Chapter   1900  Protest
---SECTION---1901 Protest Under 37 CFR 1.291

37 CFR 1.291 Protests by the public against pending applications.

(a) Protests by a member of the public against pending applications will
be referred to the examiner having charge of the subject matter
involved.  A protest specifically identifying the application to which
the protest is directed will be entered in the application file if:

(1) The protest is submitted prior to the mailing of a notice of
allowance under Section  1.311; and

(2) The protest is either served upon the applicant in accordance with
Section  1.248, or filed with the Office in duplicate in the event
service is not possible.

(b) Protests raising fraud or other inequitable conduct issues will be
entered in the application file, generally without comment on those
issues. Protests which do not adequately identify a pending patent
application will be returned to the protestor and will not be further
considered by the Office.  A protest submitted in accordance with the
second sentence of paragraph (a) of this section will be considered by
the Office if the application is still pending when the protest and
application file are brought before the examiner and it includes:

(1) A listing of the patents, publications, or other information relied
upon;

(2) A concise explanation of the relevance of each listed item;

(3) A copy of each listed patent or publication or other item of
information in written form or at least the pertinent portions thereof;
and

(4) An English language translation of all the necessary and pertinent
parts of any non-English language patent, publication, or other item of
information in written form relied upon.

(c) A member of the public filing a protest in an application under
paragraph (a) of this section will not receive any communications from
the Office relating to the protest, other than the return of a
self-addressed postcard which the member of the public may include with
the protest in order to receive an acknowledgment by the Office that the
protest has been received.  In the absence of a request by the Office,
an applicant has no duty to, and need not, reply to a protest. The
limited involvement of the member of the public filing a protest
pursuant to paragraph (a) of this section ends with the filing of the
protest, and no further submission on behalf of the protestor will be
considered, except for additional prior art, or unless such submission
raises new issues which could not have been earlier presented.

37 CFR 1.248 Service of papers; manner of service; proof of service;
proof of service in cases other than interferences.

(a) Service of papers must be on the attorney or agent of the party if
there be such or on the party if there is no attorney or agent, and may
be made in any of the following ways:

(1) By delivering a copy of the paper to the person served;

(2) By leaving a copy at the usual place of business of the person
served with someone in his employment;

(3) When the person served has no usual place of business, by leaving a
copy at the person's residence, with some person of suitable age and
discretion who resides there;

(4) Transmissions by first class mail. When service is by mail the date
of mailing will be regarded as the date of service.

(5) Whenever it shall be satisfactorily shown to the Commissioner that
none of the above modes of obtaining or serving the paper is
practicable, service may be by notice published in the Official Gazette.

(b) Papers filed in the Patent and Trademark Office which are required
to be served shall contain proof of service. Proof of service may appear
on or be affixed to papers filed. Proof of service shall include the
date and manner of service. In the case of personal service, proof of
service shall also include the name of any person served, certified by
the person who made service. Proof of service may be made by: (1) An
acknowledgement of service by or on behalf of the person served or (2) A
statement signed by the attorney or agent containing the information
required by this section.

(c) See Section  1.646 for service of papers in interferences.

The degree of participation allowed a protestor is solely within the
discretion of the Commissioner of Patents and Trademarks. Any protest
against a pending application which is filed after December 8, 1981 will
be treated in accordance with the procedures set forth in this Chapter.
Any protest filed on or before December 8, 1981, including related
protestor participation, will be handled in accordance with practices in
effect prior to December 8, 1981.  Any such participation rights, in an
application where the protest was filed on or before December 8, 1981,
are limited to that application and do not carry forward to any
continuing application. Any protest filed in a continuing application is
treated as a new protest and will be governed by the procedures in
effect at the time said new protest is filed.

37 CFR 1.291(a) gives recognition to the value of written protests in
bringing information to the attention of the Office and in avoiding the
issuance of invalid patents.  37 CFR 1.291(a) provides that public
protests against pending applications will be referred to the examiner
having charge of the subject matter involved and will, if submitted
prior to the mailing of a notice of allowance under  37 CFR 1.311 and
either served upon the applicant or filed in duplicate in the event
service is not possible, be entered in the application file. Paragraph
(b) of  37 CFR 1.291 assures members of the public that a protest will
be fully considered by the Office if the protest is submitted in
accordance with  37 CFR 1.291(a), the application is still pending when
the protest and application file are brought before the examiner, and
the protest includes: 

(A) a listing of the patents, publications, or other information relied
on;

(B) a concise explanation of the relevance of each listed item;

(C) a copy of each listed patent, publication, or other item of
information in written form, or at least the pertinent portions thereof;
and

(D) an English language translation of all necessary and pertinent parts
of any non-English language document relied on.

A party obtaining knowledge of an application pending in the Office may
file a protest against the application and may therein call attention to
any facts within protestor's knowledge which, in protestor's opinion,
would make the grant of a patent thereon improper.

A protestor does not, however, by the mere filing of a protest, obtain
the "right" to argue the protest before the Office.  Active
participation by a protestor "ends with the filing of the protest, and
no further submission on behalf of the protestor will be considered,
except for additional prior art, or unless such submission raises new
issues which could not have been earlier presented." 37 CFR 1.291(c).
The PTO will acknowledge the receipt of a protest in an original or a
reissue application file only if a self-addressed postcard is included
with the protest (see MPEP Section  1901.05).  The question of whether
or not a patent will issue is a matter between the applicant and the
Office acting on behalf of the public.

---SECTION---1901.01 Who Can Protest 

Any member of the public, including private persons, corporate entities,
and government agencies, may file a protest under  37 CFR 1.291.  A
protest may be filed by an attorney or other representative on behalf of
an unnamed principal since  37 CFR 1.291 does not require that the
principal be identified.

---SECTION---1901.02 Information Which Can Be Relied on in Protest

Any information which, in the protestor's opinion, would make the grant
of a patent improper can be relied on in a protest under  37 CFR
1.291(a).  While prior art documents, such as patents and publications,
are most often the subject of protests,  37 CFR 1.291(a) is not limited
to prior art documents. Protests may be based on any facts or
information adverse to patentability. The content and substance of the
protest are more important than whether prior art documents, or some
other form of evidence adverse to patentability, are being relied on. 
The Office recognizes that when evidence other than prior art documents
is relied on, problems may arise as to authentication and the probative
value to assign to such evidence. However, the fact that such problems
may arise, and have to be resolved, does not preclude the Office from
considering such evidence, nor does it mean that such evidence cannot be
relied on in a protest under  37 CFR 1.291. Information in a protest
should be set forth in the manner required by  37 CFR 1.291(b).

The following are examples of the kinds of information, in addition to
prior art documents, which can be relied on in a protest under  37 CFR
1.291(a):

(A) Information demonstrating that the subject matter to which the
protest is directed was publicly "known or used by others in this
country . . . before the invention thereof by the applicant for patent"
and is therefore barred under  35 U.S.C. 102(a) and/or 103.

(B) Information that the invention was "in public use or on sale in this
country, more than 1 year prior to the date of the application for
patent in the United States" (35 U.S.C. 102(b)).

(C) Information that the applicant "has abandoned the invention" (35
U.S.C. 102(c)) or "did not himself invent the subject matter sought to
be patented" (35 U.S.C. 102(f)).

(D) Information relating to inventorship under  35 U.S.C. 102(g).

(E) Information relating to sufficiency of disclosure or failure to
disclose best mode, under  35 U.S.C. 112.

(F) Any other information demonstrating that the application lacks
compliance with the statutory requirements for patentability.

(G) Information indicating "fraud" or "violation of the duty of
disclosure" under  37 CFR 1.56 may be the subject of a protest under  37
CFR 1.291(a).  Protests raising fraud or other inequitable conduct
issues will be entered in the application file, generally without
comment on those issues.  37 CFR 1.291(b).

Different forms of evidence may accompany, or be submitted as a part of,
a protest under  37 CFR 1.291(a).  Conventional prior art documents such
as patents and publications are the most common form of evidence. 
However, other forms of evidence can likewise be submitted.  Some
representative examples of other forms of evidence are
litigation-related materials such as complaints, answers, depositions,
answers to interrogatories, exhibits, transcripts of hearings or trials,
court orders and opinions, stipulations of the parties, etc.  Where only
a portion of the litigation-related materials is relevant to the
protest, protestors are encouraged to submit only the relevant
portion(s).

In a protest based on an alleged public use or sale by, or on behalf of,
the applicant or applicant's assignee, evidence of such public use or
sale may be submitted along with affidavits or declarations identifying
the source(s) of the evidence and explaining its relevance and meaning. 
Such evidence might include documents containing offers for sale by
applicant or applicant's assignee, orders, invoices, receipts, delivery
schedules, etc. The Office will make a decision as to whether or not
public use or sale has been established based on the evidence the Office
has available. If applicant denies the authenticity of the documents
and/or evidence, or if the alleged public use and/or sale is by a party
other than applicant or applicant's assignee, protestor may find it
desirable or necessary to proceed via  37 CFR 1.292 (public use
proceedings) rather than by a protest under  37 CFR 1.291.

While the forms in which evidence and/or information may be submitted
with, or as a part of, a protest under  37 CFR 1.291(a) are not limited,
protestors must recognize that such submissions may encounter problems
such as establishing authenticity and/or the probative value to apply to
the evidence.  Obviously, the Office will have to evaluate each item of
evidence and/or information submitted with a view as to both its
authenticity and what weight to give thereto.

Information which is subject to a court-imposed protective or secrecy
order may be submitted with, or as a part of, a protest under  37 CFR
1.291(a). Trade secret information which was obtained by a protestor
through agreements with others can likewise be submitted.  Such
information, if submitted, will be treated in accordance with the
guidelines set forth in MPEP Section  724 and will be made public if a
reasonable examiner would consider the information important in deciding
whether to allow the application to issue as a patent.

---SECTION---1901.03 How Protest Is Submitted

A protest under  37 CFR 1.291(a) must be submitted in writing, must
specifically identify the application to which the protest is directed
by application number or serial number and filing date, and should
include a listing of all patents, publications, or other information
relied on; a concise explanation of the relevance of each listed item;
an English language translation of all relevant parts of any non-English
language document; and be accompanied by a copy of each patent,
publication, or other document relied on. Protestors are encouraged to
use form PTO-1449 "Information Disclosure Statement" when preparing a
protest under  37 CFR 1.291, especially the listing enumerated under  37
CFR 1.291(b)(1).  See MPEP Section  609.  In addition, the protest and
any accompanying papers should either (1) reflect that a copy of the
same has been served upon the applicant or upon the applicant's attorney
or agent of record; or (2) be filed with the Office in duplicate in the
event service is not possible.

It is important that any protest against a pending application
specifically identify the application to which the protest is directed
with the identification being as complete as possible. If possible, the
following information should be placed on the protest:

(A) Name of Applicant(s).

(B) Application number (mandatory).

(C) Filing date of application.

(D) Title of invention.

(E) Group art unit number (if known).

(F) Name of examiner to whom the application is assigned (if known).

(G) Current status and location of application (if known).

(H) The word "ATTENTION:" followed by the area of the Office to which
the protest is directed as set forth below.

In addition to the above information, the protest itself should be
clearly identified as a "PROTEST UNDER  37 CFR 1.291(a)."  If the
protest 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 protest 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 protestor is unable to specifically
identify the application to which the protest is directed, but,
nevertheless, believes such an application to be pending, the protest
should be directed to the attention of the Office of Petitions, Crystal
Park 1, Room 520, along with as much identifying data for the
application as possible. Protests which do not adequately identify a
pending patent application will be returned to the protestor and will
not be further considered by the Office.

Where a protest 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 protest 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" protest mailed
to the Office should be so marked and mailed to BOX 7.  However, in view
of the urgent nature of most "REISSUE LITIGATION" protests, protestor
may wish to hand-carry the protest to the appropriate area in order to
ensure prompt receipt and to avoid any unnecessary delays.  In
litigation-type cases, all replies should be hand-carried to the
appropriate area in the Office.

INITIAL PROTEST SUBMISSION MUST BE COMPLETE

A protest must be complete and contain a copy of every document relied
on by protestor, whether the document is a prior art document, court
litigation material, affidavit, or declaration, etc., because a
protestor will not be given an opportunity to supplement or complete any
protest which is incomplete. Active participation by protestor ends with
the filing of the initial protest, as provided in  37 CFR 1.291(c), and
no further submission on behalf of protestor will be acknowledged or
considered, except for additional prior art, or unless such submission
clearly raises new issues which could not have been earlier presented. 
Protests which will not be entered in the application file include those
further submissions in violation of  37 CFR 1.291(c) by which protestor
seeks to participate in the examination process. For example, mere
arguments relating to an Office action or an applicant's reply would not
qualify as a new protest. Likewise, additional comments seeking to bring
in further or even new data or information with respect to an issue
previously raised by protestor would not qualify as a new protest.

Even new protests which also argue Office actions or replies or any
matter beyond the new issue should not be accepted. Improper protests
will be returned by the Examining Group Director. While improper
protests will be returned, a new protest by an earlier protestor will be
proper and can be entered if it is clearly limited to new issues which
could not have been earlier presented, and thereby constitutes a new
protest.

As indicated in  37 CFR 1.291(b)(3), a protest must be accompanied by a
copy of each prior art document relied on in order to ensure
consideration by the examiner, although a protest without copies of
prior art documents will not necessarily be ignored. While a protest
without copies of documents will not necessarily be ignored, the
submission of such documents with the protest will obviously expedite
and ensure consideration of the documents, which consideration might not
otherwise occur. Further, some documents which are available to
protestor may not be otherwise available to the Office.

Every effort should be made by a protestor to serve a copy of the
protest 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 prior art or other document relied on in
the same manner as required by  37 CFR 1.291(a) for the Office copy. The
protest filed in the Office should reflect, by an appropriate
"Certificate of Service," that service has been made as provided in  37
CFR 1.291(a). Only in those instances where service is not possible
should the protest be filed in duplicate in order that the Office can
attempt service.

---SECTION---1901.04 When Should the Protest Be Submitted

A protest under  37 CFR 1.291(a) must be submitted prior to the mailing
of a notice of allowance under  37 CFR 1.311 and the application must be
pending when the protest and application file are brought before the
examiner in order to be ensured of consideration. As a practical matter,
any protest should be submitted as soon as possible after the protestor
becomes aware of the existence of the application to which the protest
is to be directed. By submitting a protest early in the examination
process, i.e., before the Office acts on the application if possible,
the protestor ensures that the protest will receive maximum
consideration and will be of the most benefit to the Office in its
examination of the application. A protest submitted after the mailing of
the notice of allowance will not knowingly be ignored if the protest
includes prior art documents which clearly anticipate or clearly render
obvious one or more claims. However, the likelihood of consideration of
a protest decreases as the patent date approaches.

A protest submitted prior to the mailing of a notice of allowance under 
37 CFR 1.311 will be entered in the application file. A protest filed
after final rejection will be considered if the application is still
pending when the protest and application are provided to the examiner. 
However, prosecution will not ordinarily be reopened after final
rejection if the prior art cited in the protest is merely cumulative of
the prior art cited in the final rejection.  If a protest is not
submitted prior to the mailing of a notice of allowance under  37 CFR
1.311 it will be acknowledged as set forth in MPEP Section  1901.05 only
if a self-addressed postcard is included with the protest, and referred
to the examiner having charge of the subject matter involved for
handling as set forth in MPEP Section  1901.06.

A protest 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 protest of
the reissue application cannot be filed within the 2-month period
provided by  37 CFR 1.176, the protest can be submitted at a later time,
but the protestor must be aware that reissue applications are "special"
and a later filed protest may be received after action by the examiner.
Any request by a protestor 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 under  37 CFR 1.182 and the petition fee must be filed
prior to the expiration of the 2-month period provided by  37 CFR 1.176.
The petition must explain why the additional time is necessary and the
nature of the protest intended.  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 which will forward the
petition to the Office of the Deputy Assistant Commissioner for Patent
Policy and Projects for decision. 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 protest is a "REISSUE LITIGATION" protest, it is particularly
important that it be filed early if protestor wishes it considered at
the time the Office first acts on the application.  Protestors 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, protestors to reissue applications cannot automatically
assume that the full 2-month delay period of  37 CFR 1.176 will always
be available.

If a protest is filed in a reissue application related to a patent
involved in a pending interference proceeding, the reissue application
should be referred to the Office of the Deputy Assistant Commissioner
for Patent Policy and Projects before considering the protest and acting
on the application.  See also MPEP Section  1441 as to the filing of a
protest in a reissue application.

---SECTION---1901.05 Initial Office Handling and Acknowledgment of
Protest

PROTESTS REFERRED TO EXAMINER

Protests filed against pending applications will be referred to the
examiner having charge of the subject matter involved.  37 CFR 1.291(a).
A protest specifically identifying the application to which it is
directed will be entered in the application file, if (1) the protest is
submitted prior to the mailing of a notice of allowance under  37 CFR
1.311 (see MPEP Section  1901.04) and (2) a copy has been served on
applicant in accordance with  37 CFR 1.248, or a duplicate copy is filed
with the Office in the event service is not possible.  37 CFR 1.291(a).

A protest where the application is specifically identified, which is
submitted in conformance with  37 CFR 1.291(a) and (b), will be
considered by the Office.

PROTEST DOES NOT INDICATE SERVICE

If the protest filed in the Office does not, however, 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 protestor to file such a duplicate before the protest
is referred to the examiner. Alternatively, if the protest involves only
a few pages, the Office may, in its sole discretion, elect to reproduce
the protest rather than delay referring it to the examiner.  If
duplicate protest 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 protest or, if no transmittal letter
is used, simply by an appropriate notation in the "Contents" section of
the application file wrapper.

ACKNOWLEDGMENT OF PROTEST

A protestor in an original or reissue application will not receive any
communications from the Office relating to the protest, or to the
application, other than the return of a self-addressed postcard which
protestor may include with the protest in order to receive an
acknowledgment that the protest has been received by the Office.  37 CFR
1.291(c).  The Office will acknowledge a protest by return of the
self-addressed postcard prior to the protest's entry into the
application file or return to the protestor, as appropriate.

APPLICATIONS AND STATUS THEREOF MAINTAINED IN CONFIDENCE

The postcard acknowledging receipt of a protest in other than a reissue
application will not and must not indicate whether such application in
fact exists or the status of any such application.  Office employees
must exercise care to ensure that matters relating to applications are
not discussed with protestor or communicated in writing to protestor. 
Original applications are, of course, required by  35 U.S.C. 122 to be
kept in confidence. Thus, unless a protestor has been granted access to
an original application, the protestor is not entitled to obtain from
the Office any information concerning the same, including the mere fact
that such an application exists. Petitions for access to patent
applications with the exception of applications involved in or related
to a proceeding before the Board of Patent Appeals or Interferences are
decided by the Office of Petitions pursuant to delegation contained in
MPEP Section  1002.02(b). Reissue applications filed on, or after, March
1, 1977 are pursuant to  37 CFR 1.11(b) "open to inspection by the
general public."

The Office will communicate with the applicant regarding any protest
entered in an application file and may require the applicant to supply
information pursuant to  37 CFR 1.291(c), including replies to specific
questions raised by the protest, in order for the Office to decide any
issues raised thereby. Under  37 CFR 1.291(c), the examiner can require
the applicant to reply to the protest and answer specific questions
raised by the protest.

---SECTION---1901.06 Examiner Treatment of Protest

Office practice as defined in  37 CFR 1.291(a) gives recognition to the
value of the written protests in avoiding the issuance of invalid
patents. However, the fact that one or more protests has been filed in
an application, whether the application is an original application or a
reissue application, does not relieve the examiner from conducting a
normal examination on the merits, including the required search.
Evidence submitted in a protest will be considered on the same basis as
other ex parte evidence. In re Reuter, 651 F.2d 751, 758, 210 USPQ 249,
255 (CCPA 1981).

INITIAL REVIEW

An examiner initially receiving a protest will immediately review the
same for the following:

(A) To ensure that either the protest or the application file wrapper
indicates that a copy of the protest has been served on applicant or
applicant's attorney or agent. If a copy is not indicated as having been
served on applicant or applicant's attorney and is not filed in
duplicate, then the examiner should undertake to determine whether or
not service has been made by contacting applicant or applicant's
attorney or agent, but not protestor. If it has, this should be noted on
the protest or on the application file. If service hasn't been made, the
protest and application file should be brought to the attention of the
Examining Group Director for appropriate action. See MPEP Section 
1901.05.

(B) A protest raising issues of "fraud," "inequitable conduct," or
"violation of duty of disclosure" will be entered in the application
file, generally without comments on those issues.

If a protest is filed in a reissue application and the reissue
application is related to a patent involved in a pending interference
proceeding, such application should be referred to the Special Program
Law Office before considering the protest and acting on the
applications.

PERIOD FOR COMMENTS BY APPLICANT

If the primary examiner's initial review reveals that the protest is
ready for consideration during the examination, the examiner may
nevertheless consider it desirable, or necessary, to obtain applicant's
comments on the protest before further action.  In such situations, the
examiner will offer applicant an opportunity to file comments within a
set period, usually 1 month, unless circumstances warrant a longer
period.

Form Paragraph 19.01 can be used to offer applicant an opportunity to
file comments on the protest.

19.01 Period for Comments on Protest by Applicant

A protest against issuance of a patent based upon this application has
been filed under  37 CFR 1.291(a) on   [1], and a copy [2]. Any comments
or reply applicant desires to file before consideration of the protest
must be filed by   [3].

Examiner Note:

1. Applicant is normally given one month to submit any comments, unless
circumstances in the case would warrant a longer period.

2. A copy of this Office action is NOT sent to the protestor.  See  37
CFR 1.291(c).

3. In bracket 2, insert either-- has been served on applicant-- or-- is
attached hereto--.

Where necessary or desirable to decide questions raised by the protest,
under  37 CFR 1.291(c) the primary examiner can require the applicant to
reply to the protest and answer specific questions raised by the
protest. The primary examiner cannot require a reply to questions
relating to "fraud," "inequitable conduct," or "violation of the duty of
disclosure" since those issues are generally not commented on by the
Office. Any questions directed to applicant by the primary examiner must
be limited to seeking answers reasonably necessary in order for the
primary examiner to decide questions raised by the protest and which are
before the primary examiner for decision. The primary examiner is not
permitted, under  37 CFR 1.291(c), to seek answers to questions which
are not before the primary examiner for decision. The primary examiner
must use care in requiring information from applicant pursuant to  37
CFR 1.291(c) to ensure that the required information is necessary to the
decision to be made.

Form Paragraph 19.02 can be used to require additional information from
applicant regarding issues raised by the protest.

19.02 Requirement for Information

The protest under  37 CFR 1.291 filed on   [1] has been considered.  In
order to reach a full and proper consideration of the issues raised
therein, it is necessary to obtain additional information from applicant
regarding these issues.  In particular   [2]. The failure to reply to
this requirement for information within ONE MONTH or THIRTY DAYS,
whichever is longer, of the mailing date of this requirement will result
in abandonment of the application.  This time period may be extended
under the provisions of  37 CFR 1.136.

Examiner Note:

While the examiner normally should not need further information from
applicant, this form paragraph may be used to request specific
additional information from the applicant.

PROTESTOR NOT PERMITTED TO COMPLETE INCOMPLETE PROTEST

A protestor may not complete an incomplete protest, nor further
participate in, or inquire as to the status of, any Office proceedings
relating to the initial protest.  37 CFR 1.291. The examiner must not,
therefore, communicate with protestor in any way and will not consider a
later submission by protestor, except for additional prior art, or
unless such submission raises new issues which could not have been
earlier raised and constitutes in effect a new protest (see MPEP Section 
1901.07). Improper protests will be returned by the Examining Group
Director.

TREATMENT OF TIMELY SUBMITTED PROTEST

If the protest has been timely submitted, i.e., before the mailing of a
notice of allowance under  37 CFR 1.311, and the application is still
pending when the protest and application file are brought before the
examiner, the examiner must consider each of the prior art or other
documents submitted in conformance with  37 CFR 1.291(b).  At least
those prior art documents which the examiner relies on in rejecting
claims will be made of record by means of form PTO-892, unless the
protestor has listed such prior art or other documents on form PTO-1449,
in which case the examiner will place the examiner's initials adjacent
to the citations in the boxes provided on the form PTO-1449 (see MPEP
Section  609). Where the prior art or other documents have not been
cited on a PTO-892, or listed and initialed on a PTO-1449, the examiner
will place a notation in the protest paper adjacent to the reference to
the documents. The notation should include the examiner's initials and
the term "checked." The examiner will also indicate in the next Office
action that all documents submitted have been considered.

It is not intended that the examiner be overly technical in construing 
37 CFR 1.291(b) and refuse consideration of a protest because it does
not include all of the contents enumerated by  37 CFR 1.291(b). The
examiner should consider the protest to the extent it is helpful and
valid even though one or more of the listed items is omitted.

Where prior art or other documents are considered by the examiner, even
though not submitted in full conformance with  37 CFR 1.291(b), the
examiner must, for all those documents considered but not listed on the
form PTO-892, (1) mark "checked" and place the examiner's initials
beside each citation, or (2) where all the documents cited on a given
page have been considered, mark "All checked" and place the examiner's
initials in the left-hand margin beside the citations. See MPEP Section 
609. Where prior art or other documents are listed by the protestor on
form PTO-1449, even though not submitted in full conformance with  37
CFR 1.291(b), the examiner must, for all those documents considered,
place the examiner's initials adjacent to the citations in the boxes
provided on the form PTO-1449. Where the prior art or other documents
are listed by the protestor on form PTO-1449, but are not submitted in
full compliance with  37 CFR 1.291(b), the examiner must, for all those
documents not considered, draw a line through the citation on the form
PTO-1449.  See MPEP Section  609. If a protest entered in an application
file complies with  37 CFR 1.291(b), the examiner is required to fully
consider all the issues, except for any issues of "fraud," "inequitable
conduct," or "duty of disclosure" raised by the protestor, and clearly
state the examiner's position thereon in detail.

PROTEST FILED AFTER ALLOWANCE

If the protest 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 protest is
untimely and that it is not being entered in the application file. The
handling of the protest will vary depending on the particular situation
as follows.

A. Service of Copy Included

Where the protest includes an indication of service of copy on the
applicant, the original protest should be discarded.

B. Service of Copy Not Included

Where the protest does not include an indication of service, the
duplicate copy of the protest (if present) should be discarded and the
original protest papers should be sent to the applicant along with the
notification of nonentry.

COPIES OF DOCUMENTS NOT SUBMITTED

If the protest is not accompanied by a copy of each prior art or other
document relied on as required by  37 CFR 1.291(b), the examiner will
consider the documents submitted. The protestor cannot be assured that
the examiner will consider the missing document(s).  However, if the
examiner does so, the examiner will either cite the document on form
PTO-892 or place a notation in the protest paper adjacent to the
reference to the document which will include the examiner's initials and
the term "checked." If the examiner considered a document not submitted,
the next Office action will so indicate.

CONSIDERATION OF PROTESTOR'S ARGUMENTS

In view of the value of written protests, the examiner must give careful
consideration to the points and arguments made on behalf of the
protestor. Any Office action by the examiner treating the merits of a
timely submitted protest complying with  37 CFR 1.291(b) must
specifically consider and make evident by detailed reasoning the
examiner's position as to the major arguments and points raised by the
protestor. While it is not necessary for the examiner to respond to each
and every minute argument or point, the major arguments and points must
be specifically covered. The examiner will not, under any circumstances,
treat or discuss those arguments or points directed to "fraud,"
"inequitable conduct," or "violation of duty of disclosure."

RESULTS OF CONSIDERATION REPORTED TO GROUP DIRECTOR

After the examiner has considered the protest, the examiner will report
the results of such consideration to the Group Director.

---SECTION---1901.07 Protestor Participation

In accordance with the limited protestor participation in protests filed
after December 8, 1981,  37 CFR 1.291(c) was amended effective July 1,
1982, and further amended on December 1, 1997, to provide that:

"limited involvement of the member of the public filing a protest  . . .
ends with the filing of the protest, and no further submission on behalf
of the protestor will be considered, except for additional prior art, or
unless such submission raises new issues which could not have been
earlier presented."

37 CFR 1.291(c) was amended effective December 1, 1997, by removing the
blanket limitation of one protest per protestor, and now provides for a
second or subsequent submission in the form of additional prior art. 
However, mere argument that is later submitted by an initial protestor
would not be entered and would be returned unless it is shown that the
argument relates to a new issue that could not have been earlier raised. 
Prior art submitted by a previous protestor prior to the mailing of the
notice of allowance under  37 CFR 1.311 will be made of record without a
showing that it relates to a new issue.  However, it should be noted
that entry of later submitted prior art in the file record does not
assure its consideration by the examiner if submitted late in the
examination process.  See MPEP Section  1901 and Section  1901.04. 
Accordingly, initial protests should be as complete as possible when
first filed.  The mere filing of a protest does not grant access to
protestor or relieve the Office of its obligations under  35 U.S.C. 122
to maintain applications "in confidence." Nor does the mere filing of a
protest automatically mean that protestor will have any "right" to
participate to any particular degree.  37 CFR 1.291(c) does not permit
protestor, or any other member of the public, to contact or receive
information from the Office as to the disposition or status of the
protest, or the application to which it is directed, or to participate
in any Office proceedings relating to the protest.  The Office does not
serve copies of Office actions or other documents mailed by the Office
on protestors, and does not require applicants to serve copies of papers
filed with the Office on protestors.  Furthermore, a protestor is not
permitted to participate in interviews, appeal a decision by the
examiner adverse to the protestor to the Board of Patent Appeals and
Interferences, or participate in an appeal by applicant.  The
disposition of the protest will, once it has been filed under paragraph
(c), be an ex parte matter between the Office and the applicant. Where
protestor has access to an application, for example, a reissue
application which is open to the public and may be inspected under  37
CFR 1.11, the proceedings may thereby be monitored.

Under  37 CFR 1.291(c), applicant may be required by the Office to reply
to a protest. Any reply thereto would be ex parte and would not be
served on the protestor. The ex parte nature of the requirements for
information under paragraph (c) differs from past practice under which
information could be required, or requested, from applicant and one or
more protestors.

---SECTION---1901.07(a) Filing of Multiple Papers Relating to Same
Issues

Under  37 CFR 1.291(c), protestor participation ends with the filing of
the initial protest, and protestor will not be allowed to complete any
protest that is incomplete. No further submission on behalf of protestor
will be considered, except for additional prior art, or unless such
submission clearly raises new issues which could not have been earlier
presented. Protests which will not be entered in the application file
include those further submissions in violation of  37 CFR 1.291(c) by
which protestor seeks to participate in the examination process. For
example, mere arguments relating to an Office action or an applicant's
reply would not qualify as a new issue.  Likewise, additional comments
seeking to bring in further or even new data or information with respect
to an issue previously raised by protestor would not qualify as a new
issue. Even new protests which also argue Office actions or replies or
any matter beyond the new issue should not be accepted. Improper
protests will be refused consideration and returned by the Examining
Group Director. While improper protests will be returned, a new protest
by an earlier protestor will be proper and can be entered if it is
clearly limited to new issues which could not have been earlier
presented.

---SECTION---1906 Supervisory Review of an Examiner's Decision Adverse
to Protestor

As pointed out in MPEP Section  1901.07, a protestor cannot appeal to
the Board of Patent Appeals and Interferences from an adverse decision
of the examiner. Further, a decision by examiner adverse to a protestor
is final, and under the restricted protestor participation permitted
under  37 CFR 1.291(c) is not petitionable to the Commissioner.

---SECTION---1907 Unauthorized Participation by Protestor

Office personnel must exercise care to ensure that substantive matters
relating to the application are not discussed ex parte with protestor or
communicated in writing ex parte to protestor. Where the protestor has
not filed a protest or otherwise participated in an application prior to
December 8, 1981, the examiner must not communicate in any manner with
protestor. See  37 CFR 1.291(c).

---SECTION---1920 Citation of Prior Art Under  37 CFR1.501(a)

37 CFR 1.501(a) permits any person at any time during the period of
enforceability of a patent to cite to the Office, in writing, prior art
consisting of patent and printed publications which that person states
to be pertinent and applicable to the patent and believes to have a
bearing on the patentability of any claim(s) of the patent.  See MPEP
Section  2202 -  Section  2208.

