undue breadth, serious indefiniteness and res
judicata should be applied where appropriate even though there may be a
seemingly sufficient rejection on the basis of prior art. Where a major
technical rejection is proper, it should be stated with a full
development of reasons rather than by a mere conclusion coupled with
some stereotyped expression.

In cases where there exists a sound rejection on the basis of prior art
which discloses the "heart" of the invention (as distinguished from
prior art which merely meets the terms of the claims), secondary
rejections on minor technical grounds should ordinarily not be made.
Certain technical rejections (e.g. negative limitations, indefiniteness)
should not be made where the examiner, recognizing the limitations of
the English language, is not aware of an improved mode of definition.

Some situations exist where examination of an application appears best
accomplished by limiting action on the claim thereof to a particular
issue. These situations include the following:

(A) Where an application is too informal for a complete action on the
merits.  See MPEP Section  702.01;

(B) Where there is an undue multiplicity of claims, and there has been
no successful telephone request for election of a limited number of
claims for full examination.  See MPEP Section  2173.05(n);

(C) Where there is a misjoinder of inventions and there has been no
successful telephone request for election.  See MPEP Section  803,
Section  806.02,  Section  812.01;

(D) Where disclosure is directed to perpetual motion. See Ex parte
Payne, 1904 C.D. 42, 108 O.G. 1049 (Comm'r Pat. 1903). However, in such
cases, the best prior art readily available should be cited and its
pertinency pointed out without specifically applying it to the claims.

On the other hand, a rejection on the grounds of res judicata, no 
prima facie showing for reissue, new matter, or inoperativeness (not
involving perpetual motion) should be accompanied by rejection on all
other available grounds.

---SECTION---707.07(h) Notify of Inaccuracies in Amendment

See MPEP Section  714.23.

---SECTION---707.07(i) Each Claim To Be Mentioned in Each Letter

In every letter, each pending claim should be mentioned by number, and
its treatment or status given. Since a claim retains its original
numeral throughout the prosecution of the application, its history
through successive actions is thus easily traceable. Each action should
conclude with a summary of all claims presented for examination.

Claims retained under  37 CFR 1.142 and claims retained under  37 CFR
1.146 should be treated as set out in MPEP Section  821 to Section
821.03 and Section  809.02(c).

See MPEP Section  2363.03  for treatment of claims in the application of
losing party in interference.

The Index of Claims should be kept up to date as set forth in MPEP
Section  719.04.

---SECTION---707.07(j) State When Claims Are Allowable

INVENTOR FILED APPLICATIONS

When, during the examination of a pro se application it becomes apparent
to the examiner that there is patentable subject matter disclosed in the
application, the examiner should draft one or more claims for the
applicant and indicate in his or her action that such claims would be
allowed if incorporated in the application by amendment.

This practice will expedite prosecution and offer a service to
individual inventors not represented by a registered patent attorney or
agent. Although this practice may be desirable and is permissible in any
case deemed appropriate by the examiner, it will be expected to be
applied in all cases where it is apparent that the applicant is
unfamiliar with the proper preparation and prosecution of patent
applications.

ALLOWABLE EXCEPT AS TO FORM

When an application discloses patentable subject matter and it is
apparent from the claims and applicant's arguments that the claims are
intended to be directed to such patentable subject matter, but the
claims in their present form cannot be allowed because of defects in
form or omission of a limitation, the examiner should not stop with a
bare objection or rejection of the claims. The examiner's action should
be constructive in nature and, when possible, should offer a definite
suggestion for correction. Further, an examiner's suggestion of
allowable subject matter may justify indicating the possible
desirability of an interview to accelerate early agreement on allowable
claims.

If the examiner is satisfied after the search has been completed that
patentable subject matter has been disclosed and the record indicates
that the applicant intends to claim such subject matter, the examiner
may note in the Office action that certain aspects or features of the
patentable invention have not been claimed and that if properly claimed
such claims may be given favorable consideration.

If a claim is otherwise allowable but is dependent on a canceled claim
or on a rejected claim, the Office action should state that the claim
would be allowable if rewritten in independent form.

EARLY ALLOWANCE OF CLAIMS

Where the examiner is satisfied that the prior art has been fully
developed and some of the claims are clearly allowable, the allowance of
such claims should not be delayed.

Form paragraphs 7.43, 7.43.01, and 7.43.02 may be used to indicate
allowable subject matter.

7.43 Objection to Claims, Allowable Subject Matter

Claim  [1] objected to as being dependent upon a rejected base claim,
but would be allowable if rewritten in independent form including all of
the limitations of the base claim and any intervening claims.

7.43.01 Allowable Subject Matter, Claims Rejected Under 35 U.S.C. 112,
Second Paragraph, Independent Claim

Claim  [1] would be allowable if rewritten or amended to overcome the
rejection(s) under  35 U.S.C. 112, 2nd paragraph, set forth in this
Office action.

Examiner Note:

This form paragraph is to be used only when the noted independent
claim(s) have been rejected solely on the basis of  35 U.S.C. 112,
second paragraph, and would be allowable if amended to overcome the
rejection.

7.43.02 Allowable Subject Matter, Claims Rejected Under 35 U.S.C. 112,
Second Paragraph, Dependent Claim

Claim  [1] would be allowable if rewritten to overcome the rejection(s)
under  35 U.S.C. 112, 2nd paragraph, set forth in this Office action and
to include all of the limitations of the base claim and any intervening
claims.

Examiner Note:

This form paragraph is to be used only when the noted dependent claim(s)
have been rejected solely on the basis of  35 U.S.C. 112, second
paragraph, and would be allowable if amended as indicated.

Form Paragraph 7.97 may be used to indicate allowance of claims.

7.97 Claims Allowed

Claim  [1] allowed.

---SECTION---707.07(k) Numbering Paragraphs

It is good practice to number the paragraphs of the letter
consecutively. This facilitates their identification in the future
prosecution of the case.

---SECTION---707.07(l) Comment on Examples

The results of the tests and examples should not normally be questioned
by the examiner unless there is reasonable basis for questioning the
results. If the examiner questions the results, the appropriate claims
should be rejected as being based on an insufficient disclosure under
35 U.S.C. 112, first paragraph. In re Borkowski, 422 F.2d 904, 164 USPQ
642 (CCPA 1970). The applicant must reply to the rejection or it will be
repeated, for example, by providing the results of an actual test or
example which has been conducted, or by providing relevant arguments
that there is strong reason to believe that the result would be as
predicted. Care should be taken that new matter is not entered into the
application.

If questions are present as to operability or utility, consideration
should be given to the applicability of a rejection under  35 U.S.C.
101.

---SECTION---707.08 Reviewing and Initialing by Assistant Examiner

The full surname of the examiner who prepares the Office action will, in
all cases, be typed at the end of the action.  The telephone number
below this should be called if the application is to be discussed or an
interview arranged. Form paragraph 7.100, 7.101 or 7.102 should be used.

7.100 Name And Number of Examiner To Be Contacted

Any inquiry concerning this communication should be directed to [1] at
telephone number (703) [2].

Examiner Note:

1. This form paragraph, form paragraph 7.101, or form paragraph 7.102
should be used at the conclusion of all actions.

2. In bracket 1, insert the name of the examiner designated to be
contacted first regarding inquiries about the Office action.  This could
be either the non-signatory examiner preparing the action or the
signatory examiner.

3. In bracket 2, insert the individual phone number of the examiner to
be contacted.

7.101 Telephone Inquiry Contacts- Non 5/4/9 Schedule

Any inquiry concerning this communication or earlier communications from
the examiner should be directed to [1] whose telephone number is (703) 
[2].  The examiner can normally be reached on [3] from [4] to [5].

If attempts to reach the examiner by telephone are unsuccessful, the
examiner's supervisor, [6], can be reached on (703) [7].  The fax phone
number for the organization where this application or proceeding is
assigned is (703) [8].

Any inquiry of a general nature or relating to the status of this
application or proceeding should be directed to the receptionist whose
telephone number is (703)   [9].

Examiner Note:

1. In bracket 1, insert your name.

2. In bracket 2, insert your individual phone number.

3. In bracket 3, insert the days that you work every week, e.g.
"Monday-Thursday" for an examiner off every Friday.

4. In brackets 4 and 5, insert your normal duty hours, e.g. "6:30 AM -
5:00 PM."  Do not insert the core hours .

5. In bracket 6, insert your SPE's name.

6. In bracket 7, insert your SPE's phone number.

7. In bracket 8, insert the appropriate fax number for your
organization.

8. In bracket 9, insert the telephone number for your receptionist.

7.102 Telephone Inquiry Contacts- 5/4/9 Schedule

Any inquiry concerning this communication or earlier communications from
the examiner should be directed to [1] whose telephone number is (703) 
[2].  The examiner can normally be reached on [3] from [4] to [5]. The
examiner can also be reached on alternate [6].

If attempts to reach the examiner by telephone are unsuccessful, the
examiner's supervisor, [7], can be reached on (703) [8].  The fax phone
number for the organization where this application or proceeding is
assigned is (703) [9].

Any inquiry of a general nature or relating to the status of this
application or proceeding should be directed to the receptionist whose
telephone number is (703)    [10].

Examiner Note:

1. In bracket 1, insert your name.

2. In bracket 2, insert your individual phone number.

3. In bracket 3, insert the days that you work every week, e.g.
"Monday-Thursday" for an examiner off on alternate Fridays.

4. In brackets 4 and 5, insert your normal duty hours, e.g. "6:30 AM -
4:00 PM."  Do not insert the core hours.

5. In bracket 6, insert the day in each pay-period that is your
compressed day off, e.g. "Fridays" for an examiner on a 5/4/9 work
schedule with the first Friday off.

6. In bracket 7, insert your SPE's name.

7. In bracket 8, insert your SPE's phone number.

8. In bracket 9, insert the appropriate fax number for your
organization.

9. In bracket 10, insert the telephone number for your receptionist.

After the action is typed, the examiner who prepared the action reviews
it for correctness. The surname or initials of the examiner who prepared
the action and the date on which the action was typed should appear
below the action.  If this examiner does not have the authority to sign
the action, he or she should initial above the typed name or initials,
and forward the action to the authorized signatory examiner for signing.

---SECTION---707.09 Signing by Primary or Other Authorized Examiner

Although only the original is signed, the word "Examiner" and the name
of the signer should appear on the original and copies.

All letters and issues should be signed promptly.

---SECTION---707.10 Entry

The original, signed by the authorized examiner, is the copy which is
placed in the file wrapper. The character of the action, its paper
number and the date of mailing are entered in black ink on the outside
of the file wrapper under "Contents".

---SECTION---707.11 Date

The mailing date should not be typed when the letter is written, but
should be stamped or printed on all copies of the letter after it has
been signed by the authorized signatory examiner and the copies are
about to be mailed.

---SECTION---707.12 Mailing

Copies of the examiner's action are mailed by the group after the
original, initialed by the assistant examiner and signed by the
authorized signatory examiner, has been placed in the file. After the
copies are mailed the original is returned for placement in the file.

---SECTION---707.13 Returned Office Action

Letters are sometimes returned to the Office because the United States
Postal Service has not been able to deliver them. The examiner should
use every reasonable means to ascertain the correct address and forward
the letter again, after stamping it "remailed" with the date thereof and
redirecting it if there be any reason to believe that the letter would
reach applicant at such new address. If the Office letter was addressed
to an attorney, a letter may be written to the inventor or assignee
informing him or her of the returned letter. The period running against
the application begins with the date of remailing. Ex parte Gourtoff,
1924 C.D. 153, 329 O.G. 536 (Comm'r Pat. 1924).

If the Office is not finally successful in delivering the letter, it is
placed, with the envelope, in the file wrapper. If the period dating
from the remailing elapses with no communication from applicant, the
case is forwarded to the Abandoned Files Repository.

---SECTION---708 Order of Examination

Nonprovisional applications filed in the Patent and Trademark Office and
accepted as complete applications are assigned for examination to the
respective examining groups having the classes of inventions to which
the applications relate. Nonprovisional applications shall be taken up
for examination by the examiner to whom they have been assigned in the
order in which they have been filed except for those applications in
which examination has been advanced pursuant to  37 CFR 1.102. See  37
CFR 1.496 for order of examination of international applications in the
national stage.

Applications which have been acted upon by the examiner, and which have
been placed by the applicant in condition for further action by the
examiner (amended applications) shall be taken up for action in such
order as shall be determined by the Commissioner.

Each examiner will give priority to that application in his or her
docket, whether amended or new, which has the oldest effective U.S.
filing date. Except as rare circumstances may justify Group Directors in
granting individual exceptions, this basic policy applies to all
applications.

The actual filing date of a continuation-in-part application is used for
docketing purposes. However, the examiner may act on a
continuation-in-part application by using the effective filing date, if
desired.

If at any time an examiner determines that the "effective filing date"
status of any application differs from what the records show, the
technical support staff should be informed, who should promptly amend
the records to show the correct status, with the date of correction.

The order of examination for each examiner is to give priority to
reissue applications and to reexamination proceedings, with top priority
to reissue applications in which litigation has been stayed (MPEP
Section  1442.03) and to reexamination proceedings involved in
litigation (MPEP Section  2261), then to those special cases having a
fixed 30-day due date,  such as examiner's answers and decisions on
motions. Most other cases in the "special" category (for example,
interference cases, cases made special by petition, cases ready for
final conclusion, etc.) will continue in this category, with the first
effective U.S. filing date among them normally controlling priority.

All amendments before final rejection should be responded to within two
months of receipt.

---SECTION---708.01 List of Special Cases

37 CFR 1.102 Advancement of examination.

(a) Applications will not be advanced out of turn for examination or for
further action except as provided by this part, or upon order of the
Commissioner to expedite the business of the Office, or upon filing of a
request under paragraph (b) of this section or upon filing a petition
under paragraphs (c) or (d) of this section with a showing which, in the
opinion of the Commissioner, will justify so advancing it.

(b) Applications wherein the inventions are deemed of peculiar
importance to some branch of the public service and the head of some
department of the Government requests immediate action for that reason,
may be advanced for examination.

(c) A petition to make an application special may be filed without a fee
if the basis for the petition is the applicant's age or health or that
the invention will materially enhance the quality of the environment or
materially contribute to the development or conservation of energy
resources.

(d) A petition to make an application special on grounds other than
those referred to in paragraph (c) of this section must be accompanied
by the petition fee set forth in Section  1.17(i).

Certain procedures by the examiners take precedence over actions even on
special cases.

For example, all papers typed and ready for signature should be
completed and mailed.

All issue cases returned with a "Printer Waiting" slip must be processed
and returned within the period indicated.

Reissue applications, particularly those involved in stayed litigation,
should be given priority.

Applications in which practice requires that the examiner act within a
set period, such as 2 months after appellants brief to furnish the
examiner's answers (MPEP Section  1208), necessarily take priority over
special cases without specific time limits.

If an examiner has a case in which he or she is satisfied that it is in
condition for allowance, or in which he or she is satisfied will have to
be finally rejected, he or she should give such action forthwith instead
of making the case await its turn.

The following is a list of special cases (those which are advanced out
of turn for examination):

(A) Applications wherein the inventions are deemed of peculiar
importance to some branch of the public service and when for that reason
the head of some department of the Government requests immediate action
and the Commissioner so orders (37 CFR 1.102).

(B) Applications made special as a result of a petition. (See MPEP
Section  708.02.)

Subject alone to diligent prosecution by the applicant, an application
for patent that has once been made special and advanced out of turn for
examination by reason of a ruling made in that particular case (by the
Commissioner or an Assistant Commissioner) will continue to be special
throughout its entire course of prosecution in the Patent and Trademark
Office, including appeal, if any, to the Board of Patent Appeals and
Interferences.

(C) Applications for reissues, particularly those involved in stayed
litigation (37 CFR 1.176).

(D) Applications remanded by an appellate tribunal for further action.

(E) An application, once taken up for action by an examiner according to
its effective filing date, should be treated as special by an examiner,
art unit or group to which it may subsequently be transferred; exemplary
situations include new cases transferred as the result of a telephone
election and cases transferred as the result of a timely reply to any
official action.

(F) Applications which appear to interfere with other applications
previously considered and found to be allowable, or which will be placed
in interference with an unexpired patent or patents.

(G) Applications ready for allowance, or ready for allowance except as
to formal matters.

(H) Applications which are in condition for final rejection.

(I) Applications pending more than 5 years, including those which, by
relation to a prior United States application, have an effective
pendency of more than 5 years.  See MPEP Section  707.02(a).

(J) Reexamination proceedings,  MPEP Section  2261.

See also MPEP Section  714.13,  Section  1207 and Section  1309.

---SECTION---708.02 Petition To Make Special

37 CFR 1.102 Advancement of examination.

(a) Applications will not be advanced out of turn for examination or for
further action except as provided by this part, or upon order of the
Commissioner to expedite the business of the Office, or upon filing of a
request under paragraph (b) of this section or upon filing a petition
under paragraphs (c) or (d) of this section with a showing which, in the
opinion of the Commissioner, will justify so advancing it.

(b) Applications wherein the inventions are deemed of peculiar
importance to some branch of the public service and the head of some
department of the Government requests immediate action for that reason,
may be advanced for examination.

(c) A petition to make an application special may be filed without a fee
if the basis for the petition is the applicant's age or health or that
the invention will materially enhance the quality of the environment or
materially contribute to the development or conservation of energy
resources.

(d) A petition to make an application special on grounds other than
those referred to in paragraph (c) of this section must be accompanied
by the petition fee set forth in Section  1.17(i).

New applications ordinarily are taken up for examination in the order of
their effective United States filing dates. Certain exceptions are made
by way of petitions to make special, which may be granted under the
conditions set forth below.

I. MANUFACTURE

An application may be made special on the ground of prospective
manufacture upon the filing of a petition accompanied by the fee under
37 CFR 1.17(i) and a statement by the applicant, assignee or an
attorney/agent registered to practice before the PTO alleging:

(A) The possession by the prospective manufacturer of sufficient
presently available capital (stating approximately the amount) and
facilities (stating briefly the nature thereof) to manufacture the
invention in quantity or that sufficient capital and facilities will be
made available if a patent is granted;

If the prospective manufacturer is an individual, there must be a
corroborating statement from some responsible party, as for example, an
officer of a bank, showing that said individual has the required
available capital to manufacture;

(B) That the prospective manufacturer will not manufacture, or will not
increase present manufacture, unless certain that the patent will be
granted;

(C) That the prospective manufacturer obligates himself, herself or
itself, to manufacture the invention, in the United States or its
possessions, in quantity immediately upon the allowance of claims or
issuance of a patent which will protect the investment of capital and
facilities; and

(D) That the applicant or assignee has made or caused to be made a
careful and thorough search of the prior art, or has a good knowledge of
the pertinent prior art.

Applicant must provide one copy of each of the references deemed most
closely related to the subject matter encompassed by the claims if said
references are not already of record.

II. INFRINGEMENT

Subject to a requirement for a further showing as may be necessitated by
the facts of a particular case, an application may be made special
because of actual infringement (but not for prospective infringement)
upon payment of the fee under  37 CFR 1.17(i) and the filing of a
petition accompanied by a statement by the applicant, assignee, or an
attorney/agent registered to practice before the PTO alleging:

(A) That there is an infringing device or product actually on the market
or method in use;

(B) That a rigid comparison of the alleged infringing device, product,
or method with the claims of the application has been made, and that, in
his or her opinion, some of the claims are unquestionably infringed; and

(C) That he or she has made or caused to be made a careful and thorough
search of the prior art or has a good knowledge of the pertinent prior
art.

Applicant must provide one copy of each of the references deemed most
closely related to the subject matter encompassed by the claims if said
references are not already of record.

Models or specimens of the infringing product or that of the application
should not be submitted unless requested.

III. APPLICANT'S HEALTH

An application may be made special upon a petition by applicant
accompanied by any evidence showing that the state of health of the
applicant is such that he might not be available to assist in the
prosecution of the application if it were to run its normal course, such
as a doctor's certificate or other medical certificate.  No fee is
required for such a petition.  See  37 CFR 1.102(c).

IV. APPLICANT'S AGE

An application may be made special upon filing a petition including any
evidence showing that the applicant is 65 years of age, or more, such as
a birth certificate or applicant's statement. No fee is required with
such a petition.  See  37 CFR 1.102(c).

V. ENVIRONMENTAL QUALITY

The Patent and Trademark Office will accord "special" status to all
patent applications for inventions which materially enhance the quality
of the environment of mankind by contributing to the restoration or
maintenance of the basic life-sustaining natural elements, i.e.,  air,
water, and soil.

All applicants desiring to participate in this program should petition
that their applications be accorded "special" status. Such petitions
should be accompanied by statements under  37 CFR 1.102 by the
applicant, assignee, or an attorney/agent registered to practice before
the PTO explaining how the inventions contribute to the restoration or
maintenance of one of these life-sustaining elements. No fee is required
for such a petition. See  37 CFR 1.102(c).

VI. ENERGY

The Patent and Trademark Office will, on petition, accord "special"
status to all patent applications for inventions which materially
contribute to (A) the discovery or development of energy resources, or
(B) the more efficient utilization and conservation of energy resources.
Examples of inventions in category (A) would be developments in fossil
fuels (natural gas, coal, and petroleum), nuclear energy, solar energy,
etc. Category (B) would include inventions relating to the reduction of
energy consumption in combustion systems, industrial equipment,
household appliances, etc.

All applicants desiring to participate in this program should petition
that their applications be accorded "special" status. Such petitions
should be accompanied by statements under  37 CFR 1.102 by the
applicant, assignee, or an attorney/agent registered to practice before
the PTO explaining how the invention materially contributes to category
(A) or (B) set forth above. No fee is required for such a petition,  37
CFR 1.102(c).

VII. INVENTIONS RELATING TO RECOMBINANT DNA

In recent years revolutionary genetic research has been conducted
involving recombinant deoxyribonu cleic acid ("recombinant DNA").
Recombinant DNA research appears to have extraordinary potential benefit
for mankind. It has been suggested, for example, that research in this
field might lead to ways of controlling or treating cancer and
hereditary defects. The technology also has possible applications in
agriculture and industry. It has been likened in importance to the
discovery of nuclear fission and fusion. At the same time, concern has
been expressed over the safety of this type of research. The National
Institutes of Health (NIH) has released guidelines for the conduct of
research concerning recombinant DNA. These "Guidelines for Research
Involving Recombination DNA Molecules," were published in the Federal
Register of July 7, 1976, 41 FR 27902-27943. NIH is sponsoring
experimental work to identify possible hazards and safety practices and
procedures.

In view of the exceptional importance of recombinant DNA and the
desirability of prompt disclosure of developments in the field, the
Patent and Trademark Office will accord "special" status to patent
applications relating to safety of research in the field of recombinant
DNA. Upon appropriate petition and payment of the fee under  37 CFR
1.17(i), the Office will make special patent applications for inventions
relating to safety of research in the field of recombinant DNA.
Petitions for special status should be accompanied by statements under
37 CFR 1.102 by the applicant, assignee, or statements by an
attorney/agent registered to practice before the PTO explaining the
relationship of the invention to safety of research in the field of
recombinant DNA research.  The fee set forth under  37 CFR 1.17(i) must
also be paid.

VIII. SPECIAL EXAMINING PROCEDURE FOR CERTAIN NEW APPLICATIONS -
ACCELERATED EXAMINATION

A new application (one which has not received any examination by the
examiner) may be granted special status provided that applicant (and
this term includes applicant's attorney or agent) complies with each of
the following items:

(A) Submits a petition to make special accompanied by the fee set forth
in  37 CFR 1.17(i);

(B) Presents all claims directed to a single invention, or if the Office
determines that all the claims presented are not obviously directed to a
single invention, will make an election without traverse as a
prerequisite to the grant of special status.

The election may be made by applicant at the time of filing the petition
for special status. Should applicant fail to include an election with
the original papers or petition and the Office determines that a
requirement should be made, the established telephone restriction
practice will be followed.

If otherwise proper, examination on the merits will proceed on claims
drawn to the elected invention.

If applicant refuses to make an election without traverse, the
application will not be further examined at that time. The petition will
be denied on the ground that the claims are not directed to a single
invention, and the application will await action in its regular turn.

Divisional applications directed to the nonelected inventions will not
automatically be given special status based on papers filed with the
petition in the parent case. Each such application must meet on its own
all requirements for the new special status;

(C) Submits a statement(s) that a pre-examination search was made,
listing the field of search by class and subclass, publication, Chemical
Abstracts, foreign patents, etc. A search made by a foreign patent
office satisfies this requirement;

(D) Submits one copy each of the references deemed most closely related
to the subject matter encompassed by the claims if said references are
not already of record; and

(E) Submits a detailed discussion of the references, which discussion
points out, with the particularity required by  37 CFR 1.111 (b) and
(c), how the claimed subject matter is patentable over the references.

In those instances where the request for this special status does not
meet all the prerequisites set forth above, applicant will be notified
and the defects in the request will be stated.  The application will
remain in the status of a new application awaiting action in its regular
turn. In those instances where a request is defective in one or more
respects, applicant will be given one opportunity to perfect the request
in a renewed petition to make special. If perfected, the request will
then be granted. If not perfected in the first renewed petition, any
additional renewed petitions to make special may or may not be
considered at the discretion of the Group Special Program Examiner.

Once a request has been granted, prosecution will proceed according to
the procedure set forth below; there is no provision for "withdrawal"
from this special status.

The special examining procedure of VIII (accelerated examination)
involves the following procedures:

(A) The new application, having been granted special status as a result
of compliance with the requirements set out above will be taken up by
the examiner before all other categories of applications except those
clearly in condition for allowance and those with set time limits, such
as examiner's answers, etc., and will be given a complete first action
which will include allessential matters of merit as to all claims. The
examiner's search will be restricted to the subject matter encompassed
by the claims. A first action rejection will set a 3-month shortened
period for reply.

(B) During the 3-month period for reply, applicant is encouraged to
arrange for an interview with the examiner in order to resolve, with
finality, as many issues as possible. In order to afford the examiner
time for reflective consideration before the interview, applicant or his
or her representative should cause to be placed in the hands of the
examiner at least one working day prior to the interview, a copy
(clearly denoted as such) of the amendment that he proposes to file in
response to the examiner's action. Such a paper will not become a part
of the file, but will form a basis for discussion at the interview.

(C) Subsequent to the interview, or responsive to the examiner's first
action if no interview was had, applicant will file the "record" reply.
The reply at this stage, to be proper, must be restricted to the
rejections, objections, and requirements made. Any amendment which would
require broadening the search field will be treated as an improper
reply.

(D) The examiner will, within 1 month from the date of receipt of
applicant's formal reply, take up the application for final disposition.
This disposition will constitute either a final action which terminates
with the setting of a 3-month period for reply, or a notice of
allowance. The examiner's reply to any amendment submitted after final
rejection should be prompt and by way of form PTOL-303 or PTOL-327, by
passing the case to issue, or by an examiner's answer should applicant
choose to file an appeal brief at this time. The use of these forms is
not intended to open the door to further prosecution. Of course, where
relatively minor issues or deficiencies might be easily resolved, the
examiner may use the telephone to inform the applicant of such.

(E) A personal interview after a final Office action will not be
permitted unless requested by the examiner. However, telephonic
interviews will be permitted where appropriate for the purpose of
correcting any minor outstanding matters.

After allowance, these applications are given top priority for printing.
See MPEP Section  1309.

IX. SPECIAL STATUS FOR PATENT APPLICATIONS RELATING TO SUPERCONDUCTIVITY

In accordance with the President's mandate directing the Patent and
Trademark Office to accelerate the processing of patent applications and
adjudication of disputes involving superconductivity technologies when
requested by the applicant to do so, the Patent and Trademark Office
will, on request, accord "special" status to all patent applications for
inventions involving superconductivity materials. Examples of such
inventions would include those directed to superconductive materials
themselves as well as to their manufacture and application. In order
that the Patent and Trademark Office may implement this procedure, we
invite all applicants desiring to participate in this program to request
that their applications be accorded "special" status. Such requests
should be accompanied by a statement under  37 CFR 1.102 that the
invention involves superconductive materials. No fee is required.

X. INVENTIONS RELATING TO HIV/AIDS AND CANCER

In view of the importance of developing treatments and cures for
HIV/AIDS and cancer and the desirability of prompt disclosure of
advances made in these fields, the Patent and Trademark Office will
accord "special" status to patent applications relating to HIV/AIDS and
cancer.

Applicants who desire that an application relating to HIV/AIDS or cancer
be made special should file a petition and the fee under  37 CFR 1.17(i)
requesting the Patent and Trademark Office to make the application
special.  The petition for special status should be accompanied by a
statement explaining how the invention contributes to the diagnosis,
treatment or prevention of HIV/AIDS or cancer.

XI. INVENTIONS FOR COUNTERING TERRORISM

In view of the importance of developing technologies for countering
terrorism and the desirability of prompt disclosure of advances made in
these fields, the Patent and Trademark Office will accord "special"
status to patent applications relating to counter-terrorism inventions.

International terrorism as defined in  18 U.S.C. 2331 includes
"activities that - (A) involve violent acts or acts dangerous to human
life that are a violation of the criminal laws of the United States or
of any State, or that would be a criminal violation if committed within
the jurisdiction of the United States or of any State; [and] (B) appear
to be intended - (i) to intimidate or coerce a civilian population; (ii)
to influence the policy of a government by intimidation or coercion; or
(iii) to affect the conduct of a government by assassination or
kidnapping..."  The types of technology for countering terrorism could
include, but are not limited to, systems for detecting/identifying
explosives, aircraft sensors/security systems, and vehicular
barricades/disabling systems.

Applicants who desire that an application relating to inventions for
countering terrorism be made special should file a petition with the
petition fee under  37 CFR 1.17(i) requesting the Patent and Trademark
Office to make the application special. The petition for special status
should be accompanied by a statement explaining how the invention
contributes to countering terrorism.

XII. SPECIAL STATUS FOR APPLICATIONS RELATING TO BIOTECHNOLOGY FILED BY
APPLICANTS WHO ARE SMALL ENTITIES

Applicants who are small entities may request that their biotechnology
applications be granted "special" status. Applicant must file a petition
with the petition fee under  37 CFR 1.17(i) requesting the special
status and must:

(A) state that small entity status has been established or include a
statement establishing small entity status;

(B) state that the subject of the patent application is a major asset of
the small entity; and

(C) state that the development of the technology will be significantly
impaired if examination of the patent application is delayed, including
an explanation of the basis for making the statement.

FORMAL REQUIREMENTS OF PETITION TO MAKE SPECIAL

Any petition to make special should:

(A) be in writing; and

(B) identify the application by application number and filing date.

HANDLING OF PETITIONS TO MAKE SPECIAL

Applications which have been made special will be advanced out of turn
for examination and will continue to be treated as special throughout
the entire prosecution in the PTO.

Each petition to make special, regardless of the ground upon which the
petition is based and the nature of the decision, is made of record in
the application file, together with the decision thereon. The part of
the Office that rules on a petition is responsible for properly entering
that petition and the resulting decision in the file record. The
petition, with any attached papers and supporting affidavits, will be
given a single paper number and so entered in the "Contents" of the
file. The decision will be accorded a separate paper number and
similarly entered. To ensure entries in the "Contents" in proper order,
the technical support staff in the examining group will make certain
that all papers prior to a petition have been entered and/or listed in
the application file before forwarding it for consideration of the
petition. Note MPEP Section  1002.02 (s).

Petitions to make special are decided by the Special Program Examiner of
the patent examining group to which the application is assigned.

---SECTION---708.03 Examiner Tenders Resignation

Whenever an examiner tenders his or her resignation, the supervisory
patent examiner should see that the remaining time as far as possible is
used in winding up the old complicated cases or those with involved
records and getting as many of his or her amended cases as possible
ready for final disposition.

If the examiner has considerable experience in his or her particular
art, it is also advantageous to the Office if he or she indicates (in
pencil) in the file wrappers of application in his or her docket, the
field of search or other pertinent data that he or she considers
appropriate.

---SECTION---709 Suspension of Action

37 CFR 1.103 Suspension of action.

(a) Suspension of action by the Office will be granted for good and
sufficient cause and for a reasonable time specified upon petition by
the applicant and, if such cause is not the fault of the Office, the
payment of the fee set forth in Section  1.17(i).  Action will not be
suspended when a reply by applicant to an Office action is required.

(b) If action by the Office on an application is suspended when not
requested by the applicant, the applicant shall be notified of the
reasons thereof.

(c) Action on applications in which the Office has accepted a request to
publish a defensive publication will be suspended for the entire
pendency of these applications except for purposes relating to patent
interference proceeding under Subpart E.

(d) Action on applications in which the Office has accepted a request to
publish a defensive publication will be suspended for the entire
pendency of these applications except for purposes relating to patent
interference proceedings under Subpart E.

Suspension of action (37 CFR 1.103) should not be confused with
extension of time for reply (37 CFR 1.136). It is to be noted that a
suspension of action applies to an impending Office action by the
examiner whereas an extension of time for reply applies to action by the
applicant. In other words, the action cannot be suspended in an
application which contains an outstanding Office action or requirement
awaiting reply by the applicant.  It is only the action by the examiner
which can be suspended under  37 CFR 1.103.

A request that action in an application be delayed will be granted only
under the provisions of  37 CFR 1.103, which provides for "Suspension of
Action." A petition for suspension of action must be presented as a
separate paper accompanied by the petition fee, must request a specific
and reasonable period of suspension not greater than 6 months, and must
present good and sufficient reasons why the suspension is necessary. If
the requirements of  37 CFR 1.103 are not met, applicants should except
that their applications, whether new or amended, will be taken up for
action by the examiner in order provided in MPEP Section  708, Order of
Examination.

A petition for suspension of action to allow applicant time to submit an
information disclosure statement will be denied as failing to present
good and sufficient reasons, since  37 CFR 1.97 provides adequate
recourse for the timely submission of prior art for consideration by the
examiner.

In new applications, the mere inclusion in the transmittal form letter
of a request that action be delayed cannot be relied upon to avoid
immediate action in the application. Many group art units and examiners
have short pendency to first action, and new applications may be taken
up for action before preliminary amendments are filed in those
applications. Where a preliminary amendment and petition to suspend
action have been filed, it would be helpful to telephone the examiner in
that regard to avoid having the amendment and the first office action
cross in the mail.

37 CFR 1.103(b) provides for a suspension of Office action by the
examiner on his or her own initiative, as in MPEP Section  709.01 and
Section  2315.01. The primary examiner may grant an initial suspension
of action for a maximum period of 6 months. This time limitation applies
to both suspensions granted at the request of the applicant and
suspensions imposed sua sponte by the examiner. Any second or subsequent
suspension of action in patent applications under  37 CFR 1.103 are
decided by the Group Director.  See MPEP Section  1003.

Suspension of action under  37 CFR 1.103(c) is decided by the Director
of Group 3640.

The following form paragraphs should be used in actions relating to
suspension of action.

7.52 Suspension of Action, Awaiting New Reference

A reference relevant to the examination of this application may soon
become available. Ex parte prosecution is SUSPENDED FOR A PERIOD OF 
[1] MONTHS from the mailing date of this letter.  Upon expiration of the
period of suspension, applicant should make an inquiry as to the status
of the application.

Examiner Note:

1. Maximum period for suspension is six months.

2. The Group Director must approve all second or subsequent suspensions,
see MPEP Section  1003.

7.53 Suspension of Action, Possible Interference

All claims are allowable.  However, due to a potential interference, ex
parte prosecution is SUSPENDED FOR A PERIOD OF [1] MONTHS from the
mailing date of this letter.  Upon expiration of the period of
suspension, applicant should make an inquiry as to the status of the
application.

Examiner Note:

1. Maximum period for suspension is 6 months.

2. The Group Director must approve all second or subsequent suspensions,
see MPEP Section  1003.

3. Director's approval must appear on the letter granting any second or
subsequent suspension.

7.54 Suspension of Action, Applicant's Request

Pursuant to applicant's request filed on   [1], action by the Office is
suspended on this application under  37 CFR 1.103(a) for a period of 
[2] months.  At the end of this period, applicant is required to notify
the examiner and request continuance of prosecution or a further
suspension.  See MPEP Section  709.

Examiner Note:

1. Maximum period for suspension is 6 months.

2. Only the Group Director can grant second or subsequent suspensions,
see MPEP Section  1003.  Such approval must appear on the Office letter.

7.56 Request for Suspension, Denied, Outstanding Office Action

Applicant's request filed [1], for suspension of action in this
application under  37 CFR 1.103(a), is denied as being improper.  Action
cannot be suspended in an application awaiting a reply by the applicant.
See MPEP Section  709.

---SECTION---709.01 Overlapping Applications by Same Applicant or Owned
by Same Assignee

Examiners should not consider ex parte, when raised by an applicant,
questions which are pending before the Office in inter partes
proceedings involving the same applicant.  See Ex parte Jones, 1924 C.D.
59, 327 O.G. 681 (Comm'r Pat. 1924).

Because of this, where one of several applications of the same inventor
which contain overlapping claims gets into an interference, it was
formerly the practice to suspend action by the Office on the
applications not in the interference in accordance with Ex parte
McCormick, 1904 C.D. 575, 113 O.G. 2508 (Comm'r Pat 1924).

However, the better practice would appear to be to reject claims in an
application related to another application in interference over the
counts of the interference and in the event said claims are not canceled
in the outside application, prosecution of said application should be
suspended pending the final determination of priority in the
interference.

If, on the other hand, applicant wishes to prosecute the outside
application, and presents good reasons in support, prosecution should be
continued.   Ex parte Bullier, 1899 C.D. 155, 88 O.G. 1161 (Comm'r Pat
1899); In re Seebach, 88 F.2d 722, 33 USPQ 149 (CCPA 1937); In re
Hammell, 332 F.2d 796, 141 USPQ 832 (CCPA 1964).  See MPEP Section
804.03.

---SECTION---710 Period for Reply

35 U.S.C. 133 Time for prosecuting application.

Upon failure of the applicant to prosecute the application within six
months after any action therein, of which notice has been given or
mailed to the applicant, or within such shorter time, not less than
thirty days, as fixed by the Commissioner in such action, the
application shall be regarded as abandoned by the parties thereto,
unless it be shown to the satisfaction of the Commissioner that such
delay was unavoidable.

35 U.S.C. 267 Time for taking action in Government applications.

Notwithstanding the provisions of sections 133 and 151 of this title,
the Commissioner may extend the time for taking any action to three
years, when an application has become the property of the United States
and the head of the appropriate department or agency of the Government
has certified to the Commissioner that the invention disclosed therein
is important to the armament or defense of the United States.

See MPEP Chapter 1200 for period for reply when appeal is taken or court
review sought.

Extension of time under  35 U.S.C. 267 is decided by the Director of
Group 3640.

---SECTION---710.01 Statutory Period

37 CFR 1.135 Abandonment for failure to reply within time period.

(a) If an applicant of a patent application fails to reply within the
time period provided under Section  1.134 and Section  1.136, the
application will become abandoned unless an Office action indicates
otherwise.

(b) Prosecution of an application to save it from abandonment pursuant
to paragraph (a) of this section must include such complete and proper
reply as the condition of the application may require.  The admission
of, or refusal to admit, any amendment after final rejection or any
amendment not responsive to the last action, or any related proceedings,
will not operate to save the application from abandonment.

(c) When reply by the applicant is a bona fide attempt to advance the
application to final action, and is substantially a complete reply to
the non-final Office action, but consideration of some matter or
compliance with some requirement has been inadvertently omitted,
applicant may be given a new time period for reply under Section  1.134
to supply the omission.

The maximum statutory period for reply to an Office action is 6 months,
35 U.S.C. 133. Shortened periods are currently used in practically all
cases, see MPEP Section  710.02(b).

37 CFR 1.135 provides that if no reply is filed within the time set in
the Office action under  37 CFR 1.134 or as it may be extended under  37
CFR 1.136, the application will be abandoned unless an Office action
indicates that another consequence, such as disclaimer, will take place.

37 CFR 1.135(b) has been amended to clarify that:  (A) the admission of,
or refusal to admit, any amendment after final rejection, or any related
proceedings, will not operate to save the application from abandonment;
and (B) the admission of, or refusal to admit, any amendment not
responsive to the last action, or any related proceedings, will not
operate to save the application from abandonment.

37 CFR 1.135(c) has been amended to change the practice of providing a
non-statutory time limit (generally 1 month) during which an applicant
may supply an omission to a previous reply. Under the new practice, the
examiner may set a shortened statutory time period (generally 1 month)
during which an applicant must supply the omission to the previous reply
to avoid abandonment.

The prior practice under  37 CFR 1.135(c) was to set a time limit during
which the applicant could supply the omission to the previous reply.
Failure to supply the omission resulted in the abandonment of the
application as of the due date for the previous reply. Filing a new
application during the time limit, but beyond the due date for the
previous reply, could have caused a loss of patent rights due to the
lack of copendency between the applications.

37 CFR 1.135(c) now authorizes the examiner to accept a reply to a
non-final Office action that is bona fide and is substantially complete
but for an inadvertent omission as an adequate reply to avoid
abandonment under  35 U.S.C. 133 and  37 CFR 1.135.  When a bona fide
attempt to reply includes an inadvertent omission that precludes action
on the merits of the application (e.g., an amendment is unsigned or
improperly signed, or presents an amendment with additional claims so as
to require additional fees pursuant to  37 CFR 1.16(b), (c), or (d)),
the examiner may consider that reply adequate to avoid abandonment under
35 U.S.C. 133 and  37 CFR 1.135, and give the applicant a shortened
statutory time period of 1 month to correct the omission (e.g  .,
provide a duplicate paper or ratification, or submit the additional
claims fees or cancel the claims so that no fee is due).  The failure to
timely supply the omission will result in abandonment under  35 U.S.C.
133 and  37 CFR 1.135.  Extensions of time under  37 CFR 1.136(a) or (b)
will be available, unless the action setting the shortened statutory
period indicates otherwise.

When a bona fide attempt to reply includes an omission that does not
preclude action on the merits of the application (e.g  ., a reply fails
to address a rejection or objection), the examiner may waive the
deficiency in the reply and act on the application. The examiner may
repeat and make final the rejection, objection, or requirement that was
the subject of the omission. Thus, a reply to a non-final Office action
that is bona fide but includes an omission may be treated by:  (A)
issuing an Office action that does not treat the reply on its merits but
requires the applicant to supply the omission to avoid abandonment; or
(B) issuing an Office action that does treat the reply on its merits
(and which can also require the applicant to supply the omission to
avoid abandonment).

Finally, whether a 1-month shortened statutory time period is provided
to the applicant to supply the omission to the previous reply is within
the discretion of the examiner. Where the examiner determines that the
omission was not inadvertent (e.g  ., the applicant is abusing the
provisions of  37 CFR 1.135(c) to gain additional time to file a proper
reply or to delay examination of the application), the examiner should
notify the applicant of the omission in the reply and advise the
applicant that the omission to the previous reply must be supplied
within the period for reply to the prior action, including extensions of
time under  37 CFR 1.136(a), if permitted.  See also MPEP Section
714.03.

---SECTION---710.01(a) Statutory Period, How Computed

The actual time taken for reply is computed from the date stamped or
printed on the Office action to the date of receipt by the Office of
applicant's reply. No cognizance is taken of fractions of a day and
applicant's reply is due on the corresponding day of the month 6 months
or any lesser number of months specified after the Office action.

For example, reply to an Office action with a 3-month shortened
statutory period, dated November 30 is due on the following February 28
(or 29 if it is a leap year), while a reply to an Office action dated
February 28 is due on May 28 and not on the last day of May.   Ex parte
Messick, 7 USPQ 57 (Comm'r Pat. 1930) .

A 1-month extension of time extends the time for reply to the date
corresponding to the Office action date in the following month. For
example, a reply to an Office action mailed on January 31 with a 3-month
shortened statutory period would be due on April 30.  If a 1-month
extension of time were given, the reply would be due by May 31.  The
fact that April 30 may have been a Saturday, Sunday, or Federal holiday
has no effect on the extension of time. Where the period for reply is
extended by some time period other than "1-month" or an even multiple
thereof, the person granting the extension should indicate the date upon
which the extended period for reply will expire.

When a timely reply is ultimately not filed, the application is regarded
as abandoned after midnight of the date the period for reply expired. In
the above example where May 31 is not a Saturday, Sunday, or Federal
holiday and no further extensions of time are obtained prior to the end
of the 6-month statutory period, the application would be abandoned as
of June 1. The fact that June 1 may be a Saturday, Sunday, or Federal
holiday does not change the abandonment date since the reply was due on
May 31, a business day. See MPEP Section  711.04(a) regarding the
pulling and forwarding of abandoned applications.

A 30-day period for reply in the Office means 30 calendar days including
Saturdays, Sundays, and federal holidays. However, if the period ends on
a Saturday, Sunday, or Federal holiday, the reply is timely if it is
filed on the next succeeding business day. If the period for reply is
extended, the time extended is added to the last calendar day of the
original period, as opposed to being added to the day it would have been
due when said last day is a Saturday, Sunday, or Federal holiday.

The date of receipt of a reply to an Office action is given by the
"Office date" stamp which appears on the reply paper.

In some cases the examiner's letter does not determine the beginning of
a statutory reply period. In all cases where the statutory reply period
runs from the date of a previous action, a statement to that effect
should be included.

Since extensions of time are available pursuant to  37 CFR 1.136(a), it
is incumbent upon applicants to recognize the date for reply so that the
proper fee for any extension will be submitted. Thus, the date upon
which any reply is due will normally be indicated only in those
instances where the provisions of  37 CFR 1.136(a) are not available.
See MPEP Chapter 2200 for reexamination proceedings.

---SECTION---710.02 Shortened Statutory Period and Time Limit Actions
Computed

37 CFR 1.136 Extensions of time.

(a)(1)  If an applicant is required to reply within a nonstatutory or
shortened statutory time period, applicant may extend the time period
for reply up to the earlier of the expiration of any maximum period set
by statute or five months after the time period set for reply, if a
petition for an extension of time and the fee set in Section  1.17(a)
are filed, unless:

(i) Applicant is notified otherwise in an Office action;

(ii) The reply is a reply brief submitted pursuant to Section  1.193(b);

(iii) The reply is a request for an oral hearing submitted pursuant to
Section  1.194(b);

(iv) The reply is to a decision by the Board of Patent Appeals and
Interferences pursuant to Section  1.196, Section  1.197 or Section
1.304; or

(v) The application is involved in an interference declared pursuant to
Section  1.611.

(2) The date on which the petition and the fee have been filed is the
date for purposes of determining the period of extension and the
corresponding amount of the fee. The expiration of the time period is
determined by the amount of the fee paid.  A reply must be filed prior
to the expiration of the period of extension to avoid abandonment of the
application (Section  1.135), but in no situation may an applicant reply
later than the maximum time period set by statute, or be granted an
extension of time under paragraph (b) of this section when the
provisions of this paragraph are available.  See Section  1.136(b) for
extensions of time relating to proceedings pursuant to Section Section
1.193(b), 1.194, 1.196 or 1.197; Section  1.304 for extension of time to
appeal to the U.S. Court of Appeals for the Federal Circuit or to
commence a civil action; Section  1.550(c) for extension of time in
reexamination proceedings; and Section  1.645 for extension of time in
interference proceedings.

(3) A written request may be submitted in an application that is an
authorization to treat any concurrent or future reply, requiring a
petition for an extension of time under this paragraph for its timely
submission, as incorporating a petition for extension of time for the
appropriate length of time. An authorization to charge all required
fees, fees under Section  1.17, or all required extension of time fees
will be treated as a constructive petition for an extension of time in
any concurrent or future reply requiring a petition for an extension of
time under this paragraph for its timely submission.  Submission of the
fee set forth in Section  1.17(a) will also be treated as a constructive
petition for an extension of time in any concurrent reply requiring a
petition for an extension of time under this paragraph for its timely
submission.

(b) When a reply cannot be filed within the time period set for such
reply and the provisions of paragraph (a) of this section are not
available, the period for reply will be extended only for sufficient
cause and for a reasonable time specified.  Any request for an extension
of time under this paragraph must be filed on or before the day on which
such reply is due, but the mere filing of such a request will not effect
any extension under this paragraph.  In no situation can any extension
carry the date on which reply is due beyond the maximum time period set
by statute.  See Section  1.304 for extension of time to appeal to the
U.S. Court of Appeals for the Federal Circuit or to commence a civil
action; Section  1.645 for extension of time in interference
proceedings; and Section  1.550(c) for extension of time in
reexamination proceedings.

37 CFR 1.136 implements  35 U.S.C. 41(a)(8) which directs the
Commissioner to charge fees for extensions of time to take action in
patent applications.

Under  37 CFR 1.136 (35 U.S.C. 133) an applicant may be required to
reply in a shorter period than 6 months, not less than 30 days.  Some
situations in which shortened periods for reply are used are listed in
MPEP Section  710.02(b).

In other situations, for example, the rejection of a copied patent
claim, the examiner may require applicant to reply on or before a
specified date. These are known as time limit actions and are
established under authority of  35 U.S.C. 6.  Some situations in which
time limits are set are noted in MPEP Section  710.02(c). The time limit
requirement should be typed in capital letters where required.

An indication of a shortened time for reply should appear prominently on
the first page of all copies of actions in which a shortened time for
reply has been set so that a person merely scanning the action can
easily see it.

Shortened statutory periods are subject to the provisions of  37 CFR
1.136(a) unless applicant is notified otherwise in an Office action.
See MPEP Section  710.02(e) for a discussion of extensions of time. See
Chapter 2200 for reexamination proceedings.

---SECTION---710.02(b) Shortened Statutory Period: Situations In Which
Used

Under the authority given him by  35 U.S.C. 133, the Commissioner has
directed the examiner to set a shortened period for reply to every
action. The length of the shortened statutory period to be used depends
on the type of reply required. Some specific cases of shortened
statutory periods for reply are given below.  These periods may be
changed under special, rarely occurring circumstances.

A shortened statutory period may not be less than 30 days (35 U.S.C.
133).

 1 MONTH (NOT LESS THAN 30 DAYS)

(A) Requirement for restriction or election of species only (no action
on the merits) ...... MPEP Section  809.02(a) and Section  817.

(B) When a reply by an applicant for a nonfinal Office action is bona
fide but includes an inadvertent omission, the examiner may set a 1
month (not less than 30 days) shortened statutory time period to correct
the omission ....  MPEP Section  710.01 and Section  714.03.

 2 MONTHS

(A) Winning party in a terminated interference to reply to an unanswered
Office action ...... MPEP Section  2363.02.

Where, after the termination of an interference proceeding, the
application of the winning party contains an unanswered Office action,
final rejection or any other action, the primary examiner notifies the
applicant of this fact. In this case reply to the Office action is
required within a shortened statutory period running from the date of
such notice. See Ex parte Peterson, 49 USPQ 119, 1941 C.D. 8, 525 O.G. 3
(Comm'r Pat. 1941).

(B) To reply to an   Ex parte Quayle Office action ......... MPEP
Section  714.14.

When an application is in condition for allowance, except as to matters
of form, such as correction of the specification, a new oath, etc., the
application will be considered special and prompt action taken to
require correction of formal matters. Such action should include an
indication on the Office Action Summary form PTOL-326 that prosecution
on the merits is closed in accordance with the decision in Ex parte
Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). A 2-month shortened
statutory period for reply should be set.

(C) Multiplicity rejection - no other rejection ........ MPEP Section
2173.05(n).

 3 MONTHS

To reply to any Office action on the merits.

PERIOD FOR REPLY RESTARTED

Incorrect citation by examiner - regardless of time remaining in
original period ....  MPEP Section  710.06.

---SECTION---710.02(c) Specified Time Limits: Situations In Which Used

There are certain situations in which the examiner specifies a time for
the applicant to take some action, and the applicant's failure to timely
take the specified action results in a consequence other than
abandonment.  Situations in which a specified time limit for taking an
action is set are as follows:

(A) Where a member of the public files a petition under  37 CFR 1.14(e)
for access to an application, the PTO may give the applicant a specified
time (usually 3 weeks) within which to state any objections to the
granting of the petition for access and the reasons why it should be
denied. The failure to timely reply will not affect the prosecution of
the application (assuming that it is still pending), but will result in
the PTO rendering a decision on the petition for access without
considering any objections by the applicant.  See MPEP Section  103.

(B) Where an information disclosure statement complies with the
requirements set forth in  37 CFR 1.97 (including the requirement for
fees or statement under  37 CFR 1.97(e) based upon the time of filing),
but part of the content requirement of  37 CFR 1.98 has been
inadvertently omitted, the examiner may set a 1-month time limit for
completion of the information disclosure statement.  The failure to
timely comply will not result in abandonment of the application, but
will result in the information disclosure statement being placed in the
application file with the noncomplying information not being considered.
See MPEP Section  609.

(C) Where an application is otherwise allowable but contains a traverse
of a restriction requirement, the applicant may be given a specified
time (e.g., a 1-month time limit) to cancel claims to the nonelected
invention or species or take other appropriate action (i.e., petition
the restriction requirement under  37 CFR 1.144). The failure to timely
file a petition under  37 CFR 1.144 (or cancel the claims to the
nonelected invention or species) will not result in abandonment of the
application, but will be treated as authorization to cancel the claims
to the non-elected invention or species, and the application will be
passed to issue.  See  37 CFR 1.141 and 1.144, and MPEP Section
809.02(c) and Section  821.01.

(D) A portion of  37 CFR 1.605(a) provides that in suggesting claims for
interference:

The applicant to whom the claim is suggested shall amend the application
by presenting the suggested claim within a time specified by the
examiner, not less than one month.  Failure or refusal of an applicant
to timely present the suggested claim shall be taken without further
action as a disclaimer by the applicant of the invention defined by the
suggested claim.

The failure to timely present the suggested claim will not result in
abandonment of the application, but will be treated as a disclaimer by
the applicant of the invention defined by the suggested claim.  See MPEP
Section  2305.02.

Where the failure to take the specified action may result in abandonment
(e.g., filing a new complete appeal brief correcting the deficiencies in
a prior appeal brief), a time period should be set for taking the
specified action.  Where the condition of the application requires that
such action not be subject to extensions under  37 CFR 1.136, the action
should specify that the provisions of  37 CFR 1.136 (or 1.136(a)) do not
apply to the time period for taking action (i.e  ., a specified time
limit should not be set simply to exclude the possibility of extending
the period for reply under  37 CFR 1.136).

---SECTION---710.02(d) Difference Between Shortened Statutory Periods
for Reply and Specified Time Limits

Examiners and applicants should not lose sight of the distinction
between a specified time for a particular action and a shortened
statutory period for reply under  35 U.S.C. 133:

(A) The penalty attaching to failure to take a particular action within
a specified time is a loss of rights in regard to the particular matter
(e.g  ., the failure to timely copy suggested claims results in a
disclaimer of the involved subject matter). On the other hand, a failure
to reply within the set statutory period under  35 U.S.C. 133 results in
abandonment of the entire application. Abandonment of an application is
not appealable, but a petition to revive may be granted if the delay was
unavoidable (37 CFR 1.137(a)) or unintentional (37 CFR 1.137(b)).

(B) As a specified time or time limit is not a shortened statutory
period under  35 U.S.C. 133, the Office may specify a time for taking
action (or a time limit) of less than the 30 day minimum specified in
35 U.S.C. 133.  See MPEP Section  103.

(C) Where an applicant replies a day or two after the specified time,
the delay may be excused by the examiner if satisfactorily explained.
The examiner may use his or her discretion to request an explanation for
the delay if the reason for the delay is not apparent from the reply. A
reply 1 day late in an application carrying a shortened statutory period
under  35 U.S.C. 133, no matter what the excuse, results in abandonment.
Extensions of the statutory period under  35 U.S.C. 133 may be obtained
under  37 CFR 1.136, provided the extension does not go beyond the
6-month statutory period from the date of the Office action (35 U.S.C.
133).

The 2-month time period for filing an appeal brief on appeal to the
Board of Patent Appeals and Interferences (37 CFR 1.192(a)) and the
1-month time period for filing a new appeal brief to correct the
deficiencies in a defective appeal brief (37 CFR 1.192(d)) are time
periods, but are not (shortened) statutory periods for reply set
pursuant to  35 U.S.C. 133. Thus, these periods are, unless otherwise
provided, extendable by up to 5 months under  37 CFR 1.136(a), and, in
an exceptional situation, further extendable under  37 CFR 1.136(b)
(i.e., these periods are not   statutory periods subject to the 6-month
maximum set in  35 U.S.C. 133).  In addition, the failure to file an
appeal brief (or a new appeal brief) within the time period set in  37
CFR 1.192(a) (or (d)) results in dismissal of the appeal.  The dismissal
of an appeal results in abandonment, unless there is any allowed
claim(s) (see MPEP Section  1215.04), in which case the examiner should
cancel the nonallowed claims and issue the application.

---SECTION---710.02(e) Extension of Time

37 CFR 1.136 Extensions of time.

(a)(1) If an applicant is required to reply within a nonstatutory or
shortened statutory time period, applicant may extend the time period
for reply up to the earlier of the expiration of any maximum period set
by statute or five months after the time period set for reply, if a
petition for an extension of time and the fee set in Section  1.17(a)
are filed, unless:

(i) Applicant is notified otherwise in an Office action;

(ii) The reply is a reply brief submitted pursuant to Section  1.193(b);

(iii) The reply is a request for an oral hearing submitted pursuant to
Section  1.194(b);

(iv) The reply is to a decision by the Board of Patent Appeals and
Interferences pursuant to Section  1.196, Section  1.197 or Section
1.304; or

(v) The application is involved in an interference declared pursuant to
Section  1.611.

(2) The date on which the petition and the fee have been filed is the
date for purposes of determining the period of extension and the
corresponding amount of the fee. The expiration of the time period is
determined by the amount of the fee paid.  A reply must be filed prior
to the expiration of the period of extension to avoid abandonment of the
application (Section  1.135), but in no situation may an applicant reply
later than the maximum time period set by statute, or be granted an
extension of time under paragraph (b) of this section when the
provisions of this paragraph are available.  See Section  1.136(b) for
extensions of time relating to proceedings pursuant to Section Section
1.193(b), 1.194, 1.196 or 1.197; Section  1.304 for extension of time to
appeal to the U.S. Court of Appeals for the Federal Circuit or to
commence a civil action; Section  1.550(c) for extension of time in
reexamination proceedings; and Section  1.645 for extension of time in
interference proceedings.

(3) A written request may be submitted in an application that is an
authorization to treat any concurrent or future reply, requiring a
petition for an extension of time under this paragraph for its timely
submission, as incorporating a petition for extension of time for the
appropriate length of time. An authorization to charge all required
fees, fees under Section  1.17, or all required extension of time fees
will be treated as a constructive petition for an extension of time in
any concurrent or future reply requiring a petition for an extension of
time under this paragraph for its timely submission.  Submission of the
fee set forth in Section  1.17(a) will also be treated as a constructive
petition for an extension of time in any concurrent reply requiring a
petition for an extension of time under this paragraph for its timely
submission.

(b) When a reply cannot be filed within the time period set for such
reply and the provisions of paragraph (a) of this section are not
available, the period for reply will be extended only for sufficient
cause and for a reasonable time specified.  Any request for an extension
of time under this paragraph must be filed on or before the day on which
such reply is due, but the mere filing of such a request will not effect
any extension under this paragraph.  In no situation can any extension
carry the date on which reply is due beyond the maximum time period set
by statute.  See Section  1.304 for extension of time to appeal to the
U.S. Court of Appeals for the Federal Circuit or to commence a civil
action; Section  1.645 for extension of time in interference
proceedings; and Section  (c) for extension of time in reexamination
proceedings.

37 CFR 1.136 provides for two distinct procedures to extend the period
for action or reply in particular situations. The procedure which is
available for use in a particular situation will depend upon the
circumstances.  37 CFR 1.136(a) permits an applicant to file a petition
for extension of time and a fee as set forth in  37 CFR 1.17(a) up to 5
months after the end of the time period set to take action except:

(A) where prohibited by statute,

(B) where prohibited by one of the items listed in the rule, or

(C) where applicant has been notified otherwise in an Office action.

The petition and fee must be filed within the extended time period for
reply requested in the petition and can be filed prior to, with, or
without the reply. The filing of the petition and fee will extend the
time period to take action up to 5 months dependent on the amount of the
fee paid except in those circumstances noted above.  37 CFR 1.136(a)
will effectively reduce the amount of paperwork required by applicants
and the Office since the extension will be effective upon filing of the
petition and payment of the appropriate fee and without acknowledgment
or action by the Office and since the petition and fee can be filed with
or without the reply. 37 CFR 1.136(b) provides for requests for
extensions of time upon a showing of sufficient cause when the procedure
of  37 CFR 1.136(a) is not available. Although the petition and fee
procedure of  37 CFR 1.136(a) will normally be available within 5 months
after a set period for reply has expired, an extension request for cause
under  37 CFR 1.136(b) must be filed during the set period for reply.
Extensions of time in interference proceedings are governed by  37 CFR
1.645.

It should be very carefully noted that neither the primary examiner nor
the Commissioner has authority to extend the shortened statutory period
unless a petition for the extension is filed. While the shortened period
may be extended within the limits of the statutory 6 months period, no
extension can operate to extend the time beyond the 6 months.

Any request under  37 CFR 1.136(b) for extension of time for reply must
state a reason in support thereof. Such extensions will only be granted
for sufficient cause and must be filed prior to the end of the set
period for reply.

Extensions of time with the payment of a fee pursuant to  37 CFR 1.136
are possible in reply to most Office actions of the examiner.
Exceptions include:

(A) all extensions in a reexamination proceeding (see  37 CFR 1.550(c)
and MPEP Section  2265);

(B) all extensions during an interference proceeding (but not
preparatory to an interference where a claim is suggested for
interference);

(C) those specific situations where an Office action states that the
provisions of  37 CFR 1.136(a) are not applicable (e.g., in reissue
applications associated with litigation, or where an application in
allowable condition has nonelected claims and time is set to cancel such
claims); and

(D) those limited instances where applicant is given a specified time
limit to take certain actions.

The fees for extensions of time are set forth in  37 CFR 1.17(a) and are
subject to a 50% reduction for persons or concerns qualifying as small
entities. The fees itemized at  37 CFR 1.17(a) are cumulative. Thus, if
an applicant has paid an extension fee in the amount set forth in  37
CFR 1.17(a)(l) for a 1-month extension of time and thereafter decides
that an additional 1 month is needed, the proper fee would be the amount
set forth in  37 CFR 1.17(a)(2) less the amount set forth in  37 CFR
1.17(a)(l) which was previously paid.

37 CFR 1.136(a)(3) provides that:

(A) a written request may be submitted in an application that is an
authorization to treat any concurrent or future reply that requires a
petition for an extension of time under  37 CFR 1.136(a) to be timely,
as incorporating a petition for extension of time for the appropriate
length of time;

(B) an authorization to charge all required fees, fees under  37 CFR
1.17, or all required extension of time fees will be treated as a
constructive petition for an extension of time in any concurrent or
future reply requiring a petition for an extension of time under  37 CFR
1.136(a) to be timely; and

(C) submission of the fee set forth in  37 CFR 1.17(a) will be treated
as a constructive petition for an extension of time in any concurrent
reply requiring a petition for an extension of time under  37 CFR
1.136(a) to be timely.

This is a change in practice, in that applicants were previously
required to file a petition (some writing that manifested an intent to
obtain an extension of time) in reply to the Office action for which the
extension was requested.

37 CFR 1.136(a)(3) is a "safety net" to avoid a potential loss of patent
rights for applicants who inadvertently omitted a petition, but who had:

(A) previously filed a written request to treat a reply requiring an
extension of time as incorporating a petition for such extension of
time;

(B) previously filed an authorization to charge all required fees, fees
under  37 CFR 1.17, or all required extension of time fees; or

(C) submitted the fee set forth in  37 CFR 1.17(a) with the reply.

The Office strongly recommends including a written petition for any
desired extension of time in reply to the Office action for which the
extension was requested to avoid processing delays.

A proper petition may be a mere sentence such as

The applicant herewith petitions the Commissioner of Patents and
Trademarks to extend the time for reply to the Office action dated ____
for ____ month(s) from ____  to ____ .  Submitted herewith is a check
for  $____ to cover the cost of the extension [Please Charge my deposit
account number  ____ , in the amount of $ ____  to cover the cost of the
extension. Any deficiency or overpayment should be charged or credited
to the above numbered deposit account.]

37 CFR 1.136(a)(2) provides, in part, that "[t]he date on which the
petition and the fee have been filed is the date for purposes of
determining the period of extension and the corresponding amount of the
fee." Thus, a petition under  37 CFR 1.136(a) need not be accompanied by
a reply (e.g ., in situations in which the extension is necessary for
copendency with a continuing application). 37 CFR 1.136(a)(2), however,
clarifies that "[a] reply must be filed prior to the expiration of the
period of extension to avoid abandonment of the application" under  35
U.S.C. 133 and  37 CFR 1.135 (e.g., where the extension is obtained
solely for the purpose of copendency with a continuing application, and
no reply is filed, the application will become abandoned upon expiration
of the so-extended period for reply).

To facilitate processing, any petition for an extension of time (or
petition to revive under  37 CFR 1.137) in which a continuing
application is filed in lieu of a reply should specifically refer to the
filing of the continuing application and also should include an express
abandonment of the prior application conditioned upon the granting of
the petition and the granting of a filing date to the continuing
application.

Applicants are cautioned that an extension of time will not be effected
in the prior application by filing a petition for an extension of time,
extension fee, or fee authorization, in the continuing application. This
is because the petition for an extension of time (or constructive
petition under  37 CFR 1.136(a)(3)) must be directed toward and filed in
the application to which it pertains in accordance with  37 CFR 1.4 and
1.5.

Where a reply is filed after the set period for reply has expired and no
petition or fee accompanies it, the reply will not be accepted as timely
until the petition (which may be a constructive petition under  37 CFR
1.136(a)(3)) and the appropriate fee are submitted. For example, if an
Office action sets a 3-month period for reply and applicant replies in
the 4th month and includes only the petition for a 1-month extension of
time, the reply is not acceptable until the fee is filed. If the fee is
not filed until the 5th month, an additional fee for the 2nd month
extension would also be required in order to render the reply timely.

An extension of time under  37 CFR 1.136 is not necessary when
submitting a supplemental reply to an Office action if a complete first
reply was timely filed in reply to the Office action.

When the provisions of  37 CFR 1.136(a) are not applicable, extensions
of time for cause pursuant to  37 CFR 1.136(b) are possible. Any such
extension must be filed on or before the day on which the reply is due.
The mere filing of such a request will not effect any extension. All
such requests are to be decided by the Group Director. No extension can
operate to extend the time beyond the 6-month statutory period.

If a request for extension of time under  37 CFR 1.136(b) is filed in
duplicate and accompanied by a stamped return-addressed envelope, the
Office will indicate the action taken on the duplicate and return it
promptly in the envelope. Utilization of this procedure is optional on
the part of applicant. In this procedure, the action taken on the
request should be noted on the original and on the copy which is to be
returned. The notation on the original, which becomes a part of the file
record, should be signed by the person granting or denying the
extension, and the name and title of that person should also appear in
the notation on the copy which is returned to the person requesting the
extension.

When the request is granted, no further action by the Office is
necessary. When the request is granted in part, the extent of the
extension granted will be clearly indicated on both the original and on
the copy which is to be returned. When the request is denied, the reason
for the denial will be indicated on both the original and on the copy
which is to be returned or a formal decision letter giving the reason
for the denial will be forwarded promptly after the mailing of the
duplicate.

If the request for extension of time is granted, the due date is
computed from the date stamped or printed on the action, as opposed to
the original due date. See MPEP Section  710.01(a).  For example, a
reply to an action with a 3-month shortened statutory period, dated
November 30, is due on the following February 28 (or 29, if it is a leap
year).  If the period for reply is extended an additional month, the
reply becomes due on March 30, not on March 28.

For purposes of convenience, a request for an extension of time may be
personally delivered and left with the appropriate area to become an
official paper in the file without routing through the Mail Center. The
person who accepts the request for an extension of time will have it
date stamped.

If duplicate copies of a request for an extension of time under  37 CFR
1.136(b) are hand delivered to an examining group, both copies are
dated, either stamped approved or indicated as being approved in part or
denied, and signed. The duplicate copy is returned to the delivering
person regardless of whether the request was signed by a registered
attorney or agent, either of record or acting in a representative
capacity, the applicant or the assignee of record of the entire
interest.

If the request for extension under  37 CFR 1.136(b) is not presented in
duplicate, the applicant should be advised promptly by way of form
PTOL-327 regarding action taken on the request so that the file record
will be complete.

Form Paragraph 7.98 may be used where a reply is filed late but an
extension of time is possible.

7.98 Reply Is Late, Extension of Time Suggested

Applicant's reply was received in the Office on   [1], which is after
the expiration of the period for reply set in the last Office action
mailed on   [2].  This application will become abandoned unless
applicant obtains an extension of time to reply to the last Office
action under  37 CFR 1.136(a).

Examiner Note:

Since the provisions of  37 CFR 1.136(a) do not apply to reexamination
proceedings or to litigation related reissue applications, do not use
this paragraph in these cases.

FINAL REJECTION - TIME FOR REPLY

If an applicant initially replies within 2 months from the date of
mailing of any final rejection setting a 3-month shortened statutory
period for reply and the Office does not mail an advisory action until
after the end of the 3-month shortened statutory period, the period for
reply for purposes of determining the amount of any extension fee will
be the date on which the Office mails the advisory action advising
applicant of the status of the application, but in no event can the
period extend beyond 6 months from the date of the final rejection. This
procedure applies only to a first reply to a final rejection. The
following language must be included by the examiner in each final
rejection.

A SHORTENED STATUTORY PERIOD FOR REPLY TO THIS FINAL ACTION IS SET TO
EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE EVENT A FIRST
REPLY IS FILED WITHIN TWO MONTHS OF THE MAILING DATE OF THIS FINAL
ACTION AND THE ADVISORY ACTION IS NOT MAILED UNTIL AFTER THE END OF THE
THREE-MONTH SHORTENED STATUTORY PERIOD, THEN THE SHORTENED STATUTORY
PERIOD WILL EXPIRE ON THE DATE THE ADVISORY ACTION IS MAILED, AND ANY
EXTENSION FEE PURSUANT TO  37 CFR 1.136(a) WILL BE CALCULATED FROM THE
MAILING DATE OF THE ADVISORY ACTION. IN NO EVENT WILL THE STATUTORY
PERIOD FOR REPLY EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS
FINAL ACTION.

For example, if applicant initially replies within 2 months from the
date of mailing of a final rejection and the examiner mails an advisory
action before the end of 3 months from the date of mailing of the final
rejection, the shortened statutory period will expire at the end of 3
months from the date of mailing of the final rejection. In such a case,
any extension fee would then be calculated from the end of the 3month
period. If the examiner, however, does not mail an advisory action until
after the end of 3 months, the shortened statutory period will expire on
the date the examiner mails the advisory action and any extension fee
may be calculated from that date.

See also MPEP Section  706.07(f).

EXTENSIONS OF TIME TO SUBMIT AFFIDAVITS AFTER FINAL REJECTION

Frequently, applicants request an extension of time, stating as a reason
therefor that more time is needed in which to submit an affidavit. When
such a request is filed after final rejection, the granting of the
request for extension of time is without prejudice to the right of the
examiner to question why the affidavit is now necessary and why it was
not earlier presented. If applicant's showing is insufficient, the
examiner may deny entry of the affidavit, notwithstanding the previous
grant of an extension of time to submit it. The grant of an extension of
time in these circumstances serves merely to keep the case from becoming
abandoned while allowing the applicant the opportunity to present the
affidavit or to take other appropriate action. Moreover, prosecution of
the application to save it from abandonment must include such timely,
complete and proper action as required by  37 CFR 1.113. The admission
of the affidavit for purposes other than allowance of the application,
or the refusal to admit the affidavit, and any proceedings relative
thereto, shall not operate to save the application from abandonment.

Implicit in the above practice is the fact that affidavits submitted
after final rejection are subject to the same treatment as amendments
submitted after final rejection. In re Affidavit Filed After Final
Rejection, 152 USPQ 292 (Comm'r Pat. 1966).

Failure to file a reply during the shortened statutory period results in
abandonment of the application.

Extensions of time to appeal to the courts under  37 CFR 1.304 is
covered in MPEP Section  1216.

EXTENSION OF TIME AFTER PAYMENT OF ISSUE FEE

The statutory (nonextendable) time period for payment of the issue fee
is 3  months from the date of the Notice of Allowance (35 U.S.C. 151).
In situations where informalities such as drawing corrections or
submission of supplemental or corrected declarations are outstanding at
the time of allowance, applicants will be notified on the PTOL-37
(Notice of Allowability) of such informalities. While extensions of time
under  37 CFR 1.136(a) are available to correct such informalities, the
issue fee must be paid within the 3-month period.

---SECTION---710.04 Two Periods Running

There sometimes arises a situation where two different periods for reply
are running against an application, the one limited by the regular
statutory period, the other by the limited period set in a subsequent
Office action. The running of the first period is not suspended nor
affected by an ex parte limited time action or even by an appeal
therefrom. For an exception involving suggested claims, see MPEP Section
2305.03.

---SECTION---710.04(a) Copying Patent Claims

Where, in an application in which there is an unanswered rejection of
record, claims are copied from a patent and all of these claims are
rejected there results a situation where two different periods for reply
are running against the application.  One period, the first, is the
regular statutory period of the unanswered rejection of record, the
other period is the limited period set for reply to the rejection
(either first or final).  The date of the last unanswered Office action
on the claims other than the copied patent claims is the controlling
date of the statutory period. See Ex parte Milton, 63 USPQ 132 (P.O.
Super Exam. 1938).  See also MPEP Section  2305.02.

---SECTION---710.05 Period Ending on Saturday, Sunday, or a Federal
Holiday

35 U.S.C. 21 Filing date and day for taking action.

                  +++   

(b) When the day, or the last day, for taking any action or paying any
fee in the United States Patent and Trademark Office falls on Saturday,
Sunday, or a Federal holiday within the District of Columbia the action
may be taken, or the fee paid, on the next succeeding secular or
business day.

37 CFR 1.7 Times for taking action; Expiration on Saturday, Sunday, or
Federal holiday.

Whenever periods of time are specified in this part in days, calendar
days are intended. When the day, or the last day fixed by statute or by
or under this part for taking any action or paying any fee in the Patent
and Trademark Office falls on Saturday, Sunday, or on a Federal holiday
within the District of Columbia, the action may be taken, or the fee
paid, on the next succeeding day which is not a Saturday, Sunday, or a
Federal holiday. See Section  1.304 for time for appeal or for
commencing civil action.

The Federal holidays are New Year's Day, January 1; Martin Luther King's
birthday, the third Monday in January; Washington's Birthday, the third
Monday in February; Memorial Day, the last Monday in May; Independence
Day, July 4; Labor Day, the first Monday in September; Columbus Day, the
second Monday in October; Veteran's Day, November 11; Thanksgiving Day,
the fourth Thursday in November; Christmas Day, December 25;
Inauguration day (January 20, every 4 years). Whenever a Federal holiday
falls on a Sunday, the following day (Monday) is also a Federal holiday.
Exec. Order No. 10,358, 17 Fed. Reg.,  5269;  5 U.S.C. 6103.

When a Federal holiday falls on a Saturday, the preceding day, Friday,
is considered to be a Federal holiday and the Patent and Trademark
Office will be closed for business on that day (5 U.S.C. 6103).
Accordingly, any action or fee due on such a Federal holiday Friday or
Saturday is to be considered timely if the action is taken, or the fee
paid, on the next succeeding day which is not a Saturday, Sunday, or a
Federal holiday.

When an amendment is filed a day or two later than the expiration of the
period fixed by statute, care should be taken to ascertain whether the
last day of that period was Saturday, Sunday, or a Federal holiday and
if so, whetherthe amendment was filed or the fee paid on the next
succeeding day which is not a Saturday, Sunday, or a Federal holiday.

An amendment received on such succeeding day which was due on Saturday,
Sunday, or Federal holiday is endorsed on the file wrapper with the date
of receipt. The Saturday, Sunday, or Federal holiday is also indicated.

---SECTION---710.06 Situations When Reply Period Is Reset or Restarted

Where the citation of a reference is incorrect or an Office action
contains some other defect and this error is called to the attention of
the Office within 1 month of the mail date of the action, the Office
will restart the previously set period for reply to run from the date
the error is corrected, if requested to do so by applicant. If the error
is brought to the attention of the Office within the period for reply
set in the Office action but more than 1 month after the date of the
Office action, the Office will set a new period for reply, if requested
to do so by the applicant, to substantially equal the time remaining in
the reply period.  For example, if the error is brought to the attention
of the Office 5 weeks after mailing the action, then the Office would
set a new 2-month period for reply. The new period for reply must be at
least 1 month and would run from the date the error is corrected.  See
MPEP Section  707.05(g) for the manner of correcting the record where
there has been an erroneous citation.

Where for any reason it becomes necessary to remail any action (MPEP
Section  707.13), the action should be correspondingly redated, as it is
the remailing date that establishes the beginning of the period for
reply. Ex parte Gourtoff, 1924 C.D. 153, 329 O.G. 536 (Comm'r Pat.
1924).

A supplementary action after a rejection explaining the references more
explicitly or giving the reasons more fully, even though no further
references are cited, establishes a new date from which the statutory
period runs.

If the error in citation or other defective Office action is called to
the attention of the Office after the expiration of the period for
reply, the period will not be restarted and any appropriate extension
fee will be required to render a reply timely. The Office letter
correcting the error will note that the time period for reply remains as
set forth in the previous Office action.

See MPEP Section  505,  Section  512, and Section  513 for Patent and
Trademark Office practice on date stamping documents.

In the event that correspondence from the Office is received late (A)
due to delays in the U.S. Postal Service, or (B) because the mail was
delayed in leaving the PTO (the postmark date is later than the mail
date printed on the correspondence), applicants may petition to reset
the period for reply, which petition shall be evaluated according to the
guidelines which follow. Where the PTO action involved in the petition
was mailed by an examining group, the authority to decide such petitions
has been delegated to the Group Director. See Notice entitled "Petition
to reset a period for response due to late receipt of a PTO action,"
1160 O.G. 14 (March 1, 1994).

PETITIONS TO RESET A PERIOD FOR REPLY DUE TO LATE RECEIPT OF A PTO
ACTION

The PTO will grant a petition to restart the previously set period for
reply to a PTO action to run from the date of receipt of the PTO action
at the correspondence address when the following criteria are met:

(A) the petition is filed within 2 weeks of the date of receipt of the
PTO action at the correspondence address;

(B) a substantial portion of the set reply period had elapsed on the
date of receipt (e.g., at least 1 month of a 2- or 3-month reply period
had elapsed); and

(C) the petition includes (1) evidence showing the date of receipt of
the PTO action at the correspondence address (e.g., a copy of the PTO
action having the date of receipt of the PTO action at the
correspondence address stamped thereon, a copy of the envelope (which
contained the PTO action) having the date of receipt of the PTO action
at the correspondence address stamped thereon, etc.), and (2) a
statement setting forth the date of receipt of the PTO action at the
correspondence address and explaining how the evidence being presented
establishes the date of receipt of the PTO action at the correspondence
address.

There is no statutory requirement that a shortened statutory period of
longer than 30 days to reply to a PTO action be reset due to delay in
the mail or in the PTO. However, when a substantial portion of the set
reply period had elapsed on the date of receipt at the correspondence
address (e.g., at least 1 month of a 2- or 3-month period had elapsed),
the procedures set forth above for late receipt of a PTO action are
available. Where a PTO action was received with less than 2 months
remaining in a shortened statutory period of 3 months the period may be
restarted from the date of receipt. Where the period remaining is
between 2 and 3 months, the period will be reset only in extraordinary
situations, e.g., complex PTO action suggesting submission of
comparative data.

PETITIONS TO RESET A PERIOD FOR REPLY DUE TO A POSTMARK DATE LATER THAN
THE MAIL DATE PRINTED ON A PTO ACTION

The PTO will grant a petition to restart the previously set period for
reply to a PTO action to run from the postmark date shown on the PTO
mailing envelope which contained the PTO action when the following
criteria are met:

(A) the petition is filed within 2 weeks of the date of receipt of the
PTO action at the correspondence address;

(B) the reply period was for payment of the issue fee, or the reply
period set was 1 month or 30 days; and

(C) the petition includes (1) evidence showing address (e.g., copy of
the PTO action having the date of receipt of the PTO action at the
correspondence address stamped thereon, etc.), (2) a copy of the
envelope which contained the PTO action showing the postmark date, and
(3) a statement setting forth the date of receipt of the PTO action at
the correspondence address and stating that the PTO action was received
in the postmarked envelope.

The provisions of  37 CFR 1.8 and 1.10 apply to the filing of the
above-noted petitions with regard to the requirement that the petition
be filed within 2 weeks of the date of receipt of the PTO action.

The showings outlined above may not be sufficient if there are
circumstances that point to a conclusion that the PTO action may have
been delayed after receipt rather than a conclusion that the PTO action
was delayed in the mail or in the PTO.

---SECTION---711 Abandonment

37 CFR 1.135 Abandonment for failure to reply within time period.

(a) If an applicant of a patent application fails to reply within the
time period provided under Section  1.134 and Section  1.136, the
application will become abandoned unless an Office action indicates
otherwise.

(b) Prosecution of an application to save it from abandonment pursuant
to paragraph (a) of this section must include such complete and proper
reply as the condition of the application may require.  The admission
of, or refusal to admit, any amendment after final rejection or any
amendment not responsive to the last action, or any related proceedings,
will not operate to save the application from abandonment.

(c) When reply by the applicant is a bona fide attempt to advance the
application to final action, and is substantially a complete reply to
the non-final Office action, but consideration of some matter or
compliance with some requirement has been inadvertently omitted,
applicant may be given a new time period for reply under Section  1.134
to supply the omission.

37 CFR 1.138 Express abandonment.

An application may be expressly abandoned by filing in the Patent and
Trademark Office a written declaration of abandonment signed by the
applicant and the assignee of record, if any, and identifying the
application. An application may also be expressly abandoned by filing a
written declaration of abandonment signed by the attorney or agent of
record. A registered attorney or agent acting under the provision of
Section  1.34(a), or of record, may also expressly abandon a prior
application as of the filing date granted to a continuing application
when filing such a continuing application. Express abandonment of the
application may not be recognized by the Office unless it is actually
received by appropriate officials in time to act thereon before the date
of issue.

Abandonment may be either of the invention or of an application. This
discussion is concerned with abandonment of the application for patent.

An abandoned application, in accordance with  37 CFR 1.135 and 1.138, is
one which is removed from the Office docket of pending applications
through:

(A) formal abandonment

(1) by the applicant (acquiesced in by the assignee if there is one), or

(2) by the attorney or agent of record including an associate attorney
or agent appointed by the principal attorney or agent and whose power is
of record but not including a registered attorney or agent acting in a
representative capacity under  37 CFR 1.34(a) except where a continuing
application is filed; or

(B) failure of applicant to take appropriate action within a specified
time at some stage in the prosecution of the application.

Where an applicant, himself or herself, formally abandons an application
and there is a corporate assignee, the acquiescence must be made through
an officer whose official position is indicated.

---SECTION---711.01 Express or Formal Abandonment

The applicant (acquiesced in by an assignee of record), or the
attorney/agent of record, if any, can sign an express abandonment. It is
imperative that the attorney or agent of record exercise every
precaution in ascertaining that the abandonment of the application is in
accordance with the desires and best interests of the applicant prior to
signing a letter of express abandonment of a patent application.
Moreover, special care should be taken to ensure that the appropriate
application is correctly identified in the letter of abandonment.

A letter of abandonment properly signed becomes effective when an
appropriate official of the Office takes action thereon. When so
recognized, the date of abandonment may be the date of recognition or a
different date if so specified in the letter itself. For example, where
a continuing application is filed with a request to abandon the prior
application as of the filing date accorded the continuing application,
the date of the abandonment of the prior application will be in
accordance with the request once it is recognized.

Action in recognition of an express abandonment may take the form of an
acknowledgment by the examiner or by the Publishing Division of the
receipt of the express abandonment, indicating that it is in compliance
with  37 CFR 1.138.

It is suggested that divisional applications be reviewed before filing
to ascertain whether the prior application should be abandoned. Care
should be exercised in situations such as these as the Office looks on
express abandonments as acts of deliberation, intentionally performed.

Applications may be expressly abandoned as provided for in  37 CFR
1.138.  When a letter expressly abandoning an application (not in issue)
is received, the examiner should acknowledge receipt thereof, and
indicate whether it does or does not comply with the requirements of  37
CFR 1.138.

The filing of a request for a continued prosecution application (CPA)
under  37 CFR 1.53(d) or a file wrapper continuing application under
former  37 CFR 1.62(g) is considered to be a request to expressly
abandon the prior application as of the filing date granted the
continuing application.

Form paragraph 7.88 may be used to acknowledge proper express
abandonments.

7.88 Acknowledge Express Abandonment

This application is abandoned in view of the letter of express
abandonment complying with  37 CFR 1.138 filed on   [1].

Examiner Note:

1. With the exception of express abandonments resulting from the filing
of a continued prosecution application under  37 CFR 1.53(d) or a file
wrapper continuation application under former  37 CFR 1.62 or when filed
with a continuing application, all express abandonments must be signed
by all of the inventors, the owners of the entire interest, or an
attorney or agent of record.

2. The provisions of  37 CFR 1.34 do not apply to express abandonments
unless filed with a continuing application.

If the letter expressly abandoning the application does comply with  37
CFR 1.138, the examiner should respond by using a "Notice of
Abandonment" form PTO-1432, and by checking the appropriate box(es). The
examiner's signature should appear at the bottom of the form. If such a
letter does not comply with the requirements of  37 CFR 1.138, a fully
explanatory letter should be sent.

Form Paragraph 7.89 may be used to acknowledge improper express
abandonments.

7.89 Letter of Express Abandonment, Improper

The letter filed on   [1] does not comply with the requirements of  37
CFR 1.138, and therefore is not a proper letter of express abandonment.

Examiner Note:

The reasons why the letter fails to comply with  37 CFR 1.138 must be
fully explained, e.g., the individual signing the express abandonment is
not of record.  See the "Examiner Note" of form paragraph 7.88.

A letter of express abandonment which is not timely filed (because it
was not filed within the period for reply), is not acceptable to
expressly abandon the application. The letter of express abandonment
should be endorsed on the file wrapper and placed in the application
file but not formally entered.

The application should be pulled for abandonment after expiration of the
minimum permitted period for reply (see MPEP Section  711.04(a)) and
applicant notified of the abandonment for failure to reply within the
statutory period.  See MPEP Section  711.02 and Section  711.04(c).

In view of the doctrine set forth in Ex parte Lasscell, 1884 C.D. 66, 29
O.G. 861 (Comm'r Pat. 1884), an amendment canceling all of the claims,
even though said amendment is signed by the applicant himself/herself
and the assignee, is not an express abandonment. Such an amendment is
regarded as nonresponsive and should not be entered, and applicant
should be notified as explained in MPEP Section  714.03 to Section
714.05.

An attorney or agent not of record in an application may file a
withdrawal of an appeal under  37 CFR 1.34(a) except in those instances
where such withdrawal would result in abandonment of the application. In
such instances the withdrawal of appeal is in fact an express
abandonment.

AFTER NOTICE OF ALLOWANCE

Letters of abandonment of allowed applications are acknowledged by the
Publishing Division.

37 CFR 1.313 provides that an allowed application will not be withdrawn
from issue except by approval of the Commissioner, and that after the
issue fee has been paid, it will not be withdrawn for any reason except:

(A) mistake on the part of the Office;

(B) a violation of  37 CFR 1.56 or illegality in the application;

(C) unpatentability of one or more claims;

(D) for interference; or

(E) for abandonment to permit consideration of an information disclosure
statement under  37 CFR 1.97 in a continuing application.

See MPEP Section  711.05 and Section  1308. In cases where  37 CFR 1.313
precludes giving effect to an express abandonment, the appropriate
remedy is a petition, with fee, under  37 CFR 1.183, showing an
extraordinary situation where justice requires suspension of  37 CFR
1.313.

APPLICATION IN INTERFERENCE

A written declaration of abandonment of the application signed only by
an attorney or agent of record, when the application sought to be
expressly or formally abandoned is the subject of an interference
proceeding under  35 U.S.C. 135, is not effective to terminate the
interference, and will not be considered until after ex parte
prosecution is resumed. In order to be effective to terminate an
interference proceeding, an abandonment of the application must be
signed by the inventor with the written consent of the assignee where
there has been an assignment.

A copy of an appropriate form for use in filing an express abandonment
under  37 CFR 1.138 in favor of a continuing application is reproduced
below.

Form PTO/SB/24. Express Abandonment under 37 CFR 1.138[GRAPHIC]

---SECTION---711.02 Failure To Take Required Action During Statutory
Period

37 CFR 1.135(a) specifies that an application becomes abandoned if
applicant "fails to reply" to an office action within the fixed
statutory period. This failure may result either from (A) failure to
reply within the statutory period, or (B) insufficiency of reply, i.e.,
failure to file a "complete and proper reply, as the condition of the
case may require" within the statutory period (37 CFR 1.135(b)).

When an amendment is filed after the expiration of the statutory period,
the application is abandoned and the remedy is to petition to revive it.
The examiner should notify the applicant or attorney at once that the
application has been abandoned by using form PTOL-1432. The proper boxes
on the form should be checked and the blanks for the dates of the
proposed amendment and the Office action completed. The late amendment
is endorsed on the file wrapper but not formally entered. See MPEP
Section  714.17.

Form Paragraph 7.90 may also be used.

7.90 Abandonment, Failure to Reply

This application is abandoned in view of applicant's failure to submit a
proper reply to the Office action mailed on [1] within the required
period for reply.

Examiner Note:

1. A letter of abandonment should not be mailed until after the period
for requesting an extension of time under  37 CFR 1.136(a) has expired.

2. In pro se cases see form paragraph 17.10.

To pass on questions of abandonment, it is essential that the examiner
know the dates that mark the beginning and end of the statutory period
under varying situations. Applicant's reply must reach the Office within
the set shortened statutory period for reply dating from the date
stamped or printed on the Office letter or within the extended time
period obtained under  37 CFR 1.136. (See MPEP Section  710 to Section
710.06.)

For a petition to withdraw a holding of abandonment based upon failure
to receive an Office action, see MPEP Section  711.03(c).

---SECTION---711.02(a) Insufficiency of Reply

Abandonment may result from a situation where applicant's reply is
within the period for reply but is not fully responsive to the Office
action. But see MPEP Section  710.02(c).  See also MPEP Section  714.02
to Section  714.04.

7.91 Reply Is Not Fully Responsive, Extension of Time Suggested

The reply filed on [1] is not to be fully responsive to the prior Office
action because: [2].  Since the period for reply set forth in the prior
Office action has expired, this application will become abandoned unless
applicant corrects the deficiency and obtains an extension of time under
37 CFR 1.136(a).

The date on which the petition under  37 CFR 1.136(a) and the
appropriate extension fee have been filed is the date for purposes of
determining the period of extension and the corresponding amount of the
fee.  In no case may an applicant reply outside the SIX (6) MONTH
statutory period or obtain an extension for more than FIVE (5) MONTHS
beyond the date for reply set forth in an Office action.  A fully
responsive reply must be timely filed to avoid abandonment of this
application.

Examiner Note:

1. In bracket 2, set forth why the examiner considers there to be a
failure to take "complete and proper action" within the statutory
period.

2. If the reply appears to be a bona fide attempt to respond with an
inadvertent omission, do not use this paragraph; instead use form
paragraph 7.95.

---SECTION---711.02(b) Special Situations Involving Abandonment

The following situations involving questions of abandonment often arise,
and should be specially noted:

(A) Copying claims from a patent when not suggested by the Patent and
Trademark Office does not constitute a response to the last Office
action and will not save the case from abandonment, unless the last
Office action relied solely on the patent for the rejection of all the
claims rejected in that action.

(B) An application may become abandoned through withdrawal of, or
failure to prosecute, an appeal to the Board of Patent Appeals and
Interferences. See MPEP Section  1215.01 to Section  1215.04.

(C) An application may become abandoned through dismissal of appeal to
the Court of Appeals for the Federal Circuit or civil action, where
there was not filed prior to such dismissal an amendment putting the
case in condition for issue or fully responsive to the Board's decision.
Abandonment results from failure to perfect an appeal as required by the
Court of Appeals for the Federal Circuit.  See MPEP Section  1215.05 and
Section  1216.01.

(D) Where claims are suggested for interference near the end of the
period for reply running against the case, see MPEP Section  2305.

(E) Where an FWC application under former  37 CFR 1.62 was filed.  See
MPEP Section  201.06(b) and Section  711.01.

(F) Where a continued prosecution application (CPA) under  37 CFR
1.53(d) is filed. See MPEP Section  201.06(d) and Section  711.01.

---SECTION---711.02(c) Termination of Proceedings

"Termination of proceedings" is an expression found in  35 U.S.C. 120.
As there stated, a second application is considered to be copending with
an earlier application if it is filed before

(A) the patenting,

(B) the abandonment of, or

(C) termination of proceedings on the earlier application.

"Before" has consistently been interpreted, in this context, to mean
"not later than."

In each of the following situations, proceedings are terminated:

(A) When the issue fee is not paid and the application is abandoned for
failure to pay the issue fee, proceedings are terminated as of the date
the issue fee was due and the application is the same as if it were
abandoned after midnight on that date (but if the issue fee is later
accepted, on petition, the application is revived).  See MPEP Section
711.03(c).

(B) If an application is in interference wherein all the claims present
in the application correspond to the counts and the application loses
the interference as to all the claims, then proceedings on that
application are terminated as of the date appeal or review by civil
action was due if no appeal or civil action was filed.

(C) Proceedings are terminated in an application after decision by the
Board of Patent Appeals and Interferences as explained in MPEP Section
1214.06.

(D) Proceedings are terminated after a decision by the court as
explained in MPEP Section  1216.01.

---SECTION---711.03 Reconsideration of Holding of Abandonment; Revival

When advised of the abandonment of his or her application, applicant may
either ask for reconsideration of such holding, if he or she disagrees
with it on the basis that there is no abandonment in fact; or petition
for revival under  37 CFR 1.137.

---SECTION---711.03(a) Holding Based on Insufficiency of Response

Applicant may deny that the reply was incomplete.

While the primary examiner has no authority to act upon an application
in which no action by applicant was taken during the period for reply,
he or she may reverse his or her holding as to whether or not an
amendment received during such period was responsive and act on a case
of such character which he or she has previously held abandoned. This is
not a revival of an abandoned application but merely a holding that the
case was never abandoned.  See also MPEP Section  714.03.

---SECTION---711.03(b) Holding Based on Failure To Reply Within Period

When an amendment reaches the Patent and Trademark Office after the
expiration of the period for reply and there is no dispute as to the
dates involved, no question of reconsideration of a holding of
abandonment can be presented.

However, the examiner and the applicant may disagree as to the date on
which the period for reply commenced to run or ends. In this situation,
as in the situation involving sufficiency of reply, the applicant may
take issue with the examiner and point out to him or her that his or her
holding was erroneous.

---SECTION---711.03(c) Petitions Relating to Abandonment

37 CFR 1.135 Abandonment for failure to reply within time period.

(a) If an applicant of a patent application fails to reply within the
time period provided under Section  1.134 and Section  1.136, the
application will become abandoned unless an Office action indicates
otherwise.

(b) Prosecution of an application to save it from abandonment pursuant
to paragraph (a) of this section must include such complete and proper
reply as the condition of the application may require.  The admission
of, or refusal to admit, any amendment after final rejection or any
amendment not responsive to the last action, or any related proceedings,
will not operate to save the application from abandonment.

(c) When reply by the applicant is a bona fide attempt to advance the
application to final action, and is substantially a complete reply to
the non-final Office action, but consideration of some matter or
compliance with some requirement has been inadvertently omitted,
applicant may be given a new time period for reply under Section  1.134
to supply the omission.

37 CFR 1.137 Revival of abandoned application or lapsed patent.

(a)  	Unavoidable. Where the delay in reply was unavoidable, a petition
may be filed to revive an abandoned application or a lapsed patent
pursuant to this paragraph. A grantable petition pursuant to this
paragraph must be accompanied by:

(1) The required reply, unless previously filed.  In a nonprovisional
application abandoned for failure to prosecute, the required reply may
be met by the filing of a continuing application. In an application or
patent, abandoned or lapsed for failure to pay the issue fee or any
portion thereof, the required reply must be the payment of the issue fee
or any outstanding balance thereof;

(2) The petition fee as set forth in Section  1.17(l);

(3) A showing to the satisfaction of the Commissioner that the entire
delay in filing the required reply from the due date for the reply until
the filing of a grantable petition pursuant to this paragraph was
unavoidable; and

(4) Any terminal disclaimer (and fee as set forth in Section  1.20(d))
required pursuant to paragraph (c) of this section.

(b) Unintentional. Where the delay in reply was unintentional, a
petition may be filed to revive an abandoned application or a lapsed
patent pursuant to this paragraph. A grantable petition pursuant to this
paragraph must be accompanied by:

(1) The required reply, unless previously filed.  In a nonprovisional
application abandoned for failure to prosecute, the required reply may
be met by the filing of a continuing application.  In an application or
patent, abandoned or lapsed for failure to pay the issue fee or any
portion thereof, the required reply must be the payment of the issue fee
or any outstanding balance thereof;

(2) The petition fee as set forth in Section  1.17(m);

(3) A statement that the entire delay in filing the required reply from
the due date for the reply until the filing of a grantable petition
pursuant to this paragraph was unintentional. The Commissioner may
require additional information where there is a question whether the
delay was unintentional; and

(4) Any terminal disclaimer (and fee as set forth in Section  1.20(d))
required pursuant to paragraph (c) of this section.

(c) In a design application, a utility application filed before June 8,
1995, or a plant application filed before June 8, 1995, any petition to
revive pursuant to this section must be accompanied by a terminal
disclaimer and fee as set forth in Section  1.321 dedicating to the
public a terminal part of the term of any patent granted thereon
equivalent to the period of abandonment of the application.  Any
terminal disclaimer pursuant to this paragraph must also apply to any
patent granted on any continuing application that contains a specific
reference under  35 U.S.C. 120, 121, or 365(c) to the application for
which revival is sought.  The provisions of this paragraph do not apply
to lapsed patents.

(d) Any request for reconsideration or review of a decision refusing to
revive an abandoned application or lapsed patent upon petition filed
pursuant to this section, to be considered timely, must be filed within
two months of the decision refusing to revive or within such time as set
in the decision.  Unless a decision indicates otherwise, this time
period may be extended under the provisions of Section  1.136.

(e) A provisional application, abandoned for failure to timely respond
to an Office requirement, may be revived pursuant to this section so as
to be pending for a period of no longer than twelve months from its
filing date.  Under no circumstances will a provisional application be
regarded as pending after twelve months from its filing date.

37 CFR 1.181 Petition to the Commissioner.

(a) Petition 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 Patent
Appeals and Interferences 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
supervisory authority of the Commissioner in appropriate circumstances.
For petitions in interferences, see Section    1.644.

                  +++   

(f) Except as otherwise provided in these rules, any such petition not
filed within 2 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 running against an
application, nor act as a stay of other proceedings.

                  +++   

I. PETITION TO WITHDRAW HOLDING OF ABANDONMENT

A petition to revive an abandoned application (discussed below) should
not be confused with a petition from an examiner's holding of
abandonment. Where an applicant contends that the application is not in
fact abandoned (e.g., there is disagreement as to the sufficiency of the
reply, or as to controlling dates), a petition under  37 CFR 1.181(a)
requesting withdrawal of the holding of abandonment is the appropriate
course of action, and such petition does not require a fee.  Where there
is no dispute as to whether an application is abandoned (e.g., the
applicant's contentions merely involve the cause of abandonment), a
petition under  37 CFR 1.137 (accompanied by the appropriate petition
fee) is necessary to revive the abandoned application.

37 CFR 1.181(f) provides that, inter alia, except as otherwise provided,
any petition not filed within 2 months from the action complained of may
be dismissed as untimely. Therefore, any petition (under  37 CFR 1.181)
to withdraw the holding of abandonment not filed within 2 months of the
mail date of a notice of abandonment (the action complained of) may be
dismissed as untimely. 37 CFR 1.181(f).

Rather than dismiss an untimely petition to withdraw the holding of
abandonment under  37 CFR 1.181(f), the Office may treat an untimely
petition to withdraw the holding of abandonment on its merits on the
condition that, in any design application, any utility application filed
before June 8, 1995, or any plant application filed before June 8, 1995,
the petition is accompanied by a terminal disclaimer dedicating to the
public a terminal part of the term of any patent granted thereon
equivalent to the period between the mail date of the notice of
abandonment and the filing date of such petition to withdraw the holding
of abandonment.  See  37 CFR 1.183 (the Office may suspend or waive the
requirements of  37 CFR 1.181(f), subject to such other requirements as
may be imposed).  The Office may treat an untimely petition to withdraw
the holding of abandonment on its merits in a utility or plant
application filed on or after June 8, 1995, on the condition that the
petition is accompanied by a terminal disclaimer dedicating to the
public a terminal part of the term of any patent granted thereon that
would extend beyond the date 20 years from the filing date of the
application, or the earliest application to which the application
specifically refers under  35 U.S.C. 120, 121, or 365(c).  In either
case, the terminal disclaimer must also apply to any patent granted on
any application that claims the benefit of the filing date of the
application under  35 U.S.C. 120, 121, or 365(c).  Such a terminal
disclaimer is not required under  37 CFR 1.137(c) because abandonment of
an application is a per se failure to exercise due diligence, and as
such, an applicant cannot obtain patent term extension under  35 U.S.C.
154(b) due to prosecution delay caused by abandonment of the
application.  Where a petition to withdraw the holding of abandonment is
granted, the application is considered to never have been abandoned and,
as such, the prosecution delay caused by the treatment of the
application as abandoned is not considered a per se failure to exercise
due diligence.  Thus a terminal disclaimer is required to avoid granting
patent term extension under  35 U.S.C. 154(b) due to prosecution delay
caused by the treatment of the application as abandoned.

In any event, where the record indicates that the applicant
intentionally delayed the filing of a petition to withdraw the holding
of abandonment, the Office may simply dismiss the petition as untimely
(37 CFR 1.181(f)) solely on the basis of such intentional delay in
taking action in the application without further addressing the merits
of the petition.  Obviously, intentional delay in seeking the revival of
an abandoned application precludes relief under  37 CFR 1.137(a) or (b)
(discussed below).

II. PETITION TO WITHDRAW HOLDING OF ABANDONMENT BASED ON FAILURE TO
RECEIVE OFFICE ACTION

In Delgar v. Schulyer, 172 USPQ 513 (D.D.C. 1971), the court decided
that the Office should mail a new Notice of Allowance in view of the
evidence presented in support of the contention that the applicant's
representative did not receive the original Notice of Allowance.  Under
the reasoning of Delgar, an allegation that an Office action was never
received may be considered in a petition to withdraw the holding of
abandonment.  If adequately supported, the Office may grant the petition
to withdraw the holding of abandonment and remail the Office action.
That is, the reasoning of Delgar is applicable regardless of whether an
application is held abandoned for failure to timely pay the issue fee
(35 U.S.C. 151) or for failure to prosecute (35 U.S.C. 133).

To minimize costs and burdens to practitioners and the Office, the
Office has modified the showing required to establish nonreceipt of an
Office action.  The showing required to establish nonreceipt of an
Office communication must include a statement from the practitioner
stating that the Office communication was not received by the
practitioner and attesting to the fact that a search of the file jacket
and docket records indicates that the Office communication was not
received.  A copy of the docket record where the nonreceived Office
communication would have been entered had it been received and docketed
must be attached to and referenced in practitioner's statement. See
Notice entitled "Withdrawing the Holding of Abandonment When Office
Actions Are Not Received," 1156 O.G.   53 (November 16, 1993).

The showing outlined above may not be sufficient if there are
circumstances that point to a conclusion that the Office action may have
been lost after receipt rather than a conclusion that the Office action
was lost in the mail (e.g., if the practitioner has a history of not
receiving Office actions).

Evidence of nonreceipt of an Office communication or action (e.g  .,
Notice of Abandonment or an advisory action) other than that action to
which reply was required to avoid abandonment would not warrant
withdrawal of the holding of abandonment. Abandonment takes place by
operation of law for failure to reply to an Office action or timely pay
the issue fee, not by operation of the mailing of a Notice of
Abandonment.  See Lorenz v. Finkl, 333 F.2d 885, 889-90, 142 USPQ 26,
29-30 (CCPA 1964); Krahn v. Commissioner, 15 USPQ2d 1823, 1824 (E.D. Va
1990); In re Application of Fischer, 6 USPQ2d 1573, 1574 (Comm'r Pat.
1988).

Two additional procedures are available for reviving an application that
has become abandoned due to a failure to reply to an Office Action:  (1)
a petition under  37 CFR 1.137(a) based upon unavoidable delay; and (2)
a petition under  37 CFR 1.137(b) based on unintentional delay.

III. PETITIONS TO REVIVE AN ABANDONED APPLICATION, OR ACCEPT LATE
PAYMENT OF ISSUE FEE

37 CFR 1.137 provides for the revival of abandoned applications and
lapsed patents for the failure:

(A) to timely reply to an Office requirement in a provisional
application;

(B) to timely prosecute in a nonprovisional application;

(C) to timely pay the issue fee for a design application;

(D) to timely pay the issue fee for a utility or plant application; and

(E) to timely pay any outstanding balance of the issue fee (lapsed
patents).

A petition under  37 CFR 1.137(a) requires:

(A) the required reply, unless previously filed;

(B) the petition fee as set forth in  37 CFR 1.17(l);

(C) a showing to the satisfaction of the Commissioner that the entire
delay in filing the required reply from the due date for the reply until
the filing of a grantable petition pursuant to  37 CFR 1.137(a) was
unavoidable; and

(D) any terminal disclaimer required pursuant to  37 CFR 1.137(c).

A petition under  37 CFR 1.137(b) requires:

(A) the required reply, unless previously filed;

(B) the petition fee as set forth in  37 CFR 1.17(m);

(C) a statement that the entire delay in filing the required reply from
the due date for the reply until the filing of a grantable petition
pursuant to  37 CFR 1.137(b) was unintentional; and

(D) any terminal disclaimer required pursuant to  37 CFR 1.137(c).

The Commissioner may require additional information where there is a
question whether the delay was unintentional.

A. Reply Requirement

Unlike a petition to withdraw the holding of abandonment, a petition to
revive under  37 CFR 1.137 must be accompanied by, inter alia, the
required reply.  See Ex parte Richardson, 1906 Dec. Comm'r Pat. 83
(1905) ("This Office has no authority to revive a case upon which no
action has been taken within [the period for reply], but merely has
authority to determine after an action is taken whether the delay in
presenting it was unavoidable."). Generally, the required reply is the
reply sufficient to have avoided abandonment, had such reply been timely
filed.

1. Abandonment for Failure to Pay the Issue Fee

While the revival of applications abandoned for failure to timely
prosecute and for failure to timely pay the issue fee are incorporated
together in  37 CFR 1.137, the statutory provisions for the revival of
an application abandoned for failure to timely prosecute and for failure
to timely submit the issue fee are mutually exclusive.  See Brenner v.
Ebbert, 398 F.2d 762, 157 USPQ 609 (D.C. Cir. 1968).  35 U.S.C. 151
authorizes the acceptance of a delayed payment of the issue fee, if the
issue fee "is submitted ... and the delay in payment is shown to have
been unavoidable."  35 U.S.C. 41(a)(7) likewise authorizes the
acceptance of an "unintentionally delayed payment of the fee for issuing
each patent." Thus,  35 U.S.C. 41(a)(7) and 151 each require payment of
the issue fee as a condition of reviving an application abandoned or
patent lapsed for failure to pay the issue fee.  Therefore, the filing
of a continuing application without payment of the issue fee or any
outstanding balance thereof is not an acceptable reply in an application
abandoned or patent lapsed for failure to pay the issue fee or any
portion thereof.

The Notice of Allowance requires the timely payment of the issue fee in
effect on the date of its mailing to avoid abandonment of the
application. In instances in which there is an increase in the issue fee
by the time of payment of the issue fee required in the Notice of
Allowance, the Office will mail a notice requiring payment of the
balance of the issue fee then in effect.  See In re Mills, 12 USPQ2d
1847, 1848 (Comm'r Pat. 1989).  The phrase "for failure to pay the issue
fee or any portion thereof" applies to those instances in which the
applicant fails to pay either the issue fee required in the Notice of
Allowance or the balance of the issue fee required in a subsequent
notice.  In such instances, the reply must be the issue fee then in
effect, if no portion of the issue fee was previously submitted, or any
outstanding balance of the issue fee then in effect, if a portion of the
issue fee was previously submitted.

2. Abandonment for Failure to Reply in a Nonprovisional Application

A reply to a non-final action in a nonprovisional application abandoned
for failure to prosecute may be either an argument or an amendment under
37 CFR 1.111, whereas a reply under  37 CFR 1.113 to a final action
"must include cancellation of, or appeal from the rejection of, each
claim so rejected."  Accordingly, in a nonprovisional application
abandoned for failure to reply to a final action, the reply required for
consideration of a petition to revive must be:

(A) a Notice of Appeal (and appeal fee);

(B) an amendment that cancels all the rejected claims or otherwise prima
facie places the application in condition for allowance; or

(C) the filing of a continuing application.

When a notice of appeal is the reply filed pursuant to  37 CFR
1.137(a)(1) or 1.137(b)(1), the time period under  37 CFR 1.192 for
filing the appeal brief will be set by the Commissioner in the decision
granting the petition.  In those situations where abandonment occurred
because of the failure to file an appeal brief, the reply required
pursuant to  37 CFR 1.137(a)(1) or 1.137(b)(1) must be either: (A) an
appeal brief in compliance with  37 CFR 1.192(c) (and appeal brief fee);
or (B) the filing of a continuing application.

In a nonprovisional application abandoned for failure to prosecute, the
filing of a continuing application is a permissive reply. An applicant
in a nonprovisional application abandoned for failure to prosecute may
file a reply under  37 CFR 1.111 to a non-final Office action or a reply
under  37 CFR 1.113 (e.g., Notice of Appeal) to a final Office action,
or may simply file a continuing application as the required reply.  The
Office, however, may require the filing of a continuing application (or
request for further examination pursuant to  37 CFR 1.129(a)) to meet
the reply requirement of  37 CFR 1.137(a)(1) (or  37 CFR 1.137(b)(1))
where, under the circumstances of the application, treating a reply
under  37 CFR 1.111 or 1.113 would place an inordinate burden on the
Office.  Exemplary circumstances of when treating a reply under  37 CFR
1.111 or 1.113 may place an inordinate burden on the Office are where:

(A) an application has been abandoned for an inordinate period of time;

(B) an application file contains multiple or conflicting replies to the
last Office action; and

(C) the reply or replies submitted under  37 CFR 1.137(a)(1) (or  37 CFR
1.137(b)(1)) are questionable as to compliance with  37 CFR 1.111 or
1.113.

An application subject to a final action in which a proposed amendment
under  37 CFR 1.116 is filed as the required reply will normally be
routed by the Office of Petitions to the examining group to determine
whether a proposed amendment places the application in condition for
allowance prior to granting any petition to revive such application.
The patent examiner is instructed that if the reply places the
application in condition for allowance, the patent examiner should write
in the margin of the reply "OK to enter upon revival."  If, on the other
hand, the reply would not place the application in condition for
allowance, the patent examiner is instructed to complete form PTOL-303
and return the unmailed form to the Office of Petitions with the
application.  If the petition is otherwise grantable and the patent
examiner indicates that the reply places the application in condition
for allowance, the petition will be granted.  If such an amendment does
not place the application into condition for allowance, the petition
will not be granted.  A copy of the form PTOL-303 is not mailed with the
decision on the petition but merely serves as an advisory to the Office
of Petitions regarding the decision of the patent examiner on the
amendment after final rejection.

The grant of a petition under  37 CFR 1.137 is not a determination that
any reply under  37 CFR 1.111 is complete.  Where the proposed reply is
to a non-final Office action, the petition may be granted if the reply
appears to be bona fide.  After revival of the application, the patent
examiner may, upon more detailed review, determine that the reply is
lacking in some respect. In this limited situation, the patent examiner
should send out a letter giving a 1-month shortened statutory period
under  37 CFR 1.135(c) for correction of the error or omission.
Extensions of time under  37 CFR 1.136(a) are permitted.  If applicant
does not correct the omission within the shortened statutory period
(including any extension), the application is again abandoned.

B. Petition Fee Requirement

35 U.S.C. 41(a)(7) provides that a petition for the revival of an
unintentionally abandoned application or for the unintentionally delayed
payment of the issue fee must be accompanied by a petition fee of $820
(current fee is set forth in  37 CFR 1.17(m)), unless the petition is
filed under  35 U.S.C. 133 or 151 (on the basis of unavoidable delay),
in which case the fee is $78 (current fee is set forth in  37 CFR
1.17(l)).  Thus, unless the circumstances warrant the withdrawal of the
holding of abandonment (i.e  ., it is determined that the application is
not properly held abandoned), the payment of a petition fee to obtain
the revival of an abandoned application is a statutory prerequisite to
revival of the abandoned application, and cannot be waived.

In addition, the phrase "[o]n filing" in  35 U.S.C. 41(a)(7) means that
the petition fee is required for the filing (and not merely the grant)
of a petition under  37 CFR 1.137.  See H.R. Rep. No. 542, 97th Cong.,
2d Sess. 6 (1982), reprinted in 1982 U.S.C.C.A.N. 770 ("[t]he fees set
forth in this section are due on filing the petition").  Therefore, the
Office:  (A) will not refund the petition fee required by  37 CFR
1.17(l) or 1.17(m), regardless of whether the petition under  37 CFR
1.137 is dismissed or denied; and (B) will not reach the merits of any
petition under  37 CFR 1.137 lacking the requisite petition fee.

The phrase "unless the petition is filed under [35 U.S.C.] 133 or 151"
signifies that petitions to revive filed on the basis of "unavoidable"
delay (under  35 U.S.C. 133 or 151) are a subset of petitions to revive
filed on the basis of unintentional delay.  That is, "unavoidable" delay
and "unintentional" delay are not alternatives; "unavoidable" delay is
the epitome of "unintentional" delay.  Any petition to revive an
abandoned application or lapsed patent must meet the minimal
"unintentional" delay threshold, and an applicant need only pay the fee
specified in  37 CFR 1.17(l) (rather than the fee specified in  37 CFR
1.17(m)) if the petition is also accompanied by an adequate showing that
the entire delay in filing the required reply, from the due date for the
reply until the filing of a grantable petition pursuant to  37 CFR
1.137(a), was unavoidable.

C.	 	Unintentional and Unavoidable Delay

1. Unintentional Delay

The legislative history of Public Law 97-247, Section  3,  96 Stat. 317
(1982), reveals that the purpose of  35 U.S.C. 41(a)(7) is to permit the
Office to have more discretion than in  35 U.S.C. 133 or 151 to revive
abandoned applications in appropriate circumstances, but places a limit
on this discretion stating that "[u]nder this section a petition
accompanied by [the requisite fee] would not be granted where the
abandonment or the failure to pay the fee for issuing the patent was
intentional as opposed to being unintentional or unavoidable."  H.R.
Rep. No. 542, 97th Cong., 2d Sess. 6-7 (1982), reprinted in 1982
U.S.C.C.A.N. 770-71.  A delay resulting from a deliberately chosen
course of action on the part of the applicant is not an "unintentional"
delay within the meaning of  37 CFR 1.137(b).

Where the applicant deliberately permits an application to become
abandoned (e.g., due to a conclusion that the claims are unpatentable,
that a rejection in an Office action cannot be overcome, or that the
invention lacks sufficient commercial value to justify continued
prosecution), the abandonment of such application is considered to be a
deliberately chosen course of action, and the resulting delay cannot be
considered as "unintentional" within the meaning of  37 CFR 1.137(b).
See In re Application of G, 11 USPQ2d 1378, 1380 (Comm'r Pat. 1989).  An
intentional course of action is not rendered unintentional when, upon
reconsideration, the applicant changes his or her mind as to the course
of action that should have been taken.  See In re Maldague, 10 USPQ2d
1477, 1478 (Comm'r Pat. 1988).

A delay resulting from a deliberately chosen course of action on the
part of the applicant does not become an "unintentional" delay within
the meaning of  37 CFR 1.137(b) because:

(A) the applicant does not consider the claims to be patentable over the
references relied upon in an outstanding Office action;

(B) the applicant does not consider the allowed or patentable claims to
be of sufficient breadth or scope to justify the financial expense of
obtaining a patent;

(C) the applicant does not consider any patent to be of sufficient value
to justify the financial expense of obtaining the patent;

(D) the applicant does not consider any patent to be of sufficient value
to maintain an interest in obtaining the patent; or

(E) the applicant remains interested in eventually obtaining a patent,
but simply seeks to defer patent fees and patent prosecution expenses.

Likewise, a change in circumstances that occurred subsequent to the
abandonment of an application does not render "unintentional" the delay
resulting from a previous deliberate decision to permit an application
to be abandoned.  These matters simply confuse the question of whether
there was a deliberate decision not to continue the prosecution of an
application with why there was a deliberate decision not to continue the
prosecution of an application.

Form PTO/SB/64 may be used to file a petition for revival of an
unintentionally abandoned application.

Form PTO/SB/64. Petition for Revival of an Application for Patent
Abandoned Unintentionally under 37 CFR 1.137(b)[GRAPHIC]

[GRAPHIC]

2. Unavoidable Delay

As discussed above, "unavoidable" delay is the epitome of
"unintentional" delay.  Thus, an intentional delay precludes revival
under  37 CFR 1.137(a) ("unavoidable" delay) or  37 CFR 1.137(b)
("unintentional" delay).  See Maldague, 10 USPQ2d at 1478.

Decisions on reviving abandoned applications on the basis of
"unavoidable" delay have adopted the reasonably prudent person standard
in determining if the delay was unavoidable:

The word "unavoidable" . . . is applicable to ordinary human affairs,
and requires no more or greater care or diligence than is generally used
and observed by prudent and careful men in relation to their most
important business.  It permits them in the exercise of this care to
rely upon the ordinary and trustworthy agencies of mail and telegraph,
worthy and reliable employees, and such other means and
instrumentalities as are usually employed in such important business.
If unexpectedly, or through the unforeseen fault or imperfection of
these agencies and instrumentalities, there occurs a failure, it may
properly be said to be unavoidable, all other conditions of promptness
in its rectification being present.

In re Mattullath, 38 App. D.C. 497, 514-15 (1912)(quoting Pratt, 1887
Dec. Comm'r Pat. 31, 32-33 (1887)); see also Winkler v. Ladd, 221 F.
Supp. 550, 552, 138 USPQ 666, 667-68 (D.D.C. 1963), aff'd, 143 USPQ 172
(D.C. Cir. 1963); Ex parte Henrich, 1913 Dec. Comm'r Pat. 139, 141
(1913).  In addition, decisions on revival are made on a "case-by-case
basis, taking all the facts and circumstances into account." Smith v.
Mossinghoff, 671 F.2d 533, 538, 213 USPQ 977, 982 (D.C. Cir. 1982).
Finally, a petition cannot be granted where a petitioner has failed to
meet his or her burden of establishing that the delay was "unavoidable."
Haines v. Quigg, 673 F. Supp. 314, 316-17, 5 USPQ2d 1130, 1131-32 (N.D.
Ind. 1987).

A delay resulting from an error (e.g., a docketing error) on the part of
an employee in the performance of a clerical function may provide the
basis for a showing of "unavoidable" delay, provided it is shown that:

(A) the error was the cause of the delay at issue;

(B) there was in place a business routine for performing the clerical
function that could reasonably be relied upon to avoid errors in its
performance; and

(C) the employee was sufficiently trained and experienced with regard to
the function and routine for its performance that reliance upon such
employee represented the exercise of due care.

See In re Egbers, 6 USPQ2d 1869, 1872 (Comm'r Pat. 1988), rev'd on other
grounds sub nom., Theodor Groz & Sohne & Ernst Bechert Nadelfabrik KG v.
Quigg, 10 USPQ2d 1787 (D.D.C. 1988); In re Katrapat, 6 USPQ2d 1863,
1867-68 (Comm'r Pat. 1988).  For example, where an application becomes
abandoned as a consequence of a change of correspondence address (the
Office action being mailed to the old, uncorrected address and failing
to reach the applicant in sufficient time to permit a timely reply) an
adequate showing of "unavoidable" delay will require a showing that due
care was taken to adhere to the requirement for prompt notification in
each concerned application of the change of address (see MPEP Section
601.03), and must include an adequate showing that a timely notification
of the change of address was filed in the application concerned, and in
a manner reasonably calculated to call attention to the fact that it was
a notification of a change of address.  The following do not constitute
proper notification of a change in correspondence address:

(A) the mere inclusion, in a paper filed in an application for another
purpose, of an address differing from the previously provided
correspondence address, without mention of the fact that an address
change was being made;

(B) the notification on a paper listing plural applications as being
affected (except as provided for under the Customer Number practice -
see MPEP Section  403); or

(C) the lack of notification, or belated notification, to the Patent and
Trademark Office of the change in correspondence address.

Delay resulting from the lack of knowledge or improper application of
the patent statute, rules of practice or the MPEP, however, does not
constitute "unavoidable" delay.  See Haines, 673 F. Supp. at 317, 5
USPQ2d at 1132; Vincent v. Mossinghoff, 230 USPQ 621, 624 (D.D.C. 1985);
Smith v. Diamond, 209 USPQ 1091 (D.D.C. 1981); Potter v. Dann, 201 USPQ
574 (D.D.C. 1978); Ex parte Murray, 1891 Dec. Comm'r Pat. 130, 131
(1891).  For example, as  37 CFR 1.116 and 1.135(b) are manifest that
proceedings concerning an amendment after final rejection will not
operate to avoid abandonment of the application in the absence of a
timely and proper appeal, a delay is not "unavoidable" when the
applicant simply permits the maximum extendable statutory period for
reply to a final Office action to expire while awaiting a notice of
allowance or other action.  Likewise, as a "reasonably prudent person"
would file papers or fees in compliance with  37 CFR 1.8 or 1.10 to
ensure their timely filing in the PTO, as well as preserve adequate
evidence of such filing, a delay caused by an applicant's failure to
file papers or fees in compliance with  37 CFR 1.8 and 1.10 does not
constitute "unavoidable" delay.  See Krahn, 15 USPQ2d at 1825.  Finally,
a delay caused by an applicant's lack of knowledge or improper
application of the patent statute, rules of practice or the MPEP is not
rendered "unavoidable" due to: (A) the applicant's reliance upon oral
advice from PTO employees; or (B) the PTO's failure to advise the
applicant of any deficiency in sufficient time to permit the applicant
to take corrective action.  See In re Sivertz, 227 USPQ 255, 256 (Comm'r
Pat. 1985).

35 U.S.C. 133 and 151 each require a showing that the "delay" was
"unavoidable," which requires not only a showing that the delay which
resulted in the abandonment of the application was unavoidable, but also
a showing of unavoidable delay until the filing of a petition to revive.
See In re Application of Takao, 17 USPQ2d 1155 (Comm'r Pat. 1990).  The
burden of continuing the process of presenting a grantable petition in a
timely manner likewise remains with the applicant until the applicant is
informed that the petition is granted. Id. at 1158. Thus, an applicant
seeking to revive an "unavoidably" abandoned application must cause a
petition under  37 CFR 1.137(a) to be filed without delay (i.e  .,
promptly upon becoming notified, or otherwise becoming aware, of the
abandonment of the application).

An applicant who fails to file a petition under  37 CFR 1.137(a)
"promptly" upon becoming notified, or otherwise becoming aware, of the
abandonment of the application will not be able to show that the entire
delay in filing the required reply from the due date for the reply until
the filing of a grantable petition pursuant to  37 CFR 1.137(a) was
unavoidable.  The removal of the language in  37 CFR 1.137(a) requiring
that any petition thereunder be "promptly filed after the applicant is
notified of, or otherwise becomes aware of, the abandonment" should not
be viewed as:  (A) permitting an applicant, upon becoming notified, or
otherwise becoming aware, of the abandonment of the application, to
delay the filing of a petition under  37 CFR 1.137(a); or (B) changing
(or modifying) the result in In re Application of S, 8 USPQ2d 1630
(Comm'r Pat. 1988), in which a petition under  37 CFR 1.137(a) was
denied due to the applicant's deliberate deferral in filing a petition
under  37 CFR 1.137.  An applicant who deliberately chooses to delay the
filing of a petition under  37 CFR 1.137 (as in Application of S, 8
USPQ2d at 1632) will not be able to show that "the entire delay in
filing the required reply from the due date for the reply until the
filing of a grantable petition pursuant to [ 37 CFR 1.137(a)] was
unavoidable" or even make an appropriate statement that "the entire
delay in filing the required reply from the due date for the reply until
the filing of a grantable petition pursuant to [ 37 CFR 1.137(b)] was
unintentional."

The dismissal or denial of a petition under  37 CFR 1.137(a) does not
preclude an applicant from obtaining relief pursuant to  37 CFR 1.137(b)
on the basis of unintentional delay (unless the decision dismissing or
denying the petition under  37 CFR 1.137(a) indicates otherwise).  In
such an instance, a petition under  37 CFR 1.137(b) may be filed
accompanied by the fee set forth in  37 CFR 1.17(m), the required reply,
a statement that the entire delay in filing the required reply from the
due date for the reply until the filing of a grantable petition pursuant
to  37 CFR 1.137(b) was unintentional, and any terminal disclaimer
required by  37 CFR 1.137(c).

Form PTO/SB/61 may be used to file a petition for revival of an
unavoidably abandoned application.

Form PTO/SB/61. Petition for Revival of an Application for Patent
Abandoned Unavoidably under 37 CFR 1.137(a)[GRAPHIC]

[GRAPHIC]

[GRAPHIC]

D. 	Delay Until the Filing of a Grantable Petition

There are three periods to be considered during the evaluation of a
petition under  37 CFR 1.137:

(A) the delay in reply that originally resulted in the abandonment;

(B) the delay in filing an initial petition pursuant to  37 CFR 1.137 to
revive the application; and

(C) the delay in filing a grantable petition pursuant to  37 CFR 1.137
to revive the application.

As discussed above, the abandonment of an application is considered to
be a deliberately chosen course of action, and the resulting delay
cannot be considered as "unintentional" within the meaning of  37 CFR
1.137(b), where the applicant deliberately permits the application to
become abandoned.  See Application of G, 11 USPQ2d at 1380. Likewise,
where the applicant deliberately chooses not to seek or persist in
seeking the revival of an abandoned application, or where the applicant
deliberately chooses to delay seeking the revival of an abandoned
application, the resulting delay in seeking revival of the abandoned
application cannot be considered as "unintentional" within the meaning
of  37 CFR 1.137(b).  An intentional delay resulting from a deliberate
course of action chosen by the applicant is not affected by:

(A) the correctness of the applicant's (or applicant's representative's)
decision to abandon the application or not to seek or persist in seeking
revival of the application;

(B) the correctness or propriety of a rejection, or other objection,
requirement, or decision by the Office; or

(C) the discovery of new information or evidence, or other change in
circumstances subsequent to the abandonment or decision not to seek or
persist in seeking revival.

Obviously, delaying the revival of an abandoned application, by a
deliberately chosen course of action, until the industry or a competitor
shows an interest in the invention is the antithesis of an "unavoidable"
or "unintentional" delay. An intentional abandonment of an application,
or an intentional delay in seeking the revival of an abandoned
application, precludes a finding of unavoidable or unintentional delay
pursuant to  37 CFR 1.137.  See Maldague, 10 USPQ2d at 1478.

The Office does not generally question whether there has been an
intentional or otherwise impermissible delay in filing an initial
petition pursuant to  37 CFR 1.137(a) or (b), when such petition is
filed:  (A) within 3 months of the date theapplicant is first notified
that the application is abandoned; and (2) within 1 year of the date of
abandonment of the application.  Thus, an applicant seeking revival of
an abandoned application is advised to file a petition pursuant to  37
CFR 1.137 within 3 months of the first notification that the application
is abandoned to avoid the question of intentional delay being raised by
the Office (or by third parties seeking to challenge any patent issuing
from the application).

Where a petition pursuant to  37 CFR 1.137(a) or (b) is not filed within
3 months of the date the applicant is first notified that the
application is abandoned, the Office will consider there to be a
question as to whether the delay was unavoidable or unintentional. In
such instances, the Office will require:

(A) a showing as to how the delay between the date the applicant was
first notified that the application was abandoned and the date a  37 CFR
1.137(a) petition was filed was "unavoidable"; or

(B) further information as to the cause of the delay between the date
the applicant was first notified that the application was abandoned and
the date a  37 CFR 1.137(b) petition was filed, and how such delay was
"unintentional."

To avoid delay in the consideration of the merits of a petition under
37 CFR 1.137(a) or (b) in instances in which such petition was not filed
within 3 months of the date the applicant was first notified that the
application was abandoned, applicants should include a showing as to how
the delay between the date the applicant was first notified by the
Office that the application was abandoned and the filing of a petition
under  37 CFR 1.137 was (A) "unavoidable" in a petition under  37 CFR
1.137(a); or (B) "unintentional" in a petition under  37 CFR 1.137(b).

Where a petition pursuant to  37 CFR 1.137(a) or (b) is not filed within
1 year of the date of abandonment of the application (note that
abandonment takes place by operation of law, rather than by the mailing
of a Notice of Abandonment), the Office will require:

(A) further information as to when the applicant (or the applicant's
representative) first became aware of the abandonment of the
application; and

(B) a showing as to how the delay in discovering the abandoned status of
the application occurred despite the exercise of due care or diligence
on the part of the applicant (or applicant's representative) (see Pratt,
1887 Dec. Comm'r Pat. at 32-33).

To avoid delay in the consideration of the merits of a petition under
37 CFR 1.137(a) or (b) in instances in which such petition was not filed
within 1 year of the date of abandonment of the application, applicants
should include:

(A) the date that the applicant first became aware of the abandonment of
the application; and

(B) a showing as to how the delay in discovering the abandoned status of
the application occurred despite the exercise of due care or diligence
on the part of the applicant.

In either instance, applicant's failure to carry the burden of proof to
establish that the "entire" delay was "unavoidable" or "unintentional"
may lead to the denial of a petition under  37 CFR 1.137(a) or  37 CFR
1.137(b), regardless of the circumstances that originally resulted in
the abandonment of the application.

E. 	Party Whose Delay is Relevant

The question under  37 CFR 1.137 is whether the delay on the part of the
party having the right or authority to reply to avoid abandonment (or
not reply) was unavoidable or unintentional. When the applicant assigns
the entire right, title, and interest in an invention to a third party
(and thus does not retain any legal or equitable interest in the
invention), the applicant's delay is irrelevant in evaluating whether
the delay was unavoidable or even unintentional.  See Kim v. Quigg, 718
F. Supp. 1280, 1284, 12 USPQ2d 1604, 1607-08 (E.D. Va. 1989).  When an
applicant assigns the application to a third party (e.g., the
inventor/applicant's employer), and the third party decides not to file
a reply to avoid abandonment, the applicant's actions, inactions or
intentions are irrelevant under  37 CFR 1.137, unless the third party
has reassigned the application to the applicant prior to the due date
for the reply. Id.

Likewise, where the applicant permits a third party (whether a partial
assignee, licensee, or other party) to control the prosecution of an
application, the third party's decision whether or not to file a reply
to avoid abandonment is binding on the applicant. See Winkler, 221 F.
Supp. at 552, 138 USPQ at 667. Where an applicant enters an agreement
with a third party for the third party to take control of the
prosecution of an application, the applicant will be considered to have
given the third party the right and authority to prosecute the
application to avoid abandonment (or not prosecute), unless, by the
express terms of the contract between applicant and the third party, the
third party is conducting the prosecution of the application for the
applicant solely in a fiduciary capacity. See Futures Technology Ltd. v.
Quigg, 684 F. Supp. 430, 431, 7 USPQ2d 1588, 1589 (E.D. Va. 1988).
Otherwise, the applicant will be considered to have given the third
party unbridled discretion to prosecute (or not prosecute) the
application to avoid abandonment, and will be bound by the actions or
inactions of such third party.

F. Burden of Proof to Establish Unavoidable or Unintentional Delay

37 CFR 1.137(a)(3) requires a showing to the satisfaction of the
Commissioner that the entire delay in filing the required reply from the
due date for the reply until the filing of a grantable petition pursuant
to  37 CFR 1.137(a) was unavoidable. Therefore, the Office will require
the applicant in every petition under  37 CFR 1.137(a) to carry the
burden of proof to establish that the delay from the due date for the
reply until the filing of a grantable petition was unavoidable. See
Haines, 673 F. Supp. at 316-17, 5 USPQ2d at 1131-32.

37 CFR 1.137(b)(3) requires that a petition under  37 CFR 1.137(b) must
be accompanied by a statement that the entire delay in providing the
required reply from the due date for the reply until the filing of a
grantable petition pursuant to  37 CFR 1.137(b) was unintentional, but
also provides that "[t]he Commissioner may require additional
information where there is a question whether the delay was
unintentional." While the Office will generally require only the
statement that the entire delay in providing the required reply from the
due date for the reply until the filing of a grantable petition pursuant
to  37 CFR 1.137(b) was unintentional, the Office may require an
applicant to carry the burden of proof to establish that the delay from
the due date for the reply until the filing of a grantable petition was
unintentional within the meaning of  35 U.S.C. 41(a)(7) and  37 CFR
1.137(b) where there is a question whether the entire delay was
unintentional.  See Application of G, 11 USPQ2d at 1380.

G. Terminal Disclaimer Requirement

37 CFR 1.137(c) requires that a petition under either  37 CFR 1.137(a)
or 1.137(b) be accompanied by a terminal disclaimer (and fee),
regardless of the period of abandonment, in:

(A) a design application;

(B) a nonprovisional utility application filed before June 8, 1995; or

(C) a nonprovisional plant application filed before June 8, 1995.

The terminal disclaimer must dedicate to the public a terminal part of
the term of any patent granted thereon equivalent to the period of
abandonment of the application, and must also apply to any patent
granted on any continuing application entitled under  35 U.S.C. 120 to
the benefit of the filing date of the application for which revival is
sought. The terminal disclaimer requirement of  37 CFR 1.137(c) does not
apply to lapsed patents.

The filing of a terminal disclaimer is not a substitute for unavoidable
or unintentional delay.  See Application of Takao, 17 USPQ2d at 1159.
The requirement that the entire delay have been unavoidable (37 CFR
1.137(a)) or at least unintentional (37 CFR 1.137(b)) is distinct from
the requirement for a terminal disclaimer. Therefore, the filing of a
terminal disclaimer cannot excuse an intentional delay in filing a
petition or renewed petition to revive an abandoned application.
Likewise, an unavoidable or unintentional delay in filing a petition or
renewed petition to revive an abandoned application will not warrant
waiver of the terminal disclaimer requirement of  37 CFR 1.137(c).

In the event that an applicant considers the requirement for a terminal
disclaimer to be inappropriate under the circumstances of the
application at issue, the applicant should file a petition under  37 CFR
1.183 (and petition fee) to request a waiver of this requirement of  37
CFR 1.183.  Such a petition may request waiver of this requirement in
toto, or to the extent that such requirement exceeds the period
considered by applicant as the appropriate period of disclaimer.  The
grant of such a petition, however, is strictly limited to situations
wherein applicant has made a showing of an "extraordinary situation" in
which "justice requires" the requested relief.  Such situations are
namely when:

(A) the abandonment of the application caused no actual delay in
prosecution (e.g., application revived solely for copendency with a
continuing application whose prosecution was unaffected by the
abandonment, or an application awaiting decision by the Board of Appeals
and Interferences during period of abandonment); or

(B) the patent term is otherwise capped by the 20-year patent term as
set forth in  35 U.S.C. 154(b) (e.g  ., revival of an application is
sought solely for purposes of copendency with an application (other than
for a design patent) filed on or after June 8, 1995, or the 20-year
patent term provided by  35 U.S.C. 154(b) would be longer than 17 years
from grant less the period of abandonment).

Forms PTO/SB/62 and PTO/SB/63 may be used when filing a terminal
disclaimer in accordance with  37 CFR 1.137(c).

Form PTO/SB/62. Terminal Disclaimer to Accompany Petition (Period
Specified)[GRAPHIC]

Form PTO/SB/63. Terminal Disclaimer to Accompany Petition (Period of
Disclaimer to be Completed by Petitions Examiner)[GRAPHIC]

H. 	Request For Reconsideration

37 CFR 1.137(d) requires that any request for reconsideration or review
of a decision refusing to revive an abandoned application or lapsed
patent must be filed within 2 months of the decision refusing to revive
or within such time as set in the decision. 37 CFR 1.137(d) further
provides that, unless a decision indicates otherwise, this time period
for requesting reconsideration or review may be extended under the
provisions of  37 CFR 1.136.

37 CFR 1.137(d) specifies a time period within which a renewed petition
pursuant to  37 CFR 1.137 must be filed to be considered timely.  Where
an applicant files a renewed petition, request for reconsideration, or
other petition seeking review of a prior decision on a petition pursuant
to  37 CFR 1.137 outside the time period specified in  37 CFR 1.137(d),
the Office may require, inter alia, a specific showing as to how the
entire delay was "unavoidable" (37 CFR 1.137(a)) or "unintentional" (37
CFR 1.137(b)).  As discussed above, a delay resulting from the applicant
deliberately choosing not to persist in seeking the revival of an
abandoned application cannot be considered "unavoidable" or
"unintentional" within the meaning of  37 CFR 1.137, and the correctness
or propriety of the decision on the prior petition pursuant to  37 CFR
1.137, the correctness of the applicant's (or the applicant's
representative's) decision not to persist in seeking revival, the
discovery of new information or evidence, or other change in
circumstances subsequent to the abandonment or decision to not persist
in seeking revival are immaterial to such intentional delay caused by
the deliberate course of action chosen by the applicant.

I. Provisional Applications

37 CFR 1.137 is applicable to a provisional application abandoned for
failure to reply to an Office requirement.  A petition under  37 CFR
1.137(a) or (b) must be accompanied by any outstanding reply to an
Office requirement, since  37 CFR 1.137(a)(1) and 1.137(b)(1) permit the
filing of a continuing application in lieu of the required reply only in
a nonprovisional application.

35 U.S.C. 111(b)(5) provides that a provisional application shall be
regarded as abandoned 12 months after its filing date and shall not be
subject to revival thereafter.  Thus,  37 CFR 1.137(e) provides that a
provisional application "may be revived pursuant to this section so as
to be pending for a period of no longer than twelve months from its
filing date" and that "[u]nder no circumstances will a provisional
application be regarded as pending after twelve months from its filing
date."

A provisional application may be abandoned prior to 12 months from its
filing date for failure to reply to an Office requirement (e.g  .,
failure to submit the filing fee and/or cover sheet).  Applicant may
petition to have an abandoned provisional application revived as a
pending provisional application for a period of no longer than 12 months
from the filing date of the provisional application where the delay was
unavoidable or unintentional.  It would be permissible to file a
petition for revival later than 12 months from the filing date of the
provisional application but only to revive the application for the
12-month period following the filing of the provisional application.
Thus, even if the petition were granted to establish the pendency up to
the end of the 12-month period, the provisional application would not be
considered pending after 12 months from its filing date.

---SECTION---711.03(d) Examiner's Statement on Petition To Set Aside
Examiner's Holding

37 CFR 1.181 states that the examiner "may be directed by the
Commissioner to furnish a written statement within a specific time
setting forth the reasons for his or her decision upon the matters
averred in the petition, supplying a copy thereof to the petitioner."
Unless requested, however, such a statement should not be prepared. See
MPEP Section  1002.01.

---SECTION---711.04 Disposition of Abandoned Applications

37 CFR 1.14(b) states that "Complete applications (Section  1.51(a))
which are abandoned may be destroyed and hence may not be available for
access or copies as permitted by paragraph (a)(3)(iv) of this section
after 20 years from their filing date, except those to which particular
attention has been called and which have been marked for preservation."

As explained in MPEP Section  1302.07, a retention label is used to
indicate applications not to be destroyed.

---SECTION---711.04(a) Pulling and Forwarding Abandoned Applications

The files of abandoned applications are pulled and forwarded to the
Files Repository on a biweekly basis 1 month after the full 6-month
statutory period has expired. However, the date of abandonment is after
midnight of the date on which the set shortened statutory period,
including any extensions under  37 CFR 1.136, expired.

The applications should be carefully scrutinized by the appropriate
examiner to verify that they are actually abandoned. A check should be
made of files containing a decision of the Board of Patent Appeals and
Inteferences for the presence of allowed claims to avoid their being
erroneously sent to the Files Repository.

Although the abandoned files are not pulled until the maximum
permissible period for which an extension of time under  37 CFR 1.136(a)
plus 1 month has expired, the date of the abandonment is after midnight
of the date the period for reply actually expired. This is normally the
end of the 3 month shortened statutory period.

---SECTION---711.04(b) Ordering of Patented and Abandoned Files

In examination of an application it is sometimes necessary to inspect
the application papers of a previously patented or abandoned
application. It is always necessary to do so in the examination of a
reissue application.

Recently patented and abandoned files are stored at the Files Repository
located near the other PTO buildings in Crystal City (Arlington, VA).
Older files are housed in warehouses located off site (outside of
Crystal City).

Patented and abandoned files are ordered by means of a PALM video
display transaction. To place such an order, the examiner is required to
input his/her PALM location code, employee number, and patent number(s)
and/or application number(s) of the file(s) that are needed. After
transmission of the request transaction by the examiner, a "response"
screen appears on the video display terminal which informs him/her of
the status of the request for each file. The examiner is informed that
the request is:

(A) accepted;

(B) accepted, but for which the file is stored at a warehouse off site
(in which case delivery time is increased);

(C) not accepted since the file is not located at the repository or
warehouse;

(D) not accepted since a previous request for the file has not yet been
filled; or

(E) not accepted since the patent or application number inputted is not
valid.

Periodically each day, personnel at the Files Repository perform a PALM
print transaction which produces a list of all accepted requests in
patent number order and, for requests for abandoned files, in
application number order. The printed record of each request is detached
from the list when its associated file is found. It is then stapled to
it. Throughout the day, periodic deliveries of files are made directly
to the offices of their requestors by Files Repository personnel. Upon
delivery of files at the various locations, files that are ready to be
returned to the repository are picked up.

With the exception of certain older files, the drawings of patented and
abandoned files, if any, are now stored within their respective
application file wrappers. Since it is desired not to separate one from
the other, both the file and its drawings are delivered when a file is
ordered.

---SECTION---711.04(c) Notifying Applicants of Abandonment

The Patent Examining Corps currently mails to the correspondence address
of record, a Notice of Abandonment form PTOL-1432 in all applications
which become abandoned in the Corps for failure to prosecute. However,
in no case will mere failure to receive a notice of abandonment affect
the status of an abandoned application.

This procedure should enable applicants to take appropriate and diligent
action to reinstate an application inadvertently abandoned for failure
to timely reply to an official communication. In most cases, a petition
to revive under  37 CFR 1.137 will be the appropriate remedy. It may be
that a reply to the Office action was mailed to the Office with a
certificate of mailing declaration as a part thereof (MPEP Section  512)
but was not received in the Office. In this instance, adequate relief
may be available by means of a petition to withdraw the holding of
abandonment.

In any instance, if action is not taken promptly after receiving the
notice of abandonment, appropriate relief may not be granted. If a lack
of diligent action is predicated on the contention that neither the
Office action nor the notice of abandonment was received, one may
presume that there is a problem with the correspondence address of
record. Accordingly, attention is directed to MPEP Section  402 and
Section  601.03 dealing with changes of address. In essence, it is
imperative that a paper notifying the Office of a change of address be
filed promptly in each application in which the correspondence address
is to be changed (except as provided for under Customer Number practice
- see MPEP Section  403).

---SECTION---711.05 Letter of Abandonment Received After Application is
Allowed

Receipt of a letter of abandonment while an application is allowed is
acknowledged by the Publishing Division.

An express abandonment arriving after the issue fee has been paid will
not be accepted without a showing of one of the reasons indicated in  37
CFR 1.313(b), or else a showing under  37 CFR 1.183 justifying
suspension of  37 CFR 1.313.

---SECTION---711.06 Abstracts, Abbreviatures, and Defensive Publications

Abstracts were prepared and published in accordance with the Notice of
January 25, 1949, 619 O.G. 258. Each abstract includes a summary of the
disclosure of the abandoned application, and in applications having
drawings, a figure of the drawing. The publication of such abstracts was
discontinued in 1953.

ABBREVIATURES

Abbreviatures were prepared and published in accordance with the
procedure indicated in the Notice of October 13, 1964, 808 O.G. 1. Each
abbreviature contains a specific portion of the disclosure of the
abandoned application, preferably a detailed representative claim, and,
in applications having drawings, a figure of the drawing. The
publication of such abbreviatures was discontinued in 1965.

DEFENSIVE PUBLICATIONS

The Defensive Publication Program, which provided for the publication of
the abstract of the technical disclosure of a pending application if the
applicant waived his or her rights to an enforceable patent, was removed
from the rules effective May 8, 1985, in view of the applicant's ability
to obtain a Statutory Invention Registration.

An application was laid open for public inspection laid open under the
Defensive Publication Program and the applicant provisionally abandoned
the application, retaining rights to an interference for a limited
period of 5 years from the earliest effective U.S. filing date.

The defensive publication of an application precluded a continuing
application (divisional, continuation-in-part, or continuation) filed
under  35 U.S.C. 120 from being entitled to the benefit of the filing
date of the defensively published application unless a continuing
application was filed within 30 months after the earliest effective U.S.
Filing date. Where a similar application was not filed until after
expiration of the 30month period, the application was examined, but it
was not entitled to claim the benefit of the earlier filing date of the
defensive publication application.

If a first continuing application was filed within 30 months from the
earliest U.S. effective filing date of the application published under
the Defensive Publication Program, later copending continuing
applications (such as divisions if restriction is required during the
prosecution of the first continuing application) were not barred and
could be filed during the pendency of the first continuing application,
even though beyond the 30 month period, without loss of the right to
claim the benefit of the filing date of the Defensive Publication
application.

The Defensive Publication Abstract and a selected figure of the drawing,
if any, were published in the Official Gazette. Defensive Publication
Search Copies, containing the defensive publication abstract and
suitable drawings, if any, were provided for the application file, the
Patent Search Room and the examiner's search files.

The defensive publication application files are maintained in the File
Information Unit (Record Room).

Defensive Publication Number

Distinct numbers are assigned to all Defensive Publications published
December 16, 1969 through October 1980, for example.

[GRAPHIC]

For Defensive Publications published on and after November 4, 1980, a
different numbering system is used.

The revised numbering system is as follows:

[GRAPHIC]

Defensive Publications are included in subclass 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 December 16, 1969
appears at 869 O.G. 687.

---SECTION---711.06(a) Citation and Use of Abstracts, Abbreviatures, and
Defensive Publications as References

It is important that abstracts, abbreviatures, and defensive
publications (O.G. Defensive Publication and Defensive Publication
Search Copy) be referred to as publications.

These printed publications are cited as prior art under  35 U.S.C.
102(a) or 102(b) effective from the date of publication in the Official
Gazette.  See Ex parte Osmond, 191 USPQ 334 (Bd. App. 1973) and In re
Osmond, 191 USPQ 340 (Bd. App. 1976).

An application or portion thereof from which an abstract, abbreviature
or defensive publication has been prepared, in the sense that the
application is evidence of prior knowledge, may be used as a reference
under 35 U.S.C.102(a), effective from the actual date of filing in the
United States.

These publications may be used alone or in combination with other prior
art in rejecting claims under  35 U.S.C. 102 and 103.

Defensive Publications are listed with "U.S. Patent Documents."
Abstracts and Abbreviatures are listed under "Other References" in the
citation thereof as follows:

(A) Abstracts and Abbreviatures Brown, (abstract or abbreviature) of
Serial No. ........, filed ............., published in O.G. .........,
on ........, (list classification).

(B) Applications or designated portions thereof, abstracts,
abbreviatures, and defensive publications Jones, Application Serial No.
........, filed ............., laid open to public inspection on
............... as noted at .......... O.G. (portion of application
relied on), (list classification, if any).

---SECTION---713 Interviews

The personal appearance of an applicant, attorney, or agent before the
examiner or a telephone conversation or video conference between such
parties presenting matters for the examiner's consideration is
considered an interview.

---SECTION---713.01 General Policy, How Conducted

37 CFR 1.133 Interviews.

(a) Interviews with examiners concerning applications and other matters
pending before the Office must be had in the examiners' rooms at such
times, within office hours, as the respective examiners may designate.
Interviews will not be permitted at any other time or place without the
authority of the Commissioner. Interviews for the discussion of the
patentability of pending applications will not be had before the first
official action thereon. Interviews should be arranged for in advance.

(b) In every instance where reconsideration is requested in view of an
interview with an examiner, a complete written statement of the reasons
presented at the interview as warranting favorable action must be filed
by the applicant. An interview does not remove the necessity for reply
to Office actions as specified in Section Section  1.111 and 1.135.

Interviews are permissible on any working day except during periods of
overtime work.

VIDEO CONFERENCE CENTER

In the interest of providing better service to its customers, the Patent
and Trademark Office (PTO) has established a Video Conference Center
(VCC) to expedite patent and trademark prosecution. The VCC is presently
administered by the Patent Academy and is available for authorized
official business during normal business hours (8:30 AM - 5:00 PM, EST).
The VCC equipment includes a high resolution document camera, direct
computer input, VCR display capability, and a high speed, high
resolution G-4 facsimile machine. The Patent and Trademark Depository
Library Program office maintains a current list of all the off-site
locations where a video conference may be held. At this time, use of the
VCC will be limited to our partnership Patent and Trademark Depository
Libraries (PTDLs) located at Sunnyvale, Calif. and the Great Lakes
Patent and Trademark Center at the Detroit Public Library, which have
duplicate video equipment. Customers wishing to utilize the facilities
at the above noted PTDLs, rather than coming to the PTO for a
face-to-face interview, should contact the patent examiner or trademark
examining attorney and identify two alternative dates and times for a
video conference. The patent examiner or trademark examining attorney
will then contact Patent Academy personnel who will, in turn, make all
the arrangements. The customer will be notified as to the date and time
of the video conference.

SCHEDULING AND CONDUCTING AN INTERVIEW

An interview should normally be arranged for in advance, as by letter,
facsimile, telegram or telephone call, in order to insure that the
primary examiner and/or the examiner in charge of the application will
be present and available in the Office. An interview in the Video
Conference Center must be arranged at least 3 days in advance.  When a
second art unit is involved (Patentability Report), the availability of
the second examiner should also be checked. (See MPEP Section
705.01(f).) An appointment for interview once arranged should be kept.
Many applicants and attorneys plan trips to Washington or off-site video
conferencing locations in reliance upon such appointments. When, after
an appointment has been made, circumstances compel the absence of the
examiner or examiners necessary to an effective interview, the other
party should be notified immediately so that substitute arrangements may
be made.

When a telephone call is made to an examiner and it becomes evident that
a lengthy discussion will ensue or that the examiner needs time to
restudy the situation, the call should be terminated with an agreement
that the examiner will call back at a specified time. Such a call and
all other calls originated by the examiner should be made through the
FTS (Federal Telecommunications System) even though a collect call had
been authorized. It is helpful if amendments and other papers, such as
the letter of transmittal, include the complete telephone number with
area code and extension, preferably near the signature of the writer.

The unexpected appearance of an attorney or applicant requesting an
interview without any previous notice to the examiner may well justify
his or her refusal of the interview at that time, particularly in an
involved case.

An examiner's suggestion of allowable subject matter may justify
indicating the possibility of an interview to accelerate early agreement
on allowable claims.

An interview should be had only when the nature of the case is such that
the interview could serve to develop and clarify specific issues and
lead to a mutual understanding between the examiner and the applicant,
and thereby advance the prosecution of the application. Thus, the
attorney when presenting himself or herself for an interview should be
fully prepared to discuss the issues raised in the Office action. When
it is obvious that the attorney is not so prepared, an interview should
not be permitted. It is desirable that the attorney or applicant
indicate in advance what issues he or she desires to discuss at the
interview by submitting, in writing, a proposed amendment. This would
permit the examiner to prepare in advance for the interview and to focus
on the matters set forth in the proposed amendment.

Examiners should avoid unnecessary interruptions during interviews with
attorneys or inventors. In this regard, examiners should notify their
receptionist, immediately prior to an interview, to not complete
incoming telephone calls unless such are of an emergency nature. As
appropriate, examiners should familiarize themselves with the status and
existing issues in an application or reexamination proceeding before an
interview.

The examiner should not hesitate to state, if such be the case, that
claims presented for consideration at the interview require further
search and study. Nor should the examiner hesitate to conclude an
interview when it appears that no common ground can be reached nor when
it becomes apparent that the application requires further amendment or
an additional action by the examiner. However, the examiner should
attempt to identify issues and resolve differences during the interview
as much as possible.

It is the responsibility of both parties to the interview to see that it
is not extended beyond a reasonable period, usually not longer than 30
minutes. It is the duty of the primary examiner to see that an interview
is not extended beyond a reasonable period even when he or she does not
personally participate in the interview.

During an interview with an applicant who is prosecuting his or her own
case and is not familiar with Office procedure the examiner may make
suggestions that will advance the prosecution of this case; this lies
wholly within his or her discretion. Too much time, however, should not
be allowed for such interviews.

Examiners may grant one interview after final rejection. See MPEP
Section  713.09.

Where the reply to a first complete action includes a request for an
interview, a telephone consultation to be initiated by the examiner or a
video conference, or where an out-of-town attorney under similar
circumstances requests that the examiner defer taking any further action
on the case until the attorney's next visit to Washington (provided such
visit is not beyond the date when the Office action would normally be
given), the examiner, as soon as he or she has considered the effect of
the reply, should grant such request if it appears that the interview or
consultation would result in expediting the case to a final action.

Where agreement is reached as a result of an interview, applicant's
representative should be advised that an amendment pursuant to the
agreement should be promptly submitted. If the amendment prepares the
case for final action, the examiner should take the case up as special.
If not, the case should await its turn.

Consideration of a filed amendment may be had by hand delivery of a
duplicate copy of said amendment.

Early communication of the results of the consideration should be made
to applicant; if requested, indicate on attorney's copy any agreement;
initial and date both copies.

Although entry of amendatory matter usually requires actual presence of
the original paper, examiner and technical support staff processing
should proceed as far as practicable based on the duplicate copy. The
extent of processing will depend on each amendment.

The substance of any interview, whether in person, by video conference,
or by telephone must be made of record in the application. See MPEP
Section  713.04.

VIEWING OF VIDEO TAPES DURING INTERVIEWS

The Patent and Trademark Office has video tape equipment available in
the facilities of the Patent Academy for viewing video tapes from
applicants during interviews with patent examiners.

The video tape equipment may use VHS and UHS (3/4-inch tape) cassettes.

Attorneys or applicants wishing to show a video tape during an examiner
interview must be able to demonstrate that the content of the video tape
has a bearing on an outstanding issue in the application and its viewing
will advance the prosecution of the application. Prior approval of
viewing of a video tape during an interview must be granted by the
supervisory patent examiner. Also, use of the room and equipment must be
granted by the Training Manager to avoid any conflict with the Patent
Academy.

Requests to use video tape viewing equipment for an interview should be
made at least 1 week in advance to allow the Patent Academy staff
sufficient time to ensure the availability and proper scheduling of both
a room and equipment.

Interviews using Office video tape equipment will be held only in the
Patent Academy facilities located in Crystal Square Four, Suite 700.
Attorneys or applicants should not contact the Patent Academy directly
regarding availability and scheduling of video equipment. All scheduling
of rooms and equipment should be done through and by the examiner
conducting the interview. The substance of the interview, including a
summary of the content of the video tape must be made of record in the
application. See MPEP Section  713.04.

EXAMINATION BY EXAMINER OTHER THAN THE ONE WHO CONDUCTED THE INTERVIEW

Sometimes the examiner who conducted the interview is transferred to
another group or resigns, and the examination is continued by another
examiner. If there is an indication that an interview had been held, the
second examiner should ascertain if any agreements were reached at the
interview. Where conditions permit, as in the absence of a clear error
or knowledge of other prior art, the second examiner should take a
position consistent with the agreements previously reached. See MPEP
Section  812.01 for a statement of telephone practice in restriction and
election of species situations.

---SECTION---713.02 Interviews Prior to First Official Action

Prior to filing, no interview is permitted. However, in the examiner's
discretion, a limited amount of time may be spent in indicating the
field of search to an attorney, searcher or inventor.

A request for an interview prior to the first Office action is
ordinarily granted in continuing or substitute applications. A request
for an interview in all other applications before the first action is
untimely and will not be acknowledged if written, or granted if oral.
37 CFR 1.133(a).

SEARCHING IN GROUP

Search in the group art unit should be permitted only with the consent
of a primary examiner.

EXPOUNDING PATENT LAW

The Patent and Trademark Office cannot act as an expounder of the patent
law, nor as a counsellor for individuals.

---SECTION---713.03 Interview for "Sounding Out"  Examiner Not Permitted

Interviews that are solely for the purpose of "sounding out" the
examiner, as by a local attorney acting for an out-of-town attorney,
should not be permitted when it is apparent that any agreement that
would be reached is conditional upon being satisfactory to the principal
attorney.

---SECTION---713.04 Substance of Interview Must Be Made of Record

A complete written statement as to the substance of any face-to-face,
video conference, or telephone interview with regard to the merits of an
application must be made of record in the application, whether or not an
agreement with the examiner was reached at the interview. See  37 CFR
1.133(b),  MPEP Section  713.01.

37 CFR 1.133 Interviews

                  +++   

(b) In every instance where reconsideration is requested in view of an
interview with an examiner, a complete written statement of the reasons
presented at the interview as warranting favorable action must be filed
by the applicant. An interview does not remove the necessity for reply
to Office actions as specified in Section Section  1.111 and 1.135.

37 CFR 1.2 Business to be transacted in writing.

All business with the Patent and Trademark Office should be transacted
in writing. The personal attendance of applicants or their attorneys or
agents at the Patent and Trademark Office is unnecessary. The action of
the Patent and Trademark Office will be based exclusively on the written
record in the Office. No attention will be paid to any alleged oral
promise, stipulation, or understanding in relation to which there is
disagreement or doubt.

The action of the Patent and Trademark Office cannot be based
exclusively on the written record in the Office if that record is itself
incomplete through the failure to record the substance of interviews.

It is the responsibility of the applicant or the attorney or agent to
make the substance of an interview of record in the application file,
unless the examiner indicates he or she will do so. It is the examiner's
responsibility to see that such a record is made and to correct material
inaccuracies which bear directly on the question of patentability.

Examiners must complete an Interview Summary form PTOL-413 for each
interview where a matter of substance has been discussed during the
interview by checking the appropriate boxes and filling in the blanks.
Discussions regarding only procedural matters, directed solely to
restriction requirements for which interview recordation is otherwise
provided for in MPEP Section  812.01, or pointing out typographical
errors in Office actions or the like, are excluded from the interview
recordation procedures below. Where a complete record of the interview
has been incorporated in an examiner's amendment, it will not be
necessary for the examiner to complete an Interview Summary form.

The Interview Summary form PTOL 413 shall be given an appropriate paper
number, placed in the right hand portion of the file, and listed on the
"Contents" list on the file wrapper. In a personal interview, the
duplicate copy of the Interview Summary form is given to the applicant
(or attorney or agent) at the conclusion of the interview. In the case
of a telephonic or video conference interview, the copy is mailed to the
applicant's correspondence address either with or prior to the next
official communication.  In addition, a copy of the form may be faxed to
applicant (or applicant's attorney or agent) at the conclusion of the
interview. If additional correspondence from the examiner is not likely
before an allowance or if other circumstances dictate, the Interview
Summary form should be mailed promptly after the telephonic or video
conference interview rather than with the next official communication.

The PTOL-413 form provides for recordation of the following information:

(A) application number;

(B) name of applicant;

(C) name of examiner;

(D) date of interview;

(E) type of interview (personal, telephonic, or video conference);

(F) name of participant(s) (applicant, attorney, or agent, etc.);

(G) an indication whether or not an exhibit was shown or a demonstration
conducted;

(H) an identification of the claims discussed;

(I) an identification of the specific prior art discussed;

(J) an indication whether an agreement was reached and if so, a
description of the general nature of the agreement (may be by attachment
of a copy of amendments or claims agreed as being allowable).
(Agreements as to allowability are tentative and do not restrict further
action by the examiner to the contrary.);

(K) the signature of the examiner who conducted the interview;

(K) names of other Patent and Trademark Office personnel present.

The PTOL 413 form also contains a statement reminding the applicant of
his or her responsibility to record the substance of the interview.

It is desirable that the examiner orally remind the applicant of his or
her obligation to record the substance of the interview in each case
unless both applicant and examiner agree that the examiner will record
same. Where the examiner agrees to record the substance of the
interview, or when it is adequately recorded on the Interview Summary
form or in an attachment to the form, the examiner will check a box at
the bottom of the form informing the applicant that he or she need not
supplement the form by submitting a separate record of the substance of
the interview.

It should be noted, however, that the Interview Summary form will not be
considered a complete and proper recordation of the interview unless it
includes, or is supplemented by the applicant or the examiner to
include, all of the applicable items required below concerning the
substance of the interview.

The complete and proper recordation of the substance of any interview
should include at least the following applicable items:

(A) a brief description of the nature of any exhibit shown or any
demonstration conducted;

(B) identification of the claims discussed;

(C) identification of specific prior art discussed;

(D) identification of the principal proposed amendments of a substantive
nature discussed, unless these are already described on the Interview
Summary form completed by the examiner;

(E) the general thrust of the principal arguments of the applicant and
the examiner should also be identified, even where the interview is
initiated by the examiner. The identification of arguments need not be
lengthy or elaborate. A verbatim or highly detailed description of the
arguments is not required. The identification of the arguments is
sufficient if the general nature or thrust of the principal arguments
can be understood in the context of the application file. Of course, the
applicant may desire to emphasize and fully describe those arguments
which he or she feels were or might be persuasive to the examiner;

(F) a general indication of any other pertinent matters discussed; and

(G) if appropriate, the general results or outcome of the interview
unless already described in the Interview Summary form completed by the
examiner.

Examiners are expected to carefully review the applicant's record of the
substance of an interview. If the record is not complete or accurate,
the examiner may give the applicant a 1-month time period to complete
the reply under  37 CFR 1.135(c) where the record of the substance of
the interview is in a reply to a nonfinal Office action.

7.84 Amendment Is Non-Responsive to Interview

The reply filed on [1] is not fully responsive to the prior Office
action because it fails to include a complete or accurate record of the
substance of the [2] interview. [3]  Since the above-mentioned reply
appears to be bona fide, applicant is given a TIME PERIOD of ONE (1)
MONTH or THIRTY (30) DAYS from the date of this notice, whichever is
longer, within which to supply the omission or correction in order to
avoid abandonment.  EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER
37 CFR 1.136(a).

Examiner Note:

1. In bracket 2, insert the date of the interview.

2. In bracket 3, explain the deficiencies.

EXAMINER TO CHECK FOR ACCURACY

Applicant's summary of what took place at the interview should be
carefully checked to determine the accuracy of any argument or statement
attributed to the examiner during the interview. If there is an
inaccuracy and it bears directly on the question of patentability, it
should be pointed out in the next Office letter. If the claims are
allowable for other reasons of record, the examiner should send a letter
setting forth his or her version of the statement attributed to him or
her.

If the record is complete and accurate, the examiner should place the
indication "Interview record OK" on the paper recording the substance of
the interview along with the date and the examiner's initials.

---SECTION---713.05 Interviews Prohibited or Granted, Special Situations

Saturday interviews, see MPEP Section  713.01.

Except in unusual situations, no interview is permitted after the brief
on appeal is filed or after an application has been passed to issue.

An interview may be appropriate before applicant's first reply when the
examiner has suggested that allowable subject matter is present or where
it will assist applicant in judging the propriety of continuing the
prosecution.

Office employees are forbidden to hold either oral or written
communication with an unregistered or a suspended or excluded attorney
or agent regarding an application unless it is one in which said
attorney or agent is the applicant. See MPEP Section  105.

Interviews are frequently requested by persons whose credentials are of
such informal character that there is serious question as to whether
such persons are entitled to any information under the provisions of  37
CFR 1.14. In general, interviews are not granted to persons who lack
proper authority from the applicant or attorney of record in the form of
a paper on file in the application or do not have in their possession a
copy of the application file. A MERE POWER TO INSPECT IS NOT SUFFICIENT
AUTHORITY FOR GRANTING AN INTERVIEW INVOLVING THE MERITS OF THE
APPLICATION.

However, interviews may be granted to registered individuals who are
known to be the local representatives of the attorney in the
application, even though a power of attorney to them is not of record in
the particular application. When prompt action is important an interview
with the local representative may be the only way to save the
application from abandonment.  See MPEP Section  408.

If a registered individual seeking the interview has in his or her
possession a copy of the application file, the examiner may accept his
or her statement that he or she is authorized to represent the applicant
under  37 CFR 1.34 or is the person named as the attorney of record.

Interviews normally should not be granted unless the requesting party
has authority to bind the principal concerned.

The availability of personal interviews in the "Conference Period,"
which is the time between the filing of applicant's thorough first reply
and a concluding action by the examiner, for attorneys resident or
frequently in the Washington, D.C. area is obvious. For others, more
remote, telephone or video conference interviews may prove valuable.
However, present Office policy places great emphasis on telephone
interviews initiated by the examiner to attorneys and agents of record.
See MPEP Section  408.

The examiner, by making a telephone call, may be able to suggest minor,
probably quickly acceptable changes which would result in allowance. If
there are major questions or suggestions, the call might state them
concisely, and suggest a further telephone or personal interview, at a
prearranged later time, giving applicant more time for consideration
before discussing the points raised.

For an interview with an examiner who does not have negotiation
authority, arrangements should always include an examiner who does have
such authority, and who is familiar with the case, so that authoritative
agreement may be reached at the time of the interview.

GROUPED INTERVIEWS

For attorneys remote from the Washington, D.C. area who prefer personal
or video conference interviews, the grouped interview practice is
effective. If in any case there is a prearranged interview, with
agreement to file a prompt supplemental amendment putting the case as
nearly as may be in condition for concluding action, prompt filing of
the supplemental amendment gives the application special status, and
brings it up for immediate special action.

---SECTION---713.06 No Inter Partes Questions Discussed   Ex Parte

The examiner may not discuss inter partes questions ex parte with any of
the interested parties.

---SECTION---713.07 Exposure of Other Cases

Prior to an interview in the examiner's room, the examiner should
arrange his or her desk so that all files, drawings and other papers,
except those necessary in the interview, are placed out of view. See
MPEP Section  101.

---SECTION---713.08 Demonstration, Exhibits, Models

The invention in question may be exhibited or demonstrated during the
interview by a model thereof. A model received by the examiner from the
applicant or his or her attorney which complies with  37 CFR 1.91 and
which is made part of the application record must be properly recorded
on the "Contents" portion of the application file wrapper.  See MPEP
Section  608.03 and Section  608.03(a).

Oftentimes a model or exhibit is not given into the custody of the
Office but is brought directly into the group by the attorney solely for
inspection or demonstration during the course of the interview. This is
permissible. If the model or exhibit is merely used for demonstration
purpose and is not made part of the record (does not comply with  37 CFR
1.91), a full description as to what was demonstrated/exhibited must be
made of record in the application.  See  37 CFR 1.133(b).
Demonstrations of apparatus or exhibits too large to be brought into the
Office may be viewed by the examiner outside of the Office (in the
Washington, D.C. area) with the approval of the supervisory patent
examiner.  It is presumed that the witnessing of the demonstration or
the reviewing of the exhibit is actually essential in the developing and
clarifying of the issues involved in the application.

---SECTION---713.09 Finally Rejected Application

Normally, one interview after final rejection is permitted. However,
prior to the interview, the intended purpose and content of the
interview should be presented briefly, preferably in writing. Such an
interview may be granted if the examiner is convinced that disposal or
clarification for appeal may be accomplished with only nominal further
consideration. Interviews merely to restate arguments of record or to
discuss new limitations which would require more than nominal
reconsideration or new search should be denied.  See MPEP Section
714.13.

Interviews may be held after the expiration of the shortened statutory
period and prior to the maximum permitted statutory period of 6 months
without an extension of time.  See MPEP Section  706.07(f).

A second or further interview after a final rejection may be held if the
examiner is convinced that it will expedite the issues for appeal or
disposal of the application.

---SECTION---713.10 Interview Preceding Filing Amendment Under 37 CFR
1.312

After an application is sent to issue, it is technically no longer under
the jurisdiction of the primary examiner.  37 CFR 1.312. An interview
with an examiner that would involve a detailed consideration of claims
sought to be entered and perhaps entailing a discussion of the prior art
for determining whether or not the claims are allowable should not be
given. Obviously an applicant is not entitled to a greater degree of
consideration in an amendment presented informally than is given an
applicant in the consideration of an amendment when formally presented,
particularly since consideration of an amendment filed under  37 CFR
1.312 cannot be demanded as a matter of right.

Requests for interviews on cases where a notice of allowance has been
mailed should be granted only with specific approval of the Group
Director upon a showing in writing of extraordinary circumstances.

---SECTION---714 Amendments, Applicant's Action

The applicant may amend:

(A) before or after the first examination and action and also after the
second or subsequent examination or reconsideration as specified in  37
CFR 1.112;

(B) after final rejection, if the amendment meets the criteria of  37
CFR 1.116; and

(C) when and as specifically required by the examiner.

In patent-owner-filed reexaminations, the patent owner may amend at the
time of the request for reexamination in accordance with  37 CFR
1.510(e).  In any reexamination proceeding, no amendment or response can
be filed between the date of the request for reexamination and the order
for reexamination.  See  37 CFR 1.530(a). Following the order for
reexamination under  37 CFR 1.525 and prior to the examination phase of
a reexamination proceeding, an amendment may be filed only with the
patent owner's statement under  37 CFR 1.530(b). During the examination
phase of the reexamination proceeding, an amendment may be filed:

(A) after the first examination as specified in  37 CFR 1.112;

(B) after final rejection, if the amendment meets the criteria of  37
CFR 1.116; and

(C) when and as specifically required by the examiner.

See also MPEP Section  714.12.

For amendments in reexamination proceedings see MPEP Section  2250 and
Section  2266.

---SECTION---714.01 Signatures to Amendments

An amendment must be signed by a person having authority to prosecute
the application. An unsigned or improperly signed amendment will not be
entered. See MPEP Section  714.01(a).

To facilitate any telephone call that may become necessary, it is
recommended that the complete telephone number with area code and
extension be given, preferably near the signature.

---SECTION---714.01(a) Unsigned or Improperly Signed Amendment

37 CFR 1.33 Correspondence respecting patent applications, reexamination
proceedings, and other proceedings

                  +++   

(b) Amendments and other papers filed in the application must be signed
by:

(1) An attorney or agent of record appointed in compliance with Section
1.34(b);

(2) A registered attorney or agent not of record who acts in a
representative capacity under the provisions of Section  1.34(a);

(3) The assignee of record of the entire interest, if there is an
assignee of record of the entire interest;

(4) An assignee of record of an undivided part interest, and any
assignee(s) of the remaining interest and any applicant retaining an
interest, if there is an assignee of record of an undivided part
interest; or

(5) All of the applicants (Section Section  1.42, 1.43 and 1.47) for
patent, unless there is an assignee of record of the entire interest and
such assignee has taken action in the application in accordance with
Section Section  3.71 and 3.73.

                  +++   

An unsigned amendment or one not properly signed by a person having
authority to prosecute the case is not entered. This applies, for
instance, where the amendment is signed by one only of two applicants
and the one signing has not been given a power of attorney by the other
applicant.

If copies of papers which require an original signature as set forth in
37 CFR 1.4(e) are filed, the signature must be applied after the copies
are made.  MPEP Section  714.07.

When an unsigned or improperly signed amendment is received the
amendment will be listed on the file wrapper, but not entered. The
examiner will notify applicant of the status of the application,
advising him or her to furnish a duplicate amendment properly signed or
to ratify the amendment already filed. In an application not under final
rejection, applicant should be given a 1-month time period in which to
ratify the previously filed amendment (37 CFR 1.135(c)).

Applicants may be advised of unsigned amendments by use of Form
Paragraph 7.84.01.

7.84.01 Paper Is Unsigned

The proposed reply filed on [1] has not been entered because it is
unsigned.  Since the above-mentioned reply appears to be bona fide,
applicant is given a TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS
from the mailing date of this notice, whichever is longer, within which
to supply the omission or correction in order to avoid abandonment.
EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER  37 CFR 1.136(a).

Sometimes problems arising from unsigned or improperly signed amendments
may be disposed of by calling in the local representative of the
attorney of record, since he or she may have the authority to sign the
amendment.

An amendment signed by a person whose name is known to have been removed
from the registers of attorneys and agents under the provisions of  37
CFR 10.11 is not entered. The file and unentered amendment are submitted
to the Office of Enrollment and Discipline for appropriate action.

---SECTION---714.01(c) Signed by Attorney Not of Record

See MPEP Section  405. A registered attorney or agent acting in a
representative capacity under  37 CFR 1.34, may sign amendments even
though he does not have a power of attorney in the application. See MPEP
Section  402.

---SECTION---714.01(d) Amendment Signed by Applicant But Not by Attorney
of Record

If an amendment signed by the applicant is received in an application in
which there is a duly appointed attorney, the amendment should be
entered and acted upon. Attention should be called to  37 CFR 1.33(a) in
patent applications and to  37 CFR 1.33(c) in reexamination proceedings.
Two copies of the action should be prepared, one being sent to the
attorney and the other directly to the applicant. The notation: "Copy to
applicant" should appear on the original and on both copies.

---SECTION---714.02 Must Be Fully Responsive

37 CFR 1.111 Reply by applicant or patent owner.

(a) After the Office action, if adverse in any respect, the applicant or
patent owner, if he or she persists in his or her application for a
patent or reexamination proceeding, must reply thereto and may request
reconsideration or further examination, with or without amendment.

(b) In order to be entitled to reconsideration or further examination,
the applicant or patent owner must reply to the Office action.  The
reply by the applicant or patent owner must be reduced to a writing
which distinctly and specifically points out the supposed errors in the
examiner's action and must reply to every ground of objection and
rejection in the prior Office action.  The reply must present arguments
pointing out the specific distinctions believed to render the claims,
including any newly presented claims, patentable over any applied
references.  If the reply is with respect to an application, a request
may be made that objections or requirements as to form not necessary to
further consideration of the claims be held in abeyance until allowable
subject matter is indicated.  The applicant's or patent owner's reply
must appear throughout to be a bona fide attempt to advance the
application or the reexamination proceeding to final action.  A general
allegation that the claims define a patentable invention without
specifically pointing out how the language of the claims patentably
distinguishes them from the references does not comply with the
requirements of this section.

(c) In amending in response to a rejection of claims in an application
or patent undergoing reexamination, the applicant or patent owner must
clearly point out the patentable novelty which he or she thinks the
claims present in view of the state of the art disclosed by the
references cited or the objections made. He or she must also show how
the amendments avoid such references or objections. (See Section Section
1.135 and 1.136 for time for reply.)

In all cases where reply to a requirement is indicated as necessary to
further consideration of the claims, or where allowable subject matter
has been indicated in an application, a complete reply must either
comply with the formal requirements or specifically traverse each one
not complied with.

Drawing and specification corrections, presentation of a new oath and
the like are generally considered as formal matters. However, the line
between formal matter and those touching the merits is not sharp, and
the determination of the merits of a case may require that such
corrections, new oath, etc., be insisted upon prior to any indication of
allowable subject matter.

The claims may be amended by canceling particular claims, by presenting
new claims, or by rewriting particular claims as indicated in  37 CFR
1.121(a)(2) and (b)(2). The requirements of  37 CFR 1.111(b) must be
complied with by pointing out the specific distinctions believed to
render the claims patentable over the references in presenting arguments
in support of new claims and amendments.

An amendment submitted after a second or subsequent non-final action on
the merits which is otherwise responsive but which increases the number
of claims drawn to the invention previously acted upon is not to be held
not fully responsible for that reason alone. (See  37 CFR 1.112,  MPEP
Section  706.)

The prompt development of a clear issue requires that the replies of the
applicant meet the objections to and rejections of the claims. Applicant
should also specifically point out the support for any amendments made
to the disclosure. See MPEP Section  2163.06.

An amendment attempting to "rewrite" a claim in the manner set forth in
37 CFR 1.121(a)(2)(ii) and (b)(2)(i)(C) may be held not fully
responsible if it uses parentheses, ( ), where brackets, [  ], are
called for. See MPEP Section  714.22.

Replies to requirements to restrict are treated under MPEP Section  818.

---SECTION---714.03 Amendments Not Fully Responsive Action To Be Taken

37 CFR 1.135 Abandonment for failure to reply within time period.

                  +++   

(c) When reply by the applicant is a bona fide attempt to advance the
application to final action, and is substantially a complete reply to
the non-final Office action, but consideration of some matter or
compliance with some requirement has been inadvertently omitted,
applicant may be given a new time period for reply under Section  1.134
to supply the omission.

An examiner may treat an amendment not fully responsive to a non-final
Office action by:

(A) accepting the amendment as an adequate reply to the non-final Office
action to avoid abandonment under  35 U.S.C. 133 and  37 CFR 1.135;

(B) notifying the applicant that the reply must be completed within the
remaining period for reply to the non-final Office action (or within any
extension pursuant to  37 CFR 1.136(a)) to avoid abandonment; or

(C) setting a new time period for applicant to complete the reply
pursuant to  37 CFR 1.135(c).

The treatment to be given to the amendment depends upon:

(A) whether the amendment is bona fide;

(B) whether there is sufficient time for applicant's reply to be filed
within the time period for reply to the non-final Office action; and

(C) the nature of the deficiency.

Where an amendment substantially responds to the rejections, objections,
or requirements in a non-final Office action (and is a bona fide attempt
to advance the application to final action) but contains a minor
deficiency (e.g ., fails to treat every rejection, objection, or
requirement), the examiner may simply act on the amendment and issue a
new (non-final or final) Office action.  The new Office action may
simply reiterate the rejection, objection, or requirement not addressed
by the amendment (or otherwise indicate that such rejection, objection,
or requirement is no longer applicable).  This course of action would
not be appropriate in instances in which an amendment contains a serious
deficiency (e.g., the amendment is unsigned or does not appear to have
been filed in reply to the non-final Office action).  Where the
amendment is bona fide but contains a serious omission, the examiner
should: A) if there is sufficient time remaining for applicant's reply
to be filed within the time period for reply to the non-final Office
action (or within any extension pursuant to  37 CFR 1.136(a)), notify
applicant that the omission must be supplied within the time period for
reply; or B) if there is insufficient time remaining, issue an Office
action setting a 1-month time period to complete the reply pursuant to
37 CFR 1.135(c).  In either event, the examiner should not further
examine the application on its merits unless and until the omission is
timely supplied.

If a new time period for reply is set pursuant to  37 CFR 1.135(c),
applicant must supply the omission within this new time period for reply
(or any extensions under  37 CFR 1.136(a) thereof) in order to avoid
abandonment of the application. The applicant, however, may file a
continuing application during this period (in addition or as an
alternative to supplying the omission), and may also file any further
reply as permitted under  37 CFR 1.111.

Where there is sufficient time remaining in the period for reply
(including extensions under  37 CFR 1.136(a)), the applicant may simply
be notified that the omission must be supplied within the remaining time
period for reply.  This notification should be made, if possible, by
telephone, and, when such notification is made by telephone, an
interview summary record (see MPEP Section  713.04) must be completed
and entered into the file of the application to provide a record of such
notification.  When notification by telephone is not possible, the
applicant must be notified in an Office communication that the omission
must be supplied within the remaining time period for reply.  For
example, when an amendment is filed shortly after an Office action has
been mailed, and it is apparent that the amendment was not filed in
reply to such Office action, the examiner need only notify the applicant
(preferably by telephone) that a reply responsive to the Office action
must be supplied within the remaining time period for reply to such
Office action.

The practice set forth in  37 CFR 1.135(c) does not apply where there
has been a deliberate omission of some necessary part of a complete
reply; rather,  37 CFR 1.135(c) is applicable only when the missing
matter or lack of compliance is considered by the examiner as being
"inadvertently omitted."  For example, if an election of species has
been required and applicant does not make an election because he or she
believes the requirement to be improper, the amendment on its face is
not a "bona fide attempt to advance the application to final action" (37
CFR 1.135(c)), and the examiner is without authority to postpone
decision as to abandonment. Likewise, once an inadvertent omission is
brought to the attention of the applicant, the question of inadvertence
no longer exists. Therefore, a second Office action giving another new
(1 month) time period to supply the omission would not be appropriate
under  37 CFR 1.135(c).

37 CFR 1.135(c) authorizes, but does not require, an examiner to give
the applicant a new time period to supply an omission.  Thus, where the
examiner concludes that the applicant is attempting to abuse the
practice under  37 CFR 1.135(c) to obtain additional time for filing a
reply (or where there is sufficient time for applicant's reply to be
filed within the time period for reply to the non-final Office action),
the examiner need only indicate by telephone or in an Office
communication (as discussed above) that the reply must be completed
within the period for reply to the non-final Office action or within any
extension pursuant to  37 CFR 1.136(a) to avoid abandonment.

The practice under  37 CFR 1.135(c) of giving applicant a time period to
supply an omission in a bona fide reply does not apply after a final
Office action.  Amendments after final are approved for entry only if
they place the application in condition for allowance or in better form
for appeal.  Otherwise, they are not approved for entry.  See MPEP
Section  714.12 and Section  714.13.  Thus, an amendment should be
denied entry if some point necessary for a complete reply under  37 CFR
1.113 (after final) was omitted, even if the omission was through an
apparent oversight or inadvertence.  Where a submission after a final
Office action or appeal (e.g  ., an amendment under  37 CFR 1.116) does
not place the application in condition for allowance, the period for
reply under  37 CFR 1.113 continues to run until a reply under  37 CFR
1.113 (i.e., a notice of appeal or an amendment that places the
application in condition for allowance) is filed.  The nature of the
omission (e.g  ., whether the amendment raises new issues, or would
place the application in condition for allowance but for it being
unsigned or not in compliance with  37 CFR 1.121) is immaterial.  The
examiner cannot give the applicant a time period under  37 CFR 1.135(c)
to supply the omission; however, applicant may obtain additional time
under  37 CFR 1.136(a) to file another or supplemental amendment in
order to supply the omission.

When a reply to a final Office action substantially places the
application in condition for allowance, an examiner may request that the
applicant (or representative) authorize an examiner's amendment to
correct the omission and place the application in condition for
allowance, in which case the date of the reply is the date of such
authorization (and not the date the incomplete reply was filed).  An
examiner also has the authority to enter the reply, withdraw the
finality of the last Office action, and issue a new Office action, which
may be a non-final Office action, a final Office action (if
appropriate), or an action closing prosecution on the merits in an
otherwise allowable application under Ex parte Quayle, 25 USPQ 74, 1935
C.D. 11, 435 O.G. 213  (Comm`r Pat. 1935) (if appropriate).  These
courses of action, however, are solely within the discretion of the
examiner.  It is the applicant's responsibility to take the necessary
action in an application under a final Office action to provide a
complete reply under  37 CFR 1.113.

Where there is an informality as to the fee in connection with an
amendment to a non-final Office action presenting additional claims, the
applicant is notified by the technical support staff on form PTOL-319.
See MPEP Section  607 and Section  714.10.

Form paragraph 7.95 may be used where a bona fide reply is not fully
responsive.

7.95 Bona Fide, Non-Responsive Amendments

The reply filed on [1] is not fully responsive to the prior Office
action because of the following omission(s) or matter(s): [2]. See  37
CFR 1.111.  Since the above-mentioned reply appears to be bona fide,
applicant is given a TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS
from the mailing date of this notice, whichever is longer, within which
to supply the omission or correction in order to avoid abandonment.
EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER  37 CFR 1.136(a).

Examiner Note:

This practice does not apply where there has been a deliberate omission
of some necessary part of a complete reply, or where the application is
subject to a final Office action.  Under such cases, the examiner has no
authority to grant an extension if the period for reply has expired.
See paragraph 7.91.

---SECTION---714.04 Claims Presented in Amendment With No Attempt To
Point Out Patentable Novelty

In the consideration of claims in an amended case where no attempt is
made to point out the patentable novelty, the claims should not be
allowed. See  37 CFR 1.111 and MPEP Section  714.02.

An amendment failing to point out the patentable novelty which the
applicant believes the claims present in view of the state of the art
disclosed by the references cited or the objections made may be held to
be not fully responsive and a time period set to furnish a proper reply
if the statutory period has expired or almost expired (MPEP Section
714.03). However, if the claims as amended are clearly open to rejection
on grounds of record, a final rejection should generally be made.

---SECTION---714.05 Examiner Should Immediately Inspect

Actions by applicant, especially those filed near the end of the period
for reply, should be inspected immediately upon filing to determine
whether they are completely responsive to the preceding Office action so
as to prevent abandonment of the application. If found inadequate, and
sufficient time remains, applicant should be notified of the
deficiencies and warned to complete the reply within the period.  See
MPEP Section  714.03.

All amended applications put on the examiner's desk should be inspected
at once to determine the following:

(A) If the amendment is properly signed (MPEP Section  714.01(a)).

(B) If the amendment has been filed within the statutory period, set
shortened period, or time limit (MPEP Section  710 -  Section  710.05).

(C) If the amendment is fully responsive (MPEP Section  714.03 and
Section  714.04).

(D) If the changes made by the amendment warrant transfer (MPEP Section
903.08(d)).

(E) If the case is special (MPEP Section  708.01).

(F) If claims suggested to applicant for interference purposes have been
copied.

(G) If there is a traverse of a requirement for restriction (MPEP
Section  818.03(a)).

(H) If "easily erasable" paper or other nonpermanent method of
preparation or reproduction has been used (MPEP Section  714.07).

(I) If applicant has cited references (MPEP Section  707.05(b) and
Section  1302.12).

(J) If a terminal disclaimer has been filed (MPEP Section  508.01,
Section  804.02,  Section  804.03, and Section  1490).

(K) If any matter involving security has been added (MPEP Section  115).

ACTION CROSSES AMENDMENT

A supplemental action is usually necessary when an amendment is filed on
or before the mailing date of the regular action but reaches the
examining group later. The supplemental action should be promptly
prepared. It need not reiterate all portions of the previous action that
are still applicable but it should specify which portions are to be
disregarded, pointing out that the period for reply runs from the
mailing of the supplemental action. The action should be headed
"Responsive to amendment of (date) and supplemental to the action mailed
(date)."

---SECTION---714.06 Amendments Sent to Wrong Group

See MPEP Section  508.01.

---SECTION---714.07 Amendments Not in Permanent Ink

37 CFR 1.52(a) requires "permanent dark ink or its equivalent" to be
used on papers which will become part of the record and In re Benson,
122 USPQ 279, 1959 C.D. 5, 744 O.G. 353 (Comm'r Pat. 1959), holds that
documents on so-called "easily erasable" paper violate the requirement.
The fact that  37 CFR 1.52(a) has not been complied with may be
discovered as soon as the amendment reaches the examining group or later
when the application is reached for action. In the first instance,
applicant is promptly notified that the amendment is not entered and is
required to file a permanent copy within 1 month or to order a copy to
be made by the Patent and Trademark Office at his or her expense.
Physical entry of the amendment will be made from the permanent copy.

If there is no appropriate reply within the 1-month limit, a copy is
made by the Patent and Trademark Office, applicant being notified and
required to remit the charges or authorize charging them to his or her
deposit account.

In the second instance, when the nonpermanence of the amendment is
discovered only when the application is reached for action, similar
steps are taken, but action on the application is not held up, the
requirement for a permanent copy of the amendment being included in the
Office action.

A good direct or indirect copy, such as photocopy or facsimile
transmission, on satisfactory paper is acceptable.  But see In re
Application Papers Filed Jan. 20, 1956, 706 O.G. 4 (Comm'r Pat. 1956).
Although a good copy is acceptable, signatures must be applied after the
copy is made if the papers require an original signature as set forth in
37 CFR 1.4(e).

See MPEP Section  608.01 for more discussion on acceptable copies.

---SECTION---714.08 Telegraphic Amendment

When a telegraphic amendment is received, the telegram is placed in the
file but not entered. Applicant will be notified that the telegram is
not accepted as a reply to the previous Office action and is not
entered. The time period for reply to the Office action continues to run
and is extendable under  37 CFR 1.136.

---SECTION---714.09 Amendments Before First Office Action

An amendment filed before the first Office action, but not filed along
with the original application, does not enjoy the status of part of the
original disclosure. See MPEP Section  608.04(b). However, an
application will be accorded a filing date based upon the submission of
a complete specification including claims and any required drawings. The
oath or declaration and/or filing fee can be submitted later. Thus, in
the instance where an application filed under  37 CFR 1.53(b) is filed
without a signed oath or declaration and such application is accompanied
by an amendment, that amendment is considered a part of the original
disclosure. A subsequently filed oath or declaration must refer to both
the application and the amendment. Any copy of the application as filed
must include a copy of the amendment as well, particularly where
certified copies for priority purposes are requested.

Amendments should either accompany the application or be filed after the
application has received its application number and filing date. See
MPEP Section  502.

Any amendment canceling claims in order to reduce the filing fee should
be filed with the application.  Since only amendments canceling claims
are entered before the filing fee is calculated, any other changes to
the claims and/or specification should be part of a separate amendment.
See MPEP Section  506.

---SECTION---714.10 Claims Added in Excess of Filing Fee

The patent statute provides for the presentation of claims added in
excess of the filing fee. On payment of an additional fee (see MPEP
Section  607), these excess claims may be presented any time after the
application is filed, which of course, includes the time before the
first action.

---SECTION---714.11 Amendment Filed During Interference Proceedings

See MPEP Section  2364.01.

---SECTION---714.12 Amendments After Final Rejection or Action

37 CFR 1.116 Amendments after final action or appeal.

(a) After a final rejection or other final action (Section  1.113),
amendments may be made cancelling claims or complying with any
requirement of form expressly set forth in a previous Office action.
Amendments presenting rejected claims in better form for consideration
on appeal may be admitted. The admission of, or refusal to admit, any
amendment after final rejection, and any related proceedings, will not
operate to relieve the application or patent under reexamination from
its condition as subject to appeal or to save the application from
abandonment under Section  1.135.

(b) If amendments touching the merits of the application or patent under
reexamination are presented after final rejection, or after appeal has
been taken, or when such amendment might not otherwise be proper, they
may be admitted upon showing of good and sufficient reasons why they are
necessary and were not earlier presented.

(c) No amendment can be made as a matter of right in appealed cases.
After decision on appeal, amendments can only be made as provided in
Section  1.198, or to carry into effect a recommendation under Section
1.196.

Once a final rejection that is not premature has been entered in a case,
applicant or patent owner no longer has any right to unrestricted
further prosecution. This does not mean that no further amendment or
argument will be considered. Any amendment that will place the case
either in condition for allowance or in better form for appeal may be
entered. Also, amendments complying with objections or requirements as
to form are to be permitted after final action in accordance with  37
CFR 1.116(a). Ordinarily, amendments filed after the final action are
not entered unless approved by the examiner. See MPEP Section
706.07(f),  Section  714.13 and Section  1207.

The prosecution of an application before the examiner should ordinarily
be concluded with the final action. However, one personal interview by
applicant may be entertained after such final action if circumstances
warrant. Thus, only one request by applicant for a personal interview
after final should be granted, but in exceptional circumstances, a
second personal interview may be initiated by the examiner if in his or
her judgment this would materially assist in placing the application in
condition for allowance.

Many of the difficulties encountered in the prosecution of patent
applications after final rejection may be alleviated if each applicant
includes, at the time of filing or no later than the first reply, claims
varying from the broadest to which he or she believes he or she is
entitled to the most detailed that he or she is willing to accept.

---SECTION---714.13 Amendments After Final Rejection or Action,
Procedure Followed

  FINAL REJECTION - TIME FOR REPLY

If an applicant initially replies within 2 months from the date of
mailing of any final rejection setting a 3-month shortened statutory
period for reply and the Office does not mail an advisory action until
after the end of the 3-month shortened statutory period, the period for
reply for purposes of determining the amount of any extension fee will
be the date on which the Office mails the advisory action advising
applicant of the status of the application, but in no event can the
period extend beyond 6 months from the date of the final rejection. This
procedure applies only to a first reply to a final rejection.  The
following language must be included by the examiner in each final
rejection:

A SHORTENED STATUTORY PERIOD FOR REPLY TO THIS FINAL ACTION IS SET TO
EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE EVENT A FIRST
REPLY IS FILED WITHIN TWO MONTHS OF THE MAILING DATE OF THIS FINAL
ACTION AND THE ADVISORY ACTION IS NOT MAILED UNTIL AFTER THE END OF THE
THREE-MONTH SHORTENED STATUTORY PERIOD, THEN THE SHORTENED STATUTORY
PERIOD WILL EXPIRE ON THE DATE THE ADVISORY ACTION IS MAILED, AND ANY
EXTENSION FEE PURSUANT TO  37 CFR 1.136(a) WILL BE CALCULATED FROM THE
MAILING DATE OF THE ADVISORY ACTION. IN NO EVENT WILL THE STATUTORY
PERIOD FOR REPLY EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS
FINAL ACTION.

This wording is part of Form Paragraphs 7.39, 7.40, 7.40.01, 7.41 and
7.41.03.  Form Paragraph 7.39 appears in MPEP Section  706.07. Form
paragraphs 7.40 and 7.40.01 appear in MPEP Section  706.07(a). Form
Paragraphs 7.41 and 7.41.03 appear in MPEP Section  706.07(b).

For example, if applicant initially replies within 2 months from the
date of mailing of a final rejection and the examiner mails an advisory
action before the end of 3 months from the date of mailing of the final
rejection, the shortened statutory period will expire at the end of 3
months from the date of mailing of the final rejection. In such a case,
any extension fee would then be calculated from the end of the 3-month
period. If the examiner, however, does not mail an advisory action until
after the end of 3 months, the shortened statutory period will expire on
the date the examiner mails the advisory action and any extension fee
may be calculated from that date. In the event that a first reply is not
filed within 2 months of the mailing date of the final rejection, any
extension fee pursuant to  37 CFR 1.136(a) will be calculated from the
end of the reply period set in the final rejection.

Failure to file a reply during the shortened statutory period results in
abandonment of the application unless the time is extended under the
provisions of  37 CFR 1.136.

ENTRY NOT A MATTER OF RIGHT

It should be kept in mind that applicant cannot, as a matter of right,
amend any finally rejected claims, add new claims after a final
rejection (see  37 CFR 1.116) or reinstate previously canceled claims.

Except where an amendment merely cancels claims, adopts examiner
suggestions, removes issues for appeal, or in some other way requires
only a cursory review by the examiner, compliance with the requirement
of a showing under  37 CFR 1.116(b) is expected in all amendments after
final rejection. Failure to properly reply under  37 CFR 1.113 to the
final rejection results in abandonment.  A reply under  37 CFR 1.113 is
limited to: (A) an amendment complying with  37 CFR 1.116; or (B) a
Notice of Appeal (and appeal fee). Further examination of the
application, however, may be obtained by filing a continued prosecution
application (CPA) under  37 CFR 1.53(d), if appropriate.  See MPEP
Section  201.06(d).

An amendment filed at any time after final rejection but before an
appeal brief is filed, may be entered upon or after filing of an appeal
brief provided the total effect of the amendment is to (A) remove issues
for appeal, and/or (B) adopt examiner suggestions.

See also MPEP Section  1207 and Section  1211.

The Patent and Trademark Office does not recognize "conditional"
authorizations to charge an appeal fee if an amendment submitted after a
final Office action is not entered. Any "conditional" authorization to
charge an appeal fee set forth in  37 CFR 1.17(b) will be treated as an
unconditional payment of the fee set forth in  37 CFR 1.17(b).

ACTION BY EXAMINER

See also MPEP Section  706.07(f).

In the event that the proposed amendment does not place the case in
better form for appeal, nor in condition for allowance, applicant should
be promptly informed of this fact, whenever possible, within the
statutory period. The refusal to enter the proposed amendment should not
be arbitrary. The proposed amendment should be given sufficient
consideration to determine whether the claims are in condition for
allowance and/or whether the issues on appeal are simplified.
Ordinarily, the specific deficiencies of the amendment need not be
discussed. The reasons for nonentry should be concisely expressed. For
example:

(A) The claims, if amended as proposed, would not avoid any of the
rejections set forth in the last Office action, and thus the amendment
would not place the case in condition for allowance or in better
condition for appeal.

(B) The claims, if amended as proposed, would raise the issue of new
matter.

(C) The claims as amended present new issues requiring further
consideration or search.

(D) Since the amendment presents additional claims without canceling any
finally rejected claims it is not considered as placing the application
in better condition for appeal. Ex parte Wirt, 1905 C.D. 247, 117 O.G.
599 (Comm'r Pat. 1905).

Examiners should indicate the status of each claim of record or proposed
in the amendment, and which proposed claims would be entered on the
filing of an appeal if filed in a separate paper.

Applicant should be notified, if certain portions of the amendment would
be acceptable as placing some of the claims in better form for appeal or
complying with objections or requirements as to form, if a separate
paper were filed containing only such amendments. Similarly, if the
proposed amendment to some of the claims would render them allowable,
applicant should be so informed. This is helpful in assuring the filing
of a brief consistent with the claims as amended. A statement that the
final rejection stands and that the statutory period runs from the date
of the final rejection is also in order.

Advisory Action form PTOL-303 should be used to acknowledge receipt of a
reply from applicant after final rejection where such reply is prior to
filing of an appeal brief and does not place the application in
condition for allowance. This form has been devised to advise applicant
of the disposition of the proposed amendments to the claims and of the
effect of any argument or affidavit not placing the application in
condition for allowance or which could not be made allowable by a
telephone call to clear up minor matters.

Any amendment timely filed after a final rejection should be immediately
considered to determine whether it places the application in condition
for allowance or in better form for appeal. An examiner is expected to
turn in a response to an amendment after final rejection within 10
calendar days from the time the amendment is received by the examiner. A
reply to an amendment after final rejection should be mailed within 30
days of the date the amendment is received by the Office. In all
instances, both before and after final rejection, in which an
application is placed in condition for allowance, applicant should be
notified promptly of the allowability of the claims by a Notice of
Allowability form PTOL-37.  If delays in processing the Notice of
Allowability are expected, e.g., because an extensive examiner's
amendment must be entered, and the end of a statutory period for reply
is near, the examiner should notify applicant by way of an interview
that the application has been placed in condition for allowance, and an
Interview Summary PTOL-413 should be mailed. Prompt notice to applicant
is important because it may avoid an unnecessary appeal and act as a
safeguard against a holding of abandonment. Every effort should be made
to mail the letter before the period for reply expires.

If no appeal has been filed within the period for reply and no amendment
has been submitted to make the application allowable or which can be
entered in part (see MPEP Section  714.20), the application stands
abandoned.

It should be noted that under 37 CFR 1.181(f), the filing of a  37 CFR
1.181 petition will not stay the period for reply to an examiner's
action which may be running against an application. See MPEP Section
1207 for appeal and post-appeal procedure. For after final rejection
practice relative to affidavits or declarations filed under  37 CFR
1.131 and 1.132, see MPEP Section  715.09 and Section  716.

Form paragraphs 7.67-7.80 are to be used when issuing advisory actions
after a final rejection.

7.67 Advisory After Final, Heading, Before Appeal

	The period for reply [1] to run [2] MONTHS from the mailing date of the
final rejection.  Any extension of time must be obtained by filing a
petition under  37 CFR 1.136(a) accompanied by the appropriate fee.  The
date on which the petition under  37 CFR 1.136(a) and the appropriate
extension fee have been filed is the date for purposes of determining
the period of extension and the corresponding amount of the fee.  A
reply within the meaning of  37 CFR 1.113 must be timely filed to avoid
abandonment of this application.

Examiner Note:

1. This paragraph should appear as a heading in all advisory actions
prior to appeal.  After appeal, use paragraph 7.68.

2. In bracket 1, insert --continues-- if applicant has not submitted a
petition for an extension of time along with the appropriate fee under
37 CFR 1.136.  If a proper extension has been requested under  37 CFR
1.136, insert --is extended-- in bracket 1.

3. In bracket 2, insert the full statutory period resulting from any
extensions of time which have been granted, e.g., --FOUR-- months.

4. DO NOT USE THIS FORM PARAGRAPH FOR REEXAMINATION PROCEEDINGS.

5. Follow with form paragraph 7.41.01 if transitional provisions of  37
CFR 1.129(a) are applicable.

7.67.01 Advisory After Final, Heading, 1st Reply Filed Within 2 Months

The shortened statutory period for reply expires THREE MONTHS from the
mailing date of the final rejection or as of the mailing date of this
advisory action, whichever is later.  In no event, however, will the
statutory period for reply expire later than SIX MONTHS from the mailing
date of the final rejection.

Any extension fee required pursuant to  37 CFR 1.17 will be calculated
from the date that the shortened statutory period for reply expires as
set forth above.

Examiner Note:

1. This paragraph should be used in all advisory actions if:

a. it was the FIRST reply to the final rejection, and

b. it was filed within two months of the date of the final rejection.

2. If a notice of appeal has been filed, also use paragraph 7.68.

3. DO NOT USE THIS FORM PARAGRAPH FOR REEXAMINATION PROCEEDINGS.

4. Follow with form paragraph 7.41.01 if transitional provisions of  37
CFR 1.129(a) are applicable.

7.67.02 Advisory After Final, Heading, No Variable SSP Set in Final

Since the first reply to the final Office action was filed within TWO
MONTHS of the mailing date of that action and the advisory action was
not mailed within THREE MONTHS of that date, the THREE-MONTH shortened
statutory period for reply set in the final Office action is hereby
vacated and reset to expire as of the mailing date of this advisory
action.  See Notice entitled "Procedure for Handling Amendments Under
37 CFR 1.116," published in the Official Gazette at 1027 O.G. 71,
February 8, 1983.  In no event, however, will the statutory period for
reply expire later than SIX MONTHS from the mailing date of the final
Office action.

Any extension fee required pursuant to  37 CFR 1.17 will be calculated
from the mailing date of the advisory action.

Examiner Note:

1. This paragraph should be used in all advisory actions where:

a. the reply is a first reply to the final action;

b. the reply was filed within two months of the mailing date of the
final; and

c. the final action failed to inform applicant of a variable SSP beyond
the normal three month period, as is set forth in form paragraphs 7.39
to 7.41.

2. If the final action set a variable SSP, do not use this paragraph,
use paragraph 7.67.01 instead.

3. If a notice of appeal has been filed, also use paragraph 7.68.

4. Follow with form paragraph 7.41.01 if transitional provisions of  37
CFR 1.129(a) are applicable.

7.68 Advisory After Final, Heading, After Appeal

An appeal under  37 CFR 1.191 was filed in this application on   [1].
Appellant's brief is due on   [2] in accordance with  37 CFR 1.192(a).

Examiner Note:

1. This paragraph must precede paragraph 7.70 if the amendment is
entered.

2. This paragraph must precede paragraph 7.71 if the amendment is not
entered.

7.69 Advisory After Final, Before Appeal, Amendment To Be Entered

The amendment filed [1] under  37 CFR 1.116 in reply to the final
rejection will be entered upon the filing of an appeal, but is not
deemed to place the application in condition for allowance.  Upon the
filing of an appeal and entry of the amendment, the status of the claims
would be as follows:

Allowed claim(s): [2]

Rejected claim(s): [3]

Claim(s) objected to: [4]

Examiner Note:

1. This paragraph must be preceded by paragraph 7.67, 7.67.01 or
7.67.02.

2. In brackets 2-4 indicate the status of all claims.

3. Whenever an amendment is entered for appeal purposes, you must follow
the last paragraph above with form paragraph 7.69.01 or other language
to indicate how the new or amended claim(s) would be rejected (whether
the rejections are exactly the same as in the final Office action or
there is a shift to one or more different individual grounds of
rejection in the final Office action).  This may be done by using form
paragraph 7.69.01 for each group of claims subject to the same
rejection.

7.69.01 Advisory Action, Proposed Rejection of Claims, Before Appeal

See  37 CFR 1.193(a)(2) which provides for the inclusion of the proposed
rejection(s) detailed below in the Examiner's Answer if applicant elects
to file an appeal to the Board of Patent Appeals and Interferences in
this proceeding.  To be complete, such rejection(s) must be addressed in
any brief on appeal.

Upon appeal and entry of the amendment:

Claim(s) [1] would be rejected for the reasons set forth in [2] of the
final Office action mailed [3].

Examiner Note:

1. In bracket 1, identify all the new or amended claim(s) that would be
grouped together in a single rejection.

2. In bracket 2, identify the rejection by referring to either the
paragraph number or the statement of the rejection (i.e., the rejection
under 35 U.S.C. Section  103 based upon A in view of B) in the final
Office action under which the claims would be rejected on appeal.

3. Repeat this form paragraph for each group of claims subject to the
same rejection(s).

4. A statement of reasons for allowance, or other appropriate
information may be added if necessitated by entry of the amendment.

7.70 Advisory After Final, After Appeal, Amendment Entered

The amendment filed   [1] under  37 CFR 1.116 in reply to the final
rejection has been entered, but is not deemed to place the application
in condition for allowance.  For purposes of appeal, the status of the
claims is as follows:

Allowed claim(s): [2]

Rejected claim(s): [3]

Claim(s) objected to: [4]

Examiner Note:

1. This paragraph must be preceded by paragraph 7.68.

2. In brackets 2-4 indicate the status of all pending claims.

3. Whenever an amendment is entered for appeal purposes, you must follow
the last paragraph above with form paragraph 7.69.01 or other language
to indicate how the new or amended claim(s) would be rejected (whether
the rejections are exactly the same as in the final Office action or
there is a shift to one or more different individual grounds of
rejection in the final Office action).  This may be done by using form
paragraph 7.70.01 for each group of claims subject to the same
rejection.

4. A statement of reasons for allowance, or other appropriate
information may be added if necessitated by entry of the amendment.

7.70.01 Advisory Action, Proposed Rejection of Claims, After Appeal

See  37 CFR 1.193(a)(2) which provides for the inclusion of the proposed
rejection(s) detailed below in the Examiner's Answer if applicant elects
to file an appeal to the Board of Patent Appeals and Interferences in
this proceeding.  To be complete, such rejection(s) must be addressed in
any brief on appeal.

Claim(s) [1] would be rejected for the reasons set forth in [2] of the
final Office action mailed [3].

Examiner Note:

1. In bracket 1, identify all the new or amended claim(s) that would be
grouped together in a single rejection.

2. In bracket 2, identify the rejection by referring to either the
paragraph number or the statement of the rejection (i.e., the rejection
under 35 U.S.C. Section  103 based upon A in view of B) in the final
Office action under which the claims would be rejected on appeal.

3. Repeat this form paragraph for each group of claims subject to the
same rejection(s).

4. A statement of reasons for allowance, or other appropriate
information may be added if necessitated by entry of the amendment.

7.71 Advisory After Final, Amendment Not Entered

The amendment filed [1] under  37 CFR 1.116 in reply to the final
rejection has been considered but is not deemed to place the application
in condition for allowance and will not be entered because:

Examiner Note:

1. This paragraph must be preceded by paragraph 7.67, 7.67.01 or 7.67.02
if an appeal has not been taken, or by paragraph 7.68 if an appeal has
been taken.

2. If it is not known whether a notice of appeal has been filed and the
full six month period has expired, do not use paragraphs 7.67, 7.67.01,
7.67.02 or 7.68; use instead the following: "If an appeal under  37 CFR
1.191 has not been properly filed, this application is abandoned."

3. One or more of the appropriate paragraphs 7.72 to 7.76 must directly
follow this paragraph.

7.72 Advisory After Final, Lacks Showing, Why Necessary and Not Earlier
Presented

There is no convincing showing under  37 CFR 1.116(b) why the proposed
amendment is necessary and was not earlier presented.

Examiner Note:

1. Paragraph 7.71 must precede this paragraph.

2. Do not use this paragraph as the sole reason for refusing entry of
the amendment unless the situation is aggravated, in which case a full
explanation is necessary.

3. Follow with form paragraph 7.41.01 if transitional provisions of  37
CFR 1.129(a) are applicable and only if not used in previous action.

7.73 Advisory After Final, Raises New Issues

The proposed amendment raises new issues that would require further
consideration and/or search.

Examiner Note:

1. This paragraph must be preceded by paragraph 7.71.

2. The new issues including questions of new matter must be clearly
identified following this form paragraph.  (Examples are sufficient if
the new issues are extensive.)

3. Follow with form paragraph 7.41.01 if transitional provisions of  37
CFR 1.129(a) are applicable and only if not used in previous action.

7.75 Advisory After Final, Form for Appeal Not Improved

The proposed amendment is not deemed to place the application in better
form for appeal by materially simplifying the issues for appeal.

Examiner Note:

1. This paragraph must be preceded by paragraph 7.71.

2. Follow with form paragraph 7.41.01 if transitional provisions of  37
CFR 1.129(a) are applicable and only if not used in a previous action.

7.76 Advisory After Final, Additional Claims Presented

The proposed amendment presents additional claims without canceling a
corresponding number of finally rejected claims.

Examiner Note:

1. This paragraph must be preceded by paragraph 7.71.

2. Follow with form paragraph 7.41.01 if transitional provisions of  37
CFR 1.129(a) are applicable and only if not used in a previous action.

7.78 Advisory After Final, Proposed New Claims Would Be Allowable

Claim  [1] as proposed would be allowable if submitted in a separately
filed amendment canceling all non-allowed claims.

Examiner Note:

1. This paragraph must be preceded by paragraph 7.71.

2. Follow with form paragraph 7.41.01 if transitional provisions of  37
CFR 1.129(a) are applicable and only if not used in a previous action.

7.79 Advisory After Final, Affidavit, Exhibit, or Request for
Reconsideration Considered

The   [1] has been entered and considered but does not overcome the
rejection because [2].

Examiner Note:

1. This paragraph must be preceded by either paragraph 7.67, 7.67.01,
7.67.02 or 7.68.

2. In bracket 1, insert --affidavit--,--declaration--, --exhibit--, or
--request for reconsideration--.

3. An explanation should be provided in bracket 2.

4. Follow with form paragraph 7.41.01 if transitional provisions of  37
CFR 1.129(a) are applicable and only if not used in a previous action.

7.80 Advisory After Final, Affidavit or Exhibit Not Considered

The [1] will not be considered because good and sufficient reasons why
it was not earlier presented have not been shown. [2]

Examiner Note:

1. This paragraph must be preceded by either paragraph 7.67, 7.67.01,
7.67.02 or 7.68.

2. In bracket 1, insert --affidavit--, --declaration--, --exhibit--, or
--request for reconsideration--.

3. An explanation should follow in bracket 2.

4. Follow with form paragraph 7.41.01 if transitional provisions of  37
CFR 1.129(a) are applicable and only if not used in a previous action.

HAND DELIVERY OF PAPERS

Any paper which relates to a pending application may be personally
delivered to an examining group. However, the examining group will
accept the paper only if: (1) the paper is accompanied by some form of
receipt which can be handed back to the person delivering the paper; and
(2) the examining group being asked to receive the paper is responsible
for acting on the paper.

The receipt may take the form of a card identifying the paper. The
identifying data on the card should be so complete as to leave no
uncertainty as to the paper filed. For example, the card should contain
the applicant's name(s), application number, filing date, and a
description of the paper being filed. If more than one paper is being
filed for the same application, the card should contain a description of
each paper or item.

Under this procedure, the paper and receipt will be date stamped with
the group date stamp. The receipt will be handed back to the person hand
delivering the paper. The paper will be correlated with the application
and made an official paper in the file, thereby avoiding the necessity
of processing and forwarding the paper to the examining group via the
Mail Center.

The examining group will accept and date stamp a paper even though the
paper is accompanied by a check or the paper contains an authorization
to charge a Deposit Account. However, in such an instance, the paper
will be hand carried by group personnel to the Office of Finance for
processing and then made an official paper in the file.

All such papers, together with the cash, checks, or money orders, shall
be hand-carried to the Customer Service window, Crystal Plaza Building
2, Room 1B01.

The papers shall be processed by the accounting clerk, Office of
Finance, for pickup at the Customer Service window by 3:00 p.m. the
following work day. Upon return to the group, the papers will be entered
in the application file wrappers.

EXPEDITED PROCEDURE FOR PROCESSING AMENDMENTS AND OTHER REPLIES AFTER
FINAL REJECTION (37 CFR 1.116)

In an effort to improve the timeliness of the processing of amendments
and other replies under  37 CFR 1.116, and thereby provide better
service to the public, an expedited processing procedure has been
established which the public may utilize in filing amendments and other
replies after final rejection under  37 CFR 1.116. In order for an
applicant to take advantage of the expedited procedure the amendment or
other reply under  37 CFR 1.116 will have to be marked as a "Reply under
37 CFR 1.116 - Expedited Procedure - Examining Group (Insert Examining
Group Number)" on the upper right portion of the amendment or other
reply and the envelope must be marked "Box AF" in the lower left hand
corner. The markings preferably should be written in a bright color with
a felt point marker. If the reply is mailed to the Office, the envelope
should contain only replies under  37 CFR 1.116 and should be mailed to
"Box AF, Assistant Commissioner for Patents, Washington, D.C. 20231."
Instead of mailing the envelope to "Box AF" as noted above, the reply
may be hand-carried to the particular examining group or other area of
the Office in which the application is pending and marked on the outside
envelope "Reply Under  37 CFR 1.116 - Expedited Procedure-Examining
Group (Insert Examining Group Number)."

Upon receipt by the Patent and Trademark Office from the U.S. Postal
Service of an envelope appropriately marked "Box AF," the envelope will
be specially processed by the Mail Center and forwarded promptly to the
examining group, via the Office of Finance if any fees have to be
charged or otherwise processed. Upon receipt of the reply in the
examining group it will be promptly processed by a designated technical
support staff member and forwarded to the examiner, via the Supervisory
Patent Examiner (SPE), for action. The SPE is responsible for ensuring
that prompt action on the reply is taken by the examiner. If the
examiner to which the application is assigned is not available and will
not be available for an extended period, the SPE will ensure that action
on the application is promptly taken to assure meeting the PTO goal
described below. Once the examiner has completed his or her
consideration of the reply, the examiner's action will be promptly typed
and mailed by technical support staff personnel designated to expedite
the processing of replies filed under this procedure. The examining
group supervisory personnel, e.g., the Supervisory Patent Examiner,
Supervisory Applications Examiner, and Group Director are responsible
for ensuring that actions on replies filed under this procedure are
promptly processed and mailed. The Patent and Trademark Office goal is
to mail the examiner's action on the reply within 1 month from the date
on which the amendment or reply is received by the Patent and Trademark
Office.

Applicants are encouraged to utilize this expedited procedure in order
to facilitate Patent and Trademark Office processing of replies under
37 CFR 1.116. If applicants do not utilize the procedure by
appropriately marking the envelope and enclosed papers, the benefits
expected to be achieved therefrom will not be attained. The procedure
cannot be expected to result in achievement of the goal in applications
in which the delay results from actions by the applicant, e.g., delayed
interviews, applicant's desire to file a further reply, or a petition by
applicant which requires a decision and delays action on the reply. In
any application in which a reply under this procedure has been filed and
no action by the examiner has been received within the time referred to
herein, plus normal mailing time, a telephone call to the SPE of the
relevant group art unit would be appropriate in order to permit the SPE
to determine the cause for any delay. If the SPE is unavailable or if no
satisfactory reply is received, the Group Director of the examining
group should be contacted.

---SECTION---714.14 Amendments After Allowance of All Claims

Under the decision in Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11; 453
O.G. 213 (Comm'r Pat. 1935), after all claims in a case have been
allowed the prosecution of the case on the merits is closed even though
there may be outstanding formal objections which preclude fully closing
the prosecution.

Amendments touching the merits are treated in a manner similar to
amendments after final rejection, though the prosecution may be
continued as to the formal matters. See MPEP Section  714.12 and Section
714.13.

See MPEP Section  714.20 for amendments entered in part.

See MPEP Section  607 for additional fee requirements.

Use form paragraph 7.51 to issue an Ex parte Quayle action.

7.51 Quayle Action

This application is in condition for allowance except for the following
formal matters:   [1].

Prosecution on the merits is closed in accordance with the practice
under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.

A shortened statutory period for reply to this action is set to expire
TWO MONTHS from the mailing date of this letter.

Examiner Note:

Explain the formal matters which must be corrected in bracket 1.

---SECTION---714.15 Amendment Received in Examining Group After Mailing
of Notice of Allowance

Where an amendment, even though prepared by applicant prior to
allowance, does not reach the Office until after the notice of allowance
has been mailed, such amendment has the status of one filed under  37
CFR 1.312. Its entry is a matter of grace. For discussion of amendments
filed under  37 CFR 1.312, see MPEP Section  714.16 to Section
714.16(e).

If, however, the amendment is filed in the Office prior to the mailing
out of the notice of allowance, but is received by the examiner after
the mailing of the notice of allowance, it has the same standing in the
application as though the notice had not been mailed. Where the
application has not been closed to further prosecution, as by final
rejection of one or more claims, or by an action allowing all of the
claims, applicant may be entitled to have such amendment entered even
though it may be necessary to withdraw the application from issue. Such
withdrawal, however, is unnecessary if the amendatory matter is such as
the examiner would recommend for entry under  37 CFR 1.312.

As above implied, the application will not be withdrawn from issue for
the entry of an amendment that would reopen the prosecution if the
Office action next preceding the notice of allowance closed the case to
further amendment, i.e., by indicating the patentability of all of the
claims, or by allowing some and finally rejecting the remainder.

After an applicant has been notified that the claims are all allowable,
further prosecution of the merits of the case is a matter of grace and
not of right. Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11, 453 O.G. 213
(Comm'r Pat. 1935).

---SECTION---714.16 Amendment After Notice of Allowance, 37 CFR 1.312

37 CFR 1.312 Amendments after allowance.

(a) No amendment may be made as a matter of right in an application
after the mailing of the notice of allowance. Any amendment pursuant to
this paragraph filed before the payment of the issue fee may be entered
on the recommendation of the primary examiner, approved by the
Commissioner, without withdrawing the case from issue.

(b) Any amendment pursuant to paragraph (a) of this section filed after
the date the issue fee is paid must be accompanied by a petition
including the fee set forth in Section  1.17(i) and a showing of good
and sufficient reasons why the amendment is necessary and was not
earlier presented.

The amendment of an application by applicant after allowance falls
within the guidelines of  37 CFR 1.312. Further, the amendment of an
application broadly encompasses any change in the file record of the
application. Accordingly, the following are examples of "amendments" by
applicant after allowance which must comply with  37 CFR 1.312:

(A) an amendment to the specification,

(B) a change in the drawings,

(C) an amendment to the claims,

(D) a change in the inventorship,

(E) the submission of prior art, etc.

Finally, it is pointed out that an amendment under  37 CFR 1.312 filed
on or before the date the issue fee is paid must comply with paragraph
(a) and that such an amendment filed after the date the issue fee is
paid must comply with paragraph (b).

The Commissioner has delegated the approval of recommendations under  37
CFR 1.312(a) to the supervisory patent examiners.

With the exception of a supplemental oath or declaration submitted in a
reissue, a supplemental oath or declaration is not treated as an
amendment under  37 CFR 1.312.  See MPEP Section  603.01.  A
supplemental reissue oath or declaration is treated as an amendment
under  37 CFR 1.312 because the correction of the patent which it
provides is an amendment of the patent, even though no amendment is
physically entered into the specification or claim(s).  Thus, for a
reissue oath or declaration submitted after allowance to be entered, the
reissue applicant must comply with  37 CFR 1.312 in the manner set forth
in this section.

After the Notice of Allowance has been mailed, the application is
technically no longer under the jurisdiction of the primary examiner. He
or she can, however, make examiner's amendments (see MPEP Section
1302.04) and has authority to enter amendments submitted after Notice of
Allowance of an application which embody merely the correction of formal
matters in the specification or drawing, or formal matters in a claim
without changing the scope thereof, or the cancellation of claims from
the application, without forwarding to the supervisory patent examiner
for approval.

Amendments other than those which merely embody the correction of formal
matters without changing the scope of the claims require approval by the
supervisory patent examiner. The Group Director establishes group policy
with respect to the treatment of amendments directed to trivial
informalities which seldom affect significantly the vital formal
requirements of any patent, namely, (A) that its disclosure be
adequately clear, and (B) that any invention present be defined with
sufficient clarity to form an adequate basis for an enforceable
contract.

Consideration of an amendment under  37 CFR 1.312 cannot be demanded as
a matter of right. Prosecution of an application should be conducted
before, and thus be complete including editorial revision of the
specification and claims at the time of the Notice of Allowance.
However, where amendments of the type noted are shown (A) to be needed
for proper disclosure or protection of the invention, and (B) to require
no substantial amount of additional work on the part of the Office, they
may be considered and, if proper, entry may be recommended by the
primary examiner.

The requirements of  37 CFR 1.111(c) (MPEP Section  714.02) with respect
to pointing out the patentable novelty of any claim sought to be added
or amended, apply in the case of an amendment under  37 CFR 1.312, as in
ordinary amendments. See MPEP Section  713.04 and Section  713.10
regarding interviews. As to amendments affecting the disclosure, the
scope of any claim, or that add a claim, the remarks accompanying the
amendment must fully and clearly state the reasons on which reliance is
placed to show:

(A) why the amendment is needed;

(B) why the proposed amended or new claims require no additional search
or examination;

(C) why the claims are patentable; and

(D) why they were not presented earlier.

NOT TO BE USED FOR CONTINUED PROSECUTION

37 CFR 1.312 was never intended to provide a way for the continued
prosecution of an application after it has been passed for issue. When
the recommendation is against entry, a detailed statement of reasons is
not necessary in support of such recommendation. The simple statement
that the proposed claim is not obviously allowable and briefly the
reason why is usually adequate. Where appropriate, any one of the
following reasons is considered sufficient:

(A) an additional search is required;

(B) more than a cursory review of the record is necessary; or

(C) the amendment would involve materially added work on the part of the
Office, e.g., checking excessive editorial changes in the specification
or claims.

Where claims added by amendment under  37 CFR 1.312 are all of the form
of dependent claims, some of the usual reasons for nonentry are less
likely to apply although questions of new matter, sufficiency of
disclosure, or undue multiplicity of claims could arise.

See MPEP Section  607 and Section  714.16(c) for additional fee
requirements.

AMENDMENTS FILED AFTER PAYMENT OF ISSUE FEE

37 CFR 1.312(b) provides that amendments under  37 CFR 1.312 filed after
the date the issue fee has been paid must include a petition and fee
under  37 CFR 1.17(i) and a showing of good and sufficient reasons why
such an amendment is necessary and was not earlier presented. Such
petitions are decided by the Group Director.  Form paragraph 13.10
should be used where no petition and/or fee has been filed.

13.10 Rule 312 Amendment, Issue Fee Paid, No Petition/Fee

Applicant's amendment of [1] was filed after the issue fee was paid. 37
CFR 1.312(b) requires a petition and the fee set forth in  37 CFR
1.17(i).

Examiner Note:

1. For Rule 312 amendments submitted after the issue fee has been paid
and not complying with  37 CFR 1.312(b), use this paragraph with form
PTOL-90 or PTO-90C.

2. In bracket 1, insert the date of the amendment.

---SECTION---714.16(a) Amendments Under 37 CFR 1.312, Copied Patent
Claims

See MPEP Section  2305.04 for the procedure to be followed when an
amendment is received after notice of allowance which includes one or
more claims copied or substantially copied from a patent.

The entry of the copied patent claims is not a matter of right. See MPEP
Section  714.19.

See MPEP Section  607 and Section  714.16(c) for additional fee
requirements.

---SECTION---714.16(b) Amendments Under 37 CFR 1.312 Filed With a Motion
Under 37 CFR 1.633

Where an amendment filed with a motion under  37 CFR 1.633(c)(2) applies
to an application in issue, the amendment is not entered unless and
until the motion has been granted.

---SECTION---714.16(c) Amendments Under 37 CFR 1.312, Additional Claims

If the amendment under  37 CFR 1.312 adds claims (total and independent)
in excess of the number previously paid for, additional fees are
required. The amendment is not considered by the examiner unless
accompanied by the full fee required. See MPEP Section  607 and  35
U.S.C. 41.

---SECTION---714.16(d) Amendments Under 37 CFR 1.312, Handling

AMENDMENTS AFFECTING THE DISCLOSURE OF THE SPECIFICATION, ADDING CLAIMS,
OR CHANGING THE SCOPE OF ANY CLAIM

Amendments under  37 CFR 1.312 are sent by the Office of Initial Patent
Examination (OIPE) to the Publishing Division which, in turn, forwards
the proposed amendment, file, and drawing (if any) to the examining
group which allowed the application. In the event that the class and
subclass in which the application is classified has been transferred to
another group after the application was allowed, the proposed amendment,
file and drawing (if any) are transmitted directly to said other group
and the Publishing Division notified. If the examiner who allowed the
application is still employed in the Patent and Trademark Office but not
in said other group, he or she may be consulted about the propriety of
the proposed amendment and given credit for any time spent in giving it
consideration. The amendment is PROMPTLY considered by the examiner who
indicates whether or not its entry is recommended by writing "Enter -
312," "Do Not Enter" or "Enter In Part" thereon in red ink in the upper
left corner.

If the amendment is favorably considered, it is entered and a Response
to Rule 312 Communication (PTOL-271) is prepared. No "Entry Recommended
under Rule 312" stamp is required on the amendment in view of the use of
form PTOL-271. The primary examiner indicates his or her recommendation
by stamping and signing his or her name on the PTOL-271.  Form paragraph
7.85 may also be used to indicate entry.

7.85 Amendment Under 37 CFR 1.312 Entered

The amendment filed on   [1] under  37 CFR 1.312 has been entered.

Examiner Note:

1. Use this form both for amendments that do not affect the scope of the
claims (may be signed by Primary Examiner) and for amendments being
entered under  37 CFR 1.312 (requires signature of Supervisory Patent
Examiner).

2. Entry of amendments filed after the Notice of Allowance not affecting
the scope of the claims require the approval of a Primary Examiner and
entry of amendments under  37 CFR 1.312(a) require approval by the
Supervisory Patent Examiner on recommendation of the Primary Examiner.
See MPEP Section  714.16.

3. Amendments filed after payment of the issue fee require a petition
and fee.  These petitions are first decided by the Group Director.

If the examiner's recommendation is completely adverse, a report giving
the reasons for nonentry is typed on the Response to Rule 312
Communication form PTOL-271 and signed by the primary examiner.

Form Paragraph 7.87 may also be used to indicate nonentry.

7.87 Amendment Under 37 CFR 1.312 Not Entered

The proposed amendment filed on [1] under  37 CFR 1.312 has not been
entered. [2]

Examiner Note:

The reasons for non-entry should be specified in bracket 2:

-- the amendment was filed after payment of the issue fee without the
required petition and fee,  37 CFR 1.312 --; or

-- the amendment was filed in a reissue application and was not
accompanied by a supplemental reissue oath or declaration,  37 CFR
1.175(b) --.

In either case, whether the amendment is entered or not entered, the
file, drawing, and unmailed notices are forwarded to the supervisory
patent examiner for consideration, approval, and mailing.

For entry-in-part, see MPEP Section  714.16(e).

The filling out of the appropriate form by the technical support staff
does not signify that the amendment has been admitted; for, though
actually entered it is not officially admitted unless and until approved
by the supervisory patent examiner.

See MPEP Section  607 and Section  714.16(c) for additional fee
requirements.

Petitions to the Commissioner relating to the refusal to enter an
amendment under  37 CFR 1.312 and relating to entry of an amendment
under  37 CFR 1.312 filed after payment of the issue fee are decided by
the Group Director.

If the  37 CFR 1.312 amendment includes proposed drawing changes which
are acceptable, the Office response should include form paragraph 6.48.

6.48 Drawing Changes in 37 CFR 1.312 Amendment

Applicant is hereby given ONE MONTH from the date of this letter or
until the expiration of the period set in the "Notice of Allowance"
(PTOL-85) or "Notice of Allowability" (PTOL-37 or PTO-37), whichever is
longer, to file corrected drawings.

Examiner Note:

Use with the  37 CFR 1.312 amendment notice where there is a drawing
correction proposal or request.

AMENDMENTS WHICH EMBODY MERELY THE CORRECTION OF FORMAL MATTERS IN THE
SPECIFICATION, FORMAL CHANGES IN A CLAIM WITHOUT CHANGING THE SCOPE
THEREOF, OR THE CANCELLATION OF CLAIMS

The examiner indicates approval of amendments concerning merely formal
matters by writing "Enter Formal Matters Only" thereon. Such amendments
do not require submission to the supervisory patent examiner prior to
entry.  See MPEP Section  714.16.  The Response to Rule 312
Communication form PTOL-271 is date stamped and mailed by the examining
group. If such amendments are disapproved either in whole or in part,
they require the signature of the supervisory patent examiner.

---SECTION---714.16(e) Amendments Under 37 CFR 1.312, Entry in Part

The general rule that an amendment cannot be entered in part and refused
in part should not be relaxed, but when, under  37 CFR 1.312, an
amendment, for example, is proposed containing a plurality of claims or
amendments to claims, some of which may be entered and some not, the
acceptable claims or amendments should be entered in the application. If
necessary, the claims should be renumbered to run consecutively with the
claims already in the case. The refused claims or amendments should be
canceled in lead pencil on the amendment.

The examiner should then submit a Response to Rule 312 Communication
form PTOL-271 recommending the entry of the acceptable portion of the
amendment and the nonentry of the remaining portion together with his
reasons therefor. The claims entered should be indicated by number in
this response. Applicant may also be notified by using form paragraph
7.86.

7.86 Amendment Under 37 CFR 1. 312 Entered in Part

The amendment filed on [1] under  37 CFR 1.312 has been entered-in-part.
[2]

Examiner Note:

When an amendment under  37 CFR 1.312 is proposed containing plural
changes, some of which may be acceptable and some not, the acceptable
changes should be entered.  An indication of which changes have and have
not been entered with appropriate explanation should follow in bracket
2.

Handling is similar to complete entry of a  37 CFR 1.312 amendment.

Entry in part is not recommended unless the full additional fee
required, if any, accompanies the amendment. See MPEP Section  607 and
Section  714.16(c).

---SECTION---714.17 Amendment Filed After the Period for Reply Has
Expired

When an application is not prosecuted within the period set for reply
and thereafter an amendment is filed without a petition for extension of
time and fee pursuant to  37 CFR 1.136(a), such amendment shall be
endorsed on the file wrapper of the application, but not formally
entered. The technical support staff shall immediately notify the
applicant, by telephone and form letter PTOL-327, that the amendment was
not filed within the time period and therefore cannot be entered and
that the application is abandoned unless a petition for extension of
time and the appropriate fee are timely filed. See MPEP Section  711.02.

See MPEP Section  710.02(e) for a discussion of the requirements of  37
CFR 1.136(a).

---SECTION---714.18 Entry of Amendments

Amendments are stamped with the date of their receipt in the examining
group. It is important to observe the distinction which exists between
the stamp which shows the date of receipt of the amendment in the
examining group ("Group Date" stamp) and the stamp bearing the date of
receipt of the amendment by the Office ("Office Date" stamp). The latter
date, placed in the left-hand corner, should always be referred to in
writing to the applicant with regard to his or her amendment.

All amendments received in the technical support staff sections are
processed and with the applications delivered to the supervisory patent
examiner for his or her review and distribution to the examiners.

Every mail delivery should be carefully screened to remove all
amendments replying to a final action in which a time period is running
against the applicant. Such amendments should be processed within the
next 24 hours.

The purpose of this procedure is to ensure uniform and prompt treatment
by the examiners of all applications where the applicant is awaiting a
reply to a proposed amendment after final action. By having all of these
applications pass over the supervisory patent examiner's desk, he or she
will be made aware of the need for any special treatment, if the
situation so warrants. For example, the supervisory patent examiner will
know whether or not the examiner in each case is on extended leave or
otherwise incapable of moving the case within the required time periods
(see MPEP Section  714.13). In cases of this type, the applicant should
receive an Office communication in sufficient time to adequately
consider his or her next action if the case is not allowed.
Consequently, technical support staff handling will continue to be
special when these applications are returned by the examiners to the
technical support staff.

The amendment or letter is placed in the file, given its number as a
paper in the application, and its character endorsed on the file wrapper
in red ink.

When several amendments are made in an application on the same day no
particular order as to the hour of the receipt or the mailing of the
amendments can be assumed, but consideration of the case must be given
as far as possible as though all the papers filed were a composite
single paper.

After entry of the amendment the application is "up for action." It is
placed on the examiner's desk, and he or she is responsible for its
proper disposal. The examiner should immediately inspect the amendment
as set forth in MPEP Section  714.05. After inspection, if no immediate
or special action is required, the application awaits examination in
regular order.

---SECTION---714.19 List of Amendments, Entry Denied

The following types of amendments are ordinarily denied entry:

(A) An amendment presenting an unpatentable claim, or a claim requiring
a new search or otherwise raising a new issue in an application whose
prosecution before the primary examiner has been closed, as where

(1) All claims have been allowed,

(2) All claims have been finally rejected (for exceptions see MPEP
Section  714.12,  Section  714.13, and Section  714.20, item (D)),

(3) Some claims have been allowed and the remainder finally rejected.
See MPEP Section  714.12 to Section  714.14.

(B) Substitute specification that does not comply with  37 CFR 1.125.
See MPEP Section  608.01(q) and Section  714.20.

(C) A patent claim suggested by the examiner and not presented within
the time limit set or an extension thereof, unless entry is authorized
by the Commissioner. See MPEP Section  2305.03.

(D) While copied patent claims are generally admitted even though the
case is under final rejection or on appeal, under certain conditions,
the claims may be refused entry.  See MPEP Section  2307.03.

(E) An unsigned or improperly signed amendment or one signed by a
suspended or excluded attorney or agent.

(F) An amendment filed in the Patent and Trademark Office after the
expiration of the statutory period or set time period for reply and any
extension thereof. See MPEP Section  714.17.

(G) An amendment so worded that it cannot be entered with certain
accuracy. See MPEP Section  714.23.

(H) An amendment canceling all of the claims and presenting no
substitute claim or claims. See MPEP Section  711.01.

(I) An amendment in an application no longer within the examiner's
jurisdiction with certain exceptions in applications in issue, except on
approval of the Commissioner. See MPEP Section  714.16.

(J) Amendments to the drawing held by the examiner to contain new matter
are not entered until the question of new matter is settled. This
practice of nonentry because of alleged new matter, however, does not
apply in the case of amendments to the specification and claims. See
MPEP Section  608.04 and Section  706.03(o).

(K) An amendatory paper containing objectionable remarks that, in the
opinion of the examiner, brings it within the condemnation of  37 CFR
1.3, will be submitted to the Group Director for return to applicant.
See MPEP Section  714.25 and MPEP Section  1003. If the Group Director
determines that the remarks are in violation of  37 CFR 1.3, he or she
will return the paper.

(L) Amendments not in permanent ink. Amendments on so-called "easily
erasable paper." See MPEP Section  714.07.

(M) An amendment presenting claims (total and independent) in excess of
the number previously paid for and not accompanied by the full fee for
the claims or an authorization to charge the fee to a deposit account.

(N) An amendment canceling all claims drawn to the elected invention and
presenting only claims drawn to the nonelected invention should not be
entered.  Such an amendment is nonresponsive. Applicant should be
notified as directed in MPEP Section  714.03 and Section  714.05.  See
MPEP Section  821.03.

While amendments falling within any of the foregoing categories should
not be entered by the examiner at the time of filing, a subsequent
showing by applicant may lead to entry of the amendment.

---SECTION---714.20 List of Amendments Entered in Part

To avoid confusion of the record the general rule prevails that an
amendment should not be entered in part. As in the case of most other
rules, the strict observance of its letter may sometimes work more harm
than would result from its infraction, especially if the amendment in
question is received at or near the end of the period for reply.  Thus:

(A) An "amendment" presenting an unacceptable substitute specification
along with amendatory matter, as amendments to claims or new claims,
should be entered in part, rather than refused entry in toto. The
substitute specification should be denied entry and so marked, while the
rest of the paper should be entered. The application as thus amended is
acted on when reached in its turn, the applicant being advised that the
substitute specification has not been entered.

See  37 CFR 1.125 and MPEP Section  608.01(q) for information regarding
the submission of a substitute specification.

Under current practice, substitute specifications may be voluntarily
filed by the applicant if he or she desires. A proper substitute
specification will normally be accepted by the Office even if it has not
been required by the examiner.

(B) An amendment under  37 CFR 1.312, which in part is approved and in
other part disapproved, is entered only as to the approved part. See
MPEP Section  714.16(e).

(C) In an application in which prosecution on the merits is closed,
i.e., after the issuance of an Ex Parte Quayle action, where an
amendment is presented curing the noted formal defect and adding one or
more claims some or all of which are in the opinion of the examiner not
patentable, or will require a further search, the amendment in such a
case will be entered only as to the formal matter. Applicant has no
right to have new claims considered or entered at this point in the
prosecution.

(D) In an amendment accompanying a motion granted only in part, the
amendment is entered only to the extent that the motion was granted.

NOTE.  The examiner writes "Enter" in ink and his or her initials in the
left margin opposite the enterable portions.

---SECTION---714.21 Amendments Inadvertently Entered, No Legal Effect

If the technical support staff inadvertently enters an amendment when it
should not have been entered, such entry is of no legal effect, and the
same action is taken as if the changes had not been actually made,
inasmuch as they have not been legally made. Unless such unauthorized
entry is deleted, suitable notation should be made on the margin of the
amendatory paper, as "Not Officially Entered."

If an amendatory paper is to be retained in the file, even though not
entered, it should be given a paper number and listed on the file
wrapper with the notation "Not Entered."  See  37 CFR 1.3 and MPEP
Section  714.25 for an example of a paper which may be returned.

---SECTION---714.22 Entry of Amendments, Directions for

37 CFR 1.121 Manner of making amendments.

(a)  	Amendments in nonprovisional applications, other than reissue
applications:  Amendments in nonprovisional applications, excluding
reissue applications, are made by filing a paper, in compliance with
Section  1.52, directing that specified amendments be made.

(1)  	Specification other than the claims.  Except as provided in
Section  1.125, amendments to add matter to, or delete matter from, the
specification, other than to the claims, may only be made as follows:

(i) Instructions for insertions: The precise point in the specification
must be indicated where an insertion is to be made, and the matter to be
inserted must be set forth.

(ii) Instructions for deletions: The precise point in the specification
must be indicated where a deletion is to be made, and the matter to be
deleted must be set forth or otherwise indicated.

(iii) Matter deleted by amendment can be reinstated only by a subsequent
amendment presenting the previously deleted matter as a new insertion.

(2)  	Claims. Amendments to the claims may only be made as follows:

(i) Instructions for insertions and deletions:  A claim may be amended
by specifying only the exact matter to be deleted or inserted by an
amendment and the precise point where the deletion or insertion is to be
made, where the changes are limited to:

(A) Deletions and/or

(B) The addition of no more than five (5) words in any one claim; or

(ii) Claim cancellation or rewriting: A claim may be amended by
directions to cancel the claim or by rewriting such claim with
underlining below the matter added and brackets around the matter
deleted. The rewriting of a claim in this form will be construed as
directing the deletion of the previous version of that claim. If a
previously rewritten claim is again rewritten, underlining and
bracketing will be applied relative to the previous version of the
claim, with the parenthetical expression "twice amended," "three times
amended," etc., following the original claim number. The original claim
number followed by that parenthetical expression must be used for the
rewritten claim.  No interlineations or deletions of any prior amendment
may appear in the currently submitted version of the claim. A claim
canceled by amendment (not deleted and rewritten) can be reinstated only
by a subsequent amendment presenting the claim as a new claim with a new
claim number.

(3) Drawings.

(i) Amendments to the original application drawings are not permitted.
Any change to the application drawings must be by way of a substitute
sheet of drawings for each sheet changed submitted in compliance with
Section  1.84.

(ii) Where a change to the drawings is desired, a sketch in permanent
ink showing proposed changes in red, to become part of the record, must
be filed for approval by the examiner and should be in a separate paper.

(4) [Reserved]

(5) The disclosure must be amended, when required by the Office, to
correct inaccuracies of description and definition, and to secure
substantial correspondence between the claims, the remainder of the
specification, and the drawings.

(6) No amendment may introduce new matter into the disclosure of an
application.

(b) Amendments in reissue applications:  Amendments in reissue
applications are made by filing a paper, in compliance with Section
1.52, directing that specified amendments be made.

(1)  	Specification other than the claims.  Amendments to the
specification, other than to the claims, may only be made as follows:

(i) Amendments must be made by submission of the entire text of a newly
added or rewritten paragraph(s) with markings pursuant to paragraph
(b)(1)(iii) of this section, except that an entire paragraph may be
deleted by a statement deleting the paragraph without presentation of
the text of the paragraph.

(ii) The precise point in the specification must be indicated where the
paragraph to be amended is located.

(iii) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made.

(2) Claims. Amendments to the claims may only be made as follows:

(i)(A) The amendment must be made relative to the patent claims in
accordance with paragraph (b)(6) of this section and must include the
entire text of each claim which is being amended by the current
amendment and of each claim being added by the current amendment with
markings pursuant to paragraph (b)(2)(i)(C) of this section, except that
a patent claim or added claim should be cancelled by a statement
cancelling the patent claim or added claim without presentation of the
text of the patent claim or added claim.

(B) Patent claims must not be renumbered and the numbering of any claims
added to the patent must follow the number of the highest numbered
patent claim.

(C) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made.  If a claim is amended pursuant
to paragraph (b)(2)(i)(A) of this section, a parenthetical expression
"amended," "twice amended," etc., should follow the original claim
number.

(ii) Each amendment submission must set forth the status (i.e., pending
or cancelled) as of the date of the amendment, of all patent claims and
of all added claims.

(iii) Each amendment when originally submitted must be accompanied by an
explanation of the support in the disclosure of the patent for the
amendment along with any additional comments on page(s) separate from
the page(s) containing the amendment.

(3) Drawings.

(i) Amendments to the original patent drawings are not permitted. Any
change to the patent drawings must be by way of a new sheet of drawings
with the amended figures identified as "amended" and with added figures
identified as "new" for each sheet changed submitted in compliance with
Section  1.84.

(ii) Where a change to the drawings is desired, a sketch in permanent
ink showing proposed changes in red, to become part of the record, must
be filed for approval by the examiner and should be in a separate paper.

(4) The disclosure must be amended, when required by the Office, to
correct inaccuracies of description and definition, and to secure
substantial correspondence between the claims, the remainder of the
specification, and the drawings.

(5) No reissue patent shall be granted enlarging the scope of the claims
of the original patent unless applied for within two years from the
grant of the original patent, pursuant to  35 U.S.C. 251.  No amendment
to the patent may introduce new matter or be made in an expired patent.

(6) All amendments must be made relative to the patent specification,
including the claims, and drawings, which is in effect as of the date of
filing of the reissue application.

(c) Amendments in reexamination proceedings:  Any proposed amendment to
the description and claims in patents involved in reexamination
proceedings must be made in accordance with Section  1.530(d).

The term "brackets" set forth in  37 CFR 1.121(a) means square brackets,
thus: [  ]. It does not encompass and is to be distinguished from
parentheses (). Any amendment using parentheses to indicate canceled
matter in a claim rewritten under  37 CFR 1.121(a) may be held not fully
responsive.

Where, by amendment under  37 CFR 1.121(a), a dependent claim is
rewritten to be in independent form, the subject matter from the prior
independent claim should be considered to be "added" matter and should
be underlined.

Form paragraphs 6.33 and 6.34 may be used to inform applicants if the
amendments are not in proper format.

6.33 Amendment to the Claims, Addition of More Than 5 Words, 37 CFR
1.121

The reply filed on [1] is not fully responsive to the prior Office
action and the amendment to the claims has not been entered, because the
amendment requests the addition of more than five words in at least one
claim.  See  37 CFR 1.121(a)(2)(i) below:

(i) 	Instructions for insertions and deletions:  A claim may be amended
by specifying only the exact matter to be deleted or inserted by an
amendment and the precise point where the deletion or insertion is to be
made, where the changes are limited to:

(A) 	Deletions and/or

(B) 	The addition of no more than five (5) words in any one claim; or

The amendment to the claims should be made in accordance with  37 CFR
1.121(a)(2)(ii) which states:

(ii)	 Claim cancellation or rewriting:  A claim may be amended by
directions to cancel the claim or by rewriting such claim with
underlining below the matter added and brackets around the matter
deleted.  The rewriting of a claim in this form will be construed as
directing the deletion of the previous version of that claim.  If a
previously rewritten claim is again rewritten, underlining and
bracketing will be applied relative to the previous version of the
claim, with the parenthetical expression "twice amended," "three times
amended," etc., following the original claim number.  The original claim
number followed by that parenthetical expression must be used for the
rewritten claim.  No interlineations or deletions of any prior amendment
may appear in the currently submitted version of the claim.  A claim
canceled by amendment (not deleted and rewritten) can be reinstated only
by a subsequent amendment presenting the claim as a new claim with a new
claim number.

Since the above-mentioned reply appears to be bona fide, applicant is
given TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS from the mailing
date of this notice, whichever is longer, within which to supply an
amendment in compliance with  37 CFR 1.121 in order to avoid
abandonment.  EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER  37
CFR 1.136(a)

Examiner Note:

1. In bracket 1, insert the filing date of the reply.

6.34 Amendment of the Claims, Underlining or Brackets Used and Intended
To Be Printed in Patent

The amended claims of this application contain underlining or brackets
that are apparently intended to appear in the printed patent or are
properly part of the claimed material. The brackets or underlining as
used by the applicant are not intended to indicate amendments or changes
in the claims as provided in  37 CFR 1.121(a)(2)(ii).

Since underlining and brackets are normally used to indicate insertions
and deletions, it is confusing to use the same in instances where the
applicant desires to have the underlining and brackets appear in the
published patent.  If underlining or brackets are intended to appear as
part of the printed patent claim, such claim should be presented in
unamended form as a new claim, i.e., without the designation (amended),
(twice amended), etc. as required by  37 CFR 1.121(a)(1)(B).

Since the above-mentioned reply appears to be bona fide, applicant is
given TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS from the date of
this notice, whichever is longer, within which to supply a proper
amendment in compliance with  37 CFR 1.121 in order to avoid
abandonment.  EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER  37
CFR 1.136(a).

Examiner Note:

Underlining and/or bracketing may be permitted: (a) where it is clear
that the underlining and/or bracketing is intended to be part of the
claim and (b) when the underlining and bracketing indicates changes.
For example, in situations where H is intended to indicate heavy
hydrogen and applicant makes it clear that it is intended that the
underlining should be part of the claim, the examiner would not use the
above form paragraph.

---SECTION---714.23 Entry of Amendments, Directions for, Defective

The directions for the entry of an amendment may be defective, as,
inaccuracy in the line designated, or lack of precision where the word
to which the amendment is directed occurs more than once in the
specified line. If it is clear from the context what is the correct
place of entry, the amendatory paper will be properly amended in the
examining group and notation thereof, initialed in ink by the examiner,
who will assume full responsibility for the change, will be made on the
margin of the amendatory paper. In the next Office action the applicant
should be informed of this alteration in the amendment and the entry of
the amendment as thus amended. The applicant will also be informed of
the nonentry of an amendment where defective directions and context
leave doubt as to the intent of applicant.

---SECTION---714.24 Amendment of Amendments

When an amendatory clause is to be amended, it should be wholly
rewritten and the original insertion canceled, so that no
interlineations or deletions shall appear in the clause as finally
presented. Matter canceled by amendment can be reinstated only by a
subsequent amendment presenting the canceled matter as a new insertion.

However, where a relatively small amendment to a previous amendment can
be made easily without causing the amendatory matter to be obscure or
difficult to follow, such small amendment should be entered.

---SECTION---714.25 Discourtesy of Applicant or Attorney

37 CFR 1.3 Business to be conducted with decorum and courtesy.

Applicants and their attorneys or agents are required to conduct their
business with the Patent and Trademark Office with decorum and courtesy.
Papers presented in violation of this requirement will be submitted to
the Commissioner and will be returned by his direct order. Complaints
against examiners and other employees must be made in communications
separate from other papers.

All papers received in the Patent and Trademark Office should be briefly
reviewed by the technical support staff, before entry, sufficiently to
determine whether any discourteous remarks appear therein.

If the attorney or agent is discourteous in the remarks or arguments in
his or her amendment, either the discourtesy should be entirely ignored
or the paper submitted to the Group Director with a view toward it being
returned. See MPEP Section  1003. If the Group Director determines that
the remarks are in violation of  37 CFR 1.3, the Group Director will
return the paper.

---SECTION---715 Swearing Back of Reference - Affidavit or Declaration
Under 37 CFR 1.131

37 CFR 1.131 Affidavit or declaration of prior invention to overcome
cited patent or publication

(a)(1) When any claim of an application or a patent under reexamination
is rejected under  35 U.S.C. 102(a) or (e), or  35 U.S.C. 103 based on a
U.S. patent to another or others which is prior art under  35 U.S.C.
102(a) or (e) and which substantially shows or describes but does not
claim the same patentable invention, as defined in Section  1.601(n), or
on reference to a foreign patent or to a printed publication, the
inventor of the subject matter of the rejected claim, the owner of the
patent under reexamination, or the party qualified under Section Section
1.42, 1.43, or 1.47, may submit an appropriate oath or declaration to
overcome the patent or publication. The oath or declaration must include
facts showing a completion of the invention in this country or in a
NAFTA or WTO member country before the filing date of the application on
which the U.S. patent issued, or before the date of the foreign patent,
or before the date of the printed publication. When an appropriate oath
or declaration is made, the patent or publication cited shall not bar
the grant of a patent to the inventor or the confirmation of the
patentability of the claims of the patent, unless the date of such
patent or printed publication is more than one year prior to the date on
which the inventor's or patent owner's application was filed in this
country.

(2) A date of completion of the invention may not be established under
this section before December 8, 1993, in a NAFTA country, or before
January 1, 1996 in a WTO member country other than a NAFTA country.

(b) The showing of facts shall be such, in character and weight, as to
establish reduction to practice prior to the effective date of the
reference, or conception of the invention prior to the effective date of
the reference coupled with due diligence from prior to said date to a
subsequent reduction to practice or to the filing of the application.
Original exhibits of drawings or records, or photocopies thereof, must
accompany and form part of the affidavit or declaration or their absence
satisfactorily explained.

37 CFR 1.131(a) has been amended to implement the relevant provisions of
Public Law 103-182, 107 Stat. 2057 (1993) (North American Free Trade
Agreement Act) and Public Law 103-465, 108 Stat. 4809 (1994) (Uruguay
Round Agreements Act), respectively. Under  37 CFR 1.131(a) as amended,
which provides for the establishment of a date of completion of the
invention in a NAFTA or WTO member country, as well as in the United
States, an applicant can establish a date of completion in a NAFTA
member country on or after December 8, 1993, the effective date of
section 331 of Public Law 103-182, the North American Free Trade
Agreement Act, and can establish a date of completion in a WTO member
country other than a NAFTA member country on or after January 1, 1996,
the effective date of section 531 of Public Law 103-465, the Uruguay
Round Agreements Act (URAA). Acts occurring prior to the effective dates
of NAFTA or URAA may be relied upon to show completion of the invention;
however, a date of completion of the invention may not be established
under  37 CFR 1.131 before December 8, 1993 in a NAFTA country or before
January 1, 1996 in a WTO country other than a NAFTA country.

Any printed publication dated prior to an applicant's or patent owner's
effective filing date, or any domestic patent of prior filing date,
which is in its disclosure pertinent to the claimed invention, is
available for use by the examiner as a reference, either basic or
auxiliary, in the rejection of the claims of the application or patent
under reexamination.

Such a rejection may be overcome, in certain instances noted below, by
filing of an affidavit or declaration under  37 CFR 1.131, known as
"swearing back" of the reference.

It should be kept in mind that it is the rejection that is withdrawn and
not the reference.

SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS CAN BE USED

Affidavits or declarations under  37 CFR 1.131 may be used:

(A) Where the date of the foreign patent or that of the publication is
less than 1 year prior to applicant's or patent owner's effective filing
date.

(B) Where the reference, a U.S. Patent, with a patent date less than 1
year prior to applicant's effective filing date, shows but does not
claim the same patentable invention. See MPEP Section  715.05 for a
discussion of "same patentable invention."

SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS ARE
INAPPROPRIATE

An affidavit or declaration under  37 CFR 1.131 is not appropriate in
the following situations:

(A) Where the reference publication date is more than 1 year back of
applicant's or patent owner's effective filing date. Such a reference is
a "statutory bar" under  35 U.S.C. 102(b).

(B) Where the reference U.S. patent claims the same patentable
invention. See MPEP Section  715.05 for a discussion of "same patentable
invention" and MPEP Section  2306. Where the reference patent and the
application or patent under reexamination are commonly owned, and the
inventions defined by the claims in the application or patent under
reexamination and by the claims in the patent are not identical but are
not patentably distinct, a terminal disclaimer and an affidavit or
declaration under  37 CFR 1.130 may be used to overcome a rejection
under  35 U.S.C. 103. See MPEP Section  718.

(C) Where the reference is a foreign patent for the same invention to
applicant or patent owner or his or her legal representatives or assigns
issued prior to the filing date of the domestic application or patent on
an application filed more than 12 months prior to the filing date of the
domestic application. See  35 U.S.C. 102(d).

(D) Where the effective filing date of applicant's or patent owner's
parent application or an International Convention proved filing date is
prior to the effective date of the reference, an affidavit or
declaration under  37 CFR 1.131 is unnecessary because the reference is
not used. See MPEP Section  201.11 to Section  201.15.

(E) Where the reference is a prior U.S. patent to the same entity,
claiming the same invention. The question involved is one of "double
patenting."

(F) Where the reference is the disclosure of a prior U.S. patent to the
same party, not copending. The question is one of dedication to the
public. Note however, In re Gibbs, 437 F.2d 486, 168 USPQ 578 (CCPA
1971) which substantially did away with the doctrine of dedication.

(G) Where applicant has clearly admitted on the record that subject
matter relied on in the reference is prior art. In this case, that
subject matter may be used as a basis for rejecting his or her claims
and may not be overcome by an affidavit or declaration under  37 CFR
1.131. In re Hellsund, 474 F.2d 1307, 177 USPQ 170 (CCPA 1973); In re
Garfinkel, 437 F.2d 1000, 168 USPQ 659 (CCPA 1971); In re Blout, 333
F.2d 928, 142 USPQ 173 (CCPA 1964); In re Lopresti, 333 F.2d 932, 142
USPQ 177 (CCPA 1964).

(H) Where the subject matter relied upon is prior art under  35 U.S.C.
102(f).

(I) Where the subject matter relied on in the reference is prior art
under  35 U.S.C. 102(g).  37 CFR 1.131 is designed to permit an
applicant to overcome rejections under 35 U.S.C 102(a) and (e) based on
patents and publications which are not statutory bars, but which have
publication dates, or in the case of U.S. patents, effective filing
dates, prior to the effective filing date of the application but
subsequent to the applicant's actual date of invention. However, when
the subject matter relied on is also available under  35 U.S.C. 102(g),
a  37 CFR 1.131 affidavit or declaration cannot be used to overcome it.
In re Bass, 474 F.2d 1276, 177 USPQ 178 (CCPA 1973). This is because
subject matter which is available under  35 U.S.C. 102(g) by definition
must have been made before the applicant made his invention. References
under  35 U.S.C. 102(a) and (e), by contrast, merely establish a
presumption that their subject matter was made before applicant's
invention date. It is this presumption which may be rebutted by evidence
submitted under  37 CFR 1.131.

(J) Where the subject matter corresponding to a lost count in an
interference is either prior art under  35 U.S.C. 102(g) or barred to
applicant by the doctrine of interference estoppel. In re Bandel, 348
F.2d 563, 146 USPQ 389 (CCPA 1965); In re Kroekel, 803 F.2d 705, 231
USPQ 640 (Fed. Cir. 1986).  See also In re Deckler, 977 F.2d 1449, 24
USPQ2d 1448 (Fed. Cir. 1992) (Under the principles of res judicata and
collateral estoppel, applicant was not entitled to claims that were
patentably indistinguishable from the claim lost in interference even
though the subject matter of the lost count was not available for use in
an obviousness rejection under  35 U.S.C. 103). But see In re Zletz, 893
F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989) (A losing party to an
interference, on showing that the invention now claimed is not
"substantially the same" as that of the lost count, may employ the
procedures of  37 CFR 1.131 to antedate the filing date of an
interfering application). On the matter of when a "lost count" in an
interference constitutes prior art under  35 U.S.C. 102(g), see In re
McKellin, 529 F.2d 1342, 188 USPQ 428 (CCPA 1976) (A count is not prior
art under  35 U.S.C. 102(g) as to the loser of an interference where the
count was lost based on the winner's foreign priority date). Similarly,
where one party in an interference wins a count by establishing a date
of invention in a NAFTA or WTO member country (see  35 U.S.C. 104), the
subject matter of that count is unpatentable to the other party by the
doctrine of interference estoppel, even though it is not available as
statutory prior art under  35 U.S.C. 102(g). See MPEP Section  2138.01
and Section  2138.02.

REFERENCE DATE TO BE OVERCOME

The date to be overcome under  37 CFR 1.131 is the effective date of the
reference (i.e., the date on which the reference is available as prior
art).

A. U.S. Patents

See MPEP Section  2136 through Section  2136.03 for a detailed
discussion of the effective date of a U.S. patent as a reference.

Should it be established that the portion of the patent disclosure
relied on as the reference was introduced into the patent application by
amendment and as such was new matter, the date to be overcome by the
affidavit or declaration is the date of amendment. In re Willien, 74
F.2d 550, 24 USPQ 210 (CCPA 1935). The effective date of a domestic
patent when used as a reference is not the foreign filing date to which
the application for patent may have been entitled under  35 U.S.C.
119(a) during examination. In re Hilmer, 359 F.2d 859, 149 USPQ 480
(CCPA 1966). Therefore, the date to be overcome under  37 CFR 1.131 is
the effective U.S. filing date, not the foreign priority date. Note,
however, that, when the U.S. patent reference is entitled to a priority
date based on an earlier filed international application (PCT) under  35
U.S.C. 120, the effective filing date of the reference is the
international filing date as defined by  35 U.S.C. 363. Further, note
that the effective date of a patent issued on an application entitled to
priority under  35 U.S.C. 119(e) to a provisional application filed
under  35 U.S.C. 111(b) is the filing date of the provisional
application, except for a patent granted on an international application
in which applicant has fulfilled the requirements of paragraphs (1), (2)
and (4) of  35 U.S.C. 371(c). Where a U.S. national stage application
filed under  35 U.S.C. 371 becomes a U.S. patent, its effective date as
a prior art reference is the date on which the requirements of
paragraphs (1), (2) and (4) of  35 U.S.C. 371(c) were fulfilled.

B. Foreign Patents

See MPEP Section  2126 through Section  2127 regarding date of
availability of foreign patents as prior art.

C. Printed Publications

A printed publication, including a published foreign patent application,
is effective as of its publication date, not its date of receipt by the
publisher. For additional information regarding effective dates of
printed publications, see MPEP Section  2128 through Section  2128.02.

FORM PARAGRAPHS

Form paragraphs 7.57-7.64 may be used to respond to  37 CFR 1.131
affidavits.

7.57 Affidavit or Declaration Under 37 CFR 1.131: Ineffective- Heading

The [1] filed on [2] under  37 CFR 1.131 has been considered but is
ineffective to overcome the [3] reference.

Examiner Note:

1. In bracket 1, insert either --affidavit-- or --declaration--.

2. This paragraph must be followed by one or more of paragraphs 7.58 to
7.63 or a paragraph setting forth proper basis for the insufficiency,
such as failure to establish acts performed in this country, or that the
scope of the declaration or affidavit is not commensurate with the scope
of the claim(s).

7.58 Affidavit or Declaration Under 37 CFR 1.131: Ineffective, Claiming
Same Invention

The   [1] reference is a U.S. patent that claims the rejected invention.
An affidavit or declaration is inappropriate under  37 CFR 1.131(a) when
the patent is claiming the same patentable invention, see MPEP Section
2306.  If the patent and this application are not commonly owned, the
patent can only be overcome by establishing priority of invention
through interference proceedings.  See MPEP Chapter 2300 for information
on initiating interference proceedings.  If the patent and this
application are commonly owned, the patent may be disqualified as prior
art by an affidavit or declaration under  37 CFR 1.130.  See MPEP
Section  718.

Examiner Note:

1. If used to respond to the submission of an affidavit under  37 CFR
1.131, this paragraph must be preceded by paragraph 7.57.

2. This paragraph may be used without paragraph 7.57 when an affidavit
has not yet been filed, and the examiner desires to notify applicant
that the submission of an affidavit under  37 CFR 1.131 would be
inappropriate.

7.59 Affidavit or Declaration Under 37 CFR 1.131: Ineffective,
Insufficient Evidence of Reduction to Practice Before Reference Date

The evidence submitted is insufficient to establish a reduction to
practice of the invention in this country or a NAFTA or WTO member
country prior to the effective date of the   [1] reference. [2]

Examiner Note:

1. This paragraph must be preceded by paragraph 7.57.

2. An explanation of the lack of showing of the alleged reduction to
practice must be provided in bracket 2.

7.60 Affidavit or Declaration Under 37 CFR 1.131: Ineffective, Reference
Is a Statutory Bar

The [1] reference is a statutory bar under  35 U.S.C. 102(b) and thus
cannot be overcome by an affidavit or declaration under  37 CFR 1.131.

Examiner Note:

This paragraph must be preceded by paragraph 7.57.

7.61 Affidavit or Declaration Under 37 CFR 1.131: Ineffective,
Insufficient Evidence of Conception

The evidence submitted is insufficient to establish a conception of the
invention prior to the effective date of the [1] reference.  While
conception is the mental part of the inventive act, it must be capable
of proof, such as by demonstrative evidence or by a complete disclosure
to another.  Conception is more than a vague idea of how to solve a
problem.  The requisite means themselves and their interaction must also
be comprehended.  See Mergenthaler v.   Scudder, 1897 C.D. 724, 81 O.G.
1417 (D.C. Cir. 1897). [2]

Examiner Note:

1. This paragraph must be preceded by paragraph 7.57.

2. An explanation of the deficiency in the showing of conception must be
presented in bracket 2.

3. If the affidavit additionally fails to establish either diligence or
a subsequent reduction to practice, this paragraph should be followed by
paragraph 7.62 and/or 7.63.  If either diligence or a reduction to
practice is established, a statement to that effect should follow this
paragraph.

7.62 Affidavit or Declaration Under 37 CFR 1.131: Ineffective, Diligence
Lacking

The evidence submitted is insufficient to establish diligence from a
date prior to the date of reduction to practice of the   [1] reference
to either a constructive reduction to practice or an actual reduction to
practice. [2]

Examiner Note:

1. This paragraph must be preceded by paragraph 7.57.

2. If the affidavit additionally fails to establish conception, this
paragraph must also be preceded by paragraph 7.61.  If the affidavit
establishes conception, a statement to that effect should be added to
this paragraph.

3. If the affidavit additionally fails to establish an alleged reduction
to practice prior to the application filing date, this paragraph must be
followed by paragraph 7.63.  If such an alleged reduction to practice is
established, a statement to that effect should be added to this
paragraph.

4. An explanation of the reasons for a holding of non-diligence must be
provided in bracket 2.

5. See MPEP Section  715.07(a), Ex parte Merz, 75 USPQ 296 (Bd. App.
1947), which indicates that diligence is not required after reduction to
practice.

7.63 Affidavit or Declaration Under 37 CFR 1.131: Ineffective,
Insufficient Evidence of Actual Reduction to Practice

The evidence submitted is insufficient to establish applicant's alleged
actual reduction to practice of the invention in this country or a NAFTA
or WTO member country after the effective date of the   [1] reference.
[2].

Examiner Note:

1. This paragraph must be preceded by paragraph 7.57.

2. If the alleged reduction to practice is prior to the effective date
of the reference, do not use this paragraph.  See paragraph 7.59.

3. If the affidavit additionally fails to establish either conception or
diligence, paragraphs 7.61 and/or 7.62 should precede this paragraph.
If either conception or diligence is established, a statement to that
effect should be included after this paragraph.

4. An explanation of the lack of showing of the alleged reduction to
practice must be given in bracket 2.

7.64 Affidavit or Declaration Under 37 CFR 1.131: Effective To Overcome
Reference

The [1] filed on [2] under  37 CFR 1.131 is sufficient to overcome the
[3] reference.

Examiner Note:

1. In bracket 1, insert either --affidavit-- or --declaration--.

2. In bracket 2, insert the filing date of the affidavit or declaration.

3. In bracket 3, insert the name of the reference.

---SECTION---715.01 37 CFR 1.131 Affidavits Versus 37 CFR 1.132
Affidavits

The purpose of a  37 CFR 1.131 affidavit or declaration is to overcome a
prior art rejection by proving invention of the claimed subject matter
by applicant prior to the effective date of the reference relied upon in
the rejection.

In some situations, an applicant may, alternatively, be able to overcome
prior art rejections relying on references which are available as prior
art under  35 U.S.C. 102(a) or (e) by proving that the subject matter
relied upon in the reference was applicant's own invention.

Similarly, where the reference relied upon in a  35 U.S.C. 103 rejection
qualifies as prior art only under  35 U.S.C. 102(f) or (g), applicant
may be able to overcome this rejection by proving that the subject
matter relied upon and the claimed invention were commonly owned or
subject to common assignment at the time the later invention was made.
In such situations, an affidavit or declaration under  37 CFR 1.132,
rather than  37 CFR 1.131, would be appropriate. See MPEP Section
715.01(a) through Section  715.01(c) for specific situations where these
issues may arise.

---SECTION---715.01(a) Reference Is a Joint Patent to Applicant and
Another

When subject matter, disclosed but not claimed in a patent issued
jointly to S and another, is claimed in a later application filed by S,
the joint patent is a valid reference unless overcome by affidavit or
declaration under  37 CFR 1.131 or an unequivocal declaration under  37
CFR 1.132 by S that he/she conceived or invented the subject matter
disclosed in the patent and relied on in the rejection. In re DeBaun,
687 F.2d 459, 214 USPQ 933 (CCPA 1982). See MPEP Section  716.10 for a
discussion of the use of  37 CFR 1.132 affidavits or declarations to
overcome rejections by establishing that the subject matter relied on in
the patent was the invention of the applicant. Disclaimer by the other
patentee should not be required but, if submitted, may be accepted by
the examiner.

Although affidavits or declarations submitted for the purpose of
establishing that the reference discloses applicant's invention are
properly filed under  37 CFR 1.132, rather than  37 CFR 1.131, such
affidavits submitted improperly under  37 CFR 1.131 will be considered
as though they were filed under  37 CFR 1.132 to traverse a ground of
rejection. In re Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969).

---SECTION---715.01(b) Reference and Application Have Common Assignee

The mere fact that the reference patent which shows but does not claim
certain subject matter and the application which claims it are owned by
the same assignee does not avoid the necessity of filing an affidavit or
declaration under  37 CFR 1.131, in the absence of a showing under  37
CFR 1.132 that the patentee derived the subject matter relied on from
the applicant (MPEP Section  716.10). The common assignee does not
obtain any rights in this regard by virtue of common ownership which he
would not have in the absence of common ownership. In re Frilette, 412
F.2d 269, 162 USPQ 163 (CCPA 1969); Pierce v. Watson, 275 F.2d 890, 124
USPQ 356 (D.C. Cir. 1960); In re Beck, 155 F.2d 398, 69 USPQ 520 (CCPA
1946). Where, however, a rejection is applied under  35 U.S.C.
102(f)/103 or  35 U.S.C. 102(g)/103 using the reference patent, a
showing that the invention was commonly owned at the time the later
invention was made would preclude such a rejection or be sufficient to
overcome such a rejection.

---SECTION---715.01(c) Reference Is Publication of Applicant's Own
Invention

Unless it is a statutory bar, a rejection based on a publication may be
overcome by a showing that it was published either by applicant
himself/herself or on his/her behalf. Since such a showing is not made
to show a date of invention by applicant prior to the date of the
reference under  37 CFR 1.131, the limitation in  35 U.S.C. 104 and in
37 CFR 1.131(a)(1) that only acts which occurred in this country or in a
NAFTA or WTO member country may be relied on to establish a date of
invention is not applicable.   Ex parte Lemieux, 115 USPQ 148, 1957 C.D.
47, 725 O.G. 4 (Bd. App. 1957); Ex parte Powell, 1938 C.D. 15, 489 O.G.
231 (Bd. App. 1938). See MPEP Section  716.10 regarding  37 CFR 1.132
affidavits submitted to show that the reference is a publication of
applicant's own invention.

COAUTHORSHIP

Where the applicant is one of the co-authors of a publication cited
against his or her application, he or she may overcome the rejection by
filing an affidavit or declaration under  37 CFR 1.131. Alternatively,
the applicant may overcome the rejection by filing a specific affidavit
or declaration under  37 CFR 1.132 establishing that the article is
describing applicant's own work. An affidavit or declaration by
applicant alone indicating that applicant is the sole inventor and that
the others were merely working under his direction is sufficient to
remove the publication as a reference under  35 U.S.C. 102(a). In re
Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982).

DERIVATION

When the unclaimed subject matter of a patent or other publication is
applicant's own invention, a rejection on that patent or publication may
be removed by submission of evidence establishing the fact that the
patentee or author derived his or her knowledge of the relevant subject
matter from applicant. Moreover applicant must further show that he or
she made the invention upon which the relevant disclosure in the patent
or publication is based. In re Mathews, 408 F.2d 1393, 161 USPQ 276
(CCPA 1969); In re Facius, 408 F.2d 1396, 161 USPQ 294 (CCPA 1969).

---SECTION---715.02 How Much of the Claimed Invention Must Be Shown,
Including the General Rule as to Generic Claims

The  37 CFR 1.131 affidavit or declaration must establish possession of
either the whole invention claimed or something falling within the claim
(such as a species of a claimed genus), in the sense that the claim as a
whole reads on it. In re Tanczyn, 347 F.2d 830, 146 USPQ 298 (CCPA 1965)
(Where applicant claims an alloy comprising both nitrogen and
molybdenum, an affidavit showing applicant made an alloy comprising
nitrogen but not molybdenum is not sufficient under  37 CFR 1.131 to
overcome a rejection under  35 U.S.C. 103 based on the combined
teachings of one reference disclosing an alloy comprising nitrogen but
not molybdenum and a second reference disclosing an alloy comprising
molybdenum but not nitrogen). Note, however, where the differences
between the claimed invention and the disclosure of the reference(s) are
so small as to render the claims obvious over the reference(s), an
affidavit or declaration under  37 CFR 1.131 is required to show no more
than the reference shows. In re Stryker, 435 F.2d 1340, 168 USPQ 372
(CCPA 1971). In other words, where the examiner, in rejecting a claim
under  35 U.S.C. 103, has treated a claim limitation as being an obvious
feature or modification of the disclosure of the reference(s) relied
upon, without citation of a reference which teaches such feature or
modification, a  37 CFR 1.131 affidavit or declaration may be sufficient
to overcome the rejection even if it does not show such feature or
modification.

Further, a  37 CFR 1.131 affidavit is not insufficient merely because it
does not show the identical disclosure of the reference(s) relied upon.
If the affidavit contains facts showing a completion of the invention
commensurate with the extent of the invention as claimed is shown in the
reference, the affidavit or declaration is sufficient, whether or not it
is a showing of the identical disclosure of the reference. In re
Wakefield, 422 F.2d 897, 164 USPQ 636 (CCPA 1970).

Even if applicant's  37 CFR 1.131 affidavit is not fully commensurate
with the rejected claim, the applicant can still overcome the rejection
by showing that the differences between the claimed invention and the
showing under  37 CFR 1.131 would have been obvious to one of ordinary
skill in the art, in view of applicant's  37 CFR 1.131 evidence, prior
to the effective date of the reference(s). Such evidence is sufficient
because applicant's possession of what is shown carries with it
possession of variations and adaptations which would have been obvious,
at the same time, to one of ordinary skill in the art. However, the
affidavit or declaration showing must still establish possession of the
invention (i.e., the basic inventive concept) and not just of what one
reference (in a combination of applied references) happens to show, if
that reference does not itself teach the basic inventive concept. In re
Spiller, 500 F.2d 1170, 182 USPQ 614 (CCPA 1974) (Claimed invention was
use of electrostatic forces to adhere dry starch particles to a wet
paper web on the Fourdrinier wire of a paper-making machine.  37 CFR
1.131 affidavit established use of electrostatic forces to adhere starch
particles to wet blotting paper moved over a fluidized bed of starch
particles prior to the applied reference date. Affidavit was sufficient
in view of prior art reference showing that deposition of dry coatings
directly on wet webs on the Fourdrinier wire of a paper-making machine
was well known in the art prior to the date of the applied reference.
The affidavit established possession of the basic invention, i.e., use
of electrostatic forces to adhere starch to wet paper.).

SWEARING BEHIND ONE OF A PLURALITY OF COMBINED REFERENCES

Applicant may overcome a 35 U.S.C 103 rejection based on a combination
of references by showing completion of the invention by applicant prior
to the effective date of any of the references; applicant need not
antedate the reference with the earliest filing date. However, as
discussed above, applicant's  37 CFR 1.131 affidavit must show
possession of either the whole invention as claimed or something falling
within the claim(s) prior to the effective date of the reference being
antedated; it is not enough merely to show possession of what the
reference happens to show if the reference does not teach the basic
inventive concept.

Where a claim has been rejected under  35 U.S.C. 103 based on Reference
A in view of Reference B, with the effective date of secondary Reference
B being earlier than that of Reference A, the applicant can rely on the
teachings of Reference B to show that the differences between what is
shown in his or her  37 CFR 1.131 affidavit or declaration and the
claimed invention would have been obvious to one of ordinary skill in
the art prior to the date of Reference A. However, the  37 CFR 1.131
affidavit or declaration must still establish possession of the claimed
invention, not just what Reference A shows, if Reference A does not
teach the basic inventive concept.

GENERAL RULE AS TO GENERIC CLAIMS

A reference applied against generic claims may (in most cases) be
antedated as to such claims by an affidavit or declaration under  37 CFR
1.131 showing completion of the invention of only a single species,
within the genus, prior to the effective date of the reference
(assuming, of course, that the reference is not a statutory bar or a
patent claiming the same invention).  See Ex parte Biesecker, 144 USPQ
129 (Bd. App. 1964). See, also, In re Fong, 288 F.2d 932, 129 USPQ 264
(CCPA 1961); In re Defano, 392 F.2d 280, 157 USPQ 192 (CCPA 1968)
(distinguishing chemical species of genus compounds from embodiments of
a single invention). See, however,  MPEP Section  715.03 for practice
relative to cases in unpredictable arts.

---SECTION---715.03 Genus-Species, Practice Relative to Cases Where
Predictability Is in Question

Where generic claims have been rejected on a reference which discloses a
species not antedated by the affidavit or declaration, the rejection
will not ordinarily be withdrawn, subject to the rules set forth below,
unless the applicant is able to establish that he or she was in
possession of the generic invention prior to the effective date of the
reference. In other words, the affidavit or declaration under  37 CFR
1.131 must show as much as the minimum disclosure required by a patent
specification to furnish support for a generic claim.

REFERENCE DISCLOSES SPECIES

A. Species Claim

Where the claim under rejection recites a species and the reference
discloses the claimed species, the rejection can be overcome under  37
CFR 1.131 directly by showing prior completion of the claimed species or
indirectly by a showing of prior completion of a different species
coupled with a showing that the claimed species would have been an
obvious modification of the species completed by applicant. See In re
Spiller, 500 F.2d 1170, 182 USPQ 614 (CCPA 1974).

B. Genus Claim

The principle is well established that the disclosure of a species in a
cited reference is sufficient to prevent a later applicant from
obtaining a "generic claim." In re Gosteli, 872 F.2d 1008, 10 USPQ2d
1614 (Fed. Cir. 1989); In re Slayter, 276 F.2d 408, 125 USPQ 345 (CCPA
1960).

Where the only pertinent disclosure in the reference is a single species
of the claimed genus, the applicant can overcome the rejection directly
under  37 CFR 1.131 by showing prior possession of the species disclosed
in the reference. On the other hand, a reference which discloses several
species of a claimed genus can be overcome directly under  37 CFR 1.131
only by a showing that the applicant completed, prior to the date of the
reference, all of the species shown in the reference. In re Stempel, 241
F.2d 755, 113 USPQ 77 (CCPA 1957).

Proof of prior completion of a species different from the reference
species will be sufficient to overcome a reference indirectly under  37
CFR 1.131 if the reference species would have been obvious in view of
the species shown to have been made by the applicant. In re Clarke, 356
F.2d 987, 148 USPQ 665 (CCPA 1966); In re Plumb, 470 F.2d 1403, 176 USPQ
323 (CCPA 1973); In re Hostettler, 356 F.2d 562, 148 USPQ 514 (CCPA
1966). Alternatively, if the applicant cannot show possession of the
reference species in this manner, the applicant may be able to antedate
the reference indirectly by, for example, showing prior completion of
one or more species which put him or her in possession of the claimed
genus prior to the reference date. The test is whether the species
completed by applicant prior to the reference date provided an adequate
basis for inferring that the invention has generic applicability. In re
Plumb, 470 F.2d 1403, 176 USPQ 323 (CCPA 1973); In re Rainer, 390 F.2d
771, 156 USPQ 334 (CCPA 1968); In re Clarke, 356 F.2d 987, 148 USPQ 665
(CCPA 1966); In re Shokal, 242 F.2d 771, 113 USPQ 283 (CCPA 1957).

It is not necessary for the affidavit evidence to show that the
applicant viewed his or her invention as encompassing more than the
species actually made. The test is whether the facts set out in the
affidavit are such as would persuade one skilled in the art that the
applicant possessed so much of the invention as is shown in the
reference. In re Schaub, 537 F.2d 509, 190 USPQ 324 (CCPA 1976).

C. Species Versus Embodiments

References which disclose one or more embodiments of a single claimed
invention, as opposed to species of a claimed genus, can be overcome by
filing a  37 CFR 1.131 affidavit showing prior completion of a single
embodiment of the invention, whether it is the same or a different
embodiment from that disclosed in the reference. See In re Fong, 288
F.2d 932, 129 USPQ 264 (CCPA 1961) (Where applicant discloses and claims
a washing solution comprising a detergent and polyvinylpyrrolidone
(PVP), with no criticality alleged as to the particular detergent used,
the PVP being used as a soil-suspending agent to prevent the
redeposition of the soil removed, the invention was viewed as the use of
PVP as a soil-suspending agent in washing with a detergent. The
disclosure in the reference of the use of PVP with two detergents, both
of which differed from that shown in applicant's  37 CFR 1.131
affidavit, was considered a disclosure of different embodiments of a
single invention, rather than species of a claimed genus); In re Defano,
392 F.2d 280, 157 USPQ 192 (CCPA 1968).

REFERENCE DISCLOSES CLAIMED GENUS

In general, where the reference discloses the claimed genus, a showing
of completion of a single species within the genus is sufficient to
antedate the reference under  37 CFR 1.131. Ex parte Biesecker, 144 USPQ
129 (Bd. App. 1964).

In cases where predictability is in question, on the other hand, a
showing of prior completion of one or a few species within the disclosed
genus is generally not sufficient to overcome the reference. In re
Shokal, 242 F.2d 771, 113 USPQ 283 (CCPA 1957). The test is whether the
species completed by applicant prior to the reference date provided an
adequate basis for inferring that the invention has generic
applicability. In re Mantell, 454 F.2d 1398, 172 USPQ 530 (CCPA 1973);
In re Rainer, 390 F.2d 771, 156 USPQ 334 (CCPA 1968); In re DeFano, 392
F.2d 280, 157 USPQ 192 (CCPA 1968); In re Clarke, 356 F.2d 987, 148 USPQ
665 (CCPA 1965). In the case of a small genus such as the halogens,
which consists of four species, a reduction to practice of three, or
perhaps even two, species might show possession of the generic
invention, while in the case of a genus comprising hundreds of species,
reduction to practice of a considerably larger number of species would
be necessary. In re Shokal, supra.

It is not necessary for the affidavit evidence to show that the
applicant viewed his or her invention as encompassing more than the
species he or she actually made. The test is whether the facts set out
in the affidavit are such as would persuade one skilled in the art that
the applicant possessed so much of the invention as is shown in the
reference. In re Schaub, 537 F. 509, 190 USPQ 324 (CCPA 1976).

---SECTION---715.04 Who May Make Affidavit or Declaration; Formal
Requirements of Affidavits and Declarations

WHO MAY MAKE AFFIDAVIT OR DECLARATION

The following parties may make an affidavit or declaration under  37 CFR
1.131:

(A) All the inventors of the subject matter claimed.

(B) An affidavit or declaration by less than all named inventors of an
application is accepted where it is shown that less than all named
inventors of an application invented the subject matter of the claim or
claims under rejection. For example, one of two joint inventors is
accepted where it is shown that one of the joint inventors is the sole
inventor of the claim or claims under rejection.

(C) The assignee or other party in interest when it is not possible to
produce the affidavit or declaration of the inventor. Ex parte Foster,
1903 C.D. 213, 105 O.G. 261 (Comm'r Pat. 1903).

Affidavits or declarations to overcome a rejection of a claim or claims
on a cited patent or publication must be made by the inventor or
inventors of the subject matter of the rejected claim(s) or the assignee
or other party in interest when it is not possible to produce the
affidavit or declaration of the inventor(s). Thus, where all of the
named inventors of a pending application are not inventors of every
claim of the application, any affidavit under  37 CFR 1.131 could be
signed by only the inventor(s) of the subject matter of the rejected
claims. Further, where it is shown that a joint inventor is deceased,
refuses to sign, or is otherwise unavailable, the signatures of the
remaining joint inventors are sufficient. However, the affidavit or
declaration, even though signed by fewer than all the joint inventors,
must show completion of the invention by all of the joint inventors of
the subject matter of the claim(s) under rejection. In re Carlson, 79
F.2d 900, 27 USPQ 400 (CCPA 1935).

FORMAL REQUIREMENTS OF AFFIDAVITS AND DECLARATIONS

An affidavit is a statement in writing made under oath before a notary
public, magistrate, or officer authorized to administer oaths. See MPEP
Section  604 through Section  604.06 for additional information
regarding formal requirements of affidavits.

37 CFR 1.68 permits a declaration to be used instead of an affidavit.
The declaration must include an acknowledgment by the declarant that
willful false statements and the like are punishable by fine or
imprisonment, or both (18 U.S.C. 1001) and may jeopardize the validity
of the application or any patent issuing thereon. The declarant must set
forth in the body of the declaration that all statements made of the
declarant's own knowledge are true and that all statements made on
information and belief are believed to be true.

---SECTION---715.05 Patent Claiming Same Invention

When the reference in question is a noncommonly owned patent claiming
the same invention as applicant and its issue date is less than 1 year
prior to the filing date of the application being examined, applicant's
remedy, if any, must be by way of  37 CFR 1.608 instead of  37 CFR
1.131. The examiner should therefore take note whether the status of the
patent as a reference is that of a PATENT or a PUBLICATION. If the
patent is claiming the same invention as the application and its issue
date is less than 1 year prior to the filing date of the application,
this fact should be noted in the Office action. The reference patent can
then be overcome only by way of interference.  See MPEP Section Section
2306- 2308.  If the patent is claiming the same invention as the
application and its issue date is 1 year or more prior to the filing
date of the application, a rejection of the claims of the application
under  35 U.S.C. 135(b) should be made.  See In re McGrew, 120 F.3d
1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997)(The court holding that
application of  35 U.S.C. 135(b) is not limited to inter partes
interference proceedings, but may be used as a basis for ex parte
rejections.).

Form paragraph 23.14 may be used when making a rejection under  35
U.S.C. 135(b).

23.14 Claims Not Copied Within One Year

Claim  [1] rejected under  35 U.S.C. 135(b) as not being made prior to
one year from the date on which U.S. Patent No. [2] was granted.

Where the reference patent and the application or patent under
reexamination are commonly owned, and the inventions defined by the
claims in the application or patent under reexamination and by the
claims in the patent are not identical but are not patentably distinct,
a terminal disclaimer and an affidavit or declaration under  37 CFR
1.130 may be used to overcome a rejection under  35 U.S.C. 103. See MPEP
Section  718.

A  37 CFR 1.131 affidavit is ineffective to overcome a United States
patent, not only where there is a verbatim correspondence between claims
of the application and of the patent, but also where there is no
patentable distinction between the respective claims. In re Clark, 457
F.2d 1004, 173 USPQ 359 (CCPA 1972); In re Hidy, 303 F.2d 954, 133 USPQ
650 (CCPA 1962); In re Teague, 254 F.2d 145, 117 USPQ 284 (CCPA 1958);
In re Ward, 236 F.2d 428, 111 USPQ 101 (CCPA 1956); In re Wagenhorst, 62
F.2d 831, 16 USPQ 126 (CCPA 1933).

If the application (or patent under reexamination) and the domestic
patent contain claims which are identical, or which are not patentably
distinct, then the application and patent are claiming the "same
patentable invention," defined by  37 CFR 1.601(n) as follows:

Invention "A" is the same patentable invention as an invention "B" when
invention "A" is the same as (35 U.S.C. 102) or is obvious (35 U.S.C.
103) in view of invention "B" assuming invention "B" is prior art with
respect to invention "A."

As provided in  37 CFR 1.601(i), an interference may be declared
whenever an examiner is of the opinion that an application and a patent
contain claims for the "same patentable invention." An applicant who is
claiming an invention which is identical to, or obvious in view of, the
invention as claimed in a domestic patent cannot employ an affidavit
under  37 CFR 1.131 as a means for avoiding an interference with the
patent. To allow an applicant to do so would result in the issuance of
two patents to the same invention.

Since  37 CFR 1.131 defines "same patentable invention" in the same way
as the interference rules (37 CFR 1.601(n)), the PTO cannot prevent an
applicant from overcoming a reference by a  37 CFR 1.131 affidavit or
declaration on the grounds that the reference domestic patent claims
applicant's invention and, at the same time, deny applicant an
interference on the grounds that the claims of the application and those
of the reference patent are not for substantially the same invention.
See In re Eickmeyer, 602 F.2d 974, 202 USPQ 655 (CCPA 1979). Where, in
denying an applicant's motion in interference to substitute a broader
count, it is held that the limitation to be deleted was material for the
opponent patentee, this constitutes a holding that the proposed count is
for an invention which is not the "same patentable invention" claimed by
the patentee. Therefore, the applicant may file an affidavit or
declaration under  37 CFR 1.131 to overcome a prior art rejection based
on the patent. Adler v. Kluver, 159 USPQ 511 (Bd. Pat. Int. 1968).

Form paragraph 7.58 (reproduced in MPEP Section  715) may be used to
note such a situation in the Office action.

---SECTION---715.07 Facts and Documentary Evidence

GENERAL REQUIREMENTS

The essential thing to be shown under  37 CFR 1.131 is priority of
invention and this may be done by any satisfactory evidence of the fact.
FACTS, not conclusions, must be alleged.  Evidence in the form of
exhibits may accompany the affidavit or declaration. Each exhibit relied
upon should be specifically referred to in the affidavit or declaration,
in terms of what it is relied upon to show. For example, the allegations
of fact might be supported by submitting as evidence one or more of the
following:

(A) attached sketches;

(B) attached blueprints;

(C) attached photographs;

(D) attached reproductions of notebook entries;

(E) an accompanying model;

(F) attached supporting statements by witnesses, where verbal
disclosures are the evidence relied upon. Ex parte Ovshinsky, 10 USPQ2d
1075 (Bd. Pat. App. & Inter. 1989);

(G) testimony given in an interference. Where interference testimony is
used, the applicant must point out which parts of the testimony are
being relied on; examiners cannot be expected to search the entire
interference record for the evidence. Ex parte Homan, 1905 C.D. 288
(Comm'r Pat. 1905);

(H) Disclosure documents (MPEP Section  1706) may be used as documentary
evidence of conception.

Exhibits and models must comply with the requirements of  37 CFR 1.91 to
be entered into an application file.  See also MPEP Section  715.07(d).

A general allegation that the invention was completed prior to the date
of the reference is not sufficient. Ex parte Saunders, 1883 C.D. 23, 23
O.G. 1224 (Comm'r Pat. 1883). Similarly, a declaration by the inventor
to the effect that his or her invention was conceived or reduced to
practice prior to the reference date, without a statement of facts
demonstrating the correctness of this conclusion, is insufficient to
satisfy  37 CFR 1.131.

37 CFR 1.131(b) requires that original exhibits of drawings or records,
or photocopies thereof, accompany and form part of the affidavit or
declaration or their absence satisfactorily explained. In Ex parte
Donovan, 1890 C.D. 109, 52 O.G. 309 (Comm'r Pat. 1890) the court stated

If the applicant made sketches he should so state, and produce and
describe them; if the sketches were made and lost, and their contents
remembered, they should be reproduced and furnished in place of the
originals. The same course should be pursued if the disclosure was by
means of models. If neither sketches nor models are relied upon, but it
is claimed that verbal disclosures, sufficiently clear to indicate
definite conception of the invention, were made the witness should state
as nearly as possible the language used in imparting knowledge of the
invention to others.

However, when reviewing a  37 CFR 1.131 affidavit or declaration, the
examiner must consider all of the evidence presented in its entirety,
including the affidavits or declarations and all accompanying exhibits,
records and "notes." An accompanying exhibit need not support all
claimed limitations, provided that any missing limitation is supported
by the declaration itself. Ex parte Ovshinsky, 10 USPQ2d 1075 (Bd. Pat.
App. & Inter. 1989).

The affidavit or declaration and exhibits must clearly explain which
facts or data applicant is relying on to show completion of his or her
invention prior to the particular date. Vague and general statements in
broad terms about what the exhibits describe along with a general
assertion that the exhibits describe a reduction to practice "amounts
essentially to mere pleading, unsupported by proof or a showing of
facts" and, thus, does not satisfy the requirements of  37 CFR 1.131(b).
In re Borkowski, 505 F.2d 713, 184 USPQ 29 (CCPA 1974). Applicant must
give a clear explanation of the exhibits pointing out exactly what facts
are established and relied on by applicant.  505 F.2d at 718-19, 184
USPQ at 33. See also In re Harry, 333 F.2d 920, 142 USPQ 164 (CCPA 1964)
(Affidavit "asserts that facts exist but does not tell what they are or
when they occurred.").

ESTABLISHMENT OF DATES

If the dates of the exhibits have been removed or blocked off, the
matter of dates can be taken care of in the body of the oath or
declaration.

When alleging that conception or a reduction to practice occurred prior
to the effective date of the reference, the dates in the oath or
declaration may be the actual dates or, if the applicant or patent owner
does not desire to disclose his or her actual dates, he or she may
merely allege that the acts referred to occurred prior to a specified
date. However, the actual dates of acts relied on to establish diligence
must be provided. See MPEP Section  715.07(a) regarding the diligence
requirement.

THREE WAYS TO SHOW PRIOR INVENTION

The affidavit or declaration must state FACTS and produce such
documentary evidence and exhibits in support thereof as are available to
show conception and completion of invention in this country or in a
NAFTA or WTO member country (MPEP Section  715.07(c)), at least the
conception being at a date prior to the effective date of the reference.
Where there has not been reduction to practice prior to the date of the
reference, the applicant or patent owner must also show diligence in the
completion of his or her invention from a time just prior to the date of
the reference continuously up to the date of an actual reduction to
practice or up to the date of filing his or her application (filing
constitutes a constructive reduction to practice,  37 CFR 1.131).

As discussed above,  37 CFR 1.131(b) provides three ways in which an
applicant can establish prior invention of the claimed subject matter.
The showing of facts must be sufficient to show:

(A) reduction to practice of the invention prior to the effective date
of the reference; or

(B) conception of the invention prior to the effective date of the
reference coupled with due diligence from prior to the reference date to
a subsequent (actual) reduction to practice; or

(C) conception of the invention prior to the effective date of the
reference coupled with due diligence from prior to the reference date to
the filing date of the application (constructive reduction to practice).

A conception of an invention, though evidenced by disclosure, drawings,
and even a model, is not a complete invention under the patent laws, and
confers no rights on an inventor, and has no effect on a subsequently
granted patent to another, UNLESS THE INVENTOR FOLLOWS IT WITH
REASONABLE DILIGENCE BY SOME OTHER ACT, such as an actual reduction to
practice or filing an application for a patent. Automatic Weighing Mach.
Co. v. Pneumatic Scale Corp., 166 F.2d 288, 1909 C.D. 498, 139 O.G. 991
(1st Cir. 1909).

Conception is the mental part of the inventive act, but it must be
capable of proof, as by drawings, complete disclosure to another person,
etc. In Mergenthaler v. Scudder, 1897 C.D. 724, 81 O.G. 1417 (D.C. Cir.
1897), it was established that conception is more than a mere vague idea
of how to solve a problem; the means themselves and their interaction
must be comprehended also.

In general, proof of actual reduction to practice requires a showing
that the apparatus actually existed and worked for its intended purpose.
However, "there are some devices so simple that a mere construction of
them is all that is necessary to constitute reduction to practice." In
re Asahi/America Inc., 94-1249 (Fed. Cir. 1995) (Citing Newkirk v.
Lulegian, 825 F.2d 1581, 3USPQ2d 1793 (Fed. Cir. 1987) and Sachs v.
Wadsworth, 48 F.2d 928, 929, 9 USPQ 252, 253 (CCPA 1931). The claimed
restraint coupling held to be so simple a device that mere construction
of it was sufficient to constitute reduction to practice. Photographs,
coupled with articles and a technical report describing the coupling in
detail were sufficient to show reduction to practice.).

The facts to be established under  37 CFR 1.131 are similar to those to
be proved in interference. The difference lies in the way in which the
evidence is presented. If applicant disagrees with a holding that the
facts are insufficient to overcome the rejection, his remedy is by
appeal from the continued rejection.

See MPEP Section  2138.04 through Section  2138.06 for a detailed
discussion of the concepts of conception, reasonable diligence, and
reduction to practice.

For the most part, the terms "conception," "reasonable diligence," and
"reduction to practice" have the same meanings under  37 CFR 1.131 as
they have in interference proceedings. However, in In re Eickmeyer, 602
F.2d 974, 202 USPQ 655 (CCPA 1979), the court stated:

The purpose of filing a [ 37 CFR 1.]131 affidavit is not to demonstrate
prior invention, per se, but merely to antedate the effective date of a
reference. See In re Moore, 58 CCPA 1340, 444 F.2d 572, 170 USPQ 260
(1971). Although the test for sufficiency of an affidavit under Rule
131(b) parallels that for determining priority of invention in an
interference under  35 U.S.C. 102(g), it does not necessarily follow
that Rule 131 practice is controlled by interference law. To the
contrary, "[t]he parallel to interference practice found in Rule 131(b)
should be recognized as one of convenience rather than necessity." Id.
at 1353, 444 F.2d at 580, 170 USPQ at 267. Thus, "the `conception' and
`reduction to practice' which must be established under the rule need
not be the same as what is required in the `interference' sense of those
terms." Id.; accord,   In re Borkowski, 505 F.2d 713, 718-19, 184 USPQ
29, 33 (CCPA 1974).

One difference is that in interference practice a reduction to practice
requires a proof that a utility was known, whereas under  37 CFR 1.131
practice, proof of a utility must be shown only if the reference
discloses a utility. In re Wilkinson, 304 F.2d 673, 134 USPQ 171 (CCPA
1962); In re Moore, 444 F.2d 572, 170 USPQ 260 (CCPA 1971). Where proof
of utility is required, whether or not test results are required to
establish the utility of the subject matter in question depends on the
facts of each case. The ultimate issue is whether the evidence is such
that one of ordinary skill in the art would be satisfied to a reasonable
certainty that the subject matter necessary to antedate the reference
possessed the alleged utility. In re Blake, 358 F.2d 750, 149 USPQ 217
(CCPA 1966). Also, in interference practice, conception, reasonable
diligence, and reduction to practice require corroboration, whereas
averments made in a  37 CFR 1.131 affidavit or declaration do not
require corroboration; an applicant may stand on his own affidavit or
declaration if he so elects. Ex parte Hook, 102 USPQ 130 (Bd. App.
1953).

Form paragraph 7.59 or 7.63 (both reproduced in MPEP Section  715) may
be used where insufficient evidence is included in a  37 CFR 1.131
affidavit.

---SECTION---715.07(a) Diligence

Where conception occurs prior to the date of the reference, but
reduction to practice is afterward, it is not enough merely to allege
that applicant or patent owner had been diligent. Ex parte Hunter, 1889
C.D. 218, 49 O.G. 733 (Comm'r Pat. 1889). Rather, applicant must show
evidence of facts establishing diligence.

In determining the sufficiency of a  37 CFR 1.131 affidavit or
declaration, diligence need not be considered unless conception of the
invention prior to the effective date is clearly established, since
diligence comes into question only after prior conception is
established.   Ex parte Kantor, 177 USPQ 455 (Bd. App. 1958).

What is meant by diligence is brought out in Christie v. Seybold, 1893
C.D. 515, 64 O.G. 1650 (6th Cir. 1893). In patent law, an inventor is
either diligent at a given time or he is not diligent; there are no
degrees of diligence. An applicant may be diligent within the meaning of
the patent law when he or she is doing nothing, if his or her lack of
activity is excused. Note, however, that the record must set forth an
explanation or excuse for the inactivity; the PTO or courts will not
speculate on possible explanations for delay or inactivity. See In re
Nelson, 420 F.2d 1079, 164 USPQ 458 (CCPA 1970). Diligence must be
judged on the basis of the particular facts in each case. See MPEP
Section  2138.06 for a detailed discussion of the diligence requirement
for proving prior invention.

Under  37 CFR 1.131, the critical period in which diligence must be
shown begins just prior to the effective date of the reference and ends
with the date of a reduction to practice, either actual or constructive
(i.e., filing a United States patent application). Note, therefore, that
only diligence before reduction to practice is a material consideration.
The "lapse of time between the completion or reduction to practice of an
invention and the filing of an application thereon" is not relevant to
an affidavit or declaration under  37 CFR 1.131. See Ex parte Merz, 75
USPQ 296 (Bd. App. 1947).

Form paragraph 7.62 (reproduced in MPEP Section  715) may be used to
respond to a  37 CFR 1.131 affidavit where diligence is lacking.

---SECTION---715.07(b) Interference Testimony Sometimes Used

In place of an affidavit or declaration the testimony of the applicant
in an interference may be sometimes used to antedate a reference in lieu
of  37 CFR 1.131 affidavit or declaration.

The part of the testimony to form the basis of priority over the
reference should be pointed out. Ex parte Bowyer, 1939 C.D. 5, 42 USPQ
526 (Comm'r Pat. 1939).

---SECTION---715.07(c) Acts Relied Upon Must Have Been Carried Out in
This Country or a NAFTA or WTO Member Country

35 U.S.C. 104 Invention Made Abroad.

In proceedings before the Patent and Trademark Office and in the courts,
an applicant for a patent, or a patentee, may not establish a date of
invention by reference to knowledge or use thereof, or other activity
with respect thereto, in a foreign country other than a NAFTA country or
a WTO member country, except as provided in sections 119 and 365 of this
title. Where an invention was made by a person, civil or military, while
domiciled in the United States and serving in a foreign country in
connection with operations by or on behalf of the United States, he
shall be entitled to the same rights of priority with respect to such
invention as if the same had been made in the United States.

The  37 CFR 1.131 affidavit or declaration must contain an allegation
that the acts relied upon to establish the date prior to the reference
were carried out in this country or in a NAFTA country or WTO member
country. See  35 U.S.C. 104.

Under  37 CFR 1.131(a), which provides for the establishment of a date
of completion of the invention in a NAFTA or WTO member country, as well
as in the United States, an applicant can establish a date of completion
in a NAFTA member country on or after December 8, 1993, the effective
date of section 331 of Public Law 103-182, the North American Free Trade
Agreement Act, and can establish a date of completion in a WTO member
country other than a NAFTA member country on or after January 1, 1996,
the effective date of section 531 of Public Law 103-465, the Uruguay
Round Agreements Act. Acts occurring prior to the effective dates of
NAFTA or URAA may be relied upon to show completion of the invention;
however, a date of completion of the invention may not be established
under  37 CFR 1.131 before December 8, 1993 in a NAFTA country or before
January 1, 1996 in a WTO country other than a NAFTA country.

---SECTION---715.07(d) Disposition of Exhibits

Exhibits, such as those filed as part of an affidavit or declaration
under  37 CFR 1.131, must comply with the requirements of  37 CFR 1.91
to be entered into an application file. Exhibits that do not comply with
the requirements of  37 CFR 1.91 will be disposed of or returned to
applicant at the discretion of the Office. See also MPEP Section
608.03(a).

---SECTION---715.08 Passed Upon by Primary Examiner

The question of sufficiency of affidavits or declarations under  37 CFR
1.131 should be reviewed and decided by a primary examiner.

Review of questions of formal sufficiency and propriety are by petition.
Such petitions are answered by the Group Directors (MPEP Section
1002.02(c)).

Review on the merits of a  37 CFR 1.131 affidavit or declaration is by
appeal to the Board of Patent Appeals and Interferences.

---SECTION---715.09 Seasonable Presentation

Affidavits or declarations under  37 CFR 1.131 must be timely presented
in order to be admitted. Affidavits and declarations submitted under  37
CFR 1.131 and other evidence traversing rejections are considered timely
if submitted:

(A) prior to a final rejection;

(B) before appeal in an application not having a final rejection; or

(C) after final rejection and submitted

(1) with a first reply after final rejection for the purpose of
overcoming a new ground of rejection or requirement made in the final
rejection, or

(2) with a satisfactory showing under  37 CFR 1.116(b) or  37 CFR 1.195,
or

(3) under  37 CFR 1.129(a).

All admitted affidavits and declarations are acknowledged and commented
upon by the examiner in his or her next succeeding action.

For affidavits or declarations under  37 CFR 1.131 filed after appeal,
see  37 CFR 1.195 and MPEP Section  1211.02.

Review of an examiner's refusal to enter an affidavit as untimely is by
petition and not by appeal to the Board of Patent Appeals and
Interferences. In re Deters, 515 F.2d 1152, 185 USPQ 644 (CCPA 1975); Ex
parte Hale, 49 USPQ 209 (Bd. App. 1941). See MPEP Section  715.08
regarding review of questions of propriety of  37 CFR 1.131 affidavits
and declarations.

---SECTION---715.10 Review of Affidavit or Declaration for Evidence of
Prior Public Use or Sale or Failure to Disclose Best Mode

Any affidavits or declarations submitted under  37 CFR 1.131 and the
accompanying evidence must be reviewed carefully by the examiner in
order to determine whether they show that the claimed invention was "in
public use" or "on sale" in this country more than one year prior to the
effective filing date of the application, which acts constitute a
statutory bar under  35 U.S.C. 102(b). Although the rejection based on
the reference(s) sought to be antedated may actually be overcome by such
an affidavit or declaration, the effect of the applicant's prior "public
use" or "on sale" activities may not be overcome under  37 CFR 1.131.
See MPEP Section  2133.03 regarding rejections based on "public use" and
"on sale" statutory bars.

Where the  37 CFR 1.131 evidence relies on an embodiment of the
invention not disclosed in the application, the question of whether the
application includes the "best mode" must be considered. However, a
"best mode" rejection should not be made unless the record, taken as a
whole, establishes by a preponderance of the evidence that applicant's
specification has not set forth the best mode contemplated by the
inventor of carrying out the invention. See MPEP Section  2165 -
Section  2165.04 regarding the best mode requirement of the first
paragraph of  35 U.S.C. 112.

---SECTION---716 Affidavits or Declarations Traversing Rejections, 37
CFR 1.132

37 CFR 1.132 Affidavits or declarations traversing grounds of rejection.

When any claim of an application or a patent under reexamination is
rejected on reference to a U.S. patent which substantially shows or
describes but does not claim the same patentable invention, as defined
in Section  1.601(n), on reference to a foreign patent, on reference to
a printed publication, or on reference to facts within the personal
knowledge of an employee of the Office, or when rejected upon a mode or
capability of operation attributed to a reference, or because the
alleged invention is held to be inoperative, lacking in utility,
frivolous, or injurious to public health or morals, affidavits or
declarations traversing these references or objections may be received.

It is the responsibility of the primary examiner to personally review
and decide whether affidavits or declarations submitted under  37 CFR
1.132 for the purpose of traversing grounds of rejection are responsive
to the rejection and present sufficient facts to overcome the rejection.

This rule sets forth the general policy of the Office consistently
followed for a long period of time of receiving affidavit evidence
traversing rejections or objections. The enumeration of rejections in
the rule is merely exemplary. All affidavits or declarations presented
which do not fall within or under other specific rules are to be treated
or considered as falling under this rule.

Form paragraph 7.65 or 7.66 and any of form paragraphs 7.66.01 through
7.66.05, as appropriate, should be used to comment on a  37 CFR 1.132
affidavit or declaration.

7.65 Affidavit or Declaration Under 37 CFR 1.132: Effective To Withdraw
Rejection

The [1] under  37 CFR 1.132 filed   [2] is sufficient to overcome the
rejection of claim  [3] based upon   [4].

Examiner Note:

1. In bracket 1, insert either --affidavit-- or --declaration--.

2. In bracket 2, insert the filing date of the affidavit or declaration.

3. In bracket 3, insert the affected claim or claims.

4. In bracket 4, indicate the rejection that has been overcome,
including the statutory grounds, i.e.: insufficiency of disclosure under
35 U.S.C. 112, first paragraph; lack of utility under  35 U.S.C. 101;
inoperativeness under  35 U.S.C. 101; a specific reference applied under
35 U.S.C. 103; etc.  See MPEP Section  716.

7.66 Affidavit or Declaration Under 37 CFR 1.132: Insufficient

The   [1] under  37 CFR 1.132 filed   [2] is insufficient to overcome
the rejection of claim  [3] based upon   [4] as set forth in the last
Office action because:

Examiner Note:

1. In bracket 1, insert either --affidavit-- or --declaration--.

2. In bracket 2, insert the filing date of the affidavit or declaration.

3. In bracket 3, insert the claim or claims affected.

4. In bracket 4, indicate the rejection that has not been overcome,
including the statutory grounds, i.e.: insufficiency of disclosure under
35 U.S.C. 112, first paragraph; lack of utility and/or inoperativeness
under  35 U.S.C. 101; a specific reference applied under  35 U.S.C. 103;
etc.  See MPEP Section  716.

5. Following this form paragraph, set forth the reasons for the
insufficiency; e.g., categories include: --untimely--; --fails to set
forth facts--; --facts presented are not germane to the rejection at
issue--;--showing is not commensurate in scope with the claims--; etc.
See MPEP Section  716.  Also include a detailed explanation of the
reasons why the affidavit or declaration is insufficient.  Any of form
paragraphs 7.66.01 - 7.66.05 may be used, as appropriate.

7.66.01 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is
Insufficient: Affiant Has Never Seen Invention Before

It includes statements which amount to an affirmation that the affiant
has never seen the claimed subject matter before.  This is not relevant
to the issue of nonobviousness of the claimed subject matter and
provides no objective evidence thereof.  See MPEP Section  716.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.66.

2. A full explanation must be provided, if appropriate.

7.66.02 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is
Insufficient: Invention Works as Intended

It includes statements which amount to an affirmation that the claimed
subject matter functions as it was intended to function.  This is not
relevant to the issue of nonobviousness of the claimed subject matter
and provides no objective evidence thereof.  See MPEP Section  716.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.66.

2. A full explanation must be provided, if appropriate.

7.66.03 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is
Insufficient: Refers Only to Invention, Not to Claims

It refers only to the system described in the above referenced
application and not to the individual claims of the application.  As
such the declaration does not show that the objective evidence of
nonobviousness is commensurate in scope with the claims.  See MPEP
Section  716.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.66.

2. A full explanation must be provided, if appropriate.

7.66.04 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is
Insufficient: No Evidence of Long-Felt Need

It states that the claimed subject matter solved a problem that was long
standing in the art.  However, there is no showing that others of
ordinary skill in the art were working on the problem and if so, for how
long.  In addition, there is no showing that persons skilled in the art
who were presumably working on the problem knew of the teachings of the
above cited references and still were unable to solve the problem.  See
MPEP Section  716.04.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.66.

2. A full explanation must be provided, if appropriate.

7.66.05 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is
Insufficient: Conclusion

In view of the foregoing, when all of the evidence is considered, the
totality of the rebuttal evidence of nonobviousness fails to outweigh
the evidence of obviousness.

Examiner Note:

This form paragraph should be presented as a conclusion to your
explanation of why the affidavit or declaration under  37 CFR 1.132 is
insufficient, and it must be preceded by form paragraph 7.66.

---SECTION---716.01 Generally Applicable Criteria

The following criteria are applicable to all evidence traversing
rejections submitted by applicants, including affidavits or declarations
submitted under  37 CFR 1.132:

(A)   Timeliness.

Evidence traversing rejections must be timely or seasonably filed to be
entered and entitled to consideration. In re Rothermel, 276 F.2d 393,
125 USPQ 328 (CCPA 1960).

Affidavits and declarations submitted under  37 CFR 1.132 and other
evidence traversing rejections are considered timely if submitted:

(1) prior to a final rejection,

(2) before appeal in an application not having a final rejection, or

(3) after final rejection and submitted

(i) with a first reply after final rejection for the purpose of
overcoming a new ground of rejection or requirement made in the final
rejection, or

(ii) with a satisfactory showing under  37 CFR 1.116(b) or  37 CFR
1.195, or

(iii) under  37 CFR 1.129(a).

(B) Consideration of evidence.

Evidence traversing rejections must be considered by the examiner
whenever present. All entered affidavits, declarations, and other
evidence traversing rejections are acknowledged and commented upon by
the examiner in the next succeeding action. The extent of the commentary
depends on the action taken by the examiner. Where an examiner holds
that the evidence is sufficient to overcome the   prima facie case, the
comments should be consistent with the guidelines for statements of
reasons for allowance. See MPEP Section  1302.14. Where the evidence is
insufficient to overcome the rejection, the examiner must specifically
explain why the evidence is insufficient. General statements such as
"the declaration lacks technical validity" or "the evidence is not
commensurate with the scope of the claims" without an explanation
supporting such findings are insufficient.

---SECTION---716.01(a) Objective Evidence of Nonobviousness

OBJECTIVE EVIDENCE MUST BE CONSIDERED WHENEVER PRESENT

Affidavits or declarations containing evidence of criticality or
unexpected results, commercial success, long-felt but unsolved needs,
failure of others, skepticism of experts, etc., must be considered by
the examiner in determining the issue of obviousness of claims for
patentability under  35 U.S.C. 103. The Court of Appeals for the Federal
Circuit stated in Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
1538, 218 USPQ 871, 879 (Fed. Cir. 1983) that "evidence rising out of
the so-called `secondary considerations' must always when present be
considered en route to a determination of obviousness." Such evidence
might give light to circumstances surrounding the origin of the subject
matter sought to be patented. As indicia of obviousness or
unobviousness, such evidence may have relevancy.  Graham v. John Deere
Co., 383 U.S. 1, 148 USPQ 459 (1966); In re Palmer, 451 F.2d 1100, 172
USPQ 126 (CCPA 1971); In re Fielder, 471 F.2d 640, 176 USPQ 300 (CCPA
1973). The Graham v. John Deere pronouncements on the relevance of
commercial success, etc. to a determination of obviousness were not
negated in Sakraida v. Ag Pro, 425 U.S. 273, 189 USPQ 449 (1979) or
Anderson's-Black Rock Inc. v. Pavement Salvage Co., 396 U.S. 57, 163
USPQ 673 (1969), where reliance was placed upon A&P Tea Co. v.
Supermarket Corp., 340 U.S. 147, 87 USPQ 303 (1950). See Dann v.
Johnston, 425 U.S. 219, 226 n.4, 189 USPQ 257, 261 n. 4 (1976).

Examiners must consider comparative data in the specification which is
intended to illustrate the claimed invention in reaching a conclusion
with regard to the obviousness of the claims. In re Margolis, 785 F.2d
1029, 228 USPQ 940 (Fed. Cir. 1986). The lack of objective evidence of
nonobviousness does not weigh in favor of obviousness. Miles Labs. Inc.
v. Shandon Inc., 997 F.2d 870, 878, 27 USPQ2d 1123, 1129 (Fed. Cir.
1993), cert. denied, 127 L. Ed. 232 (1994). However, where a prima facie
case of obviousness is established, the failure to provide rebuttal
evidence is dispositive.

---SECTION---716.01(b) Nexus Requirement and Evidence of Nonobviousness

TO BE OF PROBATIVE VALUE, ANY SECONDARY EVIDENCE MUST BE RELATED TO THE
CLAIMED INVENTION (NEXUS REQUIRED)

The weight attached to evidence of secondary considerations by the
examiner will depend upon its relevance to the issue of obviousness and
the amount and nature of the evidence. Note the great reliance
apparently placed on this type of evidence by the Supreme Court in
upholding the patent in United States v. Adams, 383 U.S. 39,148 USPQ 479
(1966).

To be given substantial weight in the determination of obviousness or
nonobviousness, evidence of secondary considerations must be relevant to
the subject matter as claimed, and therefore the examiner must determine
whether there is a nexus between the merits of the claimed invention and
the evidence of secondary considerations.  Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 305 n.42, 227 USPQ 657,
673-674 n. 42 (Fed. Cir. 1985),   cert. denied, 475 U.S. 1017 (1986).
The term "nexus" designates a factually and legally sufficient
connection between the objective evidence of nonobviousness and the
claimed invention so that the evidence is of probative value in the
determination of nonobviousness. Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir.), cert. denied,
488 U.S. 956 (1988).

---SECTION---716.01(c) Probative Value of Objective Evidence

TO BE OF PROBATIVE VALUE, ANY OBJECTIVE EVIDENCE SHOULD BE SUPPORTED BY
ACTUAL PROOF

Objective evidence which must be factually supported by an appropriate
affidavit or declaration to be of probative value includes evidence of
unexpected results, commercial success, solution of a long-felt need,
inoperability of the prior art, invention before the date of the
reference, and allegations that the author(s) of the prior art derived
the disclosed subject matter from the applicant. See, for example, In re
De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984) ("It is
well settled that unexpected results must be established by factual
evidence." "[A]ppellants have not presented any experimental data
showing that prior heat-shrinkable articles split. Due to the absence of
tests comparing appellant's heat shrinkable articles with those of the
closest prior art, we conclude that appellant's assertions of unexpected
results constitute mere argument."). See also In re Lindner, 457 F.2d
506, 508, 173 USPQ 356, 358 (CCPA 1972); Ex parte George, 21 USPQ2d 1058
(Bd. Pat. App. & Inter. 1991).

ATTORNEY ARGUMENTS CANNOT TAKE THE PLACE OF EVIDENCE

The arguments of counsel cannot take the place of evidence in the
record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965).
Examples of attorney statements which are not evidence and which must be
supported by an appropriate affidavit or declaration include statements
regarding unexpected results, commercial success, solution of a
long-felt need, inoperability of the prior art, invention before the
date of the reference, and allegations that the author(s) of the prior
art derived the disclosed subject matter from the applicant.

See MPEP Section  2145 generally for case law pertinent to the
consideration of applicant's rebuttal arguments.

OPINION EVIDENCE

Although factual evidence is preferable to opinion testimony, such
testimony is entitled to consideration and some weight so long as the
opinion is not on the ultimate legal conclusion at issue. While an
opinion as to a legal conclusion is not entitled to any weight, the
underlying basis for the opinion may be persuasive. In re Chilowsky, 306
F.2d 908, 134 USPQ 515 (CCPA 1962) (expert opinion that an application
meets the requirements of  35 U.S.C. 112 is not entitled to any weight;
however, facts supporting a basis for deciding that the specification
complies with  35 U.S.C. 112 are entitled to some weight); In re
Lindell, 385 F.2d 453, 155 USPQ 521 (CCPA 1967) (Although an affiant's
or declarant's opinion on the ultimate legal issue is not evidence in
the case, "some weight ought to be given to a persuasively supported
statement of one skilled in the art on what was not obvious to him." 385
F.2d at 456, 155 USPQ at 524 (emphasis in original)).

In assessing the probative value of an expert opinion, the examiner must
consider the nature of the matter sought to be established, the strength
of any opposing evidence, the interest of the expert in the outcome of
the case, and the presence or absence of factual support for the
expert's opinion. Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 227 USPQ 657 (Fed. Cir. 1985), cert. denied, 475
U.S. 1017 (1986). See also In re Oelrich, 579 F.2d 86, 198 USPQ 210
(CCPA 1978) (factually based expert opinions on the level of ordinary
skill in the art were sufficient to rebut the prima facie case of
obviousness); Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter.
1989) (statement in publication dismissing the "preliminary
identification of a human b-NGF-like molecule" in the prior art, even if
considered to be an expert opinion, was inadequate to overcome the
rejection based on that prior art because there was no factual evidence
supporting the statement); In re Carroll, 601 F.2d 1184, 202 USPQ 571
(CCPA 1979) (expert opinion on what the prior art taught, supported by
documentary evidence and formulated prior to the making of the claimed
invention, received considerable deference); In re Beattie, 974 F.2d
1309, 24 USPQ2d 1040 (Fed. Cir. 1992) (declarations of seven persons
skilled in the art offering opinion evidence praising the merits of the
claimed invention were found to have little value because of a lack of
factual support); Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. &
Inter. 1991) (conclusory statements that results were "unexpected,"
unsupported by objective factual evidence, were considered but were not
found to be of substantial evidentiary value).

Although an affidavit or declaration which states only conclusions may
have some probative value, such an affidavit or declaration may have
little weight when considered in light of all the evidence of record in
the application. In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA
1973).

An affidavit of an applicant as to the advantages of his claimed
invention, while less persuasive than that of a disinterested person,
cannot be disregarded for this reason alone. Ex parte Keyes, 214 USPQ
579 (Bd. App. 1982); In re McKenna, 203 F.2d 717, 97 USPQ 348 (CCPA
1953).

---SECTION---716.01(d) Weighing Objective Evidence

IN MAKING A FINAL DETERMINATION OF PATENTABILITY, EVIDENCE SUPPORTING
PATENTABILITY MUST BE WEIGHED AGAINST EVIDENCE SUPPORTING PRIMA FACIE
CASE

When an applicant submits evidence traversing a rejection, the examiner
must reconsider the patentability of the claimed invention. The ultimate
determination of patentability must be based on consideration of the
entire record, by a preponderance of evidence, with due consideration to
the persuasiveness of any arguments and any secondary evidence.  In re
Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). The submission
of objective evidence of patentability does not mandate a conclusion of
patentability in and of itself. In re Chupp, 816 F.2d 643, 2 USPQ2d 1437
(Fed. Cir. 1987). Facts established by rebuttal evidence must be
evaluated along with the facts on which the conclusion of a prima facie
case was reached, not against the conclusion itself. In re Eli Lilly,
902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990). In other words, each
piece of rebuttal evidence should not be evaluated for its ability to
knockdown the prima facie case. All of the competent rebuttal evidence
taken as a whole should be weighed against the evidence supporting the
prima facie case. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984). Although the record may establish evidence of
secondary considerations which are indicia of nonobviousness, the record
may also establish such a strong case of obviousness that the objective
evidence of nonobviousness is not sufficient to outweigh the evidence of
obviousness. Newell Cos.  v. Kenney Mfg. Co., 864 F.2d 757, 769, 9
USPQ2d 1417, 1427 (Fed. Cir. 1988), cert. denied, 493 U.S. 814 (1989);
Richardson-Vicks, Inc., v. The Upjohn Co., 122 F.3d 1476, 1484, 44
USPQ2d 1181, 1187 (Fed. Cir. 1997) (showing of unexpected results and
commercial success of claimed ibuprofen and psuedoephedrine combination
in single tablet form, while supported by substantial evidence, held not
to overcome strong prima facie case of obviousness). See In re Piasecki,
745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984) for a detailed discussion
of the proper roles of the examiner's prima facie case and applicant's
rebuttal evidence in the final determination of obviousness.

If, after evaluating the evidence, the examiner is still not convinced
that the claimed invention is patentable, the next Office action should
include a statement to that effect and identify the reason(s) (e.g.,
evidence of commercial success not convincing, the commercial success
not related to the technology, etc.). See Demaco Corp. v. F. Von
Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir.),
cert. denied, 488 U.S. 956 (1988). See also MPEP Section  716.01. See
MPEP Section  2144.08, paragraph II.B., for guidance in determining
whether rebuttal evidence is sufficient to overcome a prima facie case
of obviousness.

---SECTION---716.02 Allegations Of Unexpected Results

Any differences between the claimed invention and the prior art may be
expected to result in some differences in properties. The issue is
whether the properties differ to such an extent that the difference is
really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed.
Cir. 1986) (differences in sedative and anticholinergic effects between
prior art and claimed antidepressants were not unexpected). In In re
Waymouth, 499 F.2d 1273, 1276, 182 USPQ 290, 293 (CCPA 1974), the court
held that unexpected results for a claimed range as compared with the
range disclosed in the prior art had been shown by a demonstration of "a
marked improvement, over the results achieved under other ratios, as to
be classified as a difference in kind, rather than one of degree."
Compare   In re Wagner, 371 F.2d 877, 884, 152 USPQ 552, 560 (CCPA 1967)
(differences in properties cannot be disregarded on the ground they are
differences in degree rather than in kind); Ex parte Gelles, 22 USPQ2d
1318, 1319 (Bd. Pat. App. & Inter. 1992) ("we generally consider a
discussion of results in terms of `differences in degree' as compared to
`differences in kind' . . . to have very little meaning in a relevant
legal sense").

---SECTION---716.02(a) Evidence Must Show Unexpected Results

GREATER THAN EXPECTED RESULTS ARE EVIDENCE OF NONOBVIOUSNESS

"A greater than expected result is an evidentiary factor pertinent to
the legal conclusion of obviousness ... of the claims at issue." In re
Corkill, 711 F.2d 1496, 226 USPQ 1005 (Fed. Cir. 1985). In Corkhill, the
claimed combination showed an additive result when a diminished result
would have been expected. This result was persuasive of nonobviousness
even though the result was equal to that of one component alone.
Evidence of a greater than expected result may also be shown by
demonstrating an effect which is greater than the sum of each of the
effects taken separately (i.e., demonstrating "synergism"). Merck & Co.
Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed.
Cir.), cert. denied, 493 U.S. 975 (1989). However, a greater than
additive effect is not necessarily sufficient to overcome a prima facie
case of obviousness because such an effect can either be expected or
unexpected. Applicants must further show that the results were greater
than those which would have been expected from the prior art to an
unobvious extent, and that the results are of a significant, practical
advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. &
Inter. 1991) (Evidence showing greater than additive sweetness resulting
from the claimed mixture of saccharin and L-aspartyl-L-phenylalanine was
not sufficient to outweigh the evidence of obviousness because the
teachings of the prior art lead to a general expectation of greater than
additive sweetening effects when using mixtures of synthetic
sweeteners.).

SUPERIORITY OF A PROPERTY SHARED WITH THE PRIOR ART IS EVIDENCE OF
NONOBVIOUSNESS

Evidence of unobvious or unexpected advantageous properties, such as
superiority in a property the claimed compound shares with the prior
art, can rebut prima facie obviousness. "Evidence that a compound is
unexpectedly superior in one of a spectrum of common properties . . .
can be enough to rebut a prima facie case of obviousness." No set number
of examples of superiority is required. In re Chupp, 816 F.2d 643, 646,
2 USPQ2d 1437, 1439 (Fed. Cir. 1987) (Evidence showing that the claimed
herbicidal compound was more effective than the closest prior art
compound in controlling quackgrass and yellow nutsedge weeds in corn and
soybean crops was sufficient to overcome the rejection under  35 U.S.C.
103, even though the specification indicated the claimed compound was an
average performer on crops other than corn and soybean.). See also Ex
parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (unexpected
superior therapeutic activity of claimed compound against anaerobic
bacteria was sufficient to rebut prima facie obviousness even though
there was no evidence that the compound was effective against all
bacteria).

PRESENCE OF AN UNEXPECTED PROPERTY IS EVIDENCE OF NONOBVIOUSNESS

Presence of a property not possessed by the prior art is evidence of
nonobviousness. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963)
(rejection of claims to compound structurally similar to the prior art
compound was reversed because claimed compound unexpectedly possessed
anti-inflammatory properties not possessed by the prior art compound);
Ex parte Thumm, 132 USPQ 66 (Bd. App. 1961) (Appellant showed that the
claimed range of ethylene diamine was effective for the purpose of
producing " `regenerated cellulose consisting substantially entirely of
skin' " whereas the prior art warned "this compound has `practically no
effect.' "). The submission of evidence that a new product possesses
unexpected properties does not necessarily require a conclusion that the
claimed invention is nonobvious. In re Payne, 606 F.2d 303, 203 USPQ 245
(CCPA 1979). See the discussion of latent properties and additional
advantages in MPEP Section  2145.

ABSENCE OF AN EXPECTED PROPERTY IS EVIDENCE OF NONOBVIOUSNESS

Absence of property which a claimed invention would have been expected
to possess based on the teachings of the prior art is evidence of
unobviousness.   Ex parte Mead Johnson & Co. 227 USPQ 78 (Bd. Pat. App.
& Inter. 1985) (Based on prior art disclosures, claimed compounds would
have been expected to possess beta-andrenergic blocking activity; the
fact that claimed compounds did not possess such activity was an
unexpected result sufficient to establish unobviousness within the
meaning of  35 U.S.C. 103.).

---SECTION---716.02(b) Burden on Applicant

BURDEN ON APPLICANT TO ESTABLISH RESULTS ARE UNEXPECTED AND SIGNIFICANT

The evidence relied up should establish "that the differences in results
are in fact unexpected and unobvious and of both statistical and
practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat.
App. & Inter. 1992) (Mere conclusions in appellants' brief that the
claimed polymer had an unexpectedly increased impact strength "are not
entitled to the weight of conclusions accompanying the evidence, either
in the specification or in a declaration."); Ex parte C, 27 USPQ2d 1492
(Bd. Pat. App. & Inter. 1992) (Applicant alleged unexpected results with
regard to the claimed soybean plant, however there was no basis for
judging the practical significance of data with regard to maturity date,
flowering date, flower color, or height of the plant.). See also In re
Nolan,  553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977) and In re Eli
Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) as discussed in
MPEP Section  716.02(c).

APPLICANTS HAVE BURDEN OF EXPLAINING PROFFERED DATA

"[A]ppellants have the burden of explaining the data in any declaration
they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24
USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992).

DIRECT AND INDIRECT COMPARATIVE TESTS ARE PROBATIVE OF NONOBVIOUSNESS

Evidence of unexpected properties may be in the form of a direct or
indirect comparison of the claimed invention with the closest prior art
which is commensurate in scope with the claims. See In re Boesch, 617
F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP Section  716.02(d) - Section
716.02(e). See In re Blondel, 499 F.2d 1311, 1317, 182 USPQ 294, 298
(CCPA 1974) and In re Fouche, 439 F.2d 1237, 1241-42, 169 USPQ 429, 433
(CCPA 1971) for examples of cases where indirect comparative testing was
found sufficient to rebut a prima facie case of obviousness.

The patentability of an intermediate may be established by unexpected
properties of an end product "when one of ordinary skill in the art
would reasonably ascribe to a claimed intermediate the `contributing
cause' for such an unexpectedly superior activity or property." In re
Magerlein, 602 F.2d 366, 373, 202 USPQ 473, 479 (CCPA 1979). "In order
to establish that the claimed intermediate is a `contributing cause' of
the unexpectedly superior activity or property of an end product, an
applicant must identify the cause of the unexpectedly superior activity
or property (compared to the prior art) in the end product and establish
a nexus for that cause between the intermediate and the end product."
Id. at 479.

---SECTION---716.02(c) Weighing Evidence of Expected and Unexpected
Results

EVIDENCE OF UNEXPECTED AND EXPECTED PROPERTIES MUST BE WEIGHED

Evidence of unexpected results must be weighed against evidence
supporting prima facie obviousness in making a final determination of
the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197
USPQ 601 (CCPA 1978) (Claims directed to a method of effecting analgesia
without producing physical dependence by administering the levo isomer
of a compound having a certain chemical structure were rejected as
obvious over the prior art. Evidence that the compound was unexpectedly
nonaddictive was sufficient to overcome the obviousness rejection.
Although the compound also had the expected result of potent analgesia,
there was evidence of record showing that the goal of research in this
area was to produce an analgesic compound which was nonaddictive,
enhancing the evidentiary value of the showing of nonaddictiveness as an
indicia of nonobviousness.). See MPEP Section  716.01(d) for guidance on
weighing evidence submitted to traverse a rejection.

Where the unexpected properties of a claimed invention are not shown to
have a significance equal to or greater than the expected properties,
the evidence of unexpected properties may not be sufficient to rebut the
evidence of obviousness. In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641,
645 (CCPA 1977) (Claims were directed to a display/memory device which
was prima facie obvious over the prior art. The court found that a
higher memory margin and lower operating voltage would have been
expected properties of the claimed device, and that a higher memory
margin appears to be the most significant improvement for a memory
device. Although applicant presented evidence of unexpected properties
with regard to lower peak discharge current and higher luminous
efficiency, these properties were not shown to have a significance equal
to or greater than that of the expected higher memory margin and lower
operating voltage. The court held the evidence of nonobviousness was not
sufficient to rebut the evidence of obviousness.); In re Eli Lilly, 902
F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) (Evidence of improved feed
efficiency in steers was not sufficient to rebut prima facie case of
obviousness based on prior art which specifically taught the use of
compound X537A to enhance weight gain in animals because the evidence
did not show that a significant aspect of the claimed invention would
have been unexpected.).

EXPECTED BENEFICIAL RESULTS ARE EVIDENCE OF OBVIOUSNESS

"Expected beneficial results are evidence of obviousness of a claimed
invention, just as unexpected results are evidence of unobviousness
thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA
1967) (resultant decrease of dental enamel solubility accomplished by
adding an acidic buffering agent to a fluoride containing dentifrice was
expected based on the teaching of the prior art); Ex parte Blanc, 13
USPQ2d 1383 (Bd. Pat. App. & Inter. 1989) (Claims at issue were directed
to a process of sterilizing a polyolefinic composition which contains an
antioxidant with high-energy radiation. Although evidence was presented
in appellant's specification showing that particular antioxidants are
effective, the Board concluded that these beneficial results would have
been expected because one of the references taught a claimed antioxidant
is very efficient and provides better results compared with other prior
art antioxidants.).

---SECTION---716.02(d) Unexpected Results Commensurate in Scope With
Claimed Invention

Whether the unexpected results are the result of unexpectedly improved
results or a property not taught by the prior art, the "objective
evidence of nonobviousness must be commensurate in scope with the claims
which the evidence is offered to support." In other words, the showing
of unexpected results must be reviewed to see if the results occur over
the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ
289, 296 (CCPA 1980) (Claims were directed to a process for removing
corrosion at "elevated temperatures" using a certain ion exchange resin
(with the exception of claim 8 which recited a temperature in excess of
100C). Appellant demonstrated unexpected results via comparative tests
with the prior art ion exchange resin at 110C and 130C. The court
affirmed the rejection of claims 1-7 and 9-10 because the term "elevated
temperatures" encompassed temperatures as low as 60C where the prior art
ion exchange resin was known to perform well. The rejection of claim 8,
directed to a temperature in excess of 100C, was reversed.). See also In
re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983)
(Claims were directed to certain catalysts containing an alkali metal.
Evidence presented to rebut an obviousness rejection compared catalysts
containing sodium with the prior art. The court held this evidence
insufficient to rebut the prima facie case because experiments limited
to sodium were not commensurate in scope with the claims.).

NONOBVIOUSNESS OF A GENUS OR CLAIMED RANGE MAY BE SUPPORTED BY DATA
SHOWING UNEXPECTED RESULTS OF A SPECIES OR NARROWER RANGE UNDER CERTAIN
CIRCUMSTANCES

The nonobviousness of a broader claimed range can be supported by
evidence based on unexpected results from testing a narrower range if
one of ordinary skill in the art would be able to determine a trend in
the exemplified data which would allow the artisan to reasonably extend
the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193
(CCPA 1979) (Claims directed to mixtures of an herbicide known as
"FENAC" with a diphenyl ether herbicide in certain relative proportions
were rejected as prima facie obvious. Applicant presented evidence
alleging unexpected results testing three species of diphenyl ether
herbicides over limited relative proportion ranges. The court held that
the limited number of species exemplified did not provide an adequate
basis for concluding that similar results would be obtained for the
other diphenyl ether herbicides within the scope of the generic claims.
Claims 6-8 recited a FENAC:diphenyl ether ratio of 1:1 to 4:1 for the
three specific ethers tested. For two of the claimed ethers, unexpected
results were demonstrated over a ratio of 16:1 to 2:1, and the
effectiveness increased as the ratio approached the untested region of
the claimed range. The court held these tests were commensurate in scope
with the claims and supported the nonobviousness thereof. However, for a
third ether, data was only provided over the range of 1:1 to 2:1 where
the effectiveness decreased to the "expected level" as it approached the
untested region. This evidence was not sufficient to overcome the
obviousness rejection.); In re Lindner, 457 F.2d 506, 509, 173 USPQ 356,
359 (CCPA 1972) (Evidence of nonobviousness consisted of comparing a
single composition within the broad scope of the claims with the prior
art. The court did not find the evidence sufficient to rebut the prima
facie case of obviousness because there was "no adequate basis for
reasonably concluding that the great number and variety of compositions
included in the claims would behave in the same manner as the tested
composition.").

DEMONSTRATING CRITICALITY OF A CLAIMED RANGE

To establish unexpected results over a claimed range, applicants should
compare a sufficient number of tests both inside and outside the claimed
range to show the criticality of the claimed range. In re Hill, 284 F.2d
955, 128 USPQ 197 (CCPA 1960).

---SECTION---716.02(e) Comparison With Closest Prior Art

An affidavit or declaration under  37 CFR 1.132 must compare the claimed
subject matter with the closest prior art to be effective to rebut a
prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ
67 (CCPA 1979). "A comparison of the claimed invention with the
disclosure of each cited reference to determine the number of claim
limitations in common with each reference, bearing in mind the relative
importance of particular limitations, will usually yield the closest
single prior art reference." In re Merchant, 575 F.2d 865, 868, 197 USPQ
785, 787 (CCPA 1978) (emphasis in original). Where the comparison is not
identical with the reference disclosure, deviations therefrom should be
explained, In re Finley, 174 F.2d 130, 81 USPQ 383 (CCPA 1949), and if
not explained should be noted and evaluated, and if significant,
explanation should be required. In re Armstrong, 280 F.2d 132, 126 USPQ
281 (CCPA 1960) (deviations from example were inconsequential).

THE CLAIMED INVENTION MAY BE COMPARED WITH PRIOR ART THAT IS CLOSER THAN
THAT APPLIED BY THE EXAMINER

Applicants may compare the claimed invention with prior art that is more
closely related to the invention than the prior art relied upon by the
examiner. In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA 1978); Ex
parte Humber, 217 USPQ 265 (Bd. App. 1961) (Claims to a 13-chloro
substituted compound were rejected as obvious over nonchlorinated
analogs of the claimed compound. Evidence showing unexpected results for
the claimed compound as compared with the 9-, 12-, and 14- chloro
derivatives of the compound rebutted the prima facie case of obviousness
because the compounds compared against were closer to the claimed
invention than the prior art relied upon.).

COMPARISONS WHEN THERE ARE TWO EQUALLY CLOSE PRIOR ART REFERENCES

Showing unexpected results over one of two equally close prior art
references will not rebut prima facie obviousness unless the teachings
of the prior art references are sufficiently similar to each other that
the testing of one showing unexpected results would provide the same
information as to the other. In re Johnson, 747 F.2d 1456, 1461, 223
USPQ 1260, 1264 (Fed. Cir. 1984) (Claimed compounds differed from the
prior art either by the presence of a trifluoromethyl group instead of a
chloride radical, or by the presence of an unsaturated ester group
instead of a saturated ester group. Although applicant compared the
claimed invention with the prior art compound containing a chloride
radical, the court found this evidence insufficient to rebut the   prima
facie case of obviousness because the evidence did not show relative
effectiveness over all compounds of the closest prior art. An applicant
does not have to test all the compounds taught by each reference,
"[h]owever, where an applicant tests less than all cited compounds, 
the test must be sufficient to permit a conclusion respecting the
relative effectiveness of applicant's claimed compounds and the
compounds of the closest prior art."  Id. (quoting In re Payne, 606 F.2d
303, 316, 203 USPQ 245, 256 (CCPA 1979)) (emphasis in original).).

THE CLAIMED INVENTION MAY BE COMPAREDWITH THE CLOSEST SUBJECT MATTER
THAT EXISTS IN THE PRIOR ART

Although evidence of unexpected results must compare the claimed
invention with the closest prior art, applicant is not required to
compare the claimed invention with subject matter that does not exist in
the prior art. In re Geiger, 815 F.2d 686, 689, 2 USPQ2d 1276, 1279
(Fed. Cir. 1987) (Newman, J., concurring) (Evidence rebutted prima facie
case by comparing claimed invention with the most relevant prior art.
Note that the majority held the Office failed to establish a prima facie
case of obviousness.); In re Chapman, 357 F.2d 418, 148 USPQ 711 (CCPA
1966) (Requiring applicant to compare claimed invention with polymer
suggested by the combination of references relied upon in the rejection
of the claimed invention under  35 U.S.C. 103 "would be requiring
comparison of the results of the invention with the results of the
invention." 357 F.2d at 422, 148 USPQ at 714.).

---SECTION---716.02(f) Advantages Disclosed or Inherent

The totality of the record must be considered when determining whether a
claimed invention would have been obvious to one of ordinary skill in
the art at the time the invention was made.  Therefore, evidence and
arguments directed to advantages not disclosed in the specification
cannot be disregarded. In re Chu, 66 F.3d 292, 298-99, 36 USPQ2d 1089,
1094-95  (Fed. Cir. 1995)(Although the purported advantage of placement
of a selective catalytic reduction catalyst in the bag retainer of an
apparatus for controlling emissions was not disclosed in the
specification, evidence and arguments rebutting the conclusion that such
placement was a matter of "design choice" should have been considered as
part of the totality of the record.  "We have found no cases supporting
the position that a patent applicant's evidence or arguments traversing
a Section  103 rejection must be contained within the specification.
There is no logical support for such a proposition as well, given that
obviousness is determined by the totality of the record including, in
some instances most significantly, the evidence and arguments proffered
during the give-and-take of ex parte patent prosecution."  66 F.3d at
299, 36 USPQ2d at 1095.).  See also In re Zenitz, 333 F.2d 924, 928, 142
USPQ 158, 161 (CCPA 1964) (evidence that claimed compound minimized side
effects of hypotensive activity must be considered because this
undisclosed property would inherently flow from disclosed use as
tranquilizer); Ex parte Sasajima, 212 USPQ 103, 104 - 05 (Bd. App. 1981)
(evidence relating to initially undisclosed relative toxicity of claimed
pharmaceutical compound must be considered).

The specification need not disclose proportions or values as critical
for applicants to present evidence showing the proportions or
values to be critical. In re Saunders, 444 F.2d 599, 607, 170 USPQ 213,
220 (CCPA 1971).

---SECTION---716.02(g) Declaration or Affidavit Form

"The reason for requiring evidence in declaration or affidavit form is
to obtain the assurances that any statements or representations made are
correct, as provided by  35 U.S.C. 25 and  18 U.S.C. 1001." Permitting a
publication to substitute for expert testimony would circumvent the
guarantees built into the statute. Ex parte Gray, 10 USPQ2d 1922, 1928
(Bd. Pat. App. & Inter. 1989). Publications may, however, be evidence of
the facts in issue and should be considered to the extent that they are
probative.

---SECTION---716.03 Commercial Success

NEXUS BETWEEN CLAIMED INVENTION AND EVIDENCE OF COMMERCIAL SUCCESS
REQUIRED

An applicant who is asserting commercial success to support its
contention of nonobviousness bears the burden of proof of establishing a
nexus between the claimed invention and evidence of commercial success.

The Federal Circuit has acknowledged that applicant bears the burden of
establishing nexus, stating:

In the ex parte process of examining a patent application, however, the
PTO lacks the means or resources to gather evidence which supports or
refutes the applicant's assertion that the sales constitute commercial
success. C.f. Ex parte Remark, 15 USPQ2d 1498, 1503 (Bd. Pat. App. &
Int. 1990)(evidentiary routine of shifting burdens in civil proceedings
inappropriate in ex parte prosecution proceedings because examiner has
no available means for adducing evidence).  Consequently, the PTO must
rely upon the applicant to provide hard evidence of commercial success.

In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir.
1996).  See also In re GPAC, 57 F.3d 1573, 1580, 35 USPQ2d 1116, 1121
(Fed. Cir. 1995); In re Paulsen, 30 F.3d 1475, 1482, 31 USPQ2d 1671,
1676 (Fed. Cir. 1994) (Evidence of commercial success of articles not
covered by the claims subject to the  35 U.S.C. 103 rejection was not
probative of nonobviousness).

The term "nexus" designates a factually and legally sufficient
connection between the evidence of commercial success and the claimed
invention so that the evidence is of probative value in the
determination of nonobviousness. Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988).

COMMERCIAL SUCCESS ABROAD IS RELEVANT

Commercial success abroad, as well as in the United States, is relevant
in resolving the issue of nonobviousness. Lindemann Maschinenfabrik GMBH
v. American Hoist & Derrick Co., 730 F.2d 1452, 221 USPQ 481 (Fed. Cir.
1984).

---SECTION---716.03(a) Commercial Success Commensurate in Scope With
Claimed Invention

EVIDENCE OF COMMERCIAL SUCCESS MUST BE COMMENSURATE IN SCOPE WITH THE
CLAIMS

Objective evidence of nonobviousness including commercial success must
be commensurate in scope with the claims. In re Tiffin, 448 F.2d 791,
171 USPQ 294 (CCPA 1971) (evidence showing commercial success of
thermoplastic foam "cups" used in vending machines was not commensurate
in scope with claims directed to thermoplastic foam "containers"
broadly). In order to be commensurate is scope with the claims, the
commercial success must be due to claimed features, and not due to
unclaimed features. Joy Technologies Inc. v. Manbeck, 751 F. Supp. 225,
229, 17 USPQ2d 1257, 1260 (D.D.C. 1990), aff'd, 959 F.2d 226, 228, 22
USPQ2d 1153, 1156 (Fed. Cir. 1992) (Features responsible for commercial
success were recited only in allowed dependent claims, and therefore the
evidence of commercial success was not commensurate in scope with the
broad claims at issue.).

An affidavit or declaration attributing commercial success to a product
or process "constructed according to the disclosure and claims of [the]
patent application" or other equivalent language does not establish a
nexus between the claimed invention and the commercial success because
there is no evidence that the product or process which has been sold
corresponds to the claimed invention, or that whatever commercial
success may have occurred is attributable to the product or process
defined by the claims. Ex parte Standish, 10 USPQ2d 1454, 1458 (Bd. Pat.
App. & Inter. 1988).

REQUIREMENTS WHEN CLAIMED INVENTION IS NOT COEXTENSIVE WITH COMMERCIAL
PRODUCT OR PROCESS

If a particular range is claimed, applicant does not need to show
commercial success at every point in the range. "Where, as here, the
claims are directed to a combination of ranges and procedures not shown
by the prior art, and where substantial commercial success is achieved
at an apparently typical point within those ranges, and the affidavits
definitely indicate that operation throughout the claimed ranges
approximates that at the particular points involved in the commercial
operation, we think the evidence as to commercial success is
persuasive." In re Hollingsworth, 253 F.2d 238, 240, 117 USPQ 182, 184
(CCPA 1958). See also Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988) (where the commercially
successful product or process is not coextensive with the claimed
invention, applicant must show a legally sufficient relationship between
the claimed feature and the commercial product or process).

---SECTION---716.03(b) Commercial Success Derived From Claimed Invention

COMMERCIAL SUCCESS MUST BE DERIVED FROM THE CLAIMED INVENTION

In considering evidence of commercial success, care should be taken to
determine that the commercial success alleged is directly derived from
the invention claimed, in a marketplace where the consumer is free to
choose on the basis of objective principles, and that such success is
not the result of heavy promotion or advertising, shift in advertising,
consumption by purchasers normally tied to applicant or assignee, or
other business events extraneous to the merits of the claimed invention,
etc. In re Mageli, 470 F.2d 1380, 176 USPQ 305 (CCPA 1973) (conclusory
statements or opinions that increased sales were due to the merits of
the invention are entitled to little weight); In re Noznick, 478 F.2d
1260, 178 USPQ 43 (CCPA 1973).

In   ex parte proceedings before the Patent and Trademark Office, an
applicant must show that the claimed features were responsible for the
commercial success of an article if the evidence of nonobviousness is to
be accorded substantial weight. See In re Huang, 100 F.3d 135, 140, 40
USPQ2d 1685, 1690 (Fed. Cir. 1996) (Inventor's opinion as to the
purchaser's reason for buying the product is insufficient to demonstrate
a nexus between the sales and the claimed invention.). Merely showing
that there was commercial success of an article which embodied the
invention is not sufficient. Ex parte Remark, 15 USPQ2d 1498, 1502-02
(Bd. Pat. App. & Inter. 1990). Compare Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988) (In civil
litigation, a patentee does not have to prove that the commercial
success is not due to other factors. "A requirement for proof of the
negative of all imaginable contributing factors would be unfairly
burdensome, and contrary to the ordinary rules of evidence.").

See also Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 227 USPQ
766 (Fed. Cir. 1985) (commercial success may have been attributable to
extensive advertising and position as a market leader before the
introduction of the patented product); In re Fielder, 471 F.2d 690, 176
USPQ 300 (CCPA 1973) (success of invention could be due to recent
changes in related technology or consumer demand; here success of
claimed voting ballot could be due to the contemporary drive toward
greater use of automated data processing techniques); EWP Corp. v.
Reliance Universal, Inc., 755 F.2d 898, 225 USPQ 20 (Fed. Cir. 1985)
(evidence of licensing is a secondary consideration which must be
carefully appraised as to its evidentiary value because licensing
programs may succeed for reasons unrelated to the unobviousness of the
product or process, e.g., license is mutually beneficial or less
expensive than defending infringement suits); Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 231 USPQ 81 (Fed. Cir. 1986)
(Evidence of commercial success supported a conclusion of nonobviousness
of claims to an immunometric "sandwich" assay with monoclonal
antibodies. Patentee's assays became a market leader with 25% of the
market within a few years. Evidence of advertising did not show absence
of a nexus between commercial success and the merits of the claimed
invention because spending 25-35% of sales on marketing was not
inordinate (mature companies spent 17-32% of sales in this market), and
advertising served primarily to make industry aware of the product
because this is not kind of merchandise that can be sold by advertising
hyperbole.).

COMMERCIAL SUCCESS MUST FLOW FROM THE FUNCTIONS AND ADVANTAGES DISCLOSED
OR INHERENT IN THE SPECIFICATION DESCRIPTION

To be pertinent to the issue of nonobviousness, the commercial success
of devices falling within the claims of the patent must flow from the
functions and advantages disclosed or inherent in the description in the
specification. Furthermore, the success of an embodiment within the
claims may not be attributable to improvements or modifications made by
others. In re Vamco Machine & Tool, Inc., 752 F.2d 1564,    224 USPQ 617
(Fed. Cir. 1985).

IN DESIGN CASES, ESTABLISHMENT OF NEXUS IS ESPECIALLY DIFFICULT

Establishing a nexus between commercial success and the claimed
invention is especially difficult in design cases. Evidence of
commercial success must be clearly attributable to the design to be of
probative value, and not to brand name recognition, improved
performance, or some other factor. Litton Systems, Inc. v. Whirlpool
Corp., 728 F.2d 1423, 221 USPQ 97 (Fed. Cir. 1984) (showing of
commercial success was not accompanied by evidence attributing
commercial success of Litton microwave oven to the design thereof).

SALES FIGURES MUST BE ADEQUATELY DEFINED

Gross sales figures do not show commercial success absent evidence as to
market share, Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d
1015, 226 USPQ 881 (Fed. Cir. 1985), or as to the time period during
which the product was sold, or as to what sales would normally be
expected in the market, Ex parte Standish, 10 USPQ2d 1454 (Bd. Pat. App.
& Inter. 1988).

---SECTION---716.04 Long-Felt Need and Failure of Others

THE CLAIMED INVENTION MUST SATISFY A LONG-FELT NEED WHICH WAS
RECOGNIZED, PERSISTENT, AND NOT SOLVED BY OTHERS

Establishing long-felt need requires objective evidence that an art
recognized problem existed in the art for a long period of time without
solution. The relevance of long-felt need and the failure of others to
the issue of obviousness depends on several factors. First, the need
must have been a persistent one that was recognized by those of ordinary
skill in the art. In re Gershon, 372 F.2d 535, 539, 152 USPQ 602, 605
(CCPA 1967) ("Since the alleged problem in this case was first
recognized by appellants, and others apparently have not yet become
aware of its existence, it goes without saying that there could not
possibly be any evidence of either a long felt need in the . . . art for
a solution to a problem of dubious existence or failure of others
skilled in the art who unsuccessfully attempted to solve a problem of
which they were not aware."); Orthopedic Equipment Co., Inc. v. All
Orthopedic Appliances, Inc., 707 F.2d 1376, 217 USPQ 1281 (Fed. Cir.
1983) (Although the claimed invention achieved the desirable result of
reducing inventories, there was no evidence of any prior unsuccessful
attempts to do so.).

Second, the long-felt need must not have been satisfied by another
before the invention by applicant. Newell Companies v. Kenney Mfg. Co.,
864 F.2d 757, 768, 9 USPQ2d 1417, 1426 (Fed. Cir. 1988) (Although at one
time there was a long-felt need for a "do-it-yourself" window shade
material which was adjustable without the use of tools, a prior art
product fulfilled the need by using a scored plastic material which
could be torn. "[O]nce another supplied the key element, there was no
long-felt need or, indeed, a problem to be solved".)

Third, the invention must in fact satisfy the long-felt need. In re
Cavanagh, 436 F.2d 491, 168 USPQ 466 (CCPA 1971).

LONG-FELT NEED IS MEASURED FROM THE DATE A PROBLEM IS IDENTIFIED AND
EFFORTS ARE MADE TO SOLVE IT

Long-felt need is analyzed as of the date the problem is identified and
articulated, and there is evidence of efforts to solve that problem, not
as of the date of the most pertinent prior art references. Texas
Instruments Inc. v. Int'l Trade Comm'n, 988 F.2d 1165, 1179, 26 USPQ2d
1018, 1029 (Fed. Cir. 1993).

OTHER FACTORS CONTRIBUTING TO THE PRESENCE OF A LONG-FELT NEED MUST BE
CONSIDERED

The failure to solve a long-felt need may be due to factors such as lack
of interest or lack of appreciation of an invention's potential or
marketability rather than want of technical know-how. Scully Signal Co.
v. Electronics Corp. of America, 570 F.2d 355, 196 USPQ 657 (1st. Cir.
1977).

See also   Environmental Designs, Ltd. v. Union Oil Co. of Cal., 713
F.2d 693, 698, 218 USPQ 865, 869 (Fed. Cir. 1983) (presence of
legislative regulations for controlling sulfur dioxide emissions did not
militate against existence of long-felt need to reduce the sulfur
content in the air); In re Tiffin, 443 F.2d 344, 170 USPQ 88 (CCPA 1971)
(fact that affidavit supporting contention of fulfillment of a long-felt
need was sworn by a licensee adds to the weight to be accorded the
affidavit, as long as there is a bona fide licensing agreement entered
into at arm's length).

---SECTION---716.05 Skepticism of Experts

"Expressions of disbelief by experts constitute strong evidence of
nonobviousness." Environmental Designs, Ltd. v. Union Oil Co. of Cal.,
713 F.2d 693, 698, 218 USPQ 865, 869 (Fed. Cir. 1983) (citing United
States v. Adams, 383 U.S. 39, 52, 148 USPQ 479, 483-484 (1966)) (The
patented process converted all the sulfur compounds in a certain
effluent gas stream to hydrogen sulfide, and thereafter treated the
resulting effluent for removal of hydrogen sulfide. Before learning of
the patented process, chemical experts, aware of earlier failed efforts
to reduce the sulfur content of effluent gas streams, were of the
opinion that reducing sulfur compounds to hydrogen sulfide would not
adequately solve the problem.).

"The skepticism of an expert, expressed before these inventors proved
him wrong, is entitled to fair evidentiary weight, . . . as are the five
to six years of research that preceded the claimed invention." In re Dow
Chemical Co., 837 F.2d 469, 5 USPQ2d 1529 (Fed. Cir. 1988); Burlington
Industries Inc. v. Quigg, 822 F.2d 1581, 3 USPQ2d 1436 (Fed. Cir. 1987)
(testimony that the invention met with initial incredulity and
skepticism of experts was sufficient to rebut the   prima facie case of
obviousness based on the prior art).

---SECTION---716.06 Copying

Another form of secondary evidence which may be presented by applicants
during prosecution of an application, but which is more often presented
during litigation, is evidence that competitors in the marketplace are
copying the invention instead of using the prior art. However, more than
the mere fact of copying is necessary to make that action significant
because copying may be attributable to other factors such as a lack of
concern for patent property or contempt for the patentee's ability to
enforce the patent. Cable Electric Products, Inc. v. Genmark, Inc., 770
F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985). Evidence of copying was
persuasive of nonobviousness when an alleged infringer tried for a
substantial length of time to design a product or process similar to the
claimed invention, but failed and then copied the claimed invention
instead. Dow Chemical Co. v. American Cyanamid Co., 837 F.2d 469, 2
USPQ2d 1350 (Fed. Cir. 1987). Alleged copying is not persuasive of
nonobviousness when the copy is not identical to the claimed product,
and the other manufacturer had not expended great effort to develop its
own solution. Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 227
USPQ 766 (Fed. Cir. 1985). See also Vandenberg v. Dairy Equipment Co.,
740 F.2d 1560, 1568, 224 USPQ 195, 199 (Fed. Cir. 1984) (evidence of
copying not found persuasive of nonobviousness) and Panduit Corp. v.
Dennison Manufacturing Co., 774 F.2d 1082, 1098-99, 227 USPQ 337, 348,
349 (Fed. Cir. 1985),   vacated on other grounds, 475 U.S. 809, 229 USPQ
478 (1986), on remand, 810 F.2d 1561, 1 USPQ2d 1593 (Fed. Cir. 1987)
(evidence of copying found persuasive of nonobviousness where admitted
infringer failed to satisfactorily produce a solution after 10 years of
effort and expense).

---SECTION---716.07 Inoperability of References

Since every patent is presumed valid (35 U.S.C. 282), and since that
presumption includes the presumption of operability (Metropolitan Eng.
Co. v. Coe, 78 F.2d 199, 25 USPQ 216 (D.C.Cir. 1935),examiners should
not express any opinion on the operability of a patent.  Affidavits or
declarations attacking the operability of a patent cited as a reference
must rebut the presumption of operability by a preponderance of the
evidence. In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980).

Further, since in a patent it is presumed that a process if used by one
skilled in the art will produce the product or result described therein,
such presumption is not overcome by a mere showing that it is possible
to operate within the disclosure without obtaining the alleged product.
In re Weber, 405 F.2d 1403, 160 USPQ 549 (CCPA 1969). It is to be
presumed also that skilled workers would as a matter of course, if they
do not immediately obtain desired results, make certain experiments and
adaptations, within the skill of the competent worker. The failures of
experimenters who have no interest in succeeding should not be accorded
great weight. In re Michalek, 162 F.2d 229, 74 USPQ 107 (CCPA 1947); In
re Reid, 179 F.2d 998, 84 USPQ 478 (CCPA 1950).

Where the affidavit or declaration presented asserts inoperability in
features of the reference which are not relied upon, the reference is
still effective as to other features which are operative. In re
Shepherd, 172 F.2d 560, 80 USPQ 495 (CCPA 1949).

Where the affidavit or declaration presented asserts that the reference
relied upon is inoperative, the claims represented by applicant must
distinguish from the alleged inoperative reference disclosure. In re
Crosby, 157 F.2d 198, 71 USPQ 73 (CCPA 1946). See also In re Epstein, 32
F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) (lack of diagrams, flow
charts, and other details in the prior art references did not render
them nonenabling in view of the fact that applicant's own specification
failed to provide such detailed information, and that one skilled in the
art would have known how to implement the features of the references).

If a patent teaches or suggests the claimed invention, an affidavit or
declaration by patentee that he or she did not intend the disclosed
invention to be used as claimed by applicant is immaterial. In re Pio,
217 F.2d 956, 104 USPQ 177 (CCPA 1954). Compare In re Yale, 434 F.2d 66,
168 USPQ 46 (CCPA 1970) (Correspondence from a co-author of a literature
article confirming that the article misidentified a compound through a
typographical error that would have been obvious to one of ordinary
skill in the art was persuasive evidence that the erroneously typed
compound was not put in the possession of the public.).

---SECTION---716.08 Utility and Operability of Applicant's Disclosure

See MPEP Section  2107.01, for guidance on when it is proper to require
evidence of utility or operativeness, and how to evaluate any evidence
which is submitted to overcome a rejection under  35 U.S.C. 101 for lack
of utility. See MPEP Section  2107 - Section  2107.02 generally for an
overview of legal precedent relevant to the utility requirement of  35
U.S.C. 101.

---SECTION---716.09 Sufficiency of Disclosure

See MPEP Section  2164 -  Section  2164.08(c) for guidance in
determining whether the specification provides an enabling disclosure in
compliance with  35 U.S.C. 112, first paragraph.

Once the examiner has established a prima facie case of lack of
enablement, the burden falls on the applicant to present persuasive
arguments, supported by suitable proofs where necessary, that one
skilled in the art would have been able to make and use the claimed
invention using the disclosure as a guide. In re Brandstadter, 484 F.2d
1395, 179 USPQ 286 (CCPA 1973). Evidence to supplement a specification
which on its face appears deficient under  35 U.S.C. 112 must establish
that the information which must be read into the specification to make
it complete would have been known to those of ordinary skill in the art.
In re Howarth, 654 F.2d 103, 210 USPQ 689 (CCPA 1981) (copies of patent
specifications which had been opened for inspection in Rhodesia, Panama,
and Luxembourg prior to the U.S. filing date of the applicant were not
sufficient to overcome a rejection for lack of enablement under  35
U.S.C. 112, first paragraph).

Affidavits or declarations presented to show that the disclosure of an
application is sufficient to one skilled in the art are not acceptable
to establish facts which the specification itself should recite. In re
Buchner, 929 F.2d 660, 18 USPQ2d 1331 (Fed. Cir. 1991) (Expert described
how he would construct elements necessary to the claimed invention whose
construction was not described in the application or the prior art; this
was not sufficient to demonstrate that such construction was well-known
to those of ordinary skill in the art.); In re Smyth, 189 F.2d 982, 90
USPQ 106 (CCPA 1951).

Affidavits or declarations purporting to explain the disclosure or to
interpret the disclosure of a pending application are usually not
considered. In re Oppenauer, 143 F.2d 974, 62 USPQ 297 (CCPA 1944). But
see   Glaser v. Strickland, 220 USPQ 446 (Bd. Pat. Int. 1983) which
reexamines the rationale on which In re Oppenauer was based in light of
the Federal Rules of Evidence. The Board stated as a general proposition
"Opinion testimony which merely purports to state that a claim or count,
is `disclosed' in an application involved in an interference  . . .
should not be given any weight. Opinion testimony which purports to
state that a particular feature or limitation of a claim or count is
disclosed in an application involved in an interference and which
explains the underlying factual basis for the opinion may be helpful and
can be admitted. The weight to which the latter testimony may be
entitled must be evaluated strictly on a case-by-case basis."

---SECTION---716.10 Attribution

Under certain circumstances an affidavit or declaration may be submitted
which attempts to attribute a reference or part of a reference to the
applicant. If successful, the reference is no longer applicable. When
subject matter, disclosed but not claimed in a patent application issued
jointly to S and another, is claimed in a later application filed by S,
the joint patent is a valid reference available as prior art under  35
U.S.C. 102(a), (e), or (f) unless overcome by affidavit or declaration
under  37 CFR 1.131 showing prior invention (see MPEP Section  715) or
an unequivocal declaration by S under  37 CFR 1.132 that he or she
conceived or invented the subject matter disclosed in the patent.
Disclaimer by the other patentee should not be required but, if
submitted, may be accepted by the examiner.

Where there is a published article identifying the authorship (MPEP
Section  715.01(c)) or a patent identifying the inventorship (MPEP
Section  715.01(a)) that discloses subject matter being claimed in an
application undergoing examination, the designation of authorship or
inventorship does not raise a presumption of inventorship with respect
to the subject matter disclosed in the article or with respect to the
subject matter disclosed but not claimed in the patent so as to justify
a rejection under subsection (f).

However, it is incumbent upon the inventors named in the application, in
response to an inquiry regarding the appropriate inventorship under
subsection (f) or to rebut a rejection under  35 U.S.C. 102(a) or (e),
to provide a satisfactory showing by way of affidavit under  37 CFR
1.132 that the inventorship of the application is correct in that the
reference discloses subject matter derived from the applicant rather
than invented by the author or patentee notwithstanding the authorship
of the article or the inventorship of the patent. In re Katz, 687 F.2d
450, 455, 215 USPQ 14,18 (CCPA 1982) (inquiry is appropriate to clarify
any ambiguity created by an article regarding inventorship and it is
then incumbent upon the applicant to provide "a satisfactory showing
that would lead to a reasonable conclusion that [applicant] is the ...
inventor" of the subject matter disclosed in the article and claimed in
the application).

An uncontradicted "unequivocal statement" from the applicant regarding
the subject matter disclosed in an article or patent will be accepted as
establishing inventorship. In re DeBaun, 687 F.2d 459, 463, 214 USPQ
933, 936 (CCPA 1982). However, a statement by the applicants regarding
their inventorship in view of an article or a patent may not be
sufficient where there is evidence to the contrary. Ex parte Kroger, 218
USPQ 370 (Bd. App. 1982) (a rejection under  35 U.S.C. 102(f) was
affirmed notwithstanding declarations by the alleged actual inventors as
to their inventorship in view of a nonapplicant author submitting a
letter declaring the author's inventorship); In re Carriera, 532 F.2d
1356, 189 USPQ 461 (CCPA 1976) (disclaiming declarations from patentees
were directed at the generic invention and not at the claimed species,
hence no need to consider derivation of the subject matter).

A successful  37 CFR 1.132 affidavit or declaration establishing
derivation by the author or patentee of a first reference does not
enable an applicant to step into the shoes of that author or patentee in
regard to its date of publication so as to defeat a later second
reference. In re Costello, 717 F.2d 1346, 1350, 219 USPQ 389, 392 (Fed.
Cir. 1983).

EXAMPLES

The following examples demonstrate the application of an attribution
affidavit or declaration.

Example 1

During the search the examiner finds a reference fully describing the
claimed invention. The applicant is the author or patentee and it was
published or patented less than one year prior to the filing date of the
application. The reference cannot be used against applicant since it
does not satisfy the 1-year time requirement of  35 U.S.C. 102(b).

Example 2

Same facts as above, but the author or patentee is an entity different
from applicant. Since the entities are different, the reference is prior
art under  35 U.S.C. 102(a) or (e).

In the situation described in Example 2, an affidavit under  37 CFR
1.132 may be submitted to show that the relevant portions of the
reference originated with or were obtained from applicant. Thus the
affidavit attempts to convert the fact situation from that described in
Example 2 to the situation described in Example 1.

---SECTION---718 Affidavit or Declaration to Disqualify Commonly Owned
Patent as Prior Art, 37 CFR 1.130

37 CFR 1.130 Affidavit or declaration to disqualify commonly owned
patent as prior art.

(a) When any claim of an application or a patent under reexamination is
rejected under  35 U.S.C. 103 in view of a U.S. patent which is not
prior art under  35 U.S.C. 102(b), and the inventions defined by the
claims in the application or patent under reexamination and by the
claims in the patent are not identical but are not patentably distinct,
and the inventions are owned by the same party, the applicant or owner
of the patent under reexamination may disqualify the patent as prior
art.  The patent can be disqualified as prior art by submission of:

(1) A terminal disclaimer in accordance with Section  1.321(c), and

(2) An oath or declaration stating that the application or patent under
reexamination and the patent are currently owned by the same party, and
that the inventor named in the application or patent under reexamination
is the prior inventor under  35 U.S.C. 104.

(b) When an application or a patent under reexamination claims an
invention which is not patentably distinct from an invention claimed in
a commonly owned patent with the same or a different inventive entity, a
double patenting rejection will be made in the application or a patent
under reexamination.  A judicially created double patenting rejection
may be obviated by filing a terminal disclaimer in accordance with
Section  1.321(c).

37 CFR 1.130(a) has been added to provide for those situations in which:

(A) the rejection in an application or patent under reexamination to be
overcome is a rejection under  35 U.S.C. 103 in view of a U.S. patent
which is not prior art under  35 U.S.C. 102(b);

(B) the inventions defined by the claims in the application or patent
under reexamination and by the claims in the U.S. patent are not
identical but are not patentably distinct; and

(C) the inventions are owned by the same party.

An applicant or owner of a patent under reexamination in this situation
is prevented from using  37 CFR 1.131 to antedate a commonly owned U.S.
patent due to the requirement in  37 CFR 1.131 that any U.S. patent to
be antedated not claim the same patentable invention (as defined in  37
CFR 1.601(n)) as the application or patent under reexamination, and is
prevented from proceeding in an interference due to the provision in  37
CFR 1.602(a) that an interference will not be declared or continued
between an application and an unexpired patent owned by a single party.

As  37 CFR 1.130(a) was added for those situations in which the
inventions defined by the claims in the application or patent under
reexamination and by the claims in the U.S. patent are not patentably
distinct,  37 CFR 1.130(a)(1) requires a terminal disclaimer in
accordance with  37 CFR 1.321(c) and  37 CFR 1.130(a)(2) requires an
oath or declaration stating, inter alia, that the inventor named in the
application or patent under reexamination is the prior inventor under
35 U.S.C. 104.  The inventor named in the application or patent under
reexamination must have invented the claimed subject matter before the
actual date of invention of the subject matter of the reference U.S.
patent claims.  The oath or declaration may be signed by the
inventor(s), the attorney of record, or assignee(s) of the entire
interest.

The phrase "prior inventor under  35 U.S.C. 104" requires that the
inventor named in the application or patent be the prior inventor within
the meaning of  35 U.S.C. 104, in that an applicant or patent owner may
not:

(A) establish a date of invention in a foreign country other than a
NAFTA or WTO member country;

(B) establish a date of invention in a WTO member country other than a
NAFTA country earlier than January 1, 1996; or

(C) establish a date of invention in a NAFTA country other than the U.S.
earlier than December 8, 1993.

As the conflict between two pending applications can be avoided by
filing a continuation-in-part application merging the conflicting
inventions into a single application,  37 CFR 1.130 is limited to
overcoming rejections under  35 U.S.C. 103 based on commonly owned U.S.
patents.

37 CFR 1.130(b) provides that when an application or a patent under
reexamination claims an invention which is not patentably distinct from
an invention claimed in a commonly owned patent with the same or a
different inventive entity, a double patenting rejection will be made in
the application or a patent under reexamination.  A judicially created
double patenting rejection may be obviated by filing a terminal
disclaimer in accordance with  37 CFR 1.321(c).  See MPEP Section
804.02.

---SECTION---719 File Wrapper

The folder in which the Patent and Trademark Office maintains the
application papers is referred to as a file wrapper.

---SECTION---719.01 Papers in File Wrapper

Papers that do not become a permanent part of the record should not be
entered on the "Contents" of the file wrapper. All papers legally
entered on the "Contents" of the file wrapper are given a paper number.
No paper legally entered on the "Contents" should ever be withdrawn or
returned to applicant, especially a part of the original disclosure of
the application, without special authority of the Commissioner. However,
37 CFR 1.59 provides that certain documents may be returned to applicant
if they were unintentionally submitted or contain proprietary
information which has not been made public and is not important to a
decision of patentability.  See MPEP Section  724. Certain oaths
executed abroad may be returned but a copy is retained in the file. See
MPEP Section  604.04(a).

---SECTION---719.01(a) Arrangement of Papers in File Wrapper

Until revision for allowance, the specification, amendments and all
other communications from applicant are fastened to the left side
(center fold) of the file wrapper. They are in inverse chronological
order, that is, the communication with the latest Mail Center "Office
Date" is on top. A similar arrangement is followed on the right side,
where Office actions and other communications from the Office are
fastened, except that the drawing print is always kept on top for the
convenience of the examiner.

Where amendments are submitted in duplicate, the copy is destroyed
except where the duplicate is received within the time period for reply
and the original is late. In this latter situation both copies are
placed in the file. The "original" (ribbon copy) is entered with
reference made to the copy.

At allowance, only those papers required by the printer are placed in
the left side (center section) of the file wrapper.

---SECTION---719.01(b) Prints

The prints of the drawing are fastened inside the file wrapper by the
Office of Initial Patent Examination.

The white paper prints are always kept on top of the papers on the right
of the file wrapper.

All prints and inked sketches subsequently filed to be part of the
record should be endorsed with the date of their receipt in the Office
and given their appropriate paper number. Note MPEP Section  608.02(m).

---SECTION---719.02 Data Entered on File Wrapper

See also MPEP Section  707.10 and Section  719.01.

It is sometimes necessary to return an application to the Office of
Initial Patent Examination (OIPE) for correction of the file wrapper
label, or, for 09/series applications, to forward the application to the
technical support staff of the examining group for correction to the
PALM bib-data sheet placed in the file wrapper.  If the examiner notices
an error in any of the data originally entered on the file wrapper or on
the PALM bib-data sheet, he or she should return the application to OIPE
for correction or, for 09/series applications, have the technical
support staff of his or her examining group enter the correction on the
PALM database and print a new PALM bib-data sheet, which will then be
placed in the file wrapper.

Instances where correction is necessary include:

(A) Correction of inventorship such as changes in the order of the names
or a change in the name of an inventor, granted by petition, and
additions or deletions of inventors under  37 CFR 1.48. See MPEP Section
605.04(g).

(B) Correction of the filing date.

(C) Correction concerning prior U.S. applications which have application
number errors. See MPEP Section  202.02.

(D) Correction of a claim for priority under  35 U.S.C. 120, 121, or
365(c). See MPEP Section  201.11 and Section  1302.09.

Any application that must be sent to OIPE for correction of the file
wrapper label should be accompanied by an Office of Initial Patent
Examination Data Base Routing Slip with an explanation of the correction
to be made.

All other corrections are performed in the examining group. For example,
changes to the title, power of attorney, and correspondence address may
be made with red ink.

If an error is noticed in the name or address of the assignee, it should
be corrected by the Assignment Division.

Except as otherwise indicated, all of the above entries are either typed
or made in black ink. Such changes by amendment as change of address or
of attorney are entered in red ink by the technical support staff of the
group, the original entry being canceled but not erased.

---SECTION---719.02(b) Name or Residence of Inventor or Title Changed

The distinction between "residence" and Post Office address should not
be lost sight of. See MPEP Section  605.02 and Section  605.03.

MPEP Section  605.04(c) explains the procedure to be followed when
applicant changes name.

Unless specifically requested by applicant, the residence will not be
changed on the file. For example, if a new oath gives a different
residence from the original, the file will not be changed.

---SECTION---719.03 Classification During Examination

When a new application is received in an examining group, the
classification of the application and the initials or name of the
examiner who will examine it or other assigned docket designation are
noted in pencil in the upper left hand corner of the first sheet of the
prints of the drawings and in the designated spaces on the file wrapper.
These notations should be kept current.

---SECTION---719.04 Index of Claims

Constant reference is made to the "Index of Claims" found in the inside
of the file wrapper of all applications. It should be kept up to date so
as to be a reliable index of all claims standing in a case, and of the
amendment in which the claims are to be found.

The preprinted series of claim numbers appearing on the file wrapper
refer to the claim numbers as originally filed while the adjacent column
should be used for the entry of the final numbering of the allowed
claims.

Independent claims should be designated in the Index of Claims by
encircling the claim number in red ink.

A line in red ink should be drawn below the number corresponding to the
number of claims originally presented.

Thereafter, a line in red ink should be drawn below the number
corresponding to the highest numbered claim added by each amendment.
Just outside the Index of Claims form opposite the number corresponding
to the first claim of each amendment there should be placed the letter
designating the amendment.

If the claims are amended in rewritten form under  37 CFR 1.121(a), the
original claim number should not be stricken from the Index of Claims
but a notation should be made in red ink in the margin to the left of
the original claim number, i.e., "Amend. 1"; if the claim is rewritten a
second time, "Amend. 1" should be changed by striking out "1" and
inserting "2" above it.

As any claim is canceled, a line in red ink should be drawn through its
number.

A space is provided for completion by the examiner to indicate the date
and type of each Office action together with the resulting status of
each claim. A list of codes for identifying each type of Office action
appears below the Index. At the time of allowance, the examiner places
the final patent claim numbers in the column marked "Final."

---SECTION---719.05 Field of Search

In each action involving a search, the examiner shall endorse, on the
flap of the file wrapper, the U.S. classes and subclasses, International
Patent Classification(s) and publications searched, the date when the
search was made or was brought up to date and the examiner's initials,
all entries being in BLACK INK. Great care should be taken so as to
clearly indicate the places searched and the date(s) on which the search
was conducted.

In order to provide a complete, accurate, and uniform record of what has
been searched and considered by the examiner for each application, the
Patent and Trademark Office has established procedures for recording
search data in the application file. Such a record is of importance to
anyone evaluating the strength and validity of a patent, particularly if
the patent is involved in litigation. These procedures will also
facilitate the printing of certain search data on patents.

Under the procedures, searches are separated into two categories and
listed, as appropriate, in either the "SEARCHED" box or "SEARCHED NOTES"
box on the file wrapper.

I. "SEARCHED" BOX ENTRIES

Search entries made here, except those for search updates (see item I(C)
below), will be printed under "Field of Search" on the patent front
page. Therefore, the following searches will be recorded in the
"SEARCHED" box by the examiner along with the date and the examiner's
initials, according to the following guidelines:

(A)  	A complete search of a subclass, including all United States and
foreign patent documents, whether filed by U.S. or IPC classification,
and other publications placed therein.

The complete classification (class and subclass) should be recorded.

Examples

424/270, 272, 273

224/42.1 F

414/DIG. 4

D3/32 R

A61K 9/22

A61K 31/56 - A61K 31/585

(B) A limited search of a subclass, for example, a search that is
restricted to an identifiable portion of the patent documents placed
therein. If, however, only the publications in a subclass are searched,
such an entry is to be made under "SEARCH NOTES" rather than under
"SEARCHED." (See item II(D) below.)

The class and subclass, followed by the information defining the portion
of the subclass searched, in parenthesis, should be recorded.

Examples

414/1 (U.S. only)

238/6 (1954 to date)

(C)  	An update of a search previously made. This search entry will be
recorded in a manner to indicate clearly which of the previously
recorded searches have been updated, followed by the expression
"(updated)." Search update entries, although recorded in the "SEARCHED"
box, will not be printed.

Examples

424/270 (updated)

414/DIG. 4 (updated)

Above (updated)

When a search made in a parent application is updated during the
examination of a continuing application, those searches updated,
followed by "(updated from parent S.N. ............)" will be recorded.
If the parent application has been patented, the patent number "Pat. N.
............" instead of application number in the above phrase will be
recorded. The examiner should recopy the entire search updated from the
parent on the file wrapper of the continuing application to the extent
pertinent to the continuing application.

Examples



 273/29 BC	(updated from

 343/114.5	parent S.N. 08/495,123)

 116/DIG.47	(updated from

D7/73, 74	parent Pat. N. 4,998,999)

II. "SEARCH NOTES" BOX ENTRIES

Entries made in the "SEARCH NOTES" box are of equal importance to those
placed in the "SEARCHED" box; however, these entries are not to be
printed on any resulting patent. They are intended to complete the
application file record of areas and/or documents considered by the
examiner in his or her search. The examiner should record the following
searches in this box and in the manner indicated, with each search dated
and initialled:

(A) A cursory search, or scanning, of a U.S. subclass or IPC
subclass/group/subgroup, i.e., a search usually made to determine if the
documents classified there are relevant. Record the classification,
followed by "(cursory)."

Examples

250/13 (cursory)

A61K 9/44 (cursory)

(B) A consultation with other examiners to determine if relevant search
fields exist in their areas of expertise.

If the subclass is not searched, record the class and subclass
discussed, followed by "(consulted)." This entry may also include the
name of the examiner consulted and the art unit.

Examples

24/ fasteners (consulted)

24/ fasteners (consulted J. Doe A.U. 3501)

24/201 R-230 AV (consulted)

(C) A search of a publication not located within the classified patent
file, e.g., a library search, a text book search, a Chemical Abstracts
search, etc. Record according to the following for each type of
literature search:

(1) Abstracting publications, such as Chemical Abstracts, record name of
publications, list terms consulted in index, and indicate period
covered.

Examples

Chem. Abs, Palladium hydride Jan.-June 1975

Eng. Index, Data Conversion Analog to Digital 1975

(2) Periodicals - list by title and period or volumes covered, as
appropriate.

Examples

Popular Mechanics, June-Dec. 1974

Lubrication Engineering, vols. 20-24

(3) Books - list by title and author, edition or date, as appropriate.

Example

Introduction to Hydraulic Fluids, Roger E. Hatton, 1962

(4) Other types of literature not specifically mentioned herein (i.e.,
catalogs, manufacturer's literature, private collections, etc.).

Record data as necessary to provide unique identification of material
searched.

Example

Sears Roebuck catalog, Spring-Summer, 1973.

Where a book or specific issue of a periodical is cited by the examiner,
it is not necessary to list the specific book or periodical in the
"SEARCH NOTES" box.

A cursory or browsing search through a number of materials that are not
found to be of significant relevance may be indicated in a collective
manner, e.g., "Browsed STIC shelves under QA 76.5" or "Browsed text
books in STIC relating to ......................" More detailed reviews
or searches through books and periodicals or any search of terms in
abstracting publications should be specifically recorded, however.

(5) Computer Search in Scientific and Technical Information Center
(STIC) - An online computerized literature searching service which uses
key terms and index terms to locate relevant publications in many large
bibliographic data bases is available in the STIC. Members of the STIC
staff are assigned to assist examiners in selecting key terms and to
conduct a search. To record a computer search conducted by STIC, see
instructions in II(F) below.

(D) A search of only the publications in a subclass.

Record class and subclass followed by "(publications only)."

Examples

43/56 (publications only)

99/DIG. 15 (publications only)

(E) A review of art cited in a parent application or an original patent,
as required for all continuation and continuation-in-part applications,
divisional applications, reissue applications and reexamination
proceedings, or a review of art cited in related applications.

Record the application number of a parent application that is still
pending or abandoned, followed by "refs. checked" or "refs. ck'ed." If
for any reason not all of the references have been checked because they
are not available or clearly not relevant, such exceptions should be
noted.

Examples

S. N. 495,123 refs. checked

S. N. 490,000 refs. checked

S. N. 480,111 refs. checked except for Greek patent to Kam

S. N.410,113 refs. not checked since the file was not available

Record the patent number of a parent or related application that is now
patented or of an original patent now being reissued with "refs.
checked" or "refs. ck'ed."

Examples

Pat. 3,900,000 refs. checked

Pat. 3,911,111 refs. ck'ed

(F) In each action involving a search of a computer accessed text or
chemical structure or sequence database, the examiner shall endorse, in
the SEARCH NOTES box on the file wrapper flap, the name of the database
service, the date when the search was made or was brought up to date and
the examiner's initials. All entries shall be made in BLACK INK.
Computer database searches including text, chemical structure, or
sequences shall be documented in the SEARCH NOTES box on the file
wrapper by providing the following minimum information:

(1) The search logic or chemical structure or sequence used as a query;

(2) The name of the file or files searched and the database service;

(3) Date of the search; and

(4) The examiner's initials.

Three ways in which this minimum documentation can be provided are:

(1) supplying, and as necessary annotating, the computer search printout
resulting from a computer assisted search (see examples 1 and 2 and
"Printouts" below), or

(2) recording the required information on the Search Request Form
PTO-1590, or

(3) recording the required information in the SEARCH NOTES box.

For methods (1) and (2), the name of the database service and the
expressions "(see form)" or "(see printout)" should be recorded in the
SEARCH NOTES box as appropriate with the date and the examiner's
initials.

Printouts

Most of the database services accessed in application searches provide a
command to display or print the search history which includes most, if
not all, of the minimum required information for documenting database
searches. Table 1 below lists the history command for each database
service and which of the required minimum documentation elements are
missing when the history command is entered.  The missing elements may
be documented by writing them on the printout of the search history or
by supplying further portions of the search transcript which do include
the missing elements. In some instances, depending on the database
service, the log off command will supply the missing data element. A
printout of the history command and log out response containing the
required data elements is acceptable as full documentation of a search.
This is the case with STN and Questel's log off command.

In each case, the name of the database service is not provided by
entering the history command and must be supplied in another manner. If
there are several search statements in the history, the statement or
statements of which the results were reviewed should be indicated by
circling them in BLACK INK. The form or printout page(s) with the
required data elements should be hole punched and placed in the
application file on the right hand flap of the file wrapper.



TABLE 1

History Commands and Missing Elements by Database Service

Database Service	History Command	Name of Database Service	Search Logic	
Name of File Searched	Date of Search

APS 	d his full	no	yes	yes	yes

Dialog	ds**	no	yes	missing1	missing***

STN* 	d his full	no****	yes	yes	yes

Orbit	his**	no****	yes	missing2	missing***

Questel 	hi**	no***	yes	yes	missing****

Mead 	r **	no	yes	yes	yes

IG Suite 	none	yes***	yes****	yes	yes



 *	In a structure search in STN, in addition to "d his full", the
structure 	should be printed out while in the Registry File.  The
command string for 	this is "d L# que stat," where L# is the number of
the answer set of a full  	file structure search.

 **	Need to enter history command for each file searched before changing
file 	or logging off.

 ***	Information provided as part of search result file for each
request.

 ****	Search query sequence provided as part of search result file for
each 	request.

 *****	Displayed by log off command.

 1	Name and number of file provided at file entry; number only of file
given 	when leaving the file; number only of last file accessed given at
log off.

 2	Name of the file given at file entry and when leaving the file; name
of last 	file accessed given at log off.

Explanation of Table Terminology

History Command - Generally, a display of what the user has asked the
search software to do. Will display the search logic entered by the
user. Some histories are limited to display of the searches done only in
the current file while others deliver a complete record of what file or
files were accessed and all searches done since sign on. Dialog,
Questel, Orbit, and Mead are services limited to display of the searches
done only in the current file.

Name of Database Service - Most services do not display this information
as part of the search transcript.  None of the services in the table
list that information as part of the history command. However, Orbit,
Questel, and STN supply the name of the database service during log off.

Search Logic - Generally, a display of the search commands executed by
the search software. For a structure or sequence search, this can be a
printout of the structure or sequence used to query the system.

Name of File Searched - This is the name of the collection of data
accessed. In some services, the file name is only displayed when the
file is selected and not in response to the history display command.
Dialog and Orbit are two such services. The file in some cases is
identified only by a number. For example, Dialog only supplies the file
number with the log off command. The file number alone is not adequate
documentation of a search. The name of the file is required.

Date of Search - Dialog, Orbit, and Questel do not display the date of
search as part of the history command. They do supply the date of search
during log off.

Nucleotide and peptide sequence searches will be fully documented by a
printout of the search query sequence and the beginning of the search
result file. Each query sequence should be clearly related to the
appropriate search result, if necessary, by appropriate annotation.

Other Databases

For other types of publicly accessible computer accessed databases
(e.g., CD-ROM databases, specialized databases, etc.), record data as
necessary to provide unique identification of material searched and
sufficient information as to the search query or request so that the
search can be updated. The record should also document the location of
the database and its form (CD-ROM, etc.)

Example:  Citing a biotech CD-ROM database

Entrez: Sequences, National Center for Biotechnology Information,
Version 7.19.91b (CD-ROM, Group 1800) Searched HIV and vaccine;
neighbored Galloway article dated 6/5/91 on April 1, 1990.

Example:  Citing a nonbiotech CD-ROM database

Computer Select, (November, 1991), Ziff Davis Communications Co.,
(CD-ROM, STIC), Searched Unix and emulation on December 1, 1991.

III. INFORMATION NOT RECORDED ON THE FILE WRAPPER

For an indication of consideration or nonconsideration of prior art
citations submitted by applicant in Information Disclosure Statements
(37 CFR 1.97 and 1.98), see MPEP Section  609.

[GRAPHIC]

Form PTO 1590. Search Request Form[GRAPHIC]

[GRAPHIC]

---SECTION---719.06 Foreign Filing Dates

See MPEP Section  201.14(c),  Section  202.03 and Section  201.14(d).

---SECTION---719.07 Related Applications

The file wrapper or the PALM bib-data sheet (for 09/series applications)
should identify earlier filed related applications.

See MPEP Section  202.02 and Section  202.03.

---SECTION---720 Public Use Proceedings

37 CFR 1.292 Public use proceedings.

(a) When a petition for the institution of public use proceedings,
supported by affidavits or declarations is found, on reference to the
examiner, to make a prima facie showing that the invention claimed in an
application believed to be on file had been in public use or on sale
more than one year before the filing of the application, a hearing may
be had before the Commissioner to determine whether a public use
proceeding should be instituted. If instituted, the Commissioner may
designate an appropriate official to conduct the public use proceeding,
including the setting of times for taking testimony, which shall be
taken as provided by Section Section  1.671 through 1.685. The
petitioner will be heard in the proceedings but after decision therein
will not be heard further in the prosecution of the application for
patent.

(b) The petition and accompanying papers, or a notice that such a
petition has been filed, shall be entered in the application file if:

(1) The petition is accompanied by the fee set forth in Section
1.17(j);

(2) The petition is served on the applicant in accordance with Section
1.248, or filed with the Office in duplicate in the event service is not
possible; and

(3) The petition is submitted prior to the mailing of a notice of
allowance under Section  1.311.

(c) A petition for institution of public use proceedings shall not be
filed by a party to an interference as to an application involved in the
interference. Public use and on sale issues in an interference shall be
raised by a preliminary motion under Section  1.633(a).

Public use proceedings are provided for in  37 CFR 1.292. The
institution of public use proceedings is discretionary with the
Commissioner. This section is intended to provide guidance when a
question concerning public use proceedings arises.

Any member of the public other than the applicant, including private
persons, corporate entities, and government agencies, may file a
petition under  37 CFR 1.292.  A petition may be filed by an attorney or
other representative on behalf of an unnamed principal since  37 CFR
1.292 does not require that the principal be identified. A petition and
fee (37 CFR 1.17(j)) are required to initiate consideration of whether
to institute a public use proceeding. The petitioner ordinarily has
information concerning a pending application which claims, in whole or
in part, subject matter that the petitioner alleges was in "public use"
or "on sale" in this country more than one year prior to the effective
United States filing date of the pending application (see  35 U.S.C. 119
and 120).  He or she thus asserts that a statutory bar (35 U.S.C. 102(b)
alone or in combination with  35 U.S.C. 103) exists which prohibits the
patenting of the subject matter of the application.

When public use petitions and accompanying papers are submitted they, or
a notice in lieu thereof, will be entered in the application file if the
petition is:

(A) accompanied by the fee set forth in  37 CFR 1.17(j);

(B) served on the applicant in accordance with  37 CFR 1.248, or filed
with the Office in duplicate in the event service is not possible; and

(C) submitted prior to the mailing of a notice of allowance under  37
CFR 1.311.

Duplicate copies should be submitted only when, after diligent effort,
it has not been possible for petitioner to serve a copy of the petition
on the applicant, or his or her attorney or agent in accordance with  37
CFR 1.248 in which case the Special Program Law Office of the Office of
the Deputy Assistant Commissioner for Patent Policy and Projects will
attempt to get the duplicate copy to the applicant, or his or her
attorney or agent.

Notice of a petition for a public use proceeding will be entered in the
file in lieu of the petition itself when the petition and the
accompanying papers are too bulky to accompany the file. Any public use
papers not physically entered in the file will be publicly available
whenever the application file wrapper is available.

There are two types of public use proceedings: ex parte and inter
partes. It is important to understand the difference. In the ex parte
situation, the petitioner is not entitled, as a matter of right, to
inspect the pending application. Thus, he or she stands in no better
position than any other member of the public regarding access to the
pending application. In the inter partes situation, the pending
application is a reissue application. In the inter partes situation, the
petitioner is privy to the contents of the pending application (37 CFR
1.612). Thus, as pointed out below, the petitioner in the inter partes
situation participates in the public use proceedings to a greater degree
than in the ex parte situation. A petitioner who was once involved in a
terminated interference with a pending application is no longer privy to
the application contents and will accordingly be treated as an ex parte
petitioner. It should be noted that petitions filed on and after
February 11, 1985 will not be allowed in accordance with  37 CFR
1.292(c) unless the petition arises out of an interference declared
prior to February 11, 1985 or the interference was declared after
February 11, 1985 but arose from an interference declared prior to that
date.

Since February 11, 1985, a petition for institution of public use
proceedings cannot be filed by a party to an interference as to an
application involved in the interference. Public use issues can only be
raised by a preliminary motion under  37 CFR 1.633(a). However, if the
issue of public use arises out of an interference declared prior to
February 11, 1985, the petition may be filed by a party to the
interference as to an application involved in the interference.

There may be cases where a public use petition has been filed in an
application which has been restricted or is subject to a proper
restriction requirement. If the petition alleges that subject matter
covering both elected claims and nonelected claims is a statutory bar,
only that part of the petition drawn to subject matter of the elected
claims will be considered. However, if a public use proceeding is
ultimately instituted, it will not necessarily be limited to the subject
matter of the elected claims but may include the nonelected subject
matter. Any evidence adduced on the nonelected subject matter may be
used in any subsequently-filed application claiming subject matter
without the requirement of a new fee (37 CFR 1.17(j)). The petitioner
will not be heard regarding the appropriateness of any restriction
requirement.

A petition under  37 CFR 1.292 must be submitted in writing, must
specifically identify the application to which the petition is directed
by application number or serial number and filing date, and should
include a listing of all affidavits or declarations and exhibits relied
on. The petition must contain a sufficient description of the subject
matter that the petitioner alleges was in "public use" or "on sale,"
including any necessary photographs, drawings, diagrams, exits, or
flowcharts, to enable the examiner to compare the claimed subject matter
to the subject matter alleged to have been in "public use" or "on sale."
In addition, the petition and any accompanying papers must either (A)
reflect that a copy of the same has been served upon the applicant or
upon the applicant's attorney or agent of record; or (B) be filed with
the Office in duplicate in the event service is not possible.

It is important that any petition in a pending application specifically
identify the application to which the petition is directed with the
identification being as complete as possible. The following information,
if known, should be placed on the petition:

(A) Name of Applicant(s).

(B) Application number.

(C) Filing date of application.

(D) Title of invention.

(E) Group art unit number.

(F) Name of examiner to whom the application is assigned.

(G) Current status and location of application.

(H) The word "ATTENTION:" followed by the area of the Office to which
the petition is directed as set forth below.

In addition, to the above information, the petition itself should be
clearly identified as a "PETITION UNDER  37 CFR 1.292." If the petition
is accompanied by exhibits or other attachments, these should also
contain identifying information thereon in order to prevent them from
becoming inadvertently separated and lost.

Any petition under  37 CFR 1.292 can be submitted by mail to the
Assistant Commissioner for Patents, Washington, D.C. 20231, and should
be directed to the attention of the director of the particular examining
group in which the application is pending. If the petitioner is unable
to specifically identify the application to which the petition is
directed, but, nevertheless, believes such an application to be pending,
the petition should be directed to the attention of the Special Program
Law Office of the Office of the Deputy Assistant Commissioner for Patent
Policy and Projects or to "Box DAC," along with as much identifying data
for the application as possible.

Where a petition is directed to a reissue application for a patent which
is involved in litigation, the outside envelope and the top right-hand
portion of the petition should be marked with the words "REISSUE
LITIGATION." The notations preferably should be written in a bright
color with a felt point marker. Any "REISSUE LITIGATION" petition mailed
to the Office should be so marked and mailed to "Box 7." However, in
view of the urgent nature of most "REISSUE LITIGATION" petitions,
petitioners may wish to hand-carry the petition to the appropriate area
in order to ensure prompt receipt and to avoid any unnecessary delays.
In litigation-type cases, all responses should be hand-carried to the
appropriate area in the Office.

Every effort should be made by a petitioner to effect service of the
petition upon the attorney or agent of record or upon the applicant if
no attorney or agent is of record. Of course, the copy served upon
applicant or upon applicant's attorney or agent should be a complete
copy including a copy of each photograph, drawing, diagram, exhibit,
flowchart, or other document relied on. The petition filed in the Office
should reflect, by an appropriate "Certificate of Service," that service
has been made as provided in  37 CFR 1.248. Only in those instances
where service is not possible should the petition be filed in duplicate
in order that the Office can attempt service. In addition, all other
papers filed by the petitioner relating to the petition or subsequent
public use proceeding must be served in accordance with  37 CFR 1.248.

---SECTION---720.01 Preliminary Handling

A petition filed under  37 CFR 1.292 should be forwarded to the Special
Program Law Office of the Office of the Deputy Assistant Commissioner
for Patent Policy and Projects. A member of the Special Program Law
Office's staff will ascertain whether the formal requirements of  37 CFR
1.292 have been fulfilled. In particular, the petition will be reviewed
to see whether the petition has been filed prior to the mailing of a
notice of allowance under  37 CFR 1.311, if the alleged use or sale
occurred in this country more than 1 year before the effective filing
date of the application, whether the petition contains affidavits or
declarations and exhibits to establish the facts alleged, whether the
papers have been filed in duplicate, or one copy has been served on
applicant and whether the required fee has been tendered. The
application file is ordered and its status ascertained so that
appropriate action may be taken.

A petition under  37 CFR 1.292 must be "submitted prior to the mailing
of a notice of allowance under  37 CFR 1.311." As a practical matter,
any petition should be submitted as soon as possible after the
petitioner becomes aware of the existence of the application to which
the petition is to be directed. By submitting a petition early in the
examination process, i.e., before the Office acts on the application if
possible, the petitioner ensures that the petition will receive maximum
consideration and will be of the most benefit to the Office in its
examination of the application.

Since a petition under  37 CFR 1.292 cannot be considered subsequent to
issuance of the application as a patent or abandonment of the
application, the petition will not be considered if the application is
not pending when the petition and application are provided to the member
of the Special Program Law Office's staff (i.e., that the application
was pending at the time the petition was filed would be immaterial to
its ultimate consideration). A petition submitted prior to the mailing
of a notice of allowance under  37 CFR 1.311, but not provided to the
member of the Special Program Law Office's staff with the application
file prior to issuance or abandonment of the application, will be
entered in the application file, but will be dismissed as moot. A
petition filed after final rejection will be considered if the
application is still pending when the petition and application are
provided to the member of the Special Program Law Office's staff.
However, prosecution will not ordinarily be reopened after final
rejection if the subject matter alleged in the petition to have been in
"public use" or "on sale" is merely cumulative of the prior art cited in
the final rejection. If a petition is filed after the mailing of a
notice of allowance under  37 CFR 1.311, it will be dismissed as
untimely.

A petition with regard to a reissue application should be filed within
the 2-month period following announcement of the filing of the reissue
application in the Official Gazette. If, for some reason, the petition
cannot be filed within the 2-month period provided by  37 CFR 1.176, the
petition can be submitted at a later time, but petitioner must be aware
that reissue applications are "special" and a later filed petition may
be received after action by the examiner. Any request by a petitioner in
a reissue application for an extension of the 2-month period following
the announcement in the Official Gazette will be considered only if
filed in the form of a petition under  37 CFR 1.182 and accompanied by
the petition fee set forth in  37 CFR 1.17(h). The petition must explain
why the additional time is necessary and the nature of the allegations
to be made in the petition. A copy of such petition must be served upon
applicant in accordance with  37 CFR 1.248. The petition should be
directed to the appropriate examining group. Any such petition will be
critically reviewed as to demonstrated need before being granted since
the delay of examination of a reissue application of another party is
being requested. Accordingly, the requests should be made only where
necessary, for the minimum period required, and with a justification
establishing the necessity for the extension.

If the petition is a "REISSUE LITIGATION" petition, it is particularly
important that it be filed early if petitioner wishes it considered
prior to the first Office action on the application. Petitioners should
be aware that the Office will entertain petitions under  37 CFR 1.183,
when accompanied by the petition fee set forth in  37 CFR 1.17(h), to
waive the 2-month delay period of  37 CFR 1.176 in appropriate
circumstances. Accordingly, petitioners in reissue applications cannot
automatically assume that the full 2-month delay period of  37 CFR 1.176
will always be available.

In those ex parte situations where a petitioner cannot identify the
pending application by application number, the petition papers will be
forwarded to the appropriate Group Director for an identification
search. Once the application file(s) is located, it should be forwarded
to the Special Program Law Office.

If the petition filed in the Office does not indicate service on
applicant or applicant's attorney or agent, and is not filed in
duplicate, then the Office will undertake to determine whether or not
service has been made by contacting applicant or applicant's attorney or
agent by telephone or in writing to ascertain if service has been made.
If service has not been made and no duplicate has been filed, then the
Office may request petitioner to file such a duplicate before the
petition is referred to the examiner. Alternatively, if the petition
involves only a few pages, the Office may, in its sole discretion, elect
to reproduce the petition rather than delay referring it to the
examiner. If duplicate petition papers are mailed to applicant or
applicant's attorney or agent by the Office, the application file should
reflect that fact, either by a letter transmitting the petition or, if
no transmittal letter is used, simply by an appropriate notation in the
"Contents" section of the application file wrapper.

If the petition is not submitted prior to the mailing of a notice of
allowance under  37 CFR 1.311, it should not be entered in the
application file. The applicant should be notified that the petition is
untimely and that it is not being entered in the application file. The
handling of the petition will vary depending on the particular following
situation.

(A) Service Of Copy Included

Where the petition includes an indication of service of copy on the
applicant, the original petition should be discarded.

(B) Service Of Copy Not Included

Where the petition does not include an indication of service and a
duplicate copy of the petition is or is not present, the duplicate copy
(if present) should be discarded and the original petition should be
sent to the applicant along with the notification of nonentry.

---SECTION---720.02 Examiner Determination of   Prima Facie Showing

Once the Special Program Law Office staff member has determined that the
petition meets the formal requirements of  37 CFR 1.292, and the
application's status warrants consideration of the petition, he or she
will prepare a letter for the Patent Legal Administrator, forwarding the
petition and the application file to the examiner for determination of
whether a prima facie case of public use or sale in this country of the
claimed subject matter is established by the petition. Any other papers
that have been filed by the parties involved, such as a reply by the
applicant or additional submissions by the petitioner, will also be
forwarded to the examiner. Whether additional papers are accepted is
within the discretion of the Special Program Law Office's staff member.
However, protracted paper filing is discouraged since the parties should
endeavor to present their best case as to the prima facie showing at the
earliest possible time. No oral hearings or interviews will be granted
at this stage, and the examiner is cautioned not to answer any inquiries
by the petitioner or applicant.

A prima facie case is established by the petition if the examiner finds
that the facts asserted in the affidavit(s) or declaration(s), as
supported by the exhibits, if later proved true by testimony taken in
the public use proceeding, would result in a statutory bar to the claims
under  35 U.S.C. 102(b) alone or in combination with  35 U.S.C. 103. See
MPEP Section  2133.03 et seq.

To make this determination, the examiner must identify exactly what was
in public use or on sale, whether it was in use or on sale in this
country more than 1 year before the effective filing date, and whether
the pending claims "read" on or are obvious over what has been shown to
be in public use or on sale. On this last point, the examiner should
compare all pending claims with the matter alleged to have been in use
or on sale, not just the claims identified by petitioner.

In situations where the petition alleges only that the claims are
obvious over subject matter asserted to be in public use or on sale, the
petition should include prior art or other information on which it
relies and explain how the prior art or other information in combination
with the subject matter asserted to be in public use or on sale renders
the claims obvious. The examiner is not expected to make a search of the
prior art in evaluating the petition. If, however, the examiner
determines that a   prima facie case of anticipation under  35 U.S.C.
102(b) has not been established but, at the time of evaluating the
petition, the examiner is aware of prior art or other information which,
in his or her opinion, renders the claims obvious over the subject
matter asserted to be in public use or on sale the examiner may
determine that a prima facie case is made out, even if the petition
alleged only that the claims were anticipated under  35 U.S.C. 102(b).

	After having made his/her determination, the examiner will forward a
memorandum to the Patent Legal Administrator, stating his or her
findings and his or her decision as to whether a prima facie case has
been established. The findings should include a summary of the alleged
facts, a comparison of at least one claim with the device alleged to be
in public use or on sale, and any other pertinent facts which will aid
the Patent Legal Administrator in conducting the preliminary hearing.
The report should be prepared in triplicate and addressed to the Patent
Legal Administrator.

---SECTION---720.03 Preliminary Hearing

Where the examiner concludes that a prima facie showing has not been
established, both the petitioner and the applicant are so notified by
the Office of the Deputy Assistant Commissioner for Patent Policy and
Projects and the application proceedings are resumed without giving the
parties an opportunity to be heard on the correctness of the examiner's
decision. Where the examiner concludes that a prima facie case has been
established, the Commissioner may hold a preliminary hearing. In such
case, the parties will be notified by letter of the examiner's
conclusion and of the time and date of the hearing. In ex parte cases,
whether or not the examiner has concluded that a prima facie showing has
been established, no copy of the examiner's memorandum to the Patent
Legal Administrator will be forwarded to the petitioner. However, in
such cases where the petition covers restrictable subject matter and it
is evident that petitioner is not aware of a restriction requirement
which has been or may be made, petitioner will be informed that the
examiner's conclusion is limited to elected subject matter. While not so
specifically captioned, the notification of this hearing amounts to an
order to show cause why a public use proceeding should not be held. No
new evidence is to be introduced or discussed at this hearing. The
format of the hearing is established by the member of the Special
Program Law Office staff, and the Patent Legal Administrator presides.
The examiner may attend as an observer only.

Where the hearing is held in the ex parte situation, great care will be
taken to avoid discussion of any matters of the application file which
are not already of knowledge to petitioner. Of course, applicant may of
his or her own action or consent notify the petitioner of the nature of
his or her claims or other related matters.

After the hearing is concluded, the Patent Legal Administrator will
decide whether public use proceedings are to be initiated, and he/she
will send appropriate notice to the parties.

---SECTION---720.04 Public Use Proceeding Testimony

When the Patent Legal Administrator decides to institute public use
proceedings, the application is referred to the examiner who will
conduct all further proceedings. The fact that the affidavits or
declarations and exhibits presented with the petition for institution of
the public use proceedings have been held to make out a prima facie case
does not mean that the statutory bar has been conclusively established.
The statutory bar can only be established by testimony taken in
accordance with normal rules of evidence, including the right of
cross-examination. The affidavits or declarations are not to be
considered part of the testimony and in no case can they be used as
evidence on behalf of the party submitting them unless the affidavits or
declarations are submitted as a part of the petitioner's testimony.

The procedure for taking testimony in a public use proceeding is similar
to that for taking testimony in an interference. Normally, no
representative of the Commissioner need be present at the taking of the
testimony. Note that  37 CFR 1.672(a) limits noncompelled direct
testimony to affidavits. See  37 CFR 1.601(b) for the meaning of
affidavit.

The examiner will set a schedule of times for taking testimony and for
filing the record and briefs on the basis of the following:

SCHEDULE FOR TESTIMONY

(A) Testimony for petitioner to close . . . . . . . .  [specify a date,
e.g., January 10, 1997, which is approximately 60 days after the letter]

(B) Time for the applicant to file objections to admissibility of
petitioner's evidence to close . . . . . . . [specify a date which is
approximately 20 days after date (A)]

(C) Time for the petitioner to file supplemental evidence to overcome
objections to close 20 days from above date, i.e., . . . . . . . . . . .
. . . . . . . . . . . . . . . . [specify a date which is exactly 20 days
after date (B), unless the date is a Saturday, Sunday or federal
holiday, in which case use the next business day]

(D) Time for the applicant to request cross-examination of the
petitioner's affiants to close . . . . . . . . . [specify a date which
is approximately 20 days after date (C)]

(E) Time for cross-examination of the petitioner's affiants to close . .
. . . . . . . . . . . . . . . . . . . [specify a date which is
approximately 30 days after date (D)]

(F) Rebuttal testimony by applicant to close . . . . . [specify a date
which is approximately 20 days after date (E)]

SCHEDULE FOR FILING AND SERVING COPIES OF RECORD AND BRIEFS

One copy of each of the petitioner's and the applicant's record and
exhibits (see  37 CFR 1.653) is due . . . . [specify a date which is
approximately 30 days after date (F)]

Petitioner's brief is due . . . . . . . . . . . . . . . . . [specify a
date which is approximately 30 days after previous date]

Applicant's brief is due . . . . . . . . . . . . . . . . [specify a date
which is approximately 20 days after previous date]

Applicant and petitioner may agree on a different schedule for
testimony, records, and briefs, provided the last brief is due no later
than the date set forth above and provided a copy of the new schedule is
filed by either applicant or petitioner. No extension of time will be
permitted under  37 CFR 1.136(a). Any petition to extend the time for
filing the last brief must be filed under  37 CFR 1.136(b).

A certified transcript of a deposition must be filed in the Patent and
Trademark Office within one month after the date of deposition.  37 CFR
1.678.

All papers in the public use proceeding shall be served in accordance
with  37 CFR 1.248.

It is understood from the above scheduling of times that a given time
period begins with the close of the previous period, and that the
completion of testimony or the filing of the record or a brief before
the close of the corresponding period does not change its closing date.
To avoid confusion, the examiner should indicate specific dates for the
close of each period.

In ex parte cases and in inter partes cases where the pending
application is a reissue, an oral hearing is ordinarily not held.

In all public use proceedings, whether the ultimate issue is
anticipation under  35 U.S.C. 102(b) or obviousness over  35 U.S.C. 103,
testimony will be limited to the issues of public use or on sale. No
testimony will be received on whether the claimed subject matter would
have been obvious over subject matter asserted to be in public use or on
sale.

---SECTION---720.05 Final Decision

The final decision of the examiner should be "analogous to that rendered
by the [Board of Patent Appeals and Interferences] in an interference
proceeding, analyzing the testimony" and stating conclusions. In re
Townsend, 1913 C.D. 55, 188 O.G. 513 (Comm'r Pat. 1913). In reaching his
or her decision, the examiner is not bound by the prior finding that a 
prima facie case has been established.

If the examiner concludes that a public use or sale bar exists, he or
she will enter a rejection to that effect in the application file,
predicating that rejection on the evidence considered and the findings
and decision reached in the public use proceeding. Even if a rejection
is not made, the examiner's written action should reflect that the
evidence of  35 U.S.C. 102(b) activity has in fact been considered.
Likewise, if the examiner concludes that a prima facie case (A) has not
been established, or (B) has been established and rebutted (MPEP Section
2133.03(e) et seq.) then the examiner's written action should so
indicate. Strict adherence to this format should cause the rationale
employed by the examiner in the written action to be self-evident. In
this regard, the use of reasons for allowance pursuant to  37 CFR
1.104(e) may also be appropriate.  See MPEP Section  1302.14. In ex
parte cases where the petitioner does not have access to the file, no
copy of the examiner's action is mailed to the petitioner by the Office.

There is no review from the final decision of the examiner in the public
use proceedings. A petition under  37 CFR 1.181, requesting that the
Commissioner exercise his or her supervisory authority and vacate the
examiner's decision, will not be entertained except where there is a
showing of clear error. See Ex parte Hartley, 1908 C.D. 224, 136 O.G.
1767 (Comm'r Pat. 1908). Once the application returns to its ex parte
status, appellate review under  35 U.S.C. 134 and 141-145 may be had of
any adverse decision rejecting claim(s), as a result of the examiner's
decisions as to public use or sale.

---SECTION---724 Trade Secret, Proprietary, and Protective Order
Materials

Situations arise in which it becomes necessary, or desirable, for
parties to proceedings in the Patent and Trademark Office relating to
pending patent applications or reexamination proceedings to submit to
the Office trade secret, proprietary, and/or protective order materials.
Such materials may include those which are subject to a protective or
secrecy order issued by a court or by the International Trade Commission
(ITC). While one submitting materials to the Office in relation to a
pending patent application or reexamination proceeding must generally
assume that such materials will be made of record in the file and be
made public, the Office is not unmindful of the difficulties this
sometimes imposes. The Office is also cognizant of the sentiment
expressed by the court in In re Sarkar, 575 F.2d 870, 872, 197 USPQ 788,
791 (CCPA 1978), which stated:

[T]hat wherever possible, trade secret law and patent laws should be
administered in such manner that the former will not deter an inventor
from seeking the benefit of the latter, because, the public is most
benefited by the early disclosure of the invention in consideration of
the patent grant. If a patent applicant is unwilling to pursue his right
to a patent at the risk of certain loss of trade secret protection, the
two systems will conflict, the public will be deprived of knowledge of
the invention in many cases, and inventors will be reluctant to bring
unsettled legal questions of significant current interest . . . for
resolution.

Parties bringing information to the attention of the Office for use in
the examination of applications and reexaminations are frequently faced
with the prospect of having legitimate trade secret, proprietary, or
protective order material disclosed to the public.

Inventors and others covered by  37 CFR 1.56(c) and 1.555 have a duty to
disclose to the Office information they are aware of which is material
to patentability.  37 CFR 1.56(b) states that

information is material to patentability when it is not cumulative to
information already of record or being made of record in the
application, and

   (1) It establishes, by itself or in combination with other
information, a prima facie case of unpatentability of a claim; or

   (2) It refutes, or is inconsistent with, a position the applicant
takes in:

   (i)	Opposing an argument of unpatentability relied on by the Office,
or

   (ii)	Asserting an argument of patentability.

   A prima facie case of unpatentability is established when the
information compels a conclusion that a claim is unpatentable under the
preponderance of evidence, burden-of-proof standard, giving each term in
the claim its broadest reasonable construction consistent with the
specification, and before any consideration is given to evidence which
may be submitted in an attempt to establish a contrary conclusion of
patentability.

It is incumbent upon patent applicants, therefore, to bring "material"
information to the attention of the Office. It matters not whether the
"material" information can be classified as a trade secret, or as
proprietary material, or whether it is subject to a protective order.
The obligation is the same; it must be disclosed if "material to
patentability" as defined in  37 CFR 1.56(b). The same duty rests upon a
patent owner under  37 CFR 1.555 whose patent is undergoing
reexamination.

Somewhat the same problem faces a protestor under  37 CFR 1.291(a) who
believes that trade secret, proprietary, or protective order material
should be considered by the Office during the examination of an
application.

	In some circumstances, it may be possible to submit the information in
such a manner that legitimate trade secrets, etc., will not be
disclosed, e.g., by appropriate deletions of nonmaterial portions of the
information. This should be done only where there will be no loss of
information material to patentability under  37 CFR 1.56 or 1.555.

The provisions of this section do not relate to material appearing in
the description of the patent application.

---SECTION---724.01 Completeness of the Patent File Wrapper

It is the intent of the Office that the patent file wrapper be as
complete as possible insofar as "material" information is concerned. The
Office attempts to minimize the potential conflict between full
disclosure of "material" information as required by  37 CFR 1.56 and
protection of trade secret, proprietary, and protective order material
to the extent possible.

The procedures set forth in the following sections are designed to
enable the Office to ensure as complete a patent file wrapper as
possible while preventing unnecessary public disclosure of trade
secrets, proprietary material, and protective order material.

---SECTION---724.02 Method of Submitting Trade Secret, Proprietary,
and/or Protective Order Materials

Information which is considered by the party submitting the same to be
either trade secret material or proprietary material, and any material
subject to a protective order, must be clearly labeled as such and be
filed in a sealed, clearly labeled, envelope or container. Each document
or item must be clearly labeled as a "Trade Secret" document or item, a
"Proprietary" document or item, or as an item or document "Subject To
Protective Order." It is essential that the terms "Confidential,"
"Secret," and "Restricted" or "Restricted Data" not be used when marking
these documents or items in order to avoid confusion with national
security information documents which are marked with these terms (note
also MPEP Section  121). If the item or document is "Subject to
Protective Order" the proceeding, including the tribunal, must be set
forth on each document or item. Of course, the envelope or container, as
well as each of the documents or items, must be labeled with complete
identifying information for the file to which it is directed, including
the Office or area to which the envelope or container is directed.

Examples of appropriate labels for such an envelope or container
addressed to an application are as follows: (Appropriate changes would
be made for papers filed in a reexamination file.)

A. "TRADE SECRET MATERIAL NOT OPEN TO PUBLIC. TO BE OPENED ONLY BY
EXAMINER OR OTHER AUTHORIZED PATENT AND TRADEMARK OFFICE EMPLOYEE.

In re Application of

Application No.

Filed:

For: (Title of Invention)

Group Art Unit:

Examiner:

ATTENTION: (Current Location of Application)"

B. "PROPRIETARY MATERIAL NOT OPEN TO PUBLIC. TO BE OPENED ONLY BY
EXAMINER OR OTHER AUTHORIZED PATENT AND TRADEMARK OFFICE EMPLOYEE.

In re Application of

Application No.

Filed:

For: (Title of Invention)

Examiner:

ATTENTION: (Current Location of Application)"

C. "MATERIAL SUBJECT TO PROTECTIVE ORDER - NOT OPEN TO PUBLIC. TO BE
OPENED ONLY BY EXAMINER OR OTHER AUTHORIZED PATENT AND TRADEMARK OFFICE
EMPLOYEE.

Tribunal Issuing Protective Order:

Civil Action or Other Identification No.:

Date of Order:

Current Status of Proceeding: (Pending, Stayed, etc.)

In re application of:

Application No.

Filed:

For: (Title of Invention)

Group Art Unit:

Examiner:

ATTENTION: (Current Location of Application)"

The envelope or container must be accompanied by a transmittal letter
which also contains the same identifying information as the envelope or
container. The transmittal letter must also state that the materials in
the envelope or container are considered trade secrets or proprietary,
or are subject to a protective order, and are being submitted for
consideration under MPEP Section  724. A petition under  37 CFR 1.59 and
fee therefor (37 CFR 1.17(i)) to expunge the information, if found   not
to be important to a reasonable examiner in deciding whether to allow
the application to issue as a patent, may also accompany the envelope or
container.

In order to ensure that such an envelope or container is not mishandled,
either prior to reaching the Office, or in the Office, the envelope or
container should preferably be hand-carried to the particular area to
which it is directed and in which the application or reexamination is
pending at that time. If the proceeding is then pending in an examining
group, the envelope or container should be hand-carried to the office of
the Director of the examining group. The Office personnel receiving the
envelope or container should be informed that it contains such material.
If the envelope or container cannot be hand-carried to the office, it
can be mailed to the Patent and Trademark Office in the normal manner,
but that method of submission is not as desirable as hand-carrying the
envelope or container to the Office or area involved.

---SECTION---724.03 Types of Trade Secret, Proprietary,  and/or
Protective Order Materials Submitted Under MPEP Section  724.02

The types of materials or information contemplated for submission under
MPEP Section  724.02 include information "material to patentability" but
does not include information favorable to patentability. Thus, any trade
secret, proprietary, and/ or protective order materials which are
required to be submitted on behalf of a patent applicant under  37 CFR
1.56 or patent owner under  37 CFR 1.555 can be submitted in accordance
with MPEP Section  724.02. Neither  37 CFR 1.56 nor 1.555 require the
disclosure of information favorable to patentability, e.g., evidence of
commercial success of the invention (see 42 Fed. Reg. 5590). Such
information should not be submitted in accordance with MPEP Section
724.02. If any trade secret, proprietary, and/or protective order
materials are submitted in amendments, arguments in favor of
patentability, or affidavits under  37 CFR 1.131 or 1.132, they will be
made of record in the file and will not be given any special status.

Insofar as protestors under  37 CFR 1.291(a) are concerned, submissions
can be made in accordance with MPEP Section  724.02 if protestor or
petitioner has access to the application involved. In such cases, of
course, the requirements for service must be followed. The Office cannot
ensure that the party or parties served will maintain the information
secret. If the party or parties served find it necessary or desirable to
comment on material submitted under MPEP Section  724 before it is, or
without its being, found "material to patentability," such comments
should either (A) not disclose the details of the material or (B) be
submitted in a separate paper under MPEP Section  724.02.

---SECTION---724.04 Office Treatment and Handling of Materials Submitted
Under   MPEP Section  724.02

The exact methods of treating and handling materials submitted under
MPEP Section  724.02 will differ slightly depending upon whether the
materials are submitted in an original application subject to the
requirements of  35 U.S.C. 122 or whether the submission is made in a
reissue application or reexamination file open to the public under  37
CFR 1.11(b) or (d). In any event, Office personnel must not disclose
such materials to the public without authorization. Upon receipt of the
submission, the transmittal letter and the envelope or container will be
date stamped and brought to the attention of the examiner or other
Office employee responsible for evaluating the submission. The receipt
of the transmittal letter and envelope or container will be noted on the
"Contents" of the application or reexamination file. In addition, the
face of the application or reexamination file will have the notation
placed thereon to indicate that trade secret, proprietary, or protective
order material has been filed. The location of the material will also be
specified. The words "TRADE SECRET MATERIALS FILED WHICH ARE NOT OPEN TO
PUBLIC" on the face of the file are sufficient to indicate the presence
of trade secret material. Similar notations will be made for either
proprietary or protective order materials.

---SECTION---724.04(a) Materials Submitted in an Application Covered by
35 U.S.C. 122

Any materials submitted under MPEP Section  724.02 in an application
covered by  35 U.S.C. 122 will be treated in the following manner:

(A) The examiner, or other appropriate Office official who is
responsible for considering the information, will make a determination
as to whether or not any portion or all of the information submitted is
important to a reasonable examiner in deciding whether to allow the
application to issue as a patent.

(B) If any portion or all of the submitted information is found
important to a reasonable examiner in deciding whether to allow the
application to issue as a patent, it will be cited in the next Office
action, or other appropriate Office communication and will become a part
of the file history, which upon issuance of the application as a patent
would become available to the public.

(C) If any portion or all of the submitted information is found not to
be important to a reasonable examiner in deciding whether to allow the
application to issue as a patent, the next Office action or other
appropriate Office communication will so indicate without including the
details of the submitted information.

(D) If any portion or all of the submitted information is found not to
be important to a reasonable examiner in deciding whether to allow the
application to issue as a patent, that information will be resealed in
its envelope or container and retained pending the possible filing of a
petition to expunge the information.

(E) Any petition to expunge the submitted information or any portion
thereof under  37 CFR 1.59(b) will be treated in accordance with MPEP
Section  724.05.

---SECTION---724.04(b) Materials Submitted in Reissue Applications Open
to the Public Under 37 CFR 1.11(b)

Any materials submitted under MPEP Section  724.02 in a reissue
application open to the public under  37 CFR 1.11(b) will be treated in
the following manner:

(A) The submitted information will be maintained separate from the
reissue application file and will not be publicly available until a
determination has been made as to whether or not the information is
important to a reasonable examiner in deciding whether to allow the
application to issue as a patent.

(B) The examiner, or other appropriate Office official who is
responsible for considering the information, will make a determination
as to whether or not any portion or all of the information submitted is
important to a reasonable examiner in deciding whether to allow the
application to issue as a patent.

(C) If any portion or all of the submitted information is found
important to a reasonable examiner in deciding whether to allow the
application to issue as a patent, it will be cited in the next Office
action or other appropriate Office communication and will thereafter
become a permanent part of the reissue application file and open to the
public.

(D) If any portion or all of the submitted information is found not to
be important to a reasonable examiner in deciding whether to allow the
application to issue as a patent, the next Office action or other
appropriate Office communication will so indicate without including in
the communication the details of the submitted information.

(E) If any portion or all of the submitted information is found not to
be important to a reasonable examiner in deciding whether to allow the
application to issue as a patent, that information will be resealed in
its envelope or container and retained separate from the application
file, and unavailable to the public, pending the possible filing of a
petition to expunge the information.

(F) Pending the filing of the petition to expunge the sealed envelope or
container should be clearly marked "Not Open To The Public" and Office
personnel will not make such envelope or container available to any
member of the public inspecting the reissue application file.

(G) Any petition to expunge a portion or all of the submitted
information will be treated in accordance with MPEP Section  724.05.

---SECTION---724.04(c) Materials Submitted in Reexamination File Open to
the Public Under 37 CFR 1.11(d)

Any materials submitted under MPEP Section  724.02 in a reexamination
file open to the public under  37 CFR 1.11(d) will be treated in the
following manner:

(A) The submitted information will be maintained separate from the
reexamination file and will not be publicly available until a
determination has been made as to whether or not the information is
important to a reasonable examiner in deciding whether or not a claim is
patentable.

(B) The examiner, or other appropriate Office official who is
responsible for considering the information, will make a determination
as to whether or not any portion or all of the information submitted is
important to a reasonable examiner in deciding whether or not a claim is
patentable.

(C) If any portion or all of the submitted information is found
important to a reasonable examiner in deciding whether or not a claim is
patentable, it will be cited in the next Office action or other
appropriate Office communication and will thereafter become a permanent
part of the reexamination file and open to the public.

(D) If any portion or all of the submitted information is found not to
be important to a reasonable examiner in deciding whether or not a claim
is patentable, the next Office action or other appropriate Office
communication will so indicate without including in the communication
the details of the submitted information.

(E) If any portion or all of the submitted information is found not to
be important to a reasonable examiner in deciding whether or not a claim
is patentable, that information will be resealed in its envelope or
container and retained separate from the reexamination file, and
unavailable to the public, pending the possible filing of a petition to
expunge the information.

(F) Pending the filing of the petition to expunge the sealed envelope or
container should be clearly marked "Not Open To The Public" and Office
personnel will not make such envelope or container available to any
member of the public inspecting the reexamination file.

(G) Any petition to expunge a portion or all of the submitted
information under  37 CFR 1.59(b) will be treated in accordance with
MPEP Section  724.05.

---SECTION---724.05 Petition To Expunge Information or Copy of Papers in
Application File

I. INFORMATION SUBMITTED UNDER MPEP Section  724.02

A petition under  37 CFR 1.59(b) to expunge information submitted under
MPEP Section  724.02 will be entertained only if the petition fee (37
CFR 1.17(i)) is filed and the information has been found not to be
important to a reasonable examiner in deciding on patentability. If the
information is found to be important to a reasonable examiner in
deciding on patentability, any petition to expunge the information will
be denied. Any such petition to expunge information submitted under MPEP
Section  724.02 should be directed to the examining group to which the
application is assigned. Such petition must contain:

(A) a clear identification of the information to be expunged without
disclosure of the details thereof;

(B) a clear statement that the information to be expunged is trade
secret material, proprietary material, and/or subject to a protective
order, and that the information has not been otherwise made public;

(C) a commitment on the part of the petitioner to retain such
information for the period of any patent with regard to which such
information is submitted;

(D) a statement that the petition to expunge is being submitted by, or
on behalf of, the party in interest who originally submitted the
information;

(E) the fee as set forth in  37 CFR 1.17(i) for a petition under  37 CFR
1.59.

Any such petition to expunge may accompany the submission of the
information and, in any event, must be submitted in sufficient time that
it can be acted on prior to the date on which the patent or
reexamination certificate issues. Timely submission of the petition is,
accordingly, extremely important. If the petition does not accompany the
information when it is initially submitted, the petition should be
submitted while the application or reexamination is pending in the
examining group and before it is transmitted to the Publishing Division.
If, for any reason, a decision to expunge cannot be, or is not, made
prior to the date on which the patent or reexamination certificate
issues, any material then in the file will remain therein and be open to
the public. Accordingly, it is important that both the submission of any
material under MPEP Section  724.02 and the submission of any petition
to expunge occur as early as possible during the examination process.
The decision will be held in abeyance and be decided upon the close of
prosecution on the merits.

II. INFORMATION UNINTENTIONALLY SUBMITTED IN APPLICATION

A petition to expunge information unintentionally submitted in an
application (other than information forming part of the original
disclosure) may be filed under  37 CFR 1.59(b), provided that:

(A) the Office can effect such return prior to the issuance of any
patent on the application in issue;

(B) it is stated that the information submitted was unintentionally
submitted and the failure to obtain its return would cause irreparable
harm to the party who submitted the information or to the party in
interest on whose behalf the information was submitted;

(C) the information has not otherwise been made public;

(D) there is a commitment on the part of the petitioner to retain such
information for the period of any patent with regard to which such
information is submitted;

(E) it is established to the satisfaction of the Commissioner that the
information to be returned is not material information under  37 CFR
1.56; and

(F) the petition fee as set forth in  37 CFR 1.17(i) is included.

A request to return information that has not been clearly identified as
information that may be later subject to such a request by marking and
placement in a separate sealed envelope or container shall be treated on
a case-by-case basis.  Applicants should note that unidentified
information that is a trade secret, proprietary, or subject to a
protective order that is submitted in an Information Disclosure
Statement may inadvertently be placed in an Office prior art search file
by the examiner due to the lack of such identification and may not be
retrievable.

III. INFORMATION SUBMITTED IN INCORRECT APPLICATION

37 CFR 1.59(b) also covers the situation where an unintended heading has
been placed on papers so that they are present in an incorrect
application file. In such a situation, a petition should request return
of the papers rather than transfer of the papers to the correct
application file. The grant of such a petition will be governed by the
factors enumerated in paragraph II of this section in regard to the
unintentional submission of information. Where the Office can determine
the correct application file that the papers were actually intended for,
based on identifying information in the heading of the papers (e.g.,
application number, filing date, title of invention and inventor(s)
name(s)), the Office will transfer the papers to the correct application
file for which they were intended without the need of a petition.

IV. INFORMATION FORMING PART OF THE ORIGINAL DISCLOSURE

A petition to expunge a part of the original disclosure must be filed
under  37 CFR 1.183, since such a request requires a waiver of the
requirements of  37 CFR 1.59(a).  Petitions under  37 CFR 1.183 should
be directed to the Office of Petitions.  The petition must explain why
justice requires waiver of the rules to permit the requested material to
be expunged.  It should be noted that petitions to expunge information
which is a part of the original disclosure, such as the specification
and drawings, will ordinarily not be favorably entertained. The original
disclosures of applications are scanned for record keeping purposes.
Accordingly, the grant of a petition to expunge information which is
part of the original disclosure would require that the PTO record of the
originally filed application be changed, which may not be possible.

---SECTION---724.06 Examiner Handling of Petitions to Expunge
Information or Copy of Papers in Application File

37 CFR 1.59 Expungement of information or copy of papers in application
file.

(a)(1) Information in an application will not be expunged and returned,
except as provided in paragraph (b) of this section.  See Section  1.618
for return of unauthorized and improper papers in interferences.

(2) Information forming part of the original disclosure (i.e., written
specification including the claims, drawings, and any preliminary
amendment specifically incorporated into an executed oath or declaration
under Section Section  1.63 and 1.175) will not be expunged from the
application file.

(b) Information, other than what is excluded by paragraph (a)(2) of this
section, may be requested to be expunged and returned to applicant upon
petition under this paragraph and payment of the petition fee set forth
in Section  1.17(i). Any petition to expunge and return information from
an application must establish to the satisfaction of the Commissioner
that the return of the information is appropriate.

                  +++   

37 CFR 1.59 provides that information, other than the original
disclosure of the application, may be expunged from the file wrapper
provided a petition to expunge under  37 CFR 1.59(b) and the required
fee set forth in  37 CFR 1.17(i) are filed, and further that petitioner
has established to the satisfaction of the Commissioner that the return
of the information is appropriate.  Return of information that was
originally submitted to the Office under MPEP Section  724.02 is
appropriate when the petitioner complies with items (A)-(E) set forth in
MPEP Section  724.05, paragraph I, and the examiner or other appropriate
Office official who is responsible for considering the information has
determined that the information is not important to a reasonable
examiner in deciding whether to allow the application (i.e., the
information is not material to patentability). Return of information
that was inadvertently submitted to the Office is appropriate provided
that items (A)-(F) set forth in MPEP Section  724.05, paragraph II, are
satisfied. See also MPEP Section  724.

Where the information to be expunged was not submitted pursuant to MPEP
Section  724.02 or as part of an Information Disclosure Statement, the
petition should be sent to the Office of Petitions for decision.

If the application has not been allowed or abandoned or an Ex parte
Quayle action has not been mailed, then the decision on the petition to
expunge should be held in abeyance until the close of prosecution on the
merits, at which time the petition will be decided. However, where it is
clear that the information was submitted in the wrong application, then
the decision on the petition should not be held in abeyance.  See MPEP
Section  724.05, paragraph III.  In a pending application that has not
been allowed or in which an Ex parte Quayle action has not been mailed,
the examiner may not have finally considered what is material to a
decision of patentability of the claims.  Petitioner may be notified
that the decision on the petition under  37 CFR 1.59(b) to expunge
information in an application will be held in abeyance and be decided
upon the close of prosecution on the merits using form paragraph 7.204.

7.204 Petition Under 37 CFR 1.59(b) To Expunge Information: Decision
Held in Abeyance

Paper No. [1]

In re Application of [2]:

Appl. No.: [3] :  RESPONSE TO PETITION

Filed:   [4]  :  UNDER  37 CFR 1.59

For:   [5]:

This is a response to the petition under  37 CFR 1.59(b), filed [6], to
expunge information from the above identified application.

The decision on the petition will be held in abeyance until prosecution
on the merits is closed, at which time the petition will be decided.

Petitioner requests that a document entitled [7], filed [8], be expunged
from the record.  Petitioner states either: (A) that the information
contains trade secret material, proprietary material and/or material
that is subject to a protective order which has not been made public; or
(B) that the information submitted was unintentionally submitted and the
failure to obtain its return would cause irreparable harm to the party
who submitted the information or to the party in interest on whose
behalf the information was submitted, and the information has not
otherwise been made public.  The petition fee set forth in  37 CFR
1.17(i) has been paid.

The decision on the petition is held in abeyance because prosecution on
the merits is not closed.  Accordingly, it is not appropriate to make a
final determination of whether or not the material requested to be
expunged is "material," with "materiality" being defined as any
information which the examiner considers as being important to a
determination of patentability of the claims.  Thus, the decision on the
petition to expunge must be held in abeyance at this time.

During prosecution on the merits, the examiner will determine whether or
not the identified document is considered to be "material."  If the
information is not considered by the examiner to be material, the
information will be returned to applicant.

Examiner Note:

1. An examiner may not decide the petition if:

(a) the information is part of the original disclosure.  Information
which is part of the original disclosure (specification including any
claims, drawings and any preliminary amendment referred to in the oath
or declaration) cannot be expunged under  37 CFR 1.59;

(b) the petition is also accompanied by a petition under  37 CFR 1.183
requesting waiver of one of the requirements explicitly set forth in  37
CFR 1.59 (e.g., requesting expungement of part of the original
disclosure); or

(c) the information to be expunged was not submitted pursuant to MPEP
Section  724.02 or as part of an Information Disclosure Statement, e.g.,
arguments made in an amendment.

Petitions falling within (a) - (c) should be sent to the Office of
Petitions for decision.

2. This communication is printed with the PTO letterhead.

3. In bracket 7, clearly identify the document which petitioner requests
to expunge.  For example, refer to the author and title of the document.

When an application has been allowed, an Ex parte Quayle action has been
mailed, or an application is abandoned, a petition to expunge should be
treated by a primary examiner and the examiner should consider whether
the information in question is material.  Form paragraph 7.205 should be
used to grant a petition to expunge, whereas form paragraphs 7.206 -
7.213 should be used to dismiss such a petition.

7.205 Petition Under 37 CFR 1.59(b) To Expunge Information Granted

Paper No. [1]

In re Application of   [2]:

Appl. No.: [3]: DECISION ON PETITION

Filed:   [4]: UNDER  37 CFR 1.59

For:   [5]:

This is a decision on the petition under  37 CFR 1.59(b), filed [6], to
expunge information from the above identified application.

The petition is granted.

Petitioner requests that a document entitled [7], filed [8], be expunged
from the record.  Petitioner states that either (A) that the information
contains trade secret material, proprietary material and/or material
that is subject to a protective order which has not been made public; or
(B) that the information submitted was unintentionally submitted and the
failure to obtain its return would cause irreparable harm to the party
who submitted the information or to the party in interest on whose
behalf the information was submitted, and the information has not
otherwise been made public.  The petition fee set forth in  37 CFR
1.17(i) has been paid.

The information in question has been determined by the undersigned to
not be material to the examination of the instant application.

Applicant is required to retain the expunged material(s) for the life of
any patent which issues on the above-identified application.

The expunged material is returned herewith.

Enclosure:   [9]

Examiner Note:

1. A petition to expunge generally should not be granted unless the
application has been allowed or is abandoned, or an Ex parte Quayle
action has been mailed.  See MPEP Section  724.05.

2. An examiner may not decide the petition if:

(a) the information is part of the original disclosure.  Information
which is part of the original disclosure (specification including any
claims, drawings and any preliminary amendment referred to in the oath
or declaration) cannot be expunged under  37 CFR 1.59;

(b) the petition is also accompanied by a petition under  37 CFR 1.183
requesting waiver of one of the requirements explicitly set forth in  37
CFR 1.59 (e.g., requesting expungement of part of the original
disclosure); or

(c) the information to be expunged was not submitted pursuant to MPEP
Section  724.02 or as part of an Information Disclosure Statement, e.g.,
arguments made in an amendment.

Petitions falling within (a) - (c) should be sent to the Office of
Petitions for decision.

3. This communication is printed with the PTO letterhead.

4. In brackets 7 and 9, clearly identify the expunged document.  For
example, refer to the author and title of the document.

7.206 Petition Under 37 CFR 1.59(b) To Expunge Information Dismissed

Paper No. [1]

In re Application of   [2]:

Appl. No.: [3]: DECISION ON PETITION

Filed: [4]: UNDER  37  CFR 1.59

For: [5]:

This is a decision on the petition under  37 CFR 1.59(b), filed [6], to
expunge information from the above identified application.

The petition is dismissed.

Petitioner requests that a document entitled [7], filed [8], be expunged
from the record.

"Materiality" is defined as any information which the examiner considers
as being important to a determination of patentability of the claims.

The petition is deficient because:

Examiner Note:

1. A petition to expunge generally should not be granted unless the
application has been allowed or is abandoned, or an Ex parte Quayle
action has been mailed.  See MPEP Section  724.05.

2. An examiner may not decide the petition if:

(a) the information is part of the original disclosure.  Information
which is part of the original disclosure (specification including any
claims, drawings and any preliminary amendment referred to in the oath
or declaration) cannot be expunged under  37 CFR 1.59;

(b) the petition is also accompanied by a petition under  37 CFR 1.183
requesting waiver of one of the requirements explicitly set forth in  37
CFR 1.59 (e.g., requesting expungement of part of the original
disclosure); or

(c) the information to be expunged was not submitted pursuant to MPEP
Section  724.02 or as part of an Information Disclosure Statement, e.g.,
arguments made in an amendment.

Petitions falling within (a) - (c) should be sent to the Office of
Petitions for decision.

3. This communication is printed with the PTO letterhead.

4. In bracket 7, clearly identify the document which petitioner requests
to expunge.  For example, refer to the author and title of the document.

5. This form paragraph must be followed with one or more of form
paragraphs 7.207-7.213.

7.207 Petition To Expunge, Conclusion, Lacks Fee

the petition was not accompanied by the required fee under 37
CFR1.17(i).

7.208 Petition to Expunge, Conclusion, Material to Determination of
Patentability

the information that petitioner requests to expunge is considered to be
material to the determination of patentability because [1].

Examiner Note:

In bracket 1, provide an explanation of basis for conclusion that
information is material to the determination of patentability.

7.209 Petition To Expunge, Conclusion, Information Made Public

the information has been made public.  [1]

Examiner Note:

In bracket 1, provide explanation of basis for conclusion that
information has been made public.

7.210 Petition to Expunge, Conclusion, No Commitment to Retain
Information

the petition does not contain a commitment on the part of petitioner to
retain the information to be expunged for the period of any patent with
regard to which such information is submitted.

7.211 Petition to Expunge, Conclusion, No Clear Statement That
Information is Trade Secret, Proprietary, and/or Subject to Protective
Order, or that Submission Was Unintentional

the petition does not contain a clear statement that the information
requested to be expunged is either: (1) a trade secret, proprietary,
and/or subject to a protective order; or (2) was unintentionally
submitted and failure to obtain its return would cause irreparable harm
to the party who submitted the information or to the party in interest
on whose behalf the information was submitted.   [1]

Examiner Note:

In bracket 1, indicate whether any such statement was provided and, if
so, explain why such statement is not clear.

7.212 Petition to Expunge, Conclusion, No Clear Identification of
Information to be Expunged

the petition does not clearly identify the information requested to be
expunged.   [1]

Examiner Note:

In bracket 1, explain why the identification of the information
requested to be expunged is not clear.

7.213 Petition to Expunge, Conclusion, No Statement That Petition Is
Submitted By, or on Behalf of, Party in Interest Who Originally
Submitted the Information

the petition does not contain a statement that the petition is being
submitted by, or on behalf of, the party in interest who originally
submitted the information.

