Chapter    600  Parts, Form, and Content of Application
---SECTION---601 Content of Provisional and Nonprovisional Applications

35 U.S.C. 111 Application

(a) IN GENERAL.-

(1) WRITTEN APPLICATION.-An application for patent shall be made, or
authorized to be made, by the inventor, except as otherwise provided in
this title, in writing to the Commissioner.

(2) CONTENTS.-Such application shall include-

(A) a specification as prescribed by section 112 of this title;

(B) a drawing as prescribed by section 113 of this title; and

(C) an oath by the applicant as prescribed by section 115 of this title.

(3) FEE AND OATH.-The application must be accompanied by the fee
required by law. The fee and oath may be submitted after the
specification and any required drawing are submitted, within such period
and under such conditions, including the payment of a surcharge, as may
be prescribed by the Commissioner.

(4) FAILURE TO SUBMIT.-Upon failure to submit the fee and oath within
such prescribed period, the application shall be regarded as abandoned,
unless it is shown to the satisfaction of the Commissioner that the
delay in submitting the fee and oath was unavoidable or unintentional.
The filing date of an application shall be the date on which the
specification and any required drawing are received in the Patent and
Trademark Office.

(b) PROVISIONAL APPLICATION.-

(1) AUTHORIZATION.-A provisional application for patent shall be made or
authorized to be made by the inventor, except as otherwise provided in
this title, in writing to the Commissioner. Such application shall
include-

(A) a specification as prescribed by the first paragraph of section 112
of this title; and

(B) a drawing as prescribed by section 113 of this title.

(2) CLAIM.-A claim, as required by the second through fifth paragraphs
of section 112, shall not be required in a provisional application.

(3) FEE.-(A) The application must be accompanied by the fee required by
law.

(B) The fee may be submitted after the specification and any required
drawing are submitted, within such period and under such conditions,
including the payment of a surcharge, as may be prescribed by the
Commissioner.

(C) Upon failure to submit the fee within such prescribed period, the
application shall be regarded as abandoned, unless it is shown to the
satisfaction of the Commissioner that the delay in submitting the fee
was unavoidable or unintentional.

4)	FILING DATE.-The filing date of a provisional application shall be
the date on which the specification and any required drawing are
received in the Patent and Trademark Office.

(5) ABANDONMENT.-The provisional application shall be regarded as
abandoned 12 months after the filing date of such application and shall
not be subject to revival thereafter.

(6) OTHER BASIS FOR PROVISIONAL APPLICATION.-Subject to all the
conditions in this subsection and section 119(e) of this title, and as
prescribed by the Commissioner, an application for patent filed under
subsection (a) may be treated as a provisional application for patent.

(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.-A
provisional application shall not be entitled to the right of priority
of any other application under section 119 or 365(a) of this title or to
the benefit of an earlier filing date in the United States under section
120, 121, or 365(c) of this title.

(8) APPLICABLE PROVISIONS.-The provisions of this title relating to
applications for patent shall apply to provisional applications for
patent, except as otherwise provided, and except that provisional
applications for patent shall not be subject to sections 115, 131, 135,
and 157 of this title.

37 CFR 1.51 General requisites of an application.

(a) Applications for patents must be made to the Commissioner of Patents
and Trademarks.

(b) A complete application filed under Section  1.53(b) comprises:

(1) A specification as prescribed by  35 U.S.C. 112, including a claim
or claims, see Section Section  1.71 to 1.77;

(2) An oath or declaration, see Section  1.63 and Section  1.68;

(3) Drawings, when necessary, see Section Section  1.81 to 1.85; and

(4) The prescribed filing fee, see Section  1.16.

(c) A complete provisional application filed under Section  1.53(c)
comprises:

(1) A cover sheet identifying:

(i) The application as a provisional application,

(ii) The name or names of the inventor or inventors, (see Section 
1.41(a)(2)),

(iii) The residence of each named inventor,

(iv) The title of the invention,

(v) The name and registration number of the attorney or agent (if
applicable),

(vi) The docket number used by the person filing the application to
identify the application (if applicable),

(vii) The correspondence address, and

(viii) The name of the U.S. Government agency and Government contract
number (if the invention was made by an agency of the U.S. Government or
under a contract with an agency of the U.S. Government);

(2) A specification as prescribed by the first paragraph of  35 U.S.C.
112, see Section  1.71;

(3) Drawings, when necessary, see Section Section  1.81 to 1.85; and

(4) The prescribed filing fee, see Section  1.16.

(d) Applicants are encouraged to file an information disclosure
statement in nonprovisional applications.  See Section  1.97 and Section 
1.98.  No information disclosure statement may be filed in a provisional
application.

GUIDELINES FOR DRAFTING A NONPROVISIONAL PATENT APPLICATION UNDER 35
U.S.C. 111(a)

The following guidelines illustrate the preferred layout and content of
patent applications filed under  35 U.S.C. 111(a). These guidelines are
suggested for the applicant's use. See also  37 CFR 1.77 and MPEP
Section  608.01(a).

Arrangement and Contents of the Specification

The following order of arrangement is preferable in framing the
specification. Except for the reference to the "microfiche appendix" and
the drawings, each of the lettered items should appear in upper case,
without underlining or bold type, as section headings. If no text
follows the section heading, the phrase "Not Applicable" should follow
the section heading.

(A) Title of the invention.

(B) Cross-reference to related applications.

(C) Statement regarding federally sponsored research or development.

(D) Reference to a "Microfiche appendix." (See  37 CFR 1.96 (c)).

(E) Background of the invention.

(1) Field of the invention.

(2) Description of related art including information disclosed under  37
CFR 1.97 and  37 CFR 1.98.

(F) Brief summary of the invention.

(G) Brief description of the several views of the drawing.

(H) Detailed description of the invention.

(I) Claim(s) (commencing on a separate sheet).

(J) Abstract of the Disclosure (commencing on a separate sheet).

(K) Drawings.

(L) Sequence Listing (See  37 CFR 1.821 through 1.825).

Content

(A) Title of the Invention: (See  37 CFR 1.72(a).) The title of the
invention should be placed at the top of the first page of the
specification. It should be brief but technically accurate and
descriptive preferably from two to seven words.

(B) Cross-Reference to Related Applications: (See  37 CFR 1.78 and MPEP
Section  201.11.)

(C) 	Statement Regarding Federally Sponsored Research or Development: 
(See MPEP Section  310).

(D) Reference to a "Microfiche Appendix": (See  37 CFR 1.96(c) and MPEP
Section  608.05).  The total number of microfiche and total number of
frames should be specified.

(E) Background of the Invention: The specification should set forth the
Background of the Invention in two parts:

(1) Field of the Invention:  A statement of the field of art to which
the invention pertains. This statement may include a paraphrasing of the
applicable U.S. patent classification definitions. The statement should
be directed to the subject matter of the claimed invention. This item
may also be titled "Technical Field".

(2) Description of the Related Art Including Information Disclosed Under 
37 CFR 1.97 and 1.98:  A paragraph(s) describing to the extent practical
the information known to the applicant, including references to specific
documents where appropriate. Where applicable, the problems involved in
the information disclosed which are solved by the applicant's invention,
should be indicated. This item may also be titled "Background
Information".

(F) Brief Summary of the Invention: A brief summary or general statement
of the invention as set forth in  37 CFR 1.73. The summary is separate
and distinct from the abstract and is directed toward the invention
rather than the disclosure as a whole. The summary may point out the
advantages of the invention or how it solves problems previously
existent in the art (and preferably indicated in the Background of the
Invention). In chemical cases the summary should point out in general
terms the utility of the invention. If possible, the nature and gist of
the invention or the inventive concept should be set forth. Objects of
the invention should be treated briefly and only to the extent that they
contribute to an understanding of the invention.

(G) Brief Description of the Several Views of the Drawing(s): A
reference to and brief description of each Figure in the drawing(s) as
set forth in  37 CFR 1.74.

(H) Detailed Description of the Invention:   A description of the
preferred embodiment(s) of the invention as required in  37 CFR 1.71.
The description should be as short and specific as is necessary to
adequately and accurately describe the invention.

Where elements or groups of elements, compounds, and processes, which
are conventional and generally widely known in the field to which the
invention pertains, form a part of the invention described and their
exact nature or type is not necessary for an understanding and use of
the invention by a person skilled in the art, they should not be
described in detail. However, where particularly complicated subject
matter is involved or where the elements, compounds, or processes may
not be commonly or widely known in the field, the specification should
refer to another patent or readily available publication which
adequately describes the subject matter.

(I)  	Claim(s): (See  37 CFR 1.75 and MPEP Section  608.01(m).) The
claim or claims must commence on a separate sheet. See  37 CFR 1.52(b). 
Where a claim sets forth a plurality of elements or steps, each element
or step of the claim should be separated by a line indentation. There
may be plural indentations to further segregate subcombinations or
related steps.

Reference characters corresponding to elements recited in the detailed
description and the drawings may be used in conjunction with the
recitation of the same element or group of elements in the claims. The
reference characters, however, should be enclosed within parentheses so
as to avoid confusion with other numbers or characters which may appear
in the claims. The use of reference characters is to be considered as
having no effect on the scope of the claims.

Claims should preferably be arranged in order of scope so that the first
claim presented is the least restrictive. All dependent claims should be
grouped together with the claim or claims to which they refer to the
extent practicable. Where separate species are claimed, the claims of
like species should be grouped together where possible. Similarly,
product and process claims should be separately grouped. Such
arrangements are for the purpose of facilitating classification and
examination.

The form of claim required in  37 CFR 1.75(e) is particularly adapted
for the description of improvement-type inventions. Such a claim is to
be considered a combination claim and should be drafted with this
thought in mind.

In drafting claims in accordance with  37 CFR 1.75(e), the preamble is
to be considered to positively and clearly include all the elements or
steps recited therein as a part of the claimed combination.

(J)  	Abstract of the Disclosure: (See  37 CFR 1.72(b) and MPEP Section 
608.01(b).)  The abstract must commence on a separate sheet.  See  37
CFR 1.52(b).

(K) Drawings: (See  37 CFR 1.81 and  37 CFR 1.83-1.85, and MPEP Section 
608.02).

(L) Sequence Listing: (See  37 CFR 1.821-1.825).

  Oath or Declaration

(See  37 CFR 1.63, 1.68, and 1.69.) Where one or more previously filed
foreign applications are cited or mentioned in the oath or declaration,
complete identifying data, including the application number as well as
the country and date of filing, should be provided.

GUIDELINES FOR DRAFTING A PROVISIONAL APPLICATION UNDER 35 U.S.C. 111(b)

A provisional application should preferably conform to the arrangement
guidelines for nonprovisional applications. The specification must,
however, comply with the first paragraph of  35 U.S.C. 112 and refer to
drawings, where necessary for an understanding of the invention. Unlike
an application filed under  35 U.S.C. 111(a), a provisional application
does not need claims. Furthermore, no oath or declaration is required.
See MPEP Section  201.04(b).

A cover sheet providing identifying information is required for a
complete provisional application. In accordance with  37 CFR 1.51(c)(1)
the cover sheet must state that it is for a provisional application, it
must identify and give the residence of the inventor or inventors, and
it must give a title of the invention. The cover sheet must also give
the name and registration number of the attorney or agent (if
applicable), the docket number used by the person filing the application
(if applicable) and the correspondence address. If there is a
governmental interest, the cover sheet must include a statement as to
rights to inventions made under Federally sponsored research and
development (See MPEP Section  310).  37 CFR 1.51(c)(1)(viii) requires
the name of the Government agency and the contract number, if the
invention was developed by or while under contract with an agency of the
U.S. Government.

Unlike applications filed under  35 U.S.C. 111(a), provisional
applications should not include an information disclosure statement. See 
37 CFR 1.51(d).  Since no substantive examination is made, such
statements are unnecessary. The Office will not accept an information
disclosure statement in a provisional application. Any such statement
received, will be returned or disposed of at the convenience of the
Office.

This cover sheet information enables the Office to prepare a proper
filing receipt and provides the Office of Initial Patent Examining
(OIPE) with most of the information needed to process the provisional
application. See MPEP Section  201.04(b) for a sample cover sheet.

THE APPLICATION

The specification must be filed in or translated into the English
language and must be legibly written either by a typewriter or
mechanical printer in permanent dark ink or its equivalent.  Except for
the drawing, the application papers (specification, including claims,
abstract, oath or declaration, and all papers which are to become part
of the permanent records of the Patent and Trademark Office) must have
each page plainly written on only one side of a sheet of paper.  The
sheets of paper must be the same size and either 21.0 cm. by 29.7 cm.
(DIN A4) or 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).  Each sheet must
include a top margin of at least 2.0 cm. (3/4 inch), a left side margin
of at least 2.5 cm. (1 inch), a right side margin of at least 2.0 cm.
(3/4 inch) and a bottom margin of at least 2.0 cm. (3/4 inch), and no
holes should be made in the sheets as submitted.  The lines of the
specification, and any amendments to the specification, must be 1  1/2
or double spaced.  The pages of the specification including claims and
abstract must be numbered consecutively, starting with 1, the numbers
should be centrally located above or, preferably, below the text.  See 
37 CFR 1.52(b) and MPEP Section  608.01.

The parts of the application may be included in a single document.

Determination of completeness of an application is covered in MPEP
Section  506 and Section  601.01 -  Section  601.01(g).

The elements of the application are secured together in a file wrapper,
bearing appropriate identifying data including the application number
and filing date (MPEP Section  719).

Note

Provisional applications,  MPEP Section  201.04(b).

Divisional applications,  MPEP Section  201.06.

Continuation applications,  MPEP Section  201.07.

Continued prosecution applications,  MPEP Section  201.06 (d).

Reissue applications,  MPEP Section  1401.

Design applications,  MPEP Chapter 1500.

Plant applications,  MPEP Chapter 1600.

Reexamination,  MPEP Chapter 2200.

A model, exhibit, or specimen is not required as part of the application
as filed, although it may be required in the prosecution of the
application (37 CFR 1.91 and 1.93,  MPEP Section  608.03).

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.

(c) Upon request by an applicant and payment of the fee specified in
Section  1.19(b), the Office will furnish copies of an application,
unless the application has been disposed of (see Section  1.53(e), (f)
and (g)).  The Office cannot provide or certify copies of an application
that has been disposed of.

See,  however, MPEP Section   201.14(c),  Section  604.04(a),  and
Section  724.05 with regard to the return of papers.  Copies of an
application will be provided by the PTO upon request and payment of the
fee set forth in  37 CFR 1.19(b) unless the application has been
disposed of (see  37 CFR 1.5(e), (f) and (g)).

All applicants are requested to include a preliminary classification on
newly filed patent applications. The preliminary classification,
preferably class and subclass designations, should be identified in the
upper right-hand corner of the letter of transmittal accompanying the
application papers, for example "Proposed Class 2, subclass 129."

---SECTION---601.01 Complete Application

37 CFR 1.53 Application number, filing date, and completion of
application.

(a) Application number.  Any papers received in the Patent and Trademark
Office which purport to be an application for a patent will be assigned
an application number for identification purposes.

(b) Application filing requirements - Nonprovisional application.  The
filing date of an application for patent filed under this section,
except for a provisional application under paragraph (c) of this section
or a continued prosecution application under paragraph (d) of this
section, is the date on which a specification as prescribed by  35
U.S.C. 112 containing a description pursuant to Section  1.71 and at
least one claim pursuant to Section  1.75, and any drawing required by
Section  1.81(a) are filed in the Patent and Trademark Office.  No new
matter may be introduced into an application after its filing date. A
continuing application, which may be a continuation, divisional, or
continuation-in-part application, may be filed under the conditions
specified in  35 U.S.C. 120, 121 or 365(c) and Section  1.78(a).

(1) A continuation or divisional application that names as inventors the
same or fewer than all of the inventors named in the prior application
may be filed under this paragraph or paragraph (d) of this section.

(2) A continuation-in-part application (which may disclose and claim
subject matter not disclosed in the prior application or a continuation
or divisional application naming an inventor not named in the prior
application must be filed under this paragraph.

(c) Application filing requirements - Provisional application.  The
filing date of a provisional application is the date on which a
specification as prescribed by the first paragraph of  35 U.S.C. 112,
and any drawing required by Section  1.81(a) are filed in the Patent and
Trademark Office.  No amendment, other than to make the provisional
application comply with the patent statute and all applicable
regulations, may be made to the provisional application after the filing
date of the provisional application.

(1) A provisional application must also include the cover sheet required
by Section  1.51(c)(1) or a cover letter identifying the application as
a provisional application.  Otherwise, the application will be treated
as an application filed under paragraph (b) of this section.

(2) An application for patent filed under paragraph (b) of this section
may be converted to a provisional application and be accorded the
original filing date of the application filed under paragraph (b) of
this section,

(i) Provided that a petition requesting the conversion, with the fee set
forth in Section  1.17(q), is filed prior to the earliest of:

(A) Abandonment of the application filed under paragraph (b) of this
section;

(B) Payment of the issue fee on the application filed under paragraph
(b) of this section;

(C) Expiration of twelve months after the filing date of the application
filed under paragraph (b) of this section; or

(D) The filing of a request for a statutory invention registration under
Section  1.293 in the application filed under paragraph (b) of this
section.

(ii) The grant of any such petition will not entitle applicant to a
refund of the fees which were properly paid in the application filed
under paragraph (b) of this section.

(3) A provisional application is not entitled to the right of priority
under  35 U.S.C. 119 or 365(a) or Section  1.55, or to the benefit of an
earlier filing date under  35 U.S.C. 120, 121 or 365(c) or Section  1.78
of any other application.  No claim for priority under Section 
1.78(a)(3) may be made in a design application based on a provisional
application.  No request under Section  1.293 for a statutory invention
registration may be filed in a provisional application.  The
requirements of Section Section  1.821 through 1.825 regarding
application disclosures containing nucleotide and/or amino acid
sequences are not mandatory for provisional applications.

(d) Application filing requirements - Continued prosecution
(nonprovisional) application. 

(1) A continuation or divisional application (but not a
continuation-in-part) of a prior nonprovisional application may be filed
as a continued prosecution application under this paragraph, provided
that:

(i) The prior nonprovisional application is either:

(A) Complete as defined by Section  1.51(b) ; or

(B) The national stage of an international application in compliance
with  35 U.S.C. 371; and

(ii) The application under this paragraph is filed before the earliest
of:

(A) Payment of the issue fee on the prior application, unless a petition
under Section  1.313(b)(5) is granted in the prior application;

(B) Abandonment of the prior application; or

(C) Termination of proceedings on the prior application.

(2) The filing date of a continued prosecution application is the date
on which a request on a separate paper for an application under this
paragraph is filed.  An application filed under this paragraph:

(i) Must identify the prior application;

(ii) Discloses and claims only subject matter disclosed in the prior
application;

(iii) Names as inventors the same inventors named in the prior
application on the date the application under this paragraph was filed,
except as provided in paragraph (d)(4) of this section;

(iv) Includes the request for an application under this paragraph, will
utilize the file jacket and contents of the prior application, including
the specification, drawings and oath or declaration from the prior
application, to constitute the new application, and will be assigned the
application number of the prior application for identification purposes;
and

(v) Is a request to expressly abandon the prior application as of the
filing date of the request for an application under this paragraph.

(3) The filing fee for a continued prosecution application filed under
this paragraph is:

(i) The basic filing fee as set forth in Section  1.16; and

(ii) Any additional Section  1.16 fee due based on the number of claims
remaining in the application after entry of any amendment accompanying
the request for an application under this paragraph and entry of any
amendments under Section  1.116 unentered in the prior application which
applicant has requested to be entered in the continued prosecution
application.

(4) An application filed under this paragraph may be filed by fewer than
all the inventors named in the prior application, provided that the
request for an application under this paragraph when filed is
accompanied by a statement requesting deletion of the name or names of
the person or persons who are not inventors of the invention being
claimed in the new application. No person may be named as an inventor in
an application filed under this paragraph who was not named as an
inventor in the prior application on the date the application under this
paragraph was filed, except by way of a petition under Section  1.48.

(5) Any new change must be made in the form of an amendment to the prior
application as it existed prior to the filing of an application under
this paragraph.  No amendment in an application under this paragraph (a
continued prosecution application) may introduce new matter or matter
that would have been new matter in the prior application. Any new
specification filed with the request for an application under this
paragraph will not be considered part of the original application
papers, but will be treated as a substitute specification in accordance
with Section  1.125.

(6) The filing of a continued prosecution application under this
paragraph will be construed to include a waiver of confidentiality by
the applicant under  35 U.S.C. 122 to the extent that any member of the
public, who is entitled under the provisions of Section  1.14 to access
to, copies of, or information concerning either the prior application or
any continuing application filed under the provisions of this paragraph,
may be given similar access to, copies of, or similar information
concerning the other application or applications in the file jacket.

(7) A request for an application under this paragraph is the specific
reference required by  35 U.S.C. 120 to every application assigned the
application number identified in such request.  No amendment in an
application under this paragraph may delete this specific reference to
any prior application.

(8) In addition to identifying the application number of the prior
application, applicant should furnish in the request for an application
under this paragraph the following information relating to the prior
application to the best of his or her ability:

(i) Title of invention;

(ii) Name of applicant(s); and

(iii) Correspondence address.

(9) Envelopes containing only requests and fees for filing an
application under this paragraph should be marked "Box CPA."  Requests
for an application under this paragraph filed by facsimile transmission
should be clearly marked "Box CPA."

(e) Failure to meet filing date requirements.

(1) If an application deposited under paragraph (b), (c), or (d) of this
section does not meet the requirements of such paragraph to be entitled
to a filing date, applicant will be so notified, if a correspondence
address has been provided, and given a time period within which to
correct the filing error.

(2) Any request for review of a notification pursuant to paragraph
(e)(1) of this section, or a notification that the original application
papers lack a portion of the specification or drawing(s), must be by way
of a petition pursuant to this paragraph. Any petition under this
paragraph must be accompanied by the fee set forth in Section  1.17(i)
in an application filed under paragraphs (b) or (d) of this section, and
the fee set forth in Section  1.17(q) in an application filed under
paragraph (c) of this section.  In the absence of a timely (Section 
1.181(f)) petition pursuant to this paragraph, the filing date of an
application in which the applicant was notified of a filing error
pursuant to paragraph (e)(1) of this section will be the date the filing
error is corrected.

(3) If an applicant is notified of a filing error pursuant to paragraph
(e)(1) of this section, but fails to correct the filing error within the
given time period or otherwise timely (Section  1.181(f)) take action
pursuant to this paragraph, proceedings in the application will be
considered terminated. Where proceedings in an application are
terminated pursuant to this paragraph, the application may be disposed
of, and any filing fees, less the handling fee set forth in Section 
1.21(n), will be refunded.

(f) Completion of application subsequent to filing - Nonprovisional
(including continued prosecution) application. If an application which
has been accorded a filing date pursuant to paragraph (b) of this
section, including a continuation, divisional, or continuation-in-part
application, does not include the appropriate filing fee or an oath or
declaration by the applicant pursuant to Section  1.63 or Section 
1.175, or, if an application which has been accorded a filing date
pursuant to paragraph (d) of this section does not include the
appropriate filing fee, applicant will be so notified, if a
correspondence address has been provided, and given a period of time
within which to file the fee, oath or declaration, and the surcharge as
set forth in Section  1.16(e) in order to prevent abandonment of the
application.  See Section  1.63(d) concerning the submission of a copy
of the oath or declaration from the prior application for a continuation
or divisional application.  If the required filing fee is not timely
paid, or if the processing and retention fee set forth in Section 
1.21(l) is not paid within one year of the date of mailing of the
notification required by this paragraph, the application may be disposed
of. The notification pursuant to this paragraph may be made
simultaneously with any notification pursuant to paragraph (e) of this
section.  If no correspondence address is included in the application,
applicant has two months from the filing date to file the basic filing
fee, the oath or declaration in an application under paragraph (b) of
this section, and the surcharge as set forth in Section  1.16(e) in
order to prevent abandonment of the application; or, if no basic filing
fee has been paid, one year from the filing date to pay the processing
and retention fee set forth in Section  1.21(l) to prevent disposal of
the application.

(g) Completion of application subsequent to filing -Provisional
application. If a provisional application which has been accorded a
filing date pursuant to paragraph (c) of this section does not include
the appropriate filing fee or the cover sheet required by Section 
1.51(c)(1), applicant will be so notified, if a correspondence address
has been provided, and given a period of time within which to file the
fee, cover sheet, and the surcharge as set forth in Section  1.16(l) in
order to prevent abandonment of the application.  If the required filing
fee is not timely paid, the application may be disposed of.  The
notification pursuant to this paragraph may be made simultaneously with
any notification pursuant to paragraph (e) of this section.  If no
correspondence address is included in the application, applicant has two
months from the filing date to file the basic filing fee, cover sheet,
and the surcharge as set forth in Section  1.16(l) in order to prevent
abandonment of the application.

(h) Subsequent treatment of application - Nonprovisional (including
continued prosecution) application.  An application for a patent filed
under paragraphs (b) or (d) of this section will not be placed on the
files for examination until all its required parts, complying with the
rules relating thereto, are received, except that certain minor
informalities may be waived subject to subsequent correction whenever
required.

(i) Subsequent treatment of application - Provisional application.  A
provisional application for a patent filed under paragraph (c) of this
section will not be placed on the files for examination and will become
abandoned no later than twelve months after its filing date pursuant to 
35 U.S.C. 111(b)(1).

(j) Filing date of international application. The filing date of an
international application designating the United States of America is
treated as the filing date in the United States of America under PCT
Article 11(3), except as provided in  35 U.S.C. 102(e).

37 CFR 1.53 relates to application numbers, filing dates, and completion
of applications.  37 CFR 1.53(a) indicates that an application number is
assigned for identification purposes to any paper which purports to be
an application for a patent, even if the application is incomplete or
informal. The remaining sections of  37 CFR 1.53 treat nonprovisional
applications filed under  35 U.S.C. 111(a) separately from provisional
applications filed under  35 U.S.C. 111(b).

37 CFR 1.53(d) sets forth the filing date requirements for a continued
prosecution application (CPA).  A CPA is a nonprovisional application
which must be filed on or after December 1, 1997.  Only a continuation
or divisional application (but not a continuation-in-part) may be filed
as a CPA.  See MPEP Section  201.06(d).

---SECTION---601.01(a) Nonprovisional Applications Filed Under 35 U.S.C.
111(a)

The procedure for filing a nonprovisional application under  35 U.S.C.
111(a) is set forth in  37 CFR 1.53(b) and  37 CFR 1.53(d). 37 CFR
1.53(b) may be used to file any original, reissue, or substitute
nonprovisional application and any continuing application, i.e.,
continuation, divisional, or continuation-in-part.  Under  37 CFR
1.53(b), a filing date is assigned to a nonprovisional application as of
the date a specification containing a description and claim and any
necessary drawings are filed in the Patent and Trademark Office. 
Failure to meet any of the requirements in  37 CFR 1.53(b) will result
in the application being denied a filing date.  The filing date to be
accorded such an application is the date on which all of the
requirements of  37 CFR 1.53(b) are met.

37 CFR 1.53(d) may be used to file either a continuation or a divisional
application (but not a continuation-in-part) of a prior nonprovisional
application.  The prior nonprovisional application must be either (1)
complete as defined by  37 CFR 1.51(b), or (2) the national stage of an
international application in compliance with  35 U.S.C. 371.  Any
application filed under  37 CFR 1.53(d) must disclose and claim only
subject matter disclosed in the prior nonprovisional application and
must name as inventors the same or less than all of the inventors named
in the prior nonprovisional application.  Under  37 CFR 1.53(d), the
filing date assigned is the date on which a request, on a separate
paper, for an application under  37 CFR 1.53(d) is filed.  An
application filed under  37 CFR 1.53(d) must be filed before the
earliest of: 

(A) payment of the issue fee on the prior application, unless a petition
under  37 CFR 1.313(b)(5) is granted in the prior application;

(B) abandonment of the prior application; or

(C) termination of proceedings on the prior application.

The filing fee for an application filed under  37 CFR 1.53(b) or  37 CFR
1.53(d) and the oath or declaration for an application filed under  37
CFR 1.53(b) can be submitted after the filing date.  However, no
amendment may introduce new matter into the disclosure of an application
after its filing date.

37 CFR 1.53(e) provides for notifying applicant of any application which
is incomplete under  37 CFR 1.53(b) or  37 CFR 1.53(d) and giving the
applicant a time period to correct any omission.  If the omission is not
corrected within the time period given, the application will be returned
or otherwise disposed of and a handling fee set forth in  37 CFR 1.21(n)
will be retained from any refund of a filing fee.

37 CFR 1.53(f) provides that, where a filing date has been assigned to
an application filed under  37 CFR 1.53(b) or  37 CFR 1.53(d), the
applicant will be notified if a correspondence address has been provided
and be given a period of time in which to file the missing fee, oath or
declaration, and to pay the surcharge due in order to prevent
abandonment of the application.  The time period usually set is 2 months
from the date of notification by the Patent and Trademark Office.  This
time period may be extended under  37 CFR 1.136(a).

If the required basic filing fee is not timely paid, or the processing
and retention fee set forth in  37 CFR 1.21(l) is not paid within 1 year
of the date of mailing of the notification, the application will be
disposed of. The notification under  37 CFR 1.53(f) may be made
simultaneously with any notification pursuant to  37 CFR 1.53(e).  If no
correspondence address is included in the application, applicant has 2
months from the filing date to file the fee, oath or declaration and to
pay the surcharge as set forth in  37 CFR 1.16(e) in order to prevent
abandonment of the application or one year from the filing date to pay
the processing and retention fee set forth in  37 CFR 1.21(l) to prevent
disposal of the application.

Copies of an application will be provided by the PTO upon request and
payment of the fee set forth in  37 CFR 1.19(b) unless the application
has been disposed of (see  37 CFR 1.53(e) and (f)).  The basic filing
fee or the processing and retention fee must be paid in a nonprovisional
application, if any claim for benefits under  35 U.S.C. 120, 121, or
365(c) based on that application is made in a subsequently filed
copending nonprovisional application. 37 CFR 1.78(a)(1).

37 CFR 1.53(h) indicates that a patent application will not be forwarded
for examination on the merits until all required parts have been
received. 37 CFR 1.53(j) indicates that international applications filed
under the Patent Cooperation Treaty which designate the United States of
America are considered to have a United States filing date under PCT
Article 11(3), except as provided in  35 U.S.C. 102(e), on the date the
requirements of PCT Article 11(1) (i) to (iii) are met.

In accordance with the provisions of  35 U.S.C. 111(a) and  37 CFR
1.53(b), a filing date is granted to an application for patent, which
includes at least a specification containing a description pursuant to 
37 CFR 1.71 and at least one claim pursuant to  37 CFR 1.75, and any
drawing referred to in the specification or required by  37 CFR 1.81(a),
which is filed in the Patent and Trademark Office. If an application
which has been accorded a filing date does not include the appropriate
filing fee or oath or declaration, applicant will be so notified and
given a period of time within which to file the missing parts to
complete the application and to pay the surcharge as set forth in  37
CFR 1.16(e) in order to prevent abandonment of the application.

Applicants should submit a copy of the notice(s) to file missing parts
and the notice(s) of incomplete applications with the reply submitted to
the Patent and Trademark Office. Applicants should also include the
application number on all correspondence to the Office. These measures
will aid the Office in matching papers to applications, thereby
expediting the processing of applications.

In order for the Office to so notify the applicant, a correspondence
address must also be provided in the application. The address may be
different from the post office address of the applicant. For example,
the address of applicant's registered attorney or agent may be used as
the correspondence address.  If applicant fails to provide the Office
with a correspondence address, the Office will be unable to provide
applicant with notification to complete the application and to pay the
surcharge as set forth in  37 CFR 1.16(e).  In such a case, applicant
will be considered to have constructive notice as of the filing date
that the application must be completed within 2 months from the filing
date before abandonment occurs per  37 CFR 1.53(f). This time period may
be extended pursuant to  37 CFR 1.136.

The oath or declaration filed in reply to such a notice under  37 CFR
1.53(f) must be executed by the inventors and must identify the
specification and any amendment filed with the specification which is
intended to be part of the original disclosure.  If an amendment is
filed with the oath or declaration filed after the filing date of the
application, it may be identified in the oath or declaration but may not
include new matter.  No new matter may be included after the filing date
of the application. See MPEP Section  608.04(b).  If the oath or
declaration improperly refers to an amendment containing new matter, a
supplemental oath or declaration will be required pursuant to  37 CFR
1.67(b), deleting the reference to the amendment containing new matter. 
If an amendment is filed on the same day that the application filed
under  37 CFR 1.53(b) is filed and is referred to in the original oath
or declaration filed with or after the application, it constitutes a
part of the original application papers and the question of new matter
is not considered. Similarly, if the application papers are altered
prior to execution of the oath or declaration and the filing of the
application, new matter is not a consideration since the alteration is
considered as part of the original disclosure.

An amendment which adds additional disclosure submitted with a request
for a continuation-in-part application filed prior to December 1, 1997
under former  37 CFR 1.62 is automatically considered a part of the
original disclosure of the application by virtue of the rule. Therefore,
the oath or declaration filed in such an application must identify the
amendment adding additional disclosure as one of the papers which the
inventor(s) has "reviewed and understands" in order to comply with  37
CFR 1.63. If the original oath or declaration submitted in a
continuation-in-part application filed prior to December 1, 1997 under
former  37 CFR 1.62 does not contain a reference to the amendment filed
with the request for an application under former  37 CFR 1.62, the
examiner must require a supplemental oath or declaration referring to
the amendment.

37 CFR 1.63 requires that an oath or declaration identify the
specification to which it is directed.  The declaration form suggested
by the Office includes spaces for filling in the names of the inventors,
title of invention, application number, filing date, foreign priority
application information and United States priority application
information. While this information should be provided, it is not
essential that all of these spaces be filled in in order to adequately
identify the specification in compliance with  37 CFR 1.63(a)(2).

The following combinations of information supplied in an oath or
declaration filed on the application filing date with a specification
are acceptable as minimums for identifying a specification and
compliance with any one of the items below will be accepted as complying
with identification requirement of  37 CFR 1.63:

(A) name of inventor(s), and reference to an attached specification
which is both attached to the oath or declaration at the time of
execution and submitted with the oath or declaration on filing;

(B) name of inventor(s), and attorney docket number which was on the
specification as filed; or

(C) name of inventor(s), and title which was on the specification as
filed.

Filing dates are now granted on applications filed without an oath or
declaration in compliance with  37 CFR 1.63, the oath or declaration
being filed later with a surcharge. The following combinations of
information supplied in an oath or declaration filed after the filed
date are acceptable as minimums for identifying a specification and
compliance with any one of the items below will be accepted as complying
with the identification requirement of  37 CFR 1.63:

(A) application number (consisting of the series code and the serial
number, e.g., 08/123,456);

(B) serial number and filing date;

(C) attorney docket number which was on the specification as filed;

(D) title which was on the specification as filed and reference to an
attached specification which is both attached to the oath or declaration
at the time of execution and submitted with the oath or declaration; or

(E) title which was on the specification as filed and accompanied by a
cover letter accurately identifying the application for which it was
intended by either the application number (consisting of the series code
and the serial number, e.g., 08/123,456), or serial number and filing
date. Absent any statement(s) to the contrary, it will be presumed that
the application filed in the PTO is the application which the
inventor(s) executed by signing the oath or declaration.

Form Paragraphs 6.05 and 6.05.20 may be used to notify applicant that
the oath or declaration is defective because the specification has not
been adequately identified. 

6.05 Oath or Declaration Defective, Heading

The oath or declaration is defective.  A new oath or declaration in
compliance with  37 CFR 1.67(a) identifying this application by
application number and filing date is required.  See MPEP Section
Section  602.01 and  602.02.

The oath or declaration is defective because:

Examiner Note:

1. One or more of the appropriate form paragraphs 6.05.01 to 6.05.20
must follow this paragraph.

2. If none of the form paragraphs apply, then an appropriate explanation
of the defect should be given immediately following this paragraph.

6.05.20 Specification Not Identified

The specification to which the oath or declaration is directed has not
been adequately identified.  See MPEP Section  601.01(a).

Examiner Note:

1. This paragraph must be preceded by form paragraph 6.05.

Any specification that is filed attached to an oath or declaration on a
date later than the application filing date will not be compared with
the specification submitted on filing. Absent any statement(s) to the
contrary, the "attached" specification will be presumed to be a copy of
the specification and any amendments thereto which were filed in the
Office in order to obtain a filing date for the application.

Any variance from the above guidelines will only be considered upon the
filing of a petition for waiver of the rules under  37 CFR 1.183
accompanied by a petition fee (37 CFR 1.17(h)).

Further an oath or declaration attached to a cover letter referencing an
incorrect application may not become associated with the correct
application and, therefore, could result in the abandonment of the
correct application.

Supplemental oaths or declarations in accordance with  37 CFR 1.67 will
be required in applications in which the oaths or declarations are not
in compliance with the other requirements of  37 CFR 1.63 but contain
sufficient information to identify the specifications to which they
apply as detailed above.

A copy, such as a photocopy or facsimile transmission, of an originally
executed oath or declaration is acceptable and may be filed (see MPEP
Section  502.01). In the event that a copy of the original is filed, the
original should be retained as evidence of authenticity. If a question
of authenticity arises, the Patent and Trademark Office may require
submission of the original. See  37 CFR 1.4(d)(1)(ii).

See MPEP Section  1896 for the identification requirements for a
declaration filed in a U.S. national stage application filed under  35
U.S.C. 371.

The periods of time within which applicant must complete the application
may be extended under the provisions of  37 CFR 1.136.  Applications
which are not completed in a timely manner will be abandoned.

---SECTION---601.01(b) Provisional Applications Filed Under 35 U.S.C.
111(b)

A provisional application will be given a filing date in accordance with 
37 CFR 1.53(c) as of the date the written description and any necessary
drawings are filed in the Office. The filing date requirements for a
provisional application set forth in  37 CFR 1.53(c) parallel the
requirements for a nonprovisional application set forth in  37 CFR
1.53(b), except that no claim is required. Amendments, other than those
required to make the provisional application comply with applicable
regulations, are not permitted after the filing date of the provisional
application.

When the specification or drawing are omitted,  37 CFR 1.53(e) requires
that the applicant be notified and given a time period in which to
submit the missing element to complete the filing. The filing date will
become the date of the completed submission. If the omission is not
provided within the prescribed time, the application will be returned or
otherwise disposed of and any fee submitted will be refunded less the
handling fee set forth in  37 CFR 1.21(n).

37 CFR 1.53(c)(1) requires all provisional applications be filed with a
cover sheet or cover letter identifying the application as a provisional
application. The Office will treat an application as having been filed
under paragraph (b), unless the application is clearly identified as a
provisional application. A provisional application, which is identified
as such, but which does not have a complete cover sheet as required by 
37 CFR 1.51(c)(1) will be treated as a provisional application. However,
the complete cover sheet and a surcharge will be required to be
submitted at a later date in conformance with  37 CFR 1.53(g).

When the provisional application does not have a complete cover sheet or
the appropriate fee, the applicant will be notified pursuant to  37 CFR
1.53(g) and given a time period in which to provide the necessary fee or
cover sheet and to pay the surcharge as set forth in  37 CFR 1.16(l) in
order to prevent abandonment of the application. The time period will
usually be set at 2 months from the date of notification. This time
period may be extended under  37 CFR 1.136(a). If the filing fee is not
timely paid, the provisional application will be disposed of. If no
correspondence address has been provided, applicant has 2 months from
the filing date to file the basic filing fee, cover sheet, and to pay
the surcharge as set forth in  37 CFR 1.16(l) in order to prevent
abandonment of the provisional application. Copies of a provisional
application will be provided by the PTO upon request and payment of the
fee set forth in  37 CFR 1.19(b) unless the provisional application has
been disposed of (see  37 CFR 1.53(e) and (g)).

The basic filing fee must be paid in a provisional application, if any
claim for benefits under  35 U.S.C. 119(e) based on that application is
made in a subsequently filed copending nonprovisional application.  37
CFR 1.78(a)(3).

37 CFR 1.53(e)(2) requires that any request for review of a refusal to
accord an application a filing date be made by way of a petition
accompanied by the fee set forth in  37 CFR 1.17(q) (see MPEP Section 
506.02).

---SECTION---601.01(c) Conversion to a Provisional Application

An application filed under  37 CFR 1.53(b) may be converted to a
provisional application in accordance with the procedure described in 
37 CFR 1.53(c)(2). The procedure requires the filing of a petition
requesting the conversion and the petition fee set forth in  37 CFR
1.17(q). Filing of the petition in the application is required prior to
the abandonment of the  37 CFR 1.53(b) application, the payment of the
issue fee, the expiration of 12 months after the filing date of the  37
CFR 1.53(b) application, or the filing of a request for a statutory
invention registration under  37 CFR 1.293, whichever event is earlier.
The grant of any such petition does not entitle applicant to a refund of
the fees properly paid in the application filed under  37 CFR 1.53(b).

---SECTION---601.01(d) Application Filed Without All Pages of
Specification

The Office of Initial Patent Examination (OIPE) reviews application
papers to determine whether all of the pages of specification are
present in the application.  If the application is filed without all of
the page(s) of the specification, but containing something that can be
construed as a written description, at least one drawing figure, if
necessary under  35 U.S.C. 113 (first sentence), and, in a
nonprovisional application, at least one claim, OIPE will mail a "Notice
of Omitted Items" indicating that the application papers so deposited
have been accorded a filing date, but are lacking some page(s) of the
specification.

The mailing of a "Notice of Omitted Items" will permit the applicant to
either:  (1) promptly establish prior receipt in the PTO of the page(s)
at issue (generally by way of a date-stamped postcard receipt (MPEP
Section  503)); or (2) promptly submit the omitted page(s) in a
nonprovisional application and accept the date of such submission as the
application filing date.  An applicant asserting that the page(s) was in
fact deposited in the PTO with the application papers must, within 2
months from the date of the "Notice of Omitted Item(s)", file a petition
under  37 CFR 1.53(e) with the petition fee set forth in  37 CFR 1.17(i)
(37 CFR 1.17(q) for a provisional application), along with evidence of
such deposit (37 CFR 1.181(f)). The petition fee will be refunded if it
is determined that the page(s) was in fact received by the PTO with the
application papers deposited on filing. An applicant desiring to submit
the omitted page(s) in a nonprovisional application and accept the date
of such submission as the application filing date must, within 2 months
from the date of the "Notice of Omitted Item(s)", file any omitted
page(s) with an oath or declaration in compliance with  37 CFR 1.63 and 
37 CFR 1.64 referring to such page(s) and a petition under  37 CFR 1.182
with the petition fee set forth in  37 CFR 1.17(h), requesting the later
filing date (37 CFR 1.181(f)). 

An applicant willing to accept the application as deposited in the PTO
need not respond to the "Notice of Omitted Items," and the failure to
file a petition under  37 CFR 1.53(e) or  37 CFR 1.182 (and the required
petition fee) as discussed above within 2 months of the date of the
"Notice of Omitted Item(s)" (37 CFR 1.181(f)) will be treated as
constructive acceptance by applicant of the application as deposited in
the PTO.  Amendment of the specification is required in a nonprovisional
application to renumber the pages consecutively and cancel any
incomplete sentences caused by the absence of the omitted page(s). Such
amendment should be by way of preliminary amendment submitted prior to
the first Office action to avoid delays in the prosecution of the
application.

If the application does not contain anything that can be construed as a
written description, OIPE will mail a Notice of Incomplete Application
(PTO-1123) indicating that the application lacks the specification
required by  35 U.S.C. 112. Applicant may file a petition under  37 CFR
1.53(e) with the petition fee set forth in  37 CFR 1.17(i) (37 CFR
1.17(q) for a provisional application), asserting that:  (1) the missing
specification was submitted; or (2) the application papers as deposited
contain an adequate written description under  35 U.S.C. 112.  The
petition under  37 CFR 1.53(e) must be accompanied by sufficient
evidence (37 CFR 1.181(b)) to establish applicant's entitlement to the
requested filing date (e.g.  , a date-stamped postcard receipt (MPEP
Section  503) to establish prior receipt in the PTO of the missing
specification). Alternatively, applicant may submit the omitted
specification, including at least one claim in a nonprovisional
application, accompanied by an oath or declaration in compliance with 
37 CFR 1.63 and  37 CFR 1.64 referring to the specification being
submitted and accept the date of such submission as the application
filing date.

Original claims form part of the original disclosure and provide their
own written description.   See In re Anderson, 471 F.2d 1237, 176 USPQ
331 (CCPA 1973).  As such, an application that contains at least one
claim, but does not contain anything which can be construed as a written
description of such claim(s), would be unusual.

In instances in which a "Notice of Incomplete Application" has been
mailed, further action by applicant is necessary for the application to
be accorded a filing date.  As such, the application will be retained in
OIPE to await such action.  Unless applicant either completes the
application or files a petition under  37 CFR 1.53(e) with the petition
fee set forth in  37 CFR 1.17(i) (37 CFR 1.17(g) for a provisional
application), within the period set in the "Notice of Incomplete
Application," the application will be processed as an incomplete
application under  37 CFR 1.53(e).

In instances in which a "Notice of Omitted Items" has been mailed, the
application will be retained in OIPE for a period of 2 months from the
mailing date of "Notice of Omitted Items" to permit applicant to either: 
(1) establish prior receipt in the PTO of the page(s) or drawing(s) at
issue; or (2) promptly submit the omitted page(s) or drawing(s) in a
nonprovisional application and accept the date of such submission as the
application filing date.  As an applicant may, but is not required to,
reply to such a "Notice of Omitted Items," extensions of time under  37
CFR 1.136 will not be applicable to this 2-month time period.

Unless applicant timely files a petition under  37 CFR 1.53(e) or  37
CFR 1.182 with the required petition fee, the application will maintain
the filing date as of the date of deposit of the application papers in
the PTO, and the original application papers (i.e., the original
disclosure of the invention) will include only those application papers
present in the PTO on the date of deposit. Nonprovisional applications
that are complete under  37 CFR 1.51(b) will then be forwarded to the
appropriate examining group for examination of the application.
Provisional applications that are complete under  37 CFR 1.51(c) will
then be forwarded to Files Repository.  The current practice for
treating applications that are not complete under  37 CFR 1.51(b) and
(c) will remain unchanged (37 CFR 1.53(f) and (g)).

Any petition under  37 CFR 1.53(e) or  37 CFR 1.182 not filed within the
2-month period set in the "Notice of Omitted Item(s)" may be dismissed
as untimely. 37 CFR 1.181(f). Under the adopted procedure, the PTO may
strictly adhere to the 2-month period set forth in  37 CFR 1.181(f), and
dismiss as untimely any petition not filed within the 2-month period.
This strict adherence to the 2-month period set forth in  37 CFR
1.181(f) is justified as such applications will now be forwarded for
examination at the end of the 2-month period.  It is further justified
in instances in which applicant seeks to submit the omitted page(s) or
drawing(s) in a nonprovisional application and request the date of such
submission as the application filing date as:  (1) according the
application a filing date later than the date of deposit may affect the
date of expiration of any patent issuing on the application due to the
changes to  35 U.S.C. 154 contained in Public Law 103-465, Section  532,
108 Stat. 4809 (1994); and (2) the filing of a continuation-in-part
application is a sufficiently equivalent mechanism for adding additional
subject matter to avoid the loss of patent rights.

The submission of omitted page(s) or drawing(s) in a nonprovisional
application and acceptance of the date of such submission as the
application filing date is tantamount to simply filing a new
application. Thus, applicants should consider filing a new application
as an alternative to submitting a petition under  37 CFR 1.182 (with the
petition fee under  37 CFR 1.17(h)) with any omitted page(s) or
drawing(s), which is a cost effective alternative in instances in which
a nonprovisional application is deposited without filing fees. 
Likewise, in view of the relatively low filing fee for provisional
applications, and the PTO's desire to minimize the processing of
provisional applications, the PTO will not grant petitions under  37 CFR
1.182 to accept omitted page(s) or drawing(s) and accord an application
filing date as of the date of such submission in provisional
applications.  The applicant should simply file a new completed
provisional application.

---SECTION---601.01(e) Nonprovisional Application Filed Without At Least
One Claim

35 U.S.C. 111(a)(2) requires that an application for patent include,
inter alia, "a specification as prescribed by section 112 of this
title," and  35 U.S.C. 111(a)(4) provides that the "filing date of an
application shall be the date on which the specification and any
required drawing are received in the Patent and Trademark Office." 35
U.S.C. 112, first paragraph, provides, in part, that "[t]he
specification shall contain a written description of the invention," and 
35 U.S.C. 112, second paragraph, provides that "[t]he specification
shall conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the applicant regards as
his invention." Also, the Court of Appeals for the Federal Circuit
stated in Litton Systems, Inc. v. Whirlpool Corp.:

Both statute,  35 U.S.C. 111 [(a)], and federal regulations,  37 CFR
1.51 [(b)], make clear the requirement that an application for a patent
must include . . . a specification and claims. . . .  The omission of
any one of these component parts makes a patent application incomplete
and thus not entitled to a filing date. 728 F.2d 1423, 1437, 221 USPQ
97, 105 (Fed. Cir. 1984)(citing Gearon v. United States, 121 F. Supp
652, 654, 101 USPQ 460, 461 (Ct. Cl. 1954), cert. denied, 348 U.S. 942,
104 USPQ 409 (1955))(emphasis in the original).

Therefore, in an application filed under  35 U.S.C. 111(a), a claim is a
statutory requirement for according a filing date to the application. 
35 U.S.C. 162 and  35 U.S.C. 171 make  35 U.S.C. 112 applicable to plant
and design applications, and  35 U.S.C. 162 specifically requires the
specification in a plant patent application to contain a claim.  35
U.S.C. 111(b)(2), however, provides that "[a] claim, as required by the
second through fifth paragraphs of section 112, shall not be required in
a provisional application."  Thus, with the exception of provisional
applications filed under  35 U.S.C. 111(b), any application filed
without at least one claim is incomplete and not entitled to a filing
date.

If a nonprovisional application doesnot contain at least one claim, a "Notice of Incomplete Application"
will be mailed to the applicant(s) indicating that no filing date has
been granted and setting a period for submitting a claim. The filing
date will be the date of receipt of at least one claim. See In re
Mattson, 208 USPQ 168 (Comm'r Pat. 1980). An oath or declaration in
compliance with  37 CFR 1.63 and  37 CFR 1.64 referring to the claim
being submitted is also required.

As  37 CFR 1.53(c)(2) permits the conversion of an application filed
under  35 U.S.C. 111(a) to an application under  35 U.S.C. 111(b), an
applicant in an application, other than for a design patent, filed under 
35 U.S.C. 111(a) on or after June 8, 1995, without at least one claim
has the alternative of filing a petition under  37 CFR 1.53(c)(2) to
convert such application into an application under  35 U.S.C. 111(b),
which does not require a claim to be entitled to its date of deposit as
a filing date. Such a petition, however, must be filed prior to the
expiration of 12 months after the date of deposit of the application
under  35 U.S.C. 111(a), and comply with the other requirements of  37
CFR 1.53(c)(2).  See MPEP Section  601.01(c).

The treatment of an application subsequent to the mailing of a "Notice
of Incomplete Application" is discussed in MPEP Section  601.01(d).

---SECTION---601.01(f) Applications Filed Without Drawings

35 U.S.C. 111(a)(2)(B) and  35 U.S.C. 111(b)(2)(B) each provide, in
part, that an "application shall include . . . a drawing as prescribed
by section 113 of this title" and  35 U.S.C. 111(a)(4) and  35 U.S.C.
111(b)(4) each provide, in part, that the "filing date . . . shall be
the date on which . . . any required drawing are received in the Patent
and Trademark Office." 35 U.S.C. 113 (first sentence) in turn provides
that an "applicant shall furnish a drawing where necessary for the
understanding of the subject matter sought to be patented."

Applications filed without drawings are initially inspected to determine
whether a drawing is referred to in the specification, and if not,
whether a drawing is necessary for the understanding of the invention.
35 U.S.C. 113 (first sentence).

It has been PTO practice to treat an application that contains at least
one process or method claim as an application for which a drawing is not
necessary for an understanding of the invention under  35 U.S.C. 113
(first sentence). The same practice has been followed in composition
applications. Other situations in which drawings are usually not
considered necessary for the understanding of the invention under  35
U.S.C. 113 (first sentence) are:

(A) Coated articles or products:  where the invention resides solely in
coating or impregnating a conventional sheet (e.g., paper or cloth, or
an article of known and conventional character with a particular
composition), unless significant details of structure or arrangement are
involved in the article claims;

(B) Articles made from a particular material or composition:  where the
invention consists in making an article of a particular material or
composition, unless significant details of structure or arrangement are
involved in the article claims;

(C) Laminated structures:  where the claimed invention involves only
laminations of sheets (and coatings) of specified material unless
significant details of structure or arrangement (other than the mere
order of the layers) are involved in the article claims; or

(D) Articles, apparatus, or systems where sole distinguishing feature is
presence of a particular material:  where the invention resides solely
in the use of a particular material in an otherwise old article,
apparatus or system recited broadly in the claims, for example:

(1) A hydraulic system distinguished solely by the use therein of a
particular hydraulic fluid;

(2) Packaged sutures wherein the structure and arrangement of the
package are conventional and the only distinguishing feature is the use
of a particular material.

A nonprovisional application having at least one claim, or a provisional
application having at least some disclosure, directed to the subject
matter discussed above for which a drawing is usually not considered
essential for a filing date, not describing drawing figures in the
specification, and filed without drawings will simply be processed for
examination, so long as the application contains something that can be
construed as a written description. A nonprovisional application having
at least one claim, or a provisional application having at least some
disclosure, directed to the subject matter discussed above for which a
drawing is usually not considered essential for a filing date,
describing drawing figure(s) in the specification, but filed without
drawings will be treated as an application filed without all of the
drawing figures referred to in the specification as discussed in MPEP
Section  601.01(g), so long as the application contains something that
can be construed as a written description.  In a situation in which the
appropriate examining group determines that drawings are necessary under 
35 U.S.C. 113 (first sentence) the filing date issue will be
reconsidered by the PTO.  The application will be returned to the Office
of Initial Patent Examination (OIPE) for mailing of a "Notice of
Incomplete Application."

If a nonprovisional application does not have at least one claim
directed to the subject matter discussed above for which a drawing is
usually not considered essential for a filing date, or a provisional
application does not have at least some disclosure directed to the
subject matter discussed above for which a drawing is usually not
considered essential for a filing date, and is filed without drawings,
OIPE will mail a "Notice of Incomplete Application" indicating that the
application lacks drawings and that  35 U.S.C. 113 (first sentence)
requires a drawing where necessary for the understanding of the subject
matter sought to be patented.

Applicant may file a petition under  37 CFR 1.53(e) with the petition
fee set forth in  37 CFR 1.17(i) (37 CFR 1.17(q) for a provisional
application), asserting that (1) the drawing(s) at issue was submitted,
or (2) the drawing(s) is not necessary under  35 U.S.C. 113 (first
sentence) for a filing date.  The petition must be accompanied by
sufficient evidence to establish applicant's entitlement to the
requested filing date (e.g., a date-stamped postcard receipt (MPEP
Section  503) to establish prior receipt in the PTO of the drawing(s) at
issue).  Alternatively, applicant may submit drawing(s) accompanied by
an oath or declaration in compliance with  37 CFR 1.63 and 1.64
referring to the drawing(s) being submitted and accept the date of such
submission as the application filing date.

In design applications, OIPE will mail a "Notice of Incomplete
Application" indicating that the application lacks the drawings required
under  35 U.S.C. 113 (first sentence).  The applicant may:  (1) promptly
file a petition under  37 CFR 1.53(e) with the petition fee set forth in 
37 CFR 1.17(i), asserting that the missing drawing(s) was submitted; or
(2) promptly submit drawing(s) accompanied by an oath or declaration in
compliance with  37 CFR 1.63 and  37 CFR 1.64 and accept the date of
such submission as the application filing date. 37 CFR 1.153(a) provides
that the claim in a design application "shall be in formal terms to the
ornamental design for the article (specifying name) as shown, or as
shown and described."  As such, petitions under  37 CFR 1.53(e)
asserting that drawings are unnecessary under  35 U.S.C. 113 (first
sentence) for a filing date in a design application will not be found
persuasive.

The treatment of an application subsequent to the mailing of a "Notice
of Incomplete Application" is discussed in MPEP Section  601.01(d).

---SECTION---601.01(g) Applications Filed Without All Figures of
Drawings

The Office of Initial Patent Examination (OIPE) reviews application
papers to determine whether all of the figures of the drawings that are
mentioned in the specification are present in the application.  If the
application is filed without all of the drawing figure(s) referred to in
the specification, and the application contains something that can be
construed as a written description, at least one drawing, if necessary
under  35 U.S.C. 113 (first sentence), and, in a nonprovisional
application, at least one claim, OIPE will mail a "Notice of Omitted
Item(s)" indicating that the application papers so deposited have been
accorded a filing date, but are lacking some of the figures of drawings
described in the specification.

The mailing of a "Notice of Omitted Item(s)" will permit the applicant
to either:  (1) promptly establish prior receipt in the PTO of the
drawing(s) at issue (generally by way of a date-stamped postcard receipt
(MPEP Section  503)); or (2) promptly submit the omitted drawing(s) in a
nonprovisional application and accept the date of such submission as the
application filing date. An applicant asserting that the drawing(s) was
in fact deposited in the PTO with the application papers must, within 2
months from the date of the "Notice of Omitted Item(s)," file a petition
under  37 CFR 1.53(e) with the petition fee set forth in  37 CFR 1.17(i)
(37 CFR 1.17(q) for a provisional application), along with evidence of
such deposit (37 CFR 1.181(f)).  The petition fee will be refunded if it
is determined that the drawing(s) was in fact received by the PTO with
the application papers deposited on filing.  An applicant desiring to
submit the omitted drawings in a nonprovisional application and accept
the date of such submission as the application filing date must, within
2 months from the date of the "Notice of Omitted Item(s)," file any
omitted drawing(s) with an oath or declaration in compliance with  37
CFR 1.63 and  37 CFR  1.64 referring to such drawing(s) and a petition
under  37 CFR 1.182 with the petition fee set forth in  37 CFR 1.17(h),
requesting the later filing date (37 CFR 1.181(f)). 

An applicant willing to accept the application as deposited in the PTO
need not respond to the "Notice of Omitted Item(s)," and the failure to
file a petition under  37 CFR 1.53(e) or  37 CFR 1.182 with the required
petition fee as discussed above within 2 months of the date of the
"Notice of Omitted Item(s)" (37 CFR 1.181(f)) will be treated as
constructive acceptance by applicant of the application as deposited in
the PTO. Amendment of the specification is required in a nonprovisional
application to cancel all references to the omitted drawing, both in the
brief and detailed descriptions of the drawings and including any
reference numerals shown only in the omitted drawings. In addition, a
separate letter is required in a nonprovisional application to renumber
the drawing figures consecutively (showing the proposed changes in red
ink), if necessary, and amendment of the specification is required to
correct the references to the drawing figures to correspond with any
relabeled drawing figures, both in the brief and detailed descriptions
of the drawings. Such amendment and correction to the drawing figures,
if necessary, should be by way of preliminary amendment submitted prior
to the first Office action to avoid delays in the prosecution of the
application.

The treatment of an application subsequent to the mailing of a "Notice
of Omitted Item(s)" is discussed in MPEP Section  601.01(d).

---SECTION---601.01(h) Forms

The following forms used by the Office of Initial Patent Examination
(OIPE) to notify applicants of defects are reproduced on the following
pages.

"Notice of Omitted Item(s) in a Nonprovisional Application Filed Under 
37 CFR 1.53(b)," Form PTO-1669;

"Notice to File Missing Parts of Application - Filing Date Granted" Form
PTO-1533;

"Notice of Incomplete Nonprovisional Application Under  37 CFR 1.53(b),"
Form PTO-1123;

"Notice to File Missing Parts of Application, No Filing Date," Form
PTO-1532;

"Notice of Informal Application" Form PTO-152;

"Notice To File Corrected Application Papers Filing Date Granted,'' Form
PTO-1660;

"Notice of Omitted Item(s) in a Provisional Application Filed Under  37
CFR 1.53(c)," Form PTO-1672.

"Notice to File Missing Parts of Provisional Application Filed Under  37
CFR 1.53(c) Filing Date Granted'' Form PTO-1627;

"Notice of Incomplete Provisional Application Under  37 CFR 1.53(c),"
Form PTO-1626;

"Notice to File Missing Parts of Provisional Application Filed Under  37
CFR 1.53(c), No Filing Date," Form PTO-1628;

"Notice of Improper Application Filed Under  37 CFR 1.60," Form
PTO-1534;

"Notice to File Missing Parts of Application Filed Under  37 CFR 1.60
Filing Date Granted;" Form PTO-1607;

"Notice to File Missing Parts of Application Filed Under  37 CFR 1.60 No
Filing Date," Form PTO-1608; and

"Notice of Improper FWC Filing Under  37 CFR 1.62 No Filing Date
Granted," Form PTO-1673.

Form PTO-1669. Notice of Omitted Items in a Nonprovisional Application
Filed Under 37 CFR 1.53(b)[GRAPHIC]

Form PTO-1533. Notice to File Missing Parts of an Application[GRAPHIC]

Form PTO-1123. Notice of Incomplete Nonprovisional Application Under 37
CFR 1.53(b)[GRAPHIC]

Form PTO-1532. Notice to File Missing Parts of an Application[GRAPHIC]

Form PTO-152. Notice of Informal Application[GRAPHIC]

Form PTO-1660. Notice to File Corrected Application Papers - Filing Date
Granted[GRAPHIC]

Form PTO-1672. Notice of Omitted Items in a Provisional Application
Filed Under 37 CFR 1.53(c)[GRAPHIC]

Form PTO-1627. Notice of to File Missing Parts of Provisional
Application Filed Under 37 CFR 1.53(c) - Filing Date Granted[GRAPHIC]

Form PTO-1626. Notice of Incomplete Provisional Application Under 37 CFR
1.53(c)[GRAPHIC]

Form PTO-1628. Notice to File Missing Parts of Provisional Application
Filed Under 37 CFR 1.53(c) - No Filing Date[GRAPHIC]

Form PTO-1534. Notice of Improper Application Filed Under 37 CFR
1.60[GRAPHIC]

Form PTO-1607. Notice to File Missing Parts of Application Filed Under
37 CFR 1.60 - Filing Date Granted[GRAPHIC]

Form PTO-1606. Notice to File Missing Parts of Application Filed Under
37 CFR 1.60 - No Filing Date[GRAPHIC]

Form PTO-1673. Notice of Improper FWC Filing Under 37 CFR 1.60[GRAPHIC]

---SECTION---601.02 Power of Attorney or Authorization of Agent

The attorney's or agent's full post office address (including ZIP code
number) must be given in every power of attorney or authority of agent.
The telephone number of the attorney or agent should also be included in
the power. The prompt delivery of communications will thereby be
facilitated.

Usually a power of attorney or authorization of agent is incorporated in
the oath or declaration form. (See MPEP Section  402.)

---SECTION---601.03 Change of Correspondence Address

Where an attorney or agent of record (or applicant, if he or she is
prosecuting the application pro se) changes his or her correspondence
address, he or she is responsible for promptly notifying the Patent and
Trademark Office of the new correspondence address (including ZIP code
number). The notification should also include his or her telephone
number. A change of correspondence address may not be signed by an
attorney or agent not of record (see MPEP Section  405).

Unless the correspondence address is designated as the address
associated with a Customer Number, a separate notification must be filed
in each application for which a person is intended to receive
communications from the Office.  See MPEP Section  403 for Customer
Number Practice.  In those instances where a change in the
correspondence address of a registered attorney or agent is necessary in
a plurality of applications, the notification filed in each application
may be a reproduction of a properly executed, original notification. The
original notice may either be sent to the Office of Enrollment and
Discipline as notification to the Attorney's Roster of the change of
address, or may be filed in one of the applications affected, provided
that the notice includes an authorization for the public to inspect and
copy the original notice in the event one of the applications containing
a copy matures into a patent and the application containing the original
paper is either pending or has become abandoned. Alternatively, the
paper containing the original signature may be retained by applicant.
See MPEP Section  502.02. The copies submitted in each affected
application must identify where the original paper is located.

Special care should be taken in continuation or divisional applications
to ensure that any change of correspondence address in a prior
application is reflected in the continuation or divisional application. 
For example, where a copy of the oath or declaration from the prior
application is submitted for a continuation or divisional application
filed under  37 CFR 1.53(b) and the copy of the oath or declaration from
the prior application designates an old correspondence address, the
Office may not recognize, in the continuation or divisional application,
the change of correspondence address made during the prosecution of the
prior application.  Applicant is required to identify the change of
correspondence address in the continuation or divisional application to
ensure that communications from the Office are mailed to the current
correspondence address. 37 CFR 1.63(d)(4).

See MPEP Section  711.03(c) for treatment of petitions to revive
applications abandoned as a consequence of failure to timely receive an
Office action addressed to the old correspondence address.

The required notification of change of correspondence address need take
no particular form. However, it should be provided in a manner calling
attention to the fact that a change of address is being made. Thus, the
mere inclusion, in a paper being filed for another purpose, of an
address which is different from the previously provided correspondence
address, without mention of the fact that an address change is being
made would not ordinarily be recognized or deemed as instructions to
change the correspondence address on the file record.

The obligation (see  37 CFR 10.11) of a registered attorney or agent to
notify the Attorney's Roster by letter of any change of his or her
address for entry on the register is separate from the obligation to
file a notice of change of address filed in individual applications. See
MPEP Section  402.

---SECTION---601.04 National Stage Requirements of the United States as
a Designated Office

See MPEP Chapter 1800, especially MPEP Section  1893.01 for requirements
for entry into the national stage before the Designated Office or
Elected Office under the Patent Cooperation Treaty (PCT).

---SECTION---602 Original Oath or Declaration 

35 U.S.C. 25 Declaration in lieu of oath.

(a) The Commissioner may by rule prescribe that any document to be filed
in the Patent and Trademark Office and which is required by any law,
rule, or other regulation to be under oath may be subscribed to by a
written declaration in such form as the Commissioner may prescribe, such
declaration to be in lieu of the oath otherwise required.

(b) Whenever such written declaration is used, the document must warn
the declarant that willful false statements and the like are punishable
by fine or imprisonment, or both (18 U.S.C. 1001).

35 U.S.C. 26 Effect of defective execution.

Any document to be filed in the Patent and Trademark Office and which is
required by any law, rule, or other regulation to be executed in a
specified manner may be provisionally accepted by the Commissioner
despite a defective execution, provided a properly executed document is
submitted within such time as may be prescribed.

35 U.S.C. 115 Oath of the applicant.

The applicant shall make oath that he believes himself to be the
original and first inventor of the process, machine, manufacture, or
composition of matter, or improvement thereof, for which he solicits a
patent; and shall state of what country he is a citizen. Such oath may
be made before any person within the United States authorized by law to
administer oaths, or, when made in a foreign country, before any
diplomatic or consular officer of the United States authorized to
administer oaths, or before any officer having an official seal and
authorized to administer oaths in the foreign country in which the
applicant may be, whose authority is proved by certificate of a
diplomatic or consular officer of the United States, or apostille of an
official designated by a foreign country which, by treaty or convention,
accords like effect to apostilles of designated officials in the United
States. Such oath is valid if it complies with the laws of the state or
country where made. When the application is made as provided in the
title by a person other than the inventor, the oath may be so varied in
form that it can be made by him.

37 CFR 1.63 Oath or declaration.

(a) An oath or declaration filed under Section  1.51(b)(2) as a part of
an application must:

(1) Be executed in accordance with either Section  1.66 or Section 
1.68;

(2) Identify the specification to which it is directed;

(3) Identify each inventor by:  full name, including the family name,
and at least one given name without abbreviation together with any other
given name or initial, and the residence, post office address and
country of citizenship of each inventor; and

(4) State whether the inventor is a sole or joint inventor of the
invention claimed.

(b) In addition to meeting the requirements of paragraph (a), the oath
or declaration must state that the person making the oath or
declaration,

(1) Has reviewed and understands the contents of the specification,
including the claims, as amended by any amendment specifically referred
to in the oath or declaration;

(2) Believes the named inventor or inventors to be the original and
first inventor or inventors of the subject matter which is claimed and
for which a patent is sought; and

(3) Acknowledges the duty to disclose to the Office all information
known to the person to be material to patentability as defined in
Section  1.56.

(c) In addition to meeting the requirements of paragraphs (a) and (b) of
this section, the oath or declaration in any application in which a
claim for foreign priority is made pursuant to Section  1.55 must
identify the foreign application for patent or inventor's certificate on
which priority is claimed, and any foreign application having a filing
date before that of the application on which priority is claimed,  by
specifying the application number, country, day, month, and year of its
filing.

(d)(1) A newly executed oath or declaration is not required under
Section  1.51(b)(2) and Section  1.53(f) in a continuation or divisional
application, provided that:

(i) The prior nonprovisional application contained an oath or
declaration as prescribed by paragraphs (a) through (c) of this section;

(ii) The continuation or divisional application was filed by all or by
fewer than all of the inventors named in the prior application;

(iii) The specification and drawings filed in the continuation or
divisional application contain no matter that would have been new matter
in the prior application; and

(iv) A copy of the executed oath or declaration filed in the prior
application, showing the signature or an indication thereon that it was
signed, is submitted for the continuation or divisional application.

(2) The copy of the executed oath or declaration submitted under this
paragraph for a continuation or divisional application must be
accompanied by a statement requesting the deletion of the name or names
of the person or persons who are not inventors in the continuation or
divisional application.

(3) Where the executed oath or declaration of which a copy is submitted
for a continuation or divisional application was originally filed in a
prior application accorded status under Section  1.47, the copy of the
executed oath or declaration for such prior application must be
accompanied by:

(i) A copy of the decision granting a petition to accord Section  1.47
status to the prior application, unless all inventors or legal
representatives have filed an oath or declaration to join in an
application accorded status under Section  1.47 of which the
continuation or divisional application claims a benefit under  35 U.S.C.
120, 121, or 365(c); and

(ii) If one or more inventor(s) or legal representative(s) who refused
to join in the prior application or could not be found or reached has
subsequently joined in the prior application or another application of
which the continuation or divisional application claims a benefit under 
35 U.S.C. 120, 121, or 365(c), a copy of the subsequently executed
oath(s) or declaration(s) filed by the inventor or legal representative
to join in the application.

(4) Where the power of attorney (or authorization of agent) or
correspondence address was changed during the prosecution of the prior
application, the change in power of attorney (or authorization of agent)
or correspondence address must be identified in the continuation or
divisional application.  Otherwise, the Office may not recognize in the
continuation or divisional application the change of power of attorney
(or authorization of agent) or correspondence address during the
prosecution of the prior application.

(5) A newly executed oath or declaration must be filed in a continuation
or divisional application naming an inventor not named in the prior
application.

(e) A newly executed oath or declaration must be filed in any
continuation-in-part application, which application may name all, more,
or fewer than all of the inventors named in the prior application. The
oath or declaration in any continuation-in-part application must also
state that the person making the oath or declaration acknowledges the
duty to disclose to the Office all information known to the person to be
material to patentability as defined in Section  1.56 which became
available between the filing date of the prior application and the
national or PCT international filing date of the continuation-in-part
application.

37 CFR 1.68 Declaration in lieu of oath.

Any document to be filed in the Patent and Trademark Office and which is
required by any law, rule, or other regulation to be under oath may be
subscribed to by a written declaration.  Such declaration may be used in
lieu of the oath otherwise required, if, and only if, the declarant is
on the same document, warned 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.

18 U.S.C. 1001 Statements or entries generally.

Whoever, in any matter within the jurisdiction of any department or
agency of the United States knowingly and willfully falsifies, conceals,
or covers up by any trick, scheme, or device a material fact, or makes
any false, fictitious or fraudulent statements or representations, or
makes or uses any false writing or document knowing the same to contain
any false, fictitious or fraudulent statement or entry, shall be fined
not more than $10,000 or imprisoned not more than five years, or both.

STATUTORY DECLARATIONS

Patent and Trademark Office personnel are authorized to accept a
statutory declaration under  28 U.S.C. 1746 filed in the Patent and
Trademark Office in lieu of an "oath" or declaration under  35 U.S.C. 25
and  37 CFR 1.68, provided that the statutory declaration otherwise
complies with the requirements of law.

Section 1746 of Title 28 of the United States Code provides:

Whenever, under any law of the United States or under any rule,
regulation, order, or requirement made pursuant to law, any matter is
required to be supported, evidenced, established, or proved by sworn
declaration, verification, certificate, statement, oath or affidavit, in
writing of the person making the same (other than a deposition, or an
oath of office, or an oath required to be taken before a specified
official other than notary public), such matter may, with like force and
effect, be supported, evidenced, established, or proved by the unsworn
declaration, certificate, verification, or statement, in writing of such
person which is subscribed by him, as true under penalty of perjury, and
dated, in substantially the following form:

   [1]	If executed without the United States:

   "I declare (or certify, verify, or state) under penalty of perjury
under the laws of the United States of America that the foregoing is
true and correct.  Executed on (date).

   (Signature)."

   [2]	If executed within the United States its territories,
possessions, or commonwealths:

   "I declare (or certify, verify, or state) under penalty of perjury
that the foregoing is true and correct.   Executed on (date).

   (Signature)."

Oaths and declarations submitted in applications filed after May 1, 1975
must make reference to applications for inventor's certificates on which
priority is claimed and any filed prior to the filing date of an
application on which priority is claimed.

A  37 CFR 1.68 declaration need not be ribboned to the other papers,
even if signed in a country foreign to the United States. When a
declaration is used, it is unnecessary to appear before any official in
connection with the making of the declaration. It must, however, since
it is an integral part of the application, be maintained together
therewith.

By statute,  35 U.S.C. 25, the Commissioner has been empowered to
prescribe instances when a written declaration may be accepted in lieu
of the oath for "any document to be filed in the Patent and Trademark
Office".

The filing of a written declaration is acceptable in lieu of an original
application oath that is informal.

If all foreign applications have been filed within 12 months of the U.S.
filing date, applicant is required only to recite the first such foreign
application of which priority is claimed, and it should be clear that
the foreign application referred to is the first filed foreign
application. The applicant is required to recite all foreign
applications filed prior to the application on which priority is
claimed. It is required to give the foreign application number and name
of the country or office in which filed, as well as the filing date of
the first filed foreign application.

In the oath, the jurat must be filled out, and the word  "sole"  or 
"only"  must appear if there is but one inventor, and  "joint" if two or
more inventors.

When joint inventors execute separate oaths or declarations, each oath
or declaration should make reference to the fact that the affiant is a
joint inventor together with each of the other inventors indicating them
by name. This may be done by stating that he or she does verily believe
himself or herself to be the original, first and joint inventor together
with  "A" or "A & B, etc."  as the facts may be.

A seal is usually impressed on an oath. See MPEP Section  604 and
Section  604.01 and  37 CFR 1.66.  However, oaths executed in many
states including Alabama, Louisiana, Maryland, Massachusetts, New
Jersey, New York, Rhode Island, South Carolina, and Virginia need not be
impressed with a seal.

If a claim is presented for matter not originally claimed or embraced in
the original statement of invention in the specification a supplemental
oath or declaration is required,  37 CFR 1.67,  MPEP Section  603.

A provisional application does not require an oath or declaration to be
complete. See  37 CFR 1.51(c).

The following form paragraphs may be used to indicate errors in the oath
or declaration.

6.05 Oath or Declaration Defective, Heading

The oath or declaration is defective.  A new oath or declaration in
compliance with  37 CFR 1.67(a) identifying this application by
application number and filing date is required.  See MPEP Section
Section  602.01 and  602.02.

The oath or declaration is defective because:

Examiner Note:

1. One or more of the appropriate form paragraphs 6.05.01 to 6.05.20
must follow this paragraph.

2. If none of the form paragraphs apply, then an appropriate explanation
of the defect should be given immediately following this paragraph.

6.05.01 Improper Execution

It was not executed in accordance with either  37 CFR 1.66 or 1.68.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

6.05.04 Sole or Joint Designation Omitted

It does not state whether the inventor is a sole or joint inventor of
the invention claimed.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

6.05.05 "Reviewed and Understands" Statement Omitted

It does not state that the person making the oath or declaration has
reviewed and understands the contents of the specification, including
the claims, as amended by any amendment specifically referred to in the
oath or declaration.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

6.05.06 Original and First Omitted

It does not state that the person making the oath or declaration
believes the named inventor or inventors to be the original and first
inventor or inventors of the subject matter which is claimed and for
which a patent is sought.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

6.05.07 Duty To Disclose Omitted

It does not state that the person making the oath or declaration
acknowledges the duty to disclose to the Office all information known to
the person to be material to patentability as defined in  37 CFR 1.56.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

6.05.08 Identification of Foreign Applications Omitted

It does not identify the foreign application for patent or inventor's
certificate on which priority is claimed pursuant to  37 CFR 1.55, and
any foreign application having a filing date before that of the
application on which priority is claimed, by specifying the application
number, country, day, month and year of its filing.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

6.05.09 Duty To Disclose in C-I-P Omitted

It does not state that the person making the oath or declaration in a
continuation-in-part application filed under the conditions specified in 
35 U.S.C. 120 which discloses and claims subject matter in addition to
that disclosed in the prior copending application, acknowledges the duty
to disclose to the Office all information known to the person to be
material to patentability as defined in  37 CFR 1.56 which became
available between the filing date of the prior application and the
national or PCT international filing date of the continuation-in-part
application.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

6.05.15 Not in Permanent Ink

The [1] is not in permanent ink, or its equivalent in quality, as
required under  37 CFR 1.52(a).

Examiner Note:

1. In bracket 1, insert either signature or oath/declaration.

2. This paragraph must be preceded by form paragraph 6.05.

3. If other portions of the disclosure are not in permanent ink, use
form paragraph 6.32.

6.05.16 Non-Initialed/Non-Dated Alterations

Non-initialed and/or non - dated alterations have been made to the oath
or declaration.  See  37 CFR 1.52(c).

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

6.05.17 Declaration Clause Omitted

The clause regarding "willful false statements ..." required by  37 CFR
1.68 has been omitted.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

Form PTO/SB/01. Declaration for Utility or Design Patent Application (37
CFR 1.83)[GRAPHIC]

[GRAPHIC]

---SECTION---602.01 Oath Cannot Be Amended

The wording of an oath or declaration cannot be amended, altered or
changed in any manner after it has been signed. If the wording is not
correct or if all of the required affirmations have not been made, or if
it has not been properly subscribed to, a new oath or declaration must
be required.  However, in some cases, a deficiency in the oath or
declaration can be corrected by a supplemental paper and a new oath or
declaration is not necessary.

For example, if the oath does not set forth evidence that the notary was
acting within his or her jurisdiction at the time he or she administered
the oath, a certificate of the notary that the oath was taken within his
or her jurisdiction will correct the deficiency. See MPEP Section  602
and Section  604.02.

Applicant may be so advised by using Form Paragraph 6.03.

6.03 Oath, Declaration Cannot Be Amended

A new oath or declaration is required because [1].  The wording of an
oath or declaration cannot be amended.  If the wording is not correct or
if all of the required affirmations have not been made or if it has not
been properly subscribed to, a new oath or declaration is required.  The
new oath or declaration must properly identify the application of which
it is to form a part, preferably by application number and filing date
in the body of the oath or declaration.  See MPEP Section Section 
602.01 and  602.02.

Examiner Note:

1. This form paragraph is intended primarily for use in pro se
applications.

2. Use form paragraph 6.05 and one or more of form paragraphs 6.05.01 to
6.05.20 for a defective oath or declaration in a case where there is a
power of attorney.

---SECTION---602.02 New Oath or Substitute for Original

In requiring a new oath or declaration, the examiner should always give
the reason for the requirement and call attention to the fact that the
application of which it is to form a part must be properly identified in
the body of the new oath or declaration, preferably by giving the
application number and the date of filing.  Any one of the combinations
of information identified in MPEP Section   601.01(a) as acceptable for
an oath or declaration filed after the filing date may be used.

Where neither the original oath or declaration, nor the substitute oath
or declaration is complete in itself, but the two taken together give
all the required data, no further oath or declaration is needed.

---SECTION---602.03 Defective Oath or Declaration

In the first Office action the examiner must point out every deficiency
in a declaration or oath and require that the same be remedied.
Applicant may be informed of deficiencies in the declaration or oath by
Form Paragraphs 6.05 and 6.05.01 - 6.05.20.

The following Form Paragraph 6.05 must be used to introduce one or more
of Form Paragraphs 6.05.01 - 6.05.20, which explain errors in the oath
or declaration.

6.05 Oath or Declaration Defective, Heading

The oath or declaration is defective.  A new oath or declaration in
compliance with  37 CFR 1.67(a) identifying this application by
application number and filing date is required.  See MPEP Section
Section  602.01 and  602.02.

The oath or declaration is defective because:

Examiner Note:

1. One or more of the appropriate form paragraphs 6.05.01 to 6.05.20
must follow this paragraph.

2. If none of the form paragraphs apply, then an appropriate explanation
of the defect should be given immediately following this paragraph.

However, when an application is otherwise ready for issue, an examiner
with full signatory authority may waive the following minor
deficiencies:

Minor deficiencies in the body of the oath or declaration where the
deficiencies are self-evidently cured in the rest of the oath or
declaration, as in an oath or declaration of plural inventors couched in
plural terms except for use of  "sole inventors"  is asserted.  In re
Searles, 422 F.2d 431, 437, 164 USPQ 623, 628 (CCPA 1970).

If the above is waived, the examiner with full signatory authority
should write in the margin of the declaration or oath a notation such as 
"Reference to the sole inventor rather than joint inventors waived;
Application ready for issue." and his or her initials and the date.

Of course, requirements of the statute, e.g., that the applicant state
his or her citizenship or believes himself or herself to be the original
and first inventor or that the oath be administered before a person
authorized to administer oaths or that a declaration pursuant to  35
U.S.C. 25 or  28 U.S.C. 1746 contain the language required therein,
cannot be waived.

If the defect cannot be waived, Form Paragraph 6.46 should be used when
the application is allowable.

6.46 Application Allowed, Substitute Declaration Needed

Applicant is now required to submit a substitute declaration or oath to
correct the deficiencies set forth   [1].  The substitute oath or
declaration must be filed within the THREE MONTH shortened statutory
period set for reply in the "Notice of Allowability" (PTOL-37 or
PTO-37).  Extensions of time may be obtained under the provisions of  37
CFR 1.136(a).  Failure to timely file the substitute declaration (or
oath) will result in ABANDONMENT of the application.  The transmittal
letter accompanying the declaration (or oath) should indicate the
following in the upper right hand corner: Issue Batch Number, date of
the "Notice of Allowance" (PTOL-85), and application number.

Examiner Note:

In the bracket, insert appropriate information, e.g., --in this
communication--, --in the Office action mailed ________--, or --in the
PTO-152 attached to Paper No.___--.

---SECTION---602.04 Foreign Executed Oath

An oath executed in a foreign country must be properly authenticated.
See MPEP Section  604 and  37 CFR 1.66.

Where the authority of the foreign officer is not certified, Form
Paragraphs 6.05 (reproduced in MPEP Section   602.03) and 6.05.13 may be
used.

6.05.13 Authority of Foreign Officer Not Certified

It does not include an apostille, a consular certificate, or the
position of authority of the officer signing an apostille or consular
certificate, see  37 CFR 1.66(a).

Examiner Note:

This paragraph applies only to foreign executed oaths and must be
preceded by form paragraph 6.05.

---SECTION---602.04(a) Foreign Executed Oath Is Ribboned to Other
Application Papers

37 CFR 1.66 Officers authorized to administer oaths.

                  +++    

(b) When the oath is taken before an officer in a country foreign to the
United States, any accompanying application papers, except the drawings,
must be attached together with the oath and a ribbon passed one or more
times through all the sheets of the application, except the drawings,
and the ends of said ribbon brought together under the seal before the
latter is affixed and impressed, or each sheet must be impressed with
the official seal of the officer before whom the oath is taken.  If the
papers as filed are not properly ribboned or each sheet impressed with
the seal, the case will be accepted for examination, but before it is
allowed, duplicate papers, prepared in compliance with the foregoing
sentence, must be filed.

Where the papers are not properly ribboned, use Form Paragraphs 6.05
(reproduced in MPEP Section  602.03) and 6.05.14.

6.05.14 No Ribbon Properly Attached

It does not have a ribbon properly attached.

Examiner Note:

This paragraph applies only to foreign executed oaths and must be
preceded by form paragraph 6.05.

U.S. ACCESSION TO HAGUE CONVENTION ABOLISHING THE REQUIREMENT OF
LEGALIZATION FOR FOREIGN PUBLIC DOCUMENTS

On Oct. 15, 1981, the Hague "Convention Abolishing the Requirement of
Legalization for Foreign Public Documents" entered into force between
the United States and 28 foreign countries as parties to the Convention.
Subsequently, additional countries have become parties to the
Convention.  The Convention applies to any document submitted to the
United States Patent and Trademark Office for filing or recording, which
is sworn to or acknowledged by a notary public in any one of the member
countries. The Convention abolishes the certification of the authority
of the notary public in a member country by a diplomatic or consular
officer of the United States and substitutes certification by a special
certificate, or apostille, executed by an officer of the member country. 
Accordingly, the Office will accept for filing or recording a document
sworn to or acknowledged before a notary public in a member country if
the document bears, or has appended to it, an apostille certifying the
notary's authority. The requirement for a diplomatic or consular
certificate, specified in  37 CFR 1.66, will not apply to a document
sworn to or acknowledged before a notary public in a member country if
an apostille is used.

The member countries that are parties to the Convention are:

Andorra, Angola1, Anguilla, Antigua and Barbuda, Argentina, Armenia2,
Aruba, Australia, Austria, Bahamas, Barbados, Belarus2, Belgium, Belize,
Bermuda, Bosnia-Herzegovina3, Botswana, British Antarctic Territory,
British Virgin Islands, Brunei, Cayman Islands, Comoros Islands
(formerly Moroni)1, Croatia3, Cyprus, Djibouti (formerly Affars and
Issas)1, Dominica1, El Salvador, Falkland Islands, Fiji, Finland,
France, French Guiana, French Polynesia, Guadeloupe, Germany, Gibraltar,
Greece, Grenada1, Guernsey (Bailiwick of), Hong Kong, Hungary, Isle of
Man, Israel, Italy, Japan, Jersey (Bailiwick of), Kiribati (formerly
Gilbert Islands)1, Latvia, Lesotho, Liechtenstein, Luxembourg,
Macedonia3, Malawi, Malta, Marshall Islands, Martinique, Mauritius,
Mexico, Montserrat, Mozambique1, Netherlands, Netherlands Antilles
(Curacao, Bonaire, St. Martin, St. Eustatius and Saba), New Caledonia,
Norway, Panama, Portugal, Reunion, Russian Federation2, St. Christopher
(Kitts) and Nevis, St. Georgia and South Sandwich Islands, St. Helena,
St. Lucia, St. Pierre and Miquelon, St. Vincent and the Grenadines, San
Marino, Seychelles, Slovenia3, Solomon Islands (formerly British Solomon
Islands)1, South Africa, Spain, Suriname, Swaziland, Switzerland, Tonga,
Turkey, Turks and Caicos, Tuvalu (formerly Ellice Islands)1, United
Kingdom, United States, Vanuatu (formerly New Hebrides)1, Wallis and
Futuna. [Footnote]This country achieved independence.  No declaration
has been made on the continuation in force of the Convention.
[Footnote]On September 4, 1991, the Union of Soviet Socialist Republics
(USSR) deposited an instrument of accession to the Convention.  The
Convention was to have entered into force for the USSR on April 1, 1992. 
Prior to that date, the USSR dissolved.  Three members of the Newly
Independent States (NIS), the Russian Federation, the Belarus Republic
and Armenia have informed the depositary for the Convention that the
Convention applies in those jurisdiction.  It is not clear whether other
NIS countries are applying the Convention.  Even if other NIS countries
were to consider the Convention to apply, it may not be operational. 
Each jurisdiction must designate an authority competent to issue the
Convention certificate (apostille) before the Convention can be
operational. [Footnote]Former Yugoslavia was a party to the Convention. 
Slovenia, Macedonia, Bosnia-Herzegovina and Croatia have informed the
depositary that they consider the Convention to apply and have
designated a competent authority to issue the Convention certificate
(apostille).

The Convention prescribes the following form for the apostille:

Model of Certificate

The certificate will be in the form of a square with sides at least 9
centimeters long.

[GRAPHIC]

Note that a declaration in lieu of application oath (37 CFR 1.68) need
not be ribboned to the other papers.  It must, however, be maintained
together therewith.

---SECTION---602.05 Oath or Declaration - Date of Execution 

The Office no longer checks the date of execution of the oath or
declaration and the Office will no longer require a newly executed oath
or declaration based on an oath or declaration being stale (that is when
the date of execution is more than 3 months prior to the filing date of
the application) or where the date of execution has been omitted.
However, applicants are reminded that they have a continuing duty of
disclosure under  37 CFR 1.56.

---SECTION---602.05(a) Oath or Declaration in Continuation and
Divisional Applications

A continuation or divisional application filed under  37 CFR 1.53(b)
(other than a continuation-in-part (CIP)) may be filed with a copy of
the oath or declaration from the prior nonprovisional application.  See 
37 CFR 1.63(d)(1)(iv).

A copy of an oath or declaration from a prior application may be
submitted with a continuation or divisional application even if the oath
or declaration identifies the application number of the prior
application.  However, if such a copy of the oath or declaration is
filed after the filing date of the continuation or divisional
application and an application number has been assigned to the
continuation or divisional application (see  37 CFR 1.5(a)), the cover
letter accompanying the oath or declaration should identify the
application number of the continuation or divisional application.  The
cover letter should also indicate that the oath or declaration submitted
is a copy of the oath or declaration from a prior application to avoid
the oath or declaration being incorrectly matched with the prior
application file.  Furthermore, applicant should also label the copy of
the oath or declaration with the application number of the continuation
or divisional application in the event that the cover letter is
separated from the copy of the oath or declaration.

A copy of the oath or declaration from a prior nonprovisional
application may be filed in a continuation or divisional application
even if the specification for the continuation or divisional application
is different from that of the prior application, in that revisions have
been made to clarify the text or other changes have been made provided
the changes do not constitute new matter relative to the prior
application.  If the examiner determines that the continuation or
divisional application contains new matter relative to the prior
application, the examiner should notify the applicant in the next Office
action that a new oath or declaration and a surcharge set forth in  37
CFR 1.16(e) are required and that the application should be redesignated
as a continuation-in-part. 

A continuation or divisional application of a prior application accorded
status under  37 CFR 1.47 will be accorded status under  37 CFR 1.47 if
a copy of the decision according  37 CFR 1.47 status in the prior
application is filed in the continuation or divisional application,
unless an oath or declaration signed by all of the inventors is included
upon filing the continuation or divisional application.  An oath or
declaration in an application accorded status under  37 CFR 1.47 is
generally not signed by all of the inventors.  Accordingly, if a copy of
an oath or declaration of a prior application is submitted in a
continuation or divisional application filed under  37 CFR 1.53(b) and
the copy of the oath or declaration omits the signature of one or more
inventors, the Office of Initial Patent Examination (OIPE) should send a
"Notice to File Missing Parts" requiring the signature of the nonsigning
inventor, unless a copy of the decision according status under  37 CFR
1.47 is also included at the time of filing of the continuation or
divisional application.  If OIPE mails such a Notice, a copy of the
decision according status under  37 CFR 1.47, together with a surcharge
under  37 CFR 1.16(e) for its late filing, will be an acceptable reply
to the Notice.  Alternatively, applicant may submit an oath or
declaration signed by the previously nonsigning inventor together with
the surcharge set forth in  37 CFR 1.16(e) in reply to the Notice.

If an inventor named in a prior application is not an inventor in a
continuation or divisional application filed under  37 CFR 1.53(b), the
continuation or divisional application may either be filed (1) with a
copy of an oath or declaration from a prior application and a statement
requesting the deletion of the name or names of the person or persons
who are not inventors of the invention being claimed in the continuation
or divisional application (see  37 CFR 1.63(d)), or (2) a newly executed
oath or declaration naming the correct inventive entity.  If an inventor
named in a prior application is not an inventor in a continuation or
divisional application filed under  37 CFR 1.53(d), the request for
filing the continuation or divisional application must be accompanied by
a statement requesting the deletion of the name or names of the person
or persons who are not inventors of the invention being claimed in the
continuation or divisional application (see  37 CFR 1.53(d)(4)).

A continuation or divisional application filed under  37 CFR 1.53(b) of
a prior application in which a petition under  37 CFR 1.48 to add an
inventor was filed should be filed with a copy of the executed
declaration naming the correct inventive entity from the prior
application or a newly executed declaration naming the correct inventive
entity.  A copy of any decision under  37 CFR 1.48 from the prior
application is not required to be filed in the continuation or
divisional application.

---SECTION---602.06 Non-English Oath or Declaration

37 CFR 1.69 Foreign language oaths and declarations.

(a) Whenever an individual making an oath or declaration cannot
understand English, the oath or declaration must be in a language that
such individual can understand and shall state that such individual
understands the content of any documents to which the oath or
declaration relates.

(b) Unless the text of any oath or declaration in a language other than
English is a form provided or approved by the Patent and Trademark
Office, it must be accompanied by an English translation together with a
statement that the translation is accurate, except that in the case of
an oath or declaration filed under Section  1.63, the translation may be
filed in the Office no later than two months from the date applicant is
notified to file the translation.

37 CFR 1.69 requires that oaths and declarations be in a language which
is understood by the individual making the oath or declaration, i.e., a
language which the individual comprehends. If the individual comprehends
the English language, he or she should preferably use it. If the
individual cannot comprehend the English language, any oath or
declaration must be in a language which the individual can comprehend.
If an individual uses a language other than English for an oath or
declaration, the oath or declaration must include a statement that the
individual understands the content of any documents to which the oath or
declaration relates. If the documents are in a language the individual
cannot comprehend, the documents may be explained to him or her so that
he or she is able to understand them.

The Office will accept a single non-English language oath or declaration
where there are joint inventors, of which only some understand English
but all understand the non-English language of the oath or declaration.

---SECTION---602.07 Oath or Declaration Filed in United States as a
Designated Office

See MPEP Section  1893.01.

---SECTION---603 Supplemental Oath or Declaration

37 CFR 1.67 Supplemental oath or declaration.

(a) A supplemental oath or declaration meeting the requirements of
Section  1.63 may be required to be filed to correct any deficiencies or
inaccuracies present in an earlier filed oath or declaration.

(b) A supplemental oath or declaration meeting the requirements of
Section  1.63 must be filed when a claim is presented for matter
originally shown or described but not substantially embraced in the
statement of invention or claims originally presented or when an oath or
declaration submitted in accordance with Section  1.53(f) after the
filing of the specification and any required drawings specifically and
improperly refers to an amendment which includes new matter. No new
matter may be introduced into a nonprovisional application after its
filing date even if a supplemental oath or declaration is filed.  In
proper situations, the oath or declaration here required may be made on
information and belief by an applicant other than the inventor.

(c) A supplemental oath or declaration meeting the requirements of
Section  1.63 must also be filed if the application was altered after
the oath or declaration was signed or if the oath or declaration was
signed: (1) In blank; (2) Without review thereof by the person making
the oath or declaration; or (3) Without review of the specification,
including the claims, as required by Section  1.63(b)(1).

37 CFR 1.67 requires in the supplemental oath or declaration
substantially all the data called for in  37 CFR 1.63 for the original
oath or declaration. As to the purpose to be served by the supplemental
oath or declaration, the examiner should bear in mind that it cannot be
availed of to introduce new matter into an application.

When an inventor who executed the original declaration is refusing or
cannot be found to execute a required supplemental declaration, it is
possible that the requirement may be suspended or waived in accordance
with  37 CFR 1.183.

A new oath may be required by using Form Paragraph 6.06.

6.06 New Oath for Subject Matter Not Originally Claimed

This application presents a claim for subject matter not originally
claimed or embraced in the statement of the invention.  [1].  A
supplemental oath or declaration is required under  37 CFR 1.67.  The
new oath or declaration must properly identify the application of which
it is to form a part, preferably by application number and filing date
in the body of the oath or declaration.  See MPEP Section Section 
602.01 and  602.02.

Examiner Note:

Explain new claimed matter in bracket 1.  The brief summary of the
invention must be commensurate with the claimed invention and may be
required to be modified.  See MPEP Section  608.01(d) and  1302, and  37
CFR 1.73.

---SECTION---603.01 Supplemental Oath or Declaration Filed After
Allowance 

Since the decision in Cutter Co. v. Metropolitan Electric Mfg. Co., 275
F. 158 (2d Cir. 1921), many supplemental oaths and declarations covering
the claims in the case have been filed after the case is allowed. Such
oaths and declarations may be filed as a matter of right and when
received they will be placed in the file by the Office of Patent
Publication, but their receipt will not be acknowledged to the party
filing them. They should not be filed or considered as amendments under 
37 CFR 1.312, since they make no change in the wording of the papers on
file. See MPEP Section  714.16.

---SECTION---604 Administration or Execution of Oath 

37 CFR 1.66 Officers authorized to administer oaths.

(a) The oath or affirmation may be made before any person within the
United States authorized by law to administer oaths. An oath made in a
foreign country, may be made before any diplomatic or consular officer
of the United States authorized to administer oaths, or before any
officer having an official seal and authorized to administer oaths in
the foreign country in which the applicant may be, whose authority shall
be proved by a certificate of a diplomatic or consular officer of the
United States, or by an apostille of an official designated by a foreign
country which, by treaty or convention, accords like effect to
apostilles of designated officials in the United States. The oath shall
be attested in all cases in this and other countries, by the proper
official seal of the officer before whom the oath or affirmation is
made. Such oath or affirmation shall be valid as to execution if it
complies with the laws of the State or country where made. When the
person before whom the oath or affirmation is made in this country is
not provided with a seal, his official character shall be established by
competent evidence, as by a certificate from a clerk of a court of
record or other proper officer having a seal.

                  +++    

See MPEP Section  602.04(a) for foreign executed oath.

---SECTION---604.01 Seal

When the person before whom the oath or affirmation is made in this
country is not provided with a seal, his or her official character shall
be established by competent evidence, as by a certificate from a clerk
of a court of record or other proper officer having a seal, except as
noted in MPEP Section  604.03(a), in which situations no seal is
necessary. When the issue concerns the authority of the person
administering the oath, the examiner should require proof of authority.
Depending on the jurisdiction, the seal may be either embossed or rubber
stamped. The latter should not be confused with a stamped legend
indicating only the date of expiration of the notary's commission.

See also MPEP Section  602.04(a) on foreign executed oath and seal.  In
some jurisdictions, the seal of the notary is not required but the
official title of the officer must be on the oath. This applies to
Alabama, California (certain notaries), Louisiana, Maryland,
Massachusetts, New Jersey, New York, Ohio, Puerto Rico, Rhode Island,
South Carolina, and Virginia.

6.05 Oath or Declaration Defective, Heading

The oath or declaration is defective.  A new oath or declaration in
compliance with  37 CFR 1.67(a) identifying this application by
application number and filing date is required.  See MPEP Section
Section  602.01 and  602.02.

The oath or declaration is defective because:

Examiner Note:

1. One or more of the appropriate form paragraphs 6.05.01 to 6.05.20
must follow this paragraph.

2. If none of the form paragraphs apply, then an appropriate explanation
of the defect should be given immediately following this paragraph.

6.05.11 Notary Signature

It does not include the notary's signature, or the notary's signature is
in the wrong place.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

6.05.12 Notary Seal and Venue Omitted

It does not include the notary's seal and venue.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

---SECTION---604.02 Venue

That portion of an oath or affidavit indicating where the oath is taken
is known as the venue. Where the county and state in the venue agree
with the county and state in the seal, no problem arises.  If the venue
and seal do not correspond in county and state, the jurisdiction of the
notary must be determined from statements by the notary appearing on the
oath. Venue and notary jurisdiction must correspond or the oath is
improper. The oath should show on its face that it was taken within the
jurisdiction of the certifying officer or notary. This may be given
either in the venue or in the body of the jurat.  Otherwise, a new oath
or declaration, or a certificate of the notary that the oath was taken
within his or her jurisdiction, must be required. Ex parte Delavoye,
1906 C.D. 320, 124 O.G. 626 (Comm'r Pat. 1906);   Ex parte Irwin, 1928
C.D. 13, 367 O.G. 701 (Comm'r Pat. 1928).

Form Paragraph 6.07 may be used where the venue is not shown.

6.07 Lack of Venue

The oath lacks the statement of venue.  Applicant is required to furnish either a new oath or declaration in proper form,
identifying the application by application number and filing date, or a
certificate by the officer before whom the original oath was taken
stating that the oath was executed within the jurisdiction of the
officer before whom the oath was taken when the oath was administered. 
The new oath or declaration must properly identify the application of
which it is to form a part, preferably by application number and filing
date in the body of the oath or declaration.  See MPEP Section Section 
602.01 and  602.02.

Where the seal and venue differ, applicant should be notified by using
the "Notice of Informal Application"  form.

---SECTION---604.03(a) Notarial Powers of Some Military Officers

Public Law 506 (81st Congress, Second Session) Article 136: (a) The
following persons on active duty in the armed forces . . . shall have
the general powers of a notary public and of a consul of the United
States, in the performance of all notarial acts to be executed by
members of any of the armed forces, wherever they may be, and by other
persons subject to this code [Uniform Code of Military Justice] outside
the continental limits of the United States:

(A) All judge advocates of the Army and Air Force;

(B) All law specialists;

(C) All summary courts-martial;

(D) All adjutants, assistant adjutants, acting adjutants, and personnel
adjutants;

(E) All commanding officers of the Navy and Coast Guard;

(F) All staff judge advocates and legal officers, and acting or
assistant staff judge advocates and legal officers; and

(G) All other persons designated by regulations of the armed forces or
by statute.

(H) The signature without seal of any such person acting as notary,
together with the title of his office, shall be prima facie evidence of
his authority.

---SECTION---604.04 Consul

On Oct. 15, 1981, the  "Hague Convention Abolishing the Requirement of
Legalization for Foreign Public Documents" entered into force between
the United States and 28 foreign countries as parties to the Convention. 
Subsequently, additional countries have become parties to the
conventions.  See MPEP Section  604.04(a).

When the oath is made in a foreign country not a member of the Hague
Convention Abolishing the Requirement of Legalization for Foreign Public
Documents, the authority of any officer other than a diplomatic or
consular officer of the United States authorized to administer oaths
must be proved by certificate of a diplomatic or consular officer of the
United States. See  37 CFR 1.66,  MPEP Section  604.  This proof may be
through an intermediary, e.g., the consul may certify as to the
authority   and jurisdiction of another official who, in turn, may
certify as to the authority and jurisdiction of the officer before whom
the oath is taken.

---SECTION---604.04(a) Consul  - Omission of Certificate

Where the oath is taken before an officer in a foreign country other
than a diplomatic or consular officer of the United States and whose
authority is not authenticated or accompanied with an apostille
certifying the notary's authority (see MPEP Section  602.04(a)), the
application is nevertheless accepted for purposes of examination. The
examiner, in the first Office action, should note this informality and
require authentication of the oath by an appropriate diplomatic or
consular officer, the filing of proper apostille, or a declaration (37
CFR 1.68).

Form Paragraph 6.08 may be used to notify applicant.

6.08 Consul-Omission of Certificate

The oath is objected to as being informal.  It lacks authentication by a
diplomatic or consular officer of the United States;  37 CFR 1.66(a). 
This informality can be overcome either by forwarding the original oath
to the appropriate officer for authentication or by filing either a
declaration under  37 CFR 1.68, or a new properly authenticated oath
under  37 CFR 1.66.  The new oath or declaration must properly identify
the application of which it is to form a part, preferably by application
number and filing date in the body of the oath or declaration.  If,
however, authentication of the original oath is desired, applicant
should request return of the oath for this purpose.  Such request must
be accompanied by an order for a copy of the oath to be retained in the
file until the properly authenticated oath is returned.  After the oath
has been authenticated, it should be returned promptly to the Patent and
Trademark Office.  See MPEP Section Section  602.01 and  602.02.

At the time of the next Office action, the request for return of the
oath, together with the application file and the copy of the oath, is
submitted to the Group Director.  If the request is approved by the
Group Director, the oath will be returned to the applicant by the
examining group. A copy of the original oath will be retained in the
file.

---SECTION---604.06 By Attorney in Case 

The language of  37 CFR 1.66 and  35 U.S.C. 115 is such that an attorney
in the case is not barred from administering the oath as notary. The
Office presumes that an attorney acting as notary is cognizant of the
extent of his or her authority and jurisdiction and will not knowingly
jeopardize his or her client's rights by performing an illegal act.  If
such practice is permissible under the law of the jurisdiction where the
oath is administered, then the oath is a valid oath.

The law of the District of Columbia prohibits the administering of oaths
by the attorney in the case.  If the oath is known to be void because of
being administered by the attorney in a jurisdiction where the law holds
this to be invalid, the proper action is to require a new oath or
declaration and refer the file to the Office of Enrollment and
Discipline. (Riegger v. Beierl, 1910 C.D. 12, 150 O.G. 826 (Comm'r Pat.
1910)). See  37 CFR 1.66 and MPEP Section  604.

---SECTION---605 Applicant

37 CFR 1.41 Applicant for patent.

(a) A patent is applied for in the name or names of the actual inventor
or inventors.

(1) The inventorship of a nonprovisional application is that
inventorship set forth in the oath or declaration as prescribed by
Section  1.63, except as provided for in Section  1.53(d)(4) and Section 
1.63(d).  If an oath or declaration as prescribed by Section  1.63 is
not filed during the pendency of a nonprovisional application, the
inventorship is that inventorship set forth in the application papers
filed pursuant to Section  1.53(b), unless a petition under this
paragraph accompanied by the fee set forth in Section  1.17(i) is filed
supplying or changing the name or names of the inventor or inventors.

(2) The inventorship of a provisional application is that inventorship
set forth in the cover sheet as prescribed by Section  1.51(c)(1).  If a
cover sheet as prescribed by Section  1.51(c)(1) is not filed during the
pendency of a provisional application, the inventorship is that
inventorship set forth in the application papers filed pursuant to
Section  1.53(c), unless a petition under this paragraph accompanied by
the fee set forth in Section  1.17(q) is filed supplying or changing the
name or names of the inventor or inventors.

(3) In a nonprovisional application filed without an oath or declaration
as prescribed by Section  1.63 or a provisional application filed
without a cover sheet as prescribed by Section  1.51(c)(1), the name or
names of person or persons believed to be the actual inventor or
inventors should be provided for identification purposes when the
application papers pursuant to Section  1.53(b) or (c) are filed.  If no
name of a person believed to be an actual inventor is so provided, the
application should include an applicant identifier consisting of
alphanumeric characters.

(b) Unless the contrary is indicated the word  "applicant"  when used in
these sections refers to the inventor or joint inventors who are
applying for a patent, or to the person mentioned in Section Section
1.42, 1.43, or 1.47 who is applying for a patent in place of the
inventor.

(c) Any person authorized by the applicant may file an application for
patent on behalf of the inventor or inventors, but an oath or
declaration for the application (Section  1.63) can only be made in
accordance with Section  1.64.

(d) A showing may be required from the person filing the application
that the filing was authorized where such authorization comes into
question.

37 CFR 1.45 Joint inventors.

(a) Joint inventors must apply for a patent jointly and each must make
the required oath or declaration; neither of them alone, nor less than
the entire number, can apply for a patent for an invention invented by
them jointly, except as provided in Section  1.47.

(b) Inventors may apply for a patent jointly even though

(2) Each inventor did not make the same type or amount of contribution,
or

(3) Each inventor did not make a contribution to the subject matter of
every claim of the application.

(c) If multiple inventors are named in a nonprovisional application,
each named inventor must have made a contribution, individually or
jointly, to the subject matter of at least one claim of the application
and the application will be considered to be a joint application under 
35 U.S.C. 116. If multiple inventors are named in a provisional
application, each named inventor must have made a contribution,
individually or jointly, to the subject matter disclosed in the
provisional application and the provisional application will be
considered to be a joint application under  35 U.S.C. 116.

37 CFR 1.41 and  37 CFR 1.53 were amended effective December 1, 1997, to
remove the requirement that the name(s) of the inventor(s) be identified
in the application papers in order to accord the application a filing
date. 37 CFR 1.41(a)(1) now defines the inventorship of a nonprovisional
application as that inventorship set forth in the oath or declaration
filed to comply with the requirements of  37 CFR 1.63, except as
provided for in  37 CFR 1.53(d)(3) and  37 CFR 1.63(d).  The oath or
declaration may be filed on the filing date of the application or on a
later date.  If an oath or declaration is not filed during the pendency
of a nonprovisional application, the inventorship is that inventorship
set forth in the application papers filed pursuant to  37 CFR 1.53(b),
unless a petition under  37 CFR 1.41(a) accompanied by the fee set forth
in  37 CFR 1.17(i) is filed supplying the name or names of the inventor
or inventors.

Where no inventor(s) is named on filing, the Office requests that an
alphanumeric identifier be submitted for the application.  The use of
very short identifiers should be avoided to prevent confusion.  Without
supplying at least a unique identifying name the Office may have no
ability or only a delayed ability to match any papers submitted after
filing of the application and before issuance of an identifying
application number with the application file.  Any identifier used that
is not an inventor's name should be specific, alphanumeric characters of
reasonable length, and should be presented in such a manner that it is
clear to application processing personnel what the identifier is and
where it is to be found.  It is strongly suggested that applications
filed without an executed oath or declaration under  37 CFR 1.63 or  37
CFR 1.175 include the name of the person(s) believed to be the inventor
for identification purposes.  Failure to apprise the Office of the
application identifier being used may result in applicants having to
resubmit papers that could not be matched with the application and proof
of the earlier receipt of such papers where submission was time
dependent.

For correction of inventorship, see MPEP Section  201.03.

37 CFR 1.46 Assigned inventions and patents.

In case the whole or a part interest in the invention or in the patent
to be issued is assigned, the application must still be made or
authorized to be made, and an oath or declaration signed, by the
inventor or one of the persons mentioned in Section Section  1.42, 1.43,
or 1.47. However, the patent may be issued to the assignee or jointly to
the inventor and the assignee as provided in Section  3.81.

This section concerns filing by the actual inventor. If the application
is filed by another, see MPEP Section  409.03.

For assignments of application by inventor, see MPEP Section  301. For
an inventor who is dead or insane, see MPEP Section  409.

---SECTION---605.01 Applicant's Citizenship 

The statute (35 U.S.C. 115) requires an applicant, in a nonprovisional
application, to state his or her citizenship.  Where an applicant is not
a citizen of any country, a statement to this effect is accepted as
satisfying the statutory requirement, but a statement as to citizenship
applied for or first papers taken out looking to future citizenship in
this (or any other) country does not meet the requirement.

Form Paragraphs 6.05 and 6.05.03 may be used to notify applicant that
the applicant's citizenship is omitted.

6.05 Oath or Declaration Defective, Heading

The oath or declaration is defective.  A new oath or declaration in
compliance with  37 CFR 1.67(a) identifying this application by
application number and filing date is required.  See MPEP Section
Section  602.01 and  602.02.

The oath or declaration is defective because:

Examiner Note:

1. One or more of the appropriate form paragraphs 6.05.01 to 6.05.20
must follow this paragraph.

2. If none of the form paragraphs apply, then an appropriate explanation
of the defect should be given immediately following this paragraph.

6.05.03 Citizenship Omitted

It does not identify the citizenship of each inventor.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05

---SECTION---605.02 Applicant's Residence 

Applicant's place of residence, that is, the city and either state or
foreign country, is required to be included in the oath or declaration
in a nonprovisional application for compliance with  37 CFR 1.63.  In
the case of an applicant who is in one of the U.S. Armed Services, a
statement to that effect is sufficient as to residence. For change of
residence, see MPEP Section  719.02(b). Applicant's residence must be
included on the cover sheet for a provisional application.

If the residence is not included in the oath or declaration as filed,
the Office of Initial Patent Examination (OIPE) will normally so
indicate on a form PTO-152, "Notice of Informal Application," so as to
require a new oath or declaration when the form is sent out with an
Office action. If the examiner notes that the residence has not been
included in the oath or declaration, Form Paragraphs 6.05 (reproduced in
MPEP Section  605.01) and 6.05.02 should be used.

6.05.02 Residence Omitted

It does not identify the city and either state or foreign country of
residence of each inventor.

Examiner Note:

1. This paragraph must be preceded by form paragraph 6.05.

---SECTION---605.03 Applicant's Post Office Address

For nonprovisional applications filed prior to December 1, 1997, each
applicant's post office address was required by  37 CFR 1.33(a) to be
supplied on the oath or declaration, if not stated elsewhere in the
application.  Effective December 1, 1997,  37 CFR 1.63 has been amended
to require the post office address of each inventor to be stated in the
oath or declaration.  Applicant's post office address means that address
at which he or she customarily receives his or her mail. Either
applicant's home or business address is acceptable as the post office
address. The post office address should include the ZIP Code
designation.

The object of requiring each applicant's post office address is to
enable the Office to communicate directly with the applicant if desired;
hence, the address of the attorney with instruction to send
communications to applicant in care of the attorney is not sufficient.

In situations where an inventor does not execute the oath or declaration
and the inventor is not deceased, such as in an application filed under 
37 CFR 1.47, the inventor's most recent home address must be given to
enable the Office to communicate directly with the inventor as
necessary.

If an oath or declaration was filed prior to December 1, 1997 and the
post office address was incomplete or omitted from the oath or
declaration, attachment form PTO-152, "Notice of Informal Application"
or Form Paragraph 6.09.01 may be used to notify applicant of the
deficiency of the post office address.

6.09.01 Post Office Address Omitted, Residence Given

Applicant has not given a post office address anywhere in the
application papers as required by  37 CFR 1.33(a), which was in effect
at the time of filing of the oath or declaration.  A statement over
applicant's signature providing a complete post office address is
required.

Examiner Note:

1. This form paragraph should only be used where the Post Office address
has been omitted in an oath or declaration filed prior to December 1,
1997.  Use form paragraphs 6.05 and 6.05.19 if the oath or declaration
was filed on or after December 1, 1997.

2. If both the post office address and residence are incomplete, not
uniform or omitted, use form paragraphs 6.05 and 6.05.02.

Oaths or declarations filed on or after December 1, 1997 must include
the post office address of each inventor.  37 CFR 1.63(a)(3).  The
Office of Initial Patent Examination (OIPE) will normally indicate the
omission of an inventor's post office address on attachment form
PTO-152, "Notice of Informal Application," requiring a new oath or
declaration when the form is sent out with an Office action.  If the
examiner notes that the post office address has not been included in an
oath or declaration filed on or after December 1, 1997, other than a
copy of an oath or declaration from a prior application which complied
with  37 CFR 1.63 at the time that it was originally filed, Form
Paragraphs 6.05 (reproduced in MPEP Section  605.01) and 6.05.19 may be
used to notify applicant that the post office address has been omitted
from the oath or declaration.

6.05.19 Post Office Address Omitted

It does not identify the post office address of each inventor.  A post
office address is an address at which an inventor customarily receives
his or her mail and may be either a home or business address.  The post
office address should include the ZIP Code designation.

Examiner Note:

This paragraph must be preceded by form paragraph 6.05.

---SECTION---605.04(a) Applicant's Signature and Name

37 CFR 1.64 Person making oath or declaration.

(a) The oath or declaration must be made by all of the actual inventors
except as provided for in Section Section  1.42, 1.43, or 1.47.

(b) If the person making the oath or declaration is not the inventor 
(Section Section  1.42, 1.43, or 1.47), the oath or declaration shall
state the relationship of the person to the inventor and, upon
information and belief, the facts which the inventor is required to
state.

EXECUTION OF OATHS OR DECLARATIONS OF PATENT APPLICATIONS

United States patent applications which have not been prepared and
executed in accordance with the requirements of Title 35 of the United
States Code and Title 37 of the Code of Federal Regulations may be
abandoned. Although the statute and the rules have been in existence for
many years, the Office continues to receive a number of applications
which have been improperly executed and/or filed. Since the improper
execution and/or filing of patent applications can ultimately result in
a loss of rights, it is appropriate to emphasize the importance of
proper execution and filing.

It is improper for an applicant to sign an oath or declaration which is
not attached to or does not identify a specification and/or claims.

Attached does not necessarily mean that all the papers must be literally
fastened. It is sufficient that the specification, including the claims,
and the oath or declaration are physically located together at the time
of execution. Physical connection is not required. Copies of
declarations are accepted.  See MPEP Section  502.01 and Section 
502.02.

The provisions of  35 U.S.C. 363 for filing an international application
under the Patent Cooperation Treaty (PCT) which designates the United
States and thereby has the effect of a regularly filed United States
national application, except as provided in  35 U.S.C. 102(e), are
somewhat different than the provisions of  35 U.S.C. 111. The oath or
declaration requirements for an international application before the
Patent and Trademark Office are set forth in  35 U.S.C. 371(c)(4) and 
37 CFR 1.497.

37 CFR 1.52(c) states that "[a]ny interlineation, erasure, cancellation
or other alteration of the application papers filed should be made on or
before the signing of any accompanying oath or declaration pursuant to
Section  1.63 referring to those application papers and should be dated
and initialed or signed by the applicant on the same sheet of paper.
Application papers containing alterations made after the signing of an
oath or declaration referring to those application papers must be
supported by a supplemental oath or declaration under Section  1.67(c).
After the signing of the oath or declaration referring to the
application papers, amendments may only be made in the manner provided
by Section  1.121."

In summary, it is emphasized that the application filed must be the
application executed by the applicant and it is improper for anyone,
including counsel, to alter, rewrite, or partly fill in any part of the
application, including the oath or declaration, after execution of the
oath or declaration by the applicant. This provision should particularly
be brought to the attention of foreign applicants by their United States
counsel since the United States law and practice in this area may differ
from that in other countries.

Any changes made in ink in the application or oath prior to signing
should be initialed and dated by the applicants prior to execution of
the oath or declaration.  The Office will not consider whether
noninitialed and/or nondated alterations were made before or after
signing of the oath or declaration but will require a new oath or
declaration. Form Paragraph 6.02.01 may be used to call noninitialed
and/or nondated alterations to applicant's attention.

6.02.01 Non-Initialed and/or Non-Dated Alterations in Application Papers

The application is objected to because of alterations which have not
been initialed and/or dated as is required by  37 CFR 1.52(c).  A
properly executed oath or declaration which complies with  37 CFR
1.67(a) and identifies the application by application number and filing
date is required.

The signing and execution by the applicant of oaths or declarations in
certain applications may be omitted,  MPEP Section  201.06 and Section 
201.07.

For the signature on a reply, see MPEP Section  714.01(a) to Section 
714.01(d).

---SECTION---605.04(b) One Full Given Name Required

37 CFR 1.63(a)(3) requires that each inventor be identified by full
name, including the family name, and at least one given name without
abbreviation together with any other given name or initial in the oath
or declaration.  For example, if the applicant's full name is "John Paul
Doe," either "John P. Doe" or "J. Paul Doe" is acceptable.

Form Paragraphs 6.05 (reproduced in MPEP Section  602.03) and 6.05.18
may be used to notify applicant that the oath or declaration is
defective because the full given name of each inventor has not been
adequately stated.

6.05.18 Full Given Name Is Not Set Forth

The full name of each inventor (family name and at least one given name
together with any initial) has not been set forth. 

Examiner Note:

This paragraph must be preceded by paragraph 6.05.

In an application where the name is typewritten with a middle name or
initial, but the signature is without such middle name or initial, the
typewritten version of the name will be used. Except for correction of a
typographical or transliteration error in the spelling of an inventor's
name, a request to have the name changed to the signed version or any
other corrections in the name of the inventor(s) will not be
entertained, unless accompanied by a petition under  37 CFR 1.182
together with an appropriate petition fee. The petition should be
directed to the attention of the Office of Petitions. Upon granting of
the petition, the application should be sent to the Office of Initial
Patent Examination (OIPE) for correction of its records, unless the
application is an 09/ series application, in which case the application
should be sent to the assigned examining group for correction to the
PALM bib-data sheet by the examining group's technical support staff. If
the application is assigned, it will be forwarded by OIPE or the
examining group's technical support staff to the Assignment Division for
a change in the assignment record.

When a typographical or transliteration error in the spelling of an
inventor's name is discovered during pendancy of an application, a
petition is not required, nor is a new oath or declaration under  37 CFR
1.63 needed. The Patent and Trademark Office should simply be notified
of the error and reference to the notification paper will be made on the
previously filed oath or declaration by the Office.

When any correction or change is effected, the file should be sent to
OIPE for revision of its records and the change should be noted on the
original oath or declaration by writing in red ink in the left column
"See Paper No.  __ for inventorship changes.'' See MPEP Section Section 
201.03 and  605.04(g).

---SECTION---605.04(c) Inventor Changes Name

In cases where an inventor's name has been changed after the application
has been filed and the inventor desires to change his or her name on the
application, he or she must submit a petition under  37 CFR 1.182. The
petition should be directed to the attention of the Office of Petitions.
The petition must include an appropriate petition fee and an affidavit
signed with both names and setting forth the procedure whereby the
change of name was effected, or a certified copy of the court order.

If the petition is granted, the application should be sent to the Office
of Initial Patent Examination (OIPE) for change of name on the file
wrapper and in the PALM database, unless the application is an 09/
series application, in which case the application should be sent to the
assigned examining group for correction to the PALM bib-data sheet by
the examining group's technical support staff. If the application is
assigned, applicant should submit a corrected assignment document along
with a cover sheet and the recording fee as set forth in  37 CFR 1.21(h)
to the Assignment Division for a change in the assignment record.

---SECTION---605.04(d) Applicant Unable to Write

If the applicant is unable to write, his or her mark as affixed to the
oath or declaration must be attested to by a witness.  In the case of
the oath, the notary's signature to the jurat is sufficient to
authenticate the mark.

---SECTION---605.04(e) May Use Title With Signature

It is permissible for an applicant to use a title of nobility or other
title, such as "Dr.'', in connection with his signature. The title will
not appear in the printed patent.

---SECTION---605.04(f) Signature on Joint Applications - Order of Names

The order of names of joint patentees in the heading of the patent is
taken from the order in which the typewritten names appear in the
original oath or declaration.  Care should therefore be exercised in
selecting the preferred order of the typewritten names of the joint
inventors, before filing, as requests for subsequent shifting of the
names would entail changing numerous records in the Office. Since the
particular order in which the names appear is of no consequence insofar
as the legal rights of the joint applicants are concerned, no changes
will be made except when a petition under  37 CFR 1.182 is granted. The
petition should be directed to the attention of the Office of Petitions.
The petition to change the order of names must be signed by either the
attorney or agent of record or all the applicants. It is suggested that
all typewritten and signed names appearing in the application papers
should be in the same order as the typewritten names in the oath or
declaration.

In those instances where the joint applicants file separate oaths or
declarations, the order of names is taken from the order in which the
several oaths or declarations appear in the application papers unless a
different order is requested at the time of filing.

---SECTION---605.04(g) Correction of Inventorship

When the Office is notified of a typographical or transliteration error
in the spelling of an inventor's name, or a petition is granted
approving a correction or a change in the order of the names of the
inventors, or inventors are added or deleted under  37 CFR 1.48, the
change should be noted in red ink in the left margin of the original
oath or declaration. The notation should read "See Paper No. ____ for
inventorship changes."  The application (other than 09/ series
applications) should be sent to the Office of Initial Patent Examination
(OIPE) for correction on the file wrapper label and the PALM database
regarding the inventorship. A brief explanation on an "Application
Division Data Base Routing Slip" (available from the examining group
technical support staff) should accompany the application file to OIPE.
For 09/ series applications, the examiner should have the examining
group's technical support staff enter the correction in the PALM
database and print a new PALM bib-data sheet, which will then be placed
in the file wrapper.

---SECTION---605.05 Administrator, Executor, or Other Legal
Representative

In an application filed by a legal representative of the inventor, the
specification should not be written in the first person.

For prosecution by administrator or executor, see MPEP Section 
409.01(a).

For prosecution by heirs,  see MPEP Section  409.01(a)  and Section 
409.01(d).

For prosecution by representative of legally incapacitated inventor, see
MPEP Section  409.02.

For prosecution by other than inventor,  see MPEP Section  409.03.

---SECTION---605.07 Joint Inventors

35 U.S.C. 116 Inventors

When an invention is made by two or more persons jointly, they shall
apply for patent jointly and each make the required oath, except as
otherwise provided in this title.  Inventors may apply for a patent
jointly even though (1) they did not physically work together or at the
same time, (2) each did not make the same type or amount of
contribution, or (3) each did not make a contribution to the subject
matter of every claim of the patent. 

35 U.S.C. 116, as amended by Public Law 98-622, recognizes the realities
of modern team research.  A research project may include many
inventions. Some inventions may have contributions made by individuals
who are not involved in other, related inventions.

35 U.S.C. 116 allows inventors to apply for a patent jointly even though

(A) they did not physically work together or at the same time,

(B) each did not make the same type or amount of contribution, or

(C) each did not make a contribution to the subject matter of every
claim of the patent.

Items (A) and (B) adopt the rationale stated in decisions such as
Monsanto Co. v. Kamp, 269 F. Supp. 818, 824, 154 USPQ 259, 262 (D.D.C.
1967).

Item (C) adopts the rationale of cases such as SAB Industrie AB v.
Bendix Corp., 199 USPQ 95 (E.D. Va. 1978).

With regard to item (A), see Kimberly-Clark Corp. v.   Procter & Gamble
Distributing Co., 973 F.2d 911, 916-17, 23 USPQ 2d 1921, 1925-26 (Fed.
Cir. 1992) (some quantum of collaboration or connection is required in
order for persons to be "joint" inventors under  35 U.S.C. 116, and thus
individuals who are completely ignorant of what each other has done
until years after their individual independent efforts cannot be
considered joint inventors).

Like other patent applications, jointly filed applications are subject
to the requirements of  35 U.S.C. 121 that an application be directed to
only a single invention.  If more than one invention is included in the
application, the examiner may require the application to be restricted
to one of the inventions. In such a case, a "divisional" application
complying with  35 U.S.C. 120 would be entitled to the benefit of the
earlier filing date of the original application.

It is possible that different claims of an application or patent may
have different dates of inventions even though the patent covers only
one independent and distinct invention within the meaning of  35 U.S.C.
121.  When necessary, the Patent and Trademark Office or a court may
inquire of the patent applicant or owner concerning the inventors and
the invention dates for the subject matter of the various claims.

GUIDELINES

37 CFR 1.45 Joint inventors.

                  +++    

(b) Inventors may apply for a patent jointly even though

(1) They did not physically work together or at the same time,

(2) Each inventor did not make the same type or amount of contribution,
or

(3) Each inventor did not make a contribution to the subject matter of
every claim of the application.

(c) If multiple inventors are named in a nonprovisional application,
each named inventor must have made a contribution, individually or
jointly, to the subject matter of at least one claim of the application
and the application will be considered to be a joint application under 
35 U.S.C. 116. If multiple inventors are named in a provisional
application, each named inventor must have made a contribution,
individually or jointly, to the subject matter disclosed in the
provisional application and the provisional application will be
considered to be a joint application under  35 U.S.C. 116.

Since provisional applications may be filed without claims,  37 CFR
1.45(c) states that each inventor named in a joint provisional
application must have made a contribution to the subject matter
disclosed in the application.

The significant features resulting from the amendments to  35 U.S.C. 116
by Public Law 98-622 are the following:

(A) The joint inventors do not have to separately  "sign the
application,"  but only need apply for the patent jointly and make the
required oath or declaration by signing the same; this is a
clarification, but not a change in current practice.

(B) Inventors may apply for a patent jointly even though "they did not
work together or at the same time," thereby clarifying (a) that it is
not necessary that the inventors physically work together on a project,
and (b) that one inventor may "take a step at one time, the other an
approach at different times." (Monsanto Co. v. Kamp, 269 F. Supp. 818,
824, 154 USPQ 259, 262  (D.D.C. 1967)).

(C) Inventors may apply for a patent jointly even though  "each did not
make the same type or amount of contribution,"  thereby clarifying the
"fact that each of the inventors play a different role and that the
contribution of one may not be as great as that of another does not
detract from the fact that the invention is joint, if each makes some
original contribution, though partial, to the final solution of the
problem."   Monsanto Co. v. Kamp, 269 F. Supp. at 824, 154 USPQ at 262.

(D) Inventors may apply for a patent jointly even though  "each did not
make a contribution to the subject matter of every claim of the patent."

(E) Inventors may apply for a patent jointly as long as each inventor
made a contribution, i.e., was an inventor or joint inventor, of the
subject matter of at least one claim of the patent; there is no
requirement that all the inventors be joint inventors of the subject
matter of any one claim.

(F) If an application by joint inventors includes more than one
independent and distinct invention, restriction may be required with the
possible result of a necessity to change the inventorship named in the
application if the elected invention was not the invention of all the
originally named inventors.

(G) The amendment to  35 U.S.C. 116 increases the likelihood that
different claims of an application or patent may have different dates of
invention; when necessary the Office or court may inquire of the patent
applicant or owner concerning the inventors and the invention dates for
the subject matter of the various claims.

Pending nonprovisional applications will be permitted to be amended by
complying with  37 CFR 1.48 to add claims to inventions by inventors not
named when the application was filed as long as such inventions were
disclosed in the application as filed since  37 CFR 1.48 permits
correction of inventorship where the correct inventor or inventors are
not named in an application for patent through error without any
deceptive intention on the part of the person being added as an
inventor.  This is specially covered in  37 CFR 1.48(c).

Under  35 U.S.C. 116, an examiner may reject claims under  35 U.S.C.
102(f) only in circumstances where a named inventor is not the inventor
of at least one claim in the application; no rejection under  35 U.S.C.
102(f) is appropriate if a named inventor made a contribution to the
invention defined in any claim of the application.

Under  35 U.S.C. 116, considered in conjunction with  35 U.S.C. 103(c),
a rejection may be appropriate under  35 U.S.C. 102(f)/103 where the
subject matter, i.e., prior art, and the claimed invention were not
owned by, or subject to an obligation of assignment to, the same person
at the time the invention was made.

Applicants are responsible for correcting, and are required to correct,
the inventorship in compliance with  37 CFR 1.48 when the application is
amended to change the claims so that one (or more) of the named
inventors is no longer an inventor of the subject matter of a claim
remaining in the application.

In requiring restriction in an application filed by joint inventors, the
examiner should remind applicants of the necessity to correct the
inventorship pursuant to  37 CFR 1.48 if an invention is elected and the
claims to the invention of one or more inventors are canceled.

The examiner should not inquire of the patent applicant concerning the
inventors and the invention dates for the subject matter of the various
claims until it becomes necessary to do so in order to properly examine
the application.

If an application is filed with joint inventors, the examiner should
assume that the subject matter of the various claims was commonly owned
at the time the inventions covered therein were made, unless there is
evidence to the contrary. If inventors of subject matter, not commonly
owned at the time of the later invention, file a joint application,
applicants 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 in order that the
examiner may consider the applicability of  35 U.S.C. 102(f)/103 or  35
U.S.C. 102(g)/103. The examiner should assume, unless there is evidence
to the contrary, that applicants are complying with their duty of
disclosure. It should be pointed out that  35 U.S.C. 119(a) benefit may
be claimed to any foreign application as long as the U.S. named inventor
was the inventor of the foreign application invention and  35 U.S.C.
119(a)-(d) requirements are met. Where two or more foreign applications
are combined in a single U.S. application, to take advantage of the
changes to  35 U.S.C. 103 or  35 U.S.C. 116, the U.S. application may
claim benefit under  35 U.S.C. 119(a) to each of the foreign
applications provided all the requirements of  35 U.S.C. 119(a)-(d) are
met.  One of the conditions for benefit under  35 U.S.C. 119(a) is that
the foreign application must be for "the same invention" as the
application in the United States. Therefore, a claim in the U.S.
application which relies on the combination of prior foreign
applications may not be entitled to the benefit under  35 U.S.C. 119(a)
if the subject matter of the claim is not sufficiently disclosed in the
prior foreign application.  Cf. Studiengesellschaft Kohle m.b.H. v.
Shell Oil Co., 112 F.3d 1561, 42 USPQ2d 1674 (Fed. Cir. 1997).  For
example:

If foreign applicant A invents X and files a foreign application;
foreign applicant B invents Y and files separate foreign application.
A+B combine inventions X+Y and A and B are proper joint inventors under 
35 U.S.C. 116 and file U.S. application to X+Y.  The U.S. application
may claim benefit under  35 U.S.C. 119(a) to each of the foreign
applications provided the requirements of  35 U.S.C. 119(a)-(d) are met.

---SECTION---606 Title of Invention 

37 CFR 1.72 Title and abstract.

(a) The title of the invention, which should be as short and specific as
possible, should appear as a heading on the first page of the
specification, if it does not otherwise appear at the beginning of the
application.

                  +++    

---SECTION---606.01 Examiner May Require Change in Title

Where the title is not descriptive of the invention claimed, the
examiner should require the substitution of a new title that is clearly
indicative of the invention to which the claims are directed. Form
Paragraphs 6.11 and 6.11.01 may be used.

6.11 Title of Invention Is Not Descriptive

The title of the invention is not descriptive.  A new title is required
that is clearly indicative of the invention to which the claims are
directed.

Examiner Note:

If a change in the title of the invention is being suggested by the
examiner, follow with form paragraph 6.11.01.

6.11.01 Title of Invention, Suggested Change

The following title is suggested: "  [1]"

This may result in slightly longer titles, but the loss in brevity of
title will be more than offset by the gain in its informative value in
indexing, classifying, searching, etc.  If a satisfactory title is not
supplied by the applicant, the examiner may, at the time of allowance,
change the title by examiner's amendment or by initialing, in red ink,
either the face of the file wrapper or, for 09/ series applications, the
PALM bib-data sheet.

If a change in title is the only change being made by the examiner at
the time of allowance, a separate examiner's amendment need not be
prepared.  The change in title will be incorporated in the notice of
allowance. This will be accomplished by placing an  "X"  in the
designated box on the notice of allowance form and entering thereunder
the title as changed by the examiner.

However, if an examiner's amendment must be prepared for other reasons,
any change in title will be incorporated therein.

Inasmuch as the words "improved," "improvement of," and  "improvement
in" are not considered as part of the title of an invention, the Patent
and Trademark Office does not include these words at the beginning of
the title of the invention.

---SECTION---607 Filing Fee

Patent application filing fees are set in accordance with  35 U.S.C. 41
and are listed in  37 CFR 1.16.

See MPEP Section  608.01(n) for multiple dependent claims.

When filing a nonprovisional application, a basic fee entitles applicant
to present 20 claims including not more than 3 claims in independent
form. If claims in excess of the above are included at the time of
filing, an additional fee is required for each independent claim in
excess of three, and a fee is required for each claim in excess of 20
claims (whether independent or dependent). Fees for a proper multiple
dependent claim are calculated based on the number of claims to which
the multiple dependent claim refers,  37 CFR 1.75(c), and a separate fee
is required in each application containing a proper multiple dependent
claim. For an improper multiple dependent claim, the fee charged is that
charged for a single dependent claim.

Upon submission of an amendment (whether entered or not) affecting the
claims, payment of fees for those claims in excess of the number
previously paid for is required.

The Office of Initial Patent Examination (OIPE) has been authorized to
accept all applications, otherwise acceptable, if the basic fee is
submitted, and to require payment of the deficiency within a stated
period upon notification of the deficiency.

Amendments before the first action, or not filed in reply to an Office
action, presenting additional claims in excess of the number already
paid for, not accompanied by the full additional fee due, will not be
entered in whole or in part and applicant will be so advised. Such
amendments filed in reply to an Office action will be regarded as not
responsive thereto and the practice set forth in MPEP Section  714.03
will be followed.

The additional fees, if any, due with an amendment are calculated on the
basis of the claims (total and independent) which would be present, if
the amendment were entered. The amendment of a claim, unless it changes
a dependent claim to an independent claim or adds to the number of
claims referred to in a multiple dependent claim, and the replacement of
a claim by a claim of the same type, unless it is a multiple dependent
claim which refers to more prior claims, do not require any additional
fees.

For purposes of determining the fee due the Patent and Trademark Office,
a claim will be treated as dependent if it contains reference to one or
more other claims in the application.  A claim determined to be
dependent by this test will be entered if the fee paid reflects this
determination.

Any claim which is in dependent form but which is so worded that it, in
fact, is not a proper dependent claim, as for example it does not
include every limitation of the claim on which it depends, will be
required to be canceled as not being a proper dependent claim; and
cancelation of any further claim depending on such a dependent claim
will be similarly required. The applicant may thereupon amend the claims
to place them in proper dependent form, or may redraft them as
independent claims, upon payment of any necessary additional fee.

After a requirement for restriction, nonelected claims will be included
in determining the fees due in connection with a subsequent amendment
unless such claims are canceled.

An amendment canceling claims accompanying the papers constituting the
application will be effective to diminish the number of claims to be
considered in calculating the filing fees to be paid.

The additional fees, if any, due with an amendment are required prior to
any consideration of the amendment by the examiner.

Money paid in connection with the filing of a proposed amendment will
not be refunded by reason of the nonentry of the amendment. However,
unentered claims will not be counted when calculating the fee due in
subsequent amendments.

Amendments affecting the claims cannot serve as the basis for granting
any refund.

See MPEP Section  1415 for reissue application fees.

---SECTION---607.02 Returnability of Fees

37 CFR 1.26 Refunds.

(a) Any fee paid by actual mistake or in excess of that required will be
refunded, but a mere change of purpose after the payment of money, as
when a party desires to withdraw an application, an appeal, or a request
for oral hearing, will not entitle a party to demand such a return. 
Amounts of twenty-five dollars or less will not be returned unless
specifically requested within a reasonable time, nor will the payer be
notified of such amounts; amounts over twenty-five dollars may be
returned by check or, if requested, by credit to a deposit account.

(b) [Reserved]

(c) If the Commissioner decides not to institute a reexamination
proceeding, a refund of $1,690 will be made to the requester of the
proceeding. Reexamination requesters should indicate whether any refund
should be made by check or by credit to a deposit account.

Since  37 CFR 1.26(a) precludes refund of an application filing fee when
applicant desires to withdraw an application, any request by applicant
not to process or charge an application filing fee because the
application was not intended to be filed must be in the form of a
petition under  37 CFR 1.183 requesting suspension of the rules to the
extent that the filing fee not be processed or charged.  Any such
petition must include the fee set forth in  37 CFR 1.17(h) and must be
accompanied by an express abandonment of the application in accordance
with  37 CFR 1.138. In order for such a petition to be granted, it must
ordinarily be filed and acted upon prior to the date on which the
application filing fee is processed or charged by the Office with regard
to the application.

All questions pertaining to the return of fees are referred to the
Refunds Section of the Receipts Division of the Office of Finance. No
opinions should be expressed to attorneys or applicants as to whether or
not fees are returnable in particular cases. Such questions may also be
treated, to the extent appropriate, in decisions on petition decided by
various Patent and Trademark Office officials.

---SECTION---608 Disclosure 

In return for a patent, the inventor gives as consideration a complete
revelation or disclosure of the invention for which protection is
sought. All amendments or claims must find descriptive basis in the
original disclosure, or they involve new matter. Applicant may rely for
disclosure upon the specification with original claims and drawings, as
filed.  See also  37 CFR  1.121, subsections (a)(6) and (b)(2)(iii) and
MPEP Section  608.04.

If during the course of examination of a patent application, an examiner
notes the use of language that could be deemed offensive to any race,
religion, sex, ethnic group, or nationality, he or she should object to
the use of the language as failing to comply with the Rules of Practice.
37 CFR 1.3 proscribes the presentation of papers which are lacking in
decorum and courtesy. There is a further basis for objection in that the
inclusion of such proscribed language in a Federal Government
publication would not be in the public interest. Also, the inclusion in
application drawings of any depictions or caricatures that might
reasonably be considered offensive to any group should be similarly
objected to, on like authority.

The examiner should not pass the application to issue until   such
language or drawings have been deleted, or questions relating to the
propriety thereof fully resolved.

For design application practice, see MPEP Section  1504.

---SECTION---608.01 Specification

35 U.S.C. 22 Printing of papers filed.

The Commissioner may require papers filed in the Patent and Trademark
Office to be printed or typewritten.

37 CFR 1.71 Detailed description and specification of the invention.

(a) The specification must include a written description of the
invention or discovery and of the manner and process of making and using
the same, and is required to be in such full, clear, concise, and exact
terms as to enable any person skilled in the art or science to which the
invention or discovery appertains, or with which it is most nearly
connected, to make and use the same.

(b) The specification must set forth the precise invention for which a
patent is solicited, in such manner as to distinguish it from other
inventions and from what is old. It must describe completely a specific
embodiment of the process, machine, manufacture, composition of matter
or improvement invented, and must explain the mode of operation or
principle whenever applicable. The best mode contemplated by the
inventor of carrying out his invention must be set forth.

(c) In the case of an improvement, the specification must particularly
point out the part or parts of the process, machine, manufacture, or
composition of matter to which the improvement relates, and the
description should be confined to the specific improvement and to such
parts as necessarily cooperate with it or as may be necessary to a
complete understanding or description of it.

(d) A copyright or mask work notice may be placed in a design or utility
patent application adjacent to copyright and mask work material
contained therein. The notice may appear at any appropriate portion of
the patent application disclosure. For notices in drawings, see Section 
1.84(o).  The content of the notice must be limited to only those
elements required by law.  For example,  "&copy; 1983 John Doe" (17
U.S.C. 401) and "M John Doe" (17 U.S.C. 909) would be properly limited
and, under current statutes, legally sufficient notices of copyright and
mask work, respectively. Inclusion of a copyright or mask work notice
will be permitted only if the authorization language set forth in
paragraph (e) of this section is included at the beginning (preferably
as the first paragraph) of the specification.

(e) The authorization shall read as follows:

A portion of the disclosure of this patent document contains material
which is subject to &lcub;copyright or mask work&rcub; protection. The
&lcub;copyright or mask work&rcub; owner has no objection to the
facsimile reproduction by anyone of the patent document or the patent
disclosure, as it appears in the Patent and Trademark Office patent file
or records, but otherwise reserves all &lcub;copyright or mask
work&rcub; rights whatsoever.

Certain cross notes to other related applications may be made.
References to foreign applications or to applications identified only by
the attorney's docket number should be required to be canceled. See  37
CFR 1.78 and MPEP Section  202.01.

37 CFR 1.52 Language, paper, writing, margins.

(a) The application, any amendments or corrections thereto, and the oath
or declaration must be in the English language except as provided for in
Section  1.69 and paragraph (d) of this section, or be accompanied by a
translation of the application and a translation of any corrections or
amendments into the English language together with a statement that the
translation is accurate.  All papers which are to become a part of the
permanent records of the Patent and Trademark Office must be legibly
written either by a typewriter or mechanical printer in permanent dark
ink or its equivalent in portrait orientation on flexible, strong,
smooth, non-shiny, durable, and white paper. All of the application
papers must be presented in a form having sufficient clarity and
contrast between the paper and the writing thereon to permit the direct
reproduction of readily legible copies in any number by use of
photographic, electrostatic, photo-offset, and microfilming processes
and electronic reproduction by use of digital imaging and optical
character recognition.  If the papers are not of the required quality,
substitute typewritten or mechanically printed papers of suitable
quality will be required.  See Section  1.125 for filing substitute
typewritten or mechanically printed papers constituting a substitute
specification when required by the Office.

(b) Except for drawings, the application papers (specification,
including claims, abstract, oath or declaration, and papers as provided
for in this part) and also papers subsequently filed, must have each
page plainly written on only one side of a sheet of paper, with the
claim or claims commencing on a separate sheet and the abstract
commencing on a separate sheet. See Section Section  1.72(b) and
1.75(h).  The sheets of paper must be the same size and either 21.0 cm.
by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches). 
Each sheet must include a top margin of at least 2.0 cm. (3/4 inch), a
left side margin of at least 2.5 cm. (1 inch), a right side margin of at
least 2.0 cm. (3/4 inch), and a bottom margin of at least 2.0 cm. (3/4
inch), and no holes should be made in the sheets as submitted.  The
lines of the specification, and any amendments to the specification,
must be 1 1/2 or double spaced.  The pages of the specification
including claims and abstract must be numbered consecutively, starting
with 1, the numbers being centrally located above or preferably, below,
the text.  See Section  1.84 for drawings.

(c) Any interlineation, erasure, cancellation or other alteration of the
application papers filed should be made on or before the signing of any
accompanying oath or declaration pursuant to Section  1.63 referring to
those application papers and should be dated and initialed or signed by
the applicant on the same sheet of paper.  Application papers containing
alterations made after the signing of an oath or declaration referring
to those application papers must be supported by a supplemental oath or
declaration under Section  1.67(c).  After the signing of the oath or
declaration referring to the application papers, amendments may only be
made in the manner provided by Section  1.121.

(d) An application may be filed in a language other than English. An
English translation of the non-English-language application, a statement
that the translation is accurate, and the fee set forth in Section 
1.17(k) are required to be filed with the application or within such
time as may be set by the Office.

37 CFR 1.58 Chemical and mathematical formulae and tables.

(a) The specification, including the claims, may contain chemical and
mathematical formulas, but shall not contain drawings or flow diagrams.
The description portion of the specification may contain tables; claims
may contain tables only if necessary to conform to  35 U.S.C. 112 or if
otherwise found to be desirable.

(b) [Reserved]

(c) Chemical and mathematical formulae and tables must be presented in
compliance with Section  1.52(a) and (b), except that chemical and
mathematical formulae or tables may be placed in a landscape orientation
if they cannot be presented satisfactorily in a portrait orientation. 
Typewritten characters used in such formulae and tables must be chosen
from a block (nonscript) type font or lettering style having capital
letters which are at least 0.21 cm. (0.08 inch) high (e.g., elite type). 
A space at least 0.64 cm. (1/4 inch) high should be provided between
complex formulae and tables and the text. Tables should have the lines
and columns of data closely spaced to conserve space, consistent with a
high degree of legibility.

37 CFR 1.52(b) requires that the pages of the specification including
claims and abstract must be numbered consecutively, starting with 1, the
numbers being centrally located above or preferably, below, the text. 
The lines of the specification, and any amendments to the specification,
must be 1 1/2 or double spaced.

Except for drawings, all application papers (specification, including
claims, abstract, oath or declaration, and other papers), and also
papers subsequently filed, must have each page plainly written on only
one side of a sheet of paper.  The claim or claims must commence on a
separate sheet (37 CFR 1.75(h)) and the abstract must commence on a
separate sheet (37 CFR 1.72(b)).

Except for drawings, all application papers which are to become a part
of the permanent record of the Patent and Trademark Office must be on
sheets of paper which are the same size and are either 21.0 cm. by 29.7
cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).  Each
sheet must include a top margin of at least 2.0 cm. (3/4 inch), a left
side margin of at least 2.5 cm. (1 inch), a right side margin of at
least 2.0 cm. (3/4 inch), and a bottom margin of at least 2.0 cm. (3/4
inch), and no holes should be made in the sheets as submitted.

Applicants must make every effort to file patent applications in a form
that is clear and reproducible. If the papers are not of the required
quality, substitute typewritten or mechanically printed papers of
suitable quality will be required. See  37 CFR 1.125 for filing
substitute typewritten or mechanically printed papers constituting a
substitute specification required by the Office. All papers which are to
become a part of the permanent records of the Patent and Trademark
Office must be legibly written either by a typewriter or mechanical
printer in permanent dark ink or its equivalent in portrait orientation
on flexible, strong, smooth, nonshiny, durable, and white paper. Typed,
mimeographed, xeroprinted, multigraphed or nonsmearing carbon copy forms
of reproduction are acceptable.

Where an application is filed with papers that do not comply with  37
CFR 1.52(a) or (b), the Office of Initial Patent Examination will mail a
"Notice to File Corrected Application Papers" (PTO 1660) indicating the
deficiency and setting a time period within which the applicant must
correct the deficiencies to avoid abandonment.  The failure to submit
application papers in compliance with  37 CFR 1.52(a) or (b) does not
effect the grant of a filing date, and original application papers that
do not comply with  37 CFR 1.52(a) or (b) will be retained in the
application file as the original disclosure of the invention. The PTO
will not return papers simply because they do not comply with  37 CFR
1.52(a) or (b).

Legibility includes ability to be photocopied and photomicrographed so
that suitable reprints can be made and ability to be electronically
reproduced by use of digital imaging and optical character recognition..
This requires a high contrast, with black lines and a white background.
Gray lines and/or a gray background sharply reduce photo reproduction
quality. Legibility of some application papers may become impaired due
to abrasion or aging of the printed material during examination and
ordinary handling of the file. It may be necessary to require that
legible and permanent copies be furnished at later stages after filing,
particularly when preparing for issue.

Some of the patent application papers received by the Patent and
Trademark Office are copies of the original, ribbon copy. These are
acceptable if, in the opinion of the Office, they are legible and
permanent.

The paper used must have a surface such that amendments may be written
thereon in ink.  So-called "Easily Erasable" paper having a special
coating so that erasures can be made more easily may not provide a
"permanent" copy,  37 CFR 1.52(a). If a light pressure of an ordinary
(pencil) eraser removes the imprint, the examiner should, as soon as
this becomes evident, notify applicant by use of Form Paragraph 6.32
that it will be necessary for applicant to order a copy of the
specification and claims to be made by the Patent and Trademark Office
at the applicant's expense for incorporation in the file.  It is not
necessary to return this copy to applicant for signature.

6.32 Application on Easily Erasable Paper

The application papers are objected to because they are not a permanent
copy as required by  37 CFR 1.52(a).  Reference is made to   [1].

Applicant is required either (1) to submit permanent copies of the
identified parts or (2) to order a photocopy of the above identified
parts to be made by the Patent and Trademark Office at applicant's
expense for incorporation in the file.  See MPEP Section  608.01.

Examiner Note:

In the bracket, identify: 1) all of the specification; 2) certain pages
of the specification; 3) particular claim(s); 4) the oath or
declaration; 5) etc.

See In re Benson, 1959 C.D. 5, 744 O.G. 353 (Comm'r Pat. 1959).
Reproductions prepared by heat-sensitive, hectographic, or spirit
duplication processes are also not satisfactory.

The specification is sometimes in such faulty English that a new
specification is necessary, but new specifications encumber the record
and require additional reading, and hence should not be required or
accepted unless it is clear to the examiner that acceptance of a
substitute specification would facilitate processing of the application. 
See  37 CFR 1.125.  See also MPEP Section  608.01(q).

Form Paragraph 7.29 may be used where the disclosure contains
informalities.

7.29 Disclosure Objected to, Minor Informalities

The disclosure is objected to because of the following informalities:
[1]. 

Appropriate correction is required.

Examiner Note:

Use this paragraph to point out minor informalities such as spelling
errors, inconsistent terminology, numbering of elements, etc., which
should be corrected.  See form paragraphs 6.28 to 6.32 for specific
informalities.

The specification does not require a date.

If a newly filed application obviously fails to disclose an invention
with the clarity required by  35 U.S.C. 112, revision of the application
should be required. See MPEP Section  702.01.

As the specification is never returned to applicant under any
circumstances, the applicant should retain a line for line copy thereof,
each line, preferably, having been consecutively numbered on each page.
In amending, the attorney or the applicant requests insertions,
cancellations, or alterations, giving the page and the line.

37 CFR 1.52(c) relating to interlineations and other alterations is
strictly enforced. See In re Swanberg, 129 USPQ 364 (Comm'r Pat. 1960).

Form Paragraphs 6.29-6.31 should be used where appropriate.

6.29 Specification, Spacing of Lines

The spacing of the lines of the specification is such as to make reading
and entry of amendments difficult.  New application papers with lines
double spaced on good quality paper are required.

6.30 Numerous Errors in Specification

35 U.S.C. 112, first paragraph, requires the specification to be written
in "full, clear, concise, and exact terms."  The specification is
replete with terms which are not clear, concise and exact.  The
specification should be revised carefully in order to comply with  35
U.S.C. 112, first paragraph.  Examples of some unclear, inexact or
verbose terms used in the specification are: [1].

6.31 Lengthy Specification, Jumbo Case

The lengthy specification has not been checked to the extent necessary
to determine the presence of all possible minor errors.  Applicant's
cooperation is requested in correcting any errors of which applicant may
become aware in the specification.

Examiner Note:

This paragraph is applicable in so-called "Jumbo cases" (more than 20
pages, exclusive of claims).

USE OF METRIC SYSTEM OF MEASUREMENTS IN PATENT APPLICATIONS

In order to minimize the necessity in the future for converting
dimensions given in the English system of measurements to the metric
system of measurements when using printed patents as research and prior
art search documents, all patent applicants should use the metric (S.I.)
units followed by the equivalent English units when describing their
inventions in the specifications of patent applications.

The initials S.I. stand for "Le Syst&egrave;me International d'
Unit&eacute;s," the French name for the International System of Units, a
modernized metric system adopted in 1960 by the International General
Conference of Weights and Measures based on precise unit measurements
made possible by modern technology.

FILING OF NON-ENGLISH LANGUAGE APPLICATIONS

37 CFR 1.52 Language, Paper, Writing, Margins.

                  +++    

(d) An application may be filed in a language other than English. An
English translation of the non-English-language application, a statement
that the translation is accurate, and the fee set forth in Section 
1.17(k) are required to be filed with the application or within such
time as may be set by the Office.

The Patent and Trademark Office will accord a filing date to an
application meeting the requirements of  35 U.S.C. 111(a), or a
provisional application in accordance with  35 U.S.C. 111(b), even
though some or all of the application papers, including the written
description and the claims, is in a language other than English and
hence does not comply with  37 CFR 1.52.

An English translation of the non-English language papers, a statement
that the translation is accurate, the filing fee, the oath or
declaration (if necessary) and fee set forth in  37 CFR 1.17(k) should
either accompany the application papers or be filed in the Office within
the time set by the Office.

A subsequently filed English translation must contain the complete
identifying data for the application in order to permit prompt
association with the papers initially filed. Accordingly, it is strongly
recommended that the original application papers be accompanied by a
cover letter and a self-addressed return postcard, each containing the
following identifying data in English: (a) applicant's name(s); (b)
title of invention; (c) number of pages of specification, claims, and
sheets of drawings; (d) whether oath or declaration was filed and (e)
amount and manner of paying the filing fee.

The translation must be a literal translation and must be accompanied by
a statement that the translation is accurate.  The translation must also
be accompanied by a signed request from the applicant, his or her
attorney or agent, asking that the English translation be used as the
copy for examination purposes in the Office.  If the English translation
does not conform to idiomatic English and United States practice, it
should be accompanied by a preliminary amendment making the necessary
changes without the introduction of new matter prohibited by  35 U.S.C.
132. In the event the English translation is not timely filed in the
Office, the application will be regarded as abandoned.

It should be recognized that this practice is intended for emergency
situations to prevent loss of valuable rights and should not be
routinely used for filing applications.  There are at least two reasons
why this should not be used on a routine basis.  First, there are
obvious dangers to applicant and the public if he or she fails to obtain
a correct literal translation.  Second, the filing of a large number of
applications under the procedure will create significant administrative
burdens on the Office.

ILLUSTRATIONS IN THE SPECIFICATION

Graphical illustrations, diagrammatic views, flowcharts, and diagrams in
the descriptive portion of the specification do not come within the
purview of  37 CFR 1.58(a), which permits tables and chemical formulas
in the specification in lieu of formal drawings.  The examiner should
object to such descriptive illustrations in the specification and
request formal drawings in accordance with  37 CFR 1.81 when an
application contains graphs in the specification.

Since the December 7, 1976, issue of patents, all tables and
mathematical equations and chemical formulas, or portions thereof, have
been reproduced for printing by a computer process developed by the Data
Base Contractor.  Those portions of chemical formulas which cannot be
reproduced by the process, such as dotted, curved, broken and
wedge-shaped lines, must be drawn by hand on the photocomposed page.
There are, however, some chemical structures which cannot be reproduced
because they are either too complex or involve too many lines which
cannot be generated by the computer process.  The camera copy process,
which is used to insert these types of structures onto the printed
patent page, is both time consuming and costly to the Office.  Because
of the reduction factor and failure to comply with the guidelines set
forth in  37 CFR 1.52(a) and  37 CFR 1.58(a) the reproduction of these
structures is often poor.

Therefore, the specification, including any claims, may contain chemical
formulas and mathematical equations, but should not contain drawings or
flow diagrams or diagrammatic views of chemical structures. The
description portion of the specification may contain tables; claims may
contain tables only if necessary to conform to  35 U.S.C. 112.

See MPEP Section  601.01(d) for treatment of applications filed without
all pages of the specification.

---SECTION---608.01(a) Arrangement of Application

37 CFR 1.77 Arrangement of application elements.

(a) The elements of the application, if applicable, should appear in the
following order:

(1) Utility Application Transmittal Form.

(2) Fee Transmittal Form.

(3) Title of the invention; or an introductory portion stating the name,
citizenship, and residence of the applicant, and the title of the
invention.

(4) Cross-reference to related applications.

(5) Statement regarding federally sponsored research or development.

(6) Reference to a "Microfiche appendix." (See Section  1.96 (c)). The
total number of microfiche and total number of frames should be
specified.

(7) Background of the invention.

(8) Brief summary of the invention.

(9) Brief description of the several views of the drawing.

(10) Detailed description of the invention.

(11) Claim or claims.

(12) Abstract of the Disclosure.

(13) Drawings.

(14) Executed oath or declaration.

(15) Sequence Listing (See Section Section  1.821 through 1.825).

(b) The elements set forth in paragraphs (a)(3) through (a)(5), (a)(7)
through (a)(12) and (a)(15) of this section should appear in upper case,
without underlining or bold type, as section headings. If no text
follows the section heading, the phrase "Not Applicable" should follow
the section heading.

For design patent specification, see MPEP Section  1503.01.

For plant patent specification, see MPEP Section  1605.

For reissue patent specification, see MPEP Section  1411.

The following order of arrangement of specification elements is
preferable in framing the nonprovisional specification and, except for
the reference to a "Microfiche Appendix", each of the lettered items
should appear in upper case, without underlining or bold type, as
section headings.  If no text follows the section heading, the phrase
"Not Applicable" should follow the section heading. It is recommended
that provisional applications follow the same general format, although
claims are not required.

(A) Title of the Invention.

(B) Cross-References to Related Applications.

(C) Statement Regarding Federally Sponsored Research or Development.

(D) Reference to a "Microfiche Appendix." (See  37 CFR 1.96.)

(E) Background of the Invention.

(1) Field of the Invention.

(2) Description of the related art including information disclosed under 
37 CFR 1.97and 1.98.

(F) Brief Summary of the Invention.

(G) Brief Description of the Several Views of the Drawings.

(H) Detailed Description of the Invention.

(I) Claim or Claims.

(J) Abstract of the Disclosure.

(K) Drawings.

(L) Sequence Listing (See  37 CFR 1.821-1.825).

Applicant (typically a pro se) may be advised of the proper arrangement
by using Form Paragraph 6.01 or 6.02.

6.01 Arrangement of Specification

The following guidelines illustrate the preferred layout and content for
patent applications.  These guidelines are suggested for the applicant's
use.

Arrangement of the Specification

The following order or arrangement is preferred in framing the
specification and, except for the reference to a "Microfiche Appendix"
and the drawings, each of the lettered items should appear in upper
case, without underling or bold type, as section headings.  If no text
follows the section heading, the phrase "Not Applicable" should follow
the section heading:

(a)	Title of the Invention.

(b)	Cross-Reference to Related Applications.

(c)	Statement Regarding Federally Sponsored Research or Development.

(d)	Reference to a "Microfiche Appendix" (see  37 CFR 1.96).

(e)	Background of the Invention.

(1)  Field of the Invention.

(2) Description of Related Art including information disclosed under  37
CFR 1.97 and 1.98.

(f)	Brief Summary of the Invention.

(g)	Brief Description of the Several Views of the Drawing(s).

(h)	Detailed Description of the Invention.

(i)	Claim or Claims (commencing on a separate sheet).

(j)	Abstract of the Disclosure (commencing on a separate sheet).

(k)	Drawings.

(l)	Sequence Listing (see  37 CFR 1.821-1.825).

Examiner Note:

In this paragraph an introductory sentence will be necessary.  This
paragraph is intended primarily for use in pro se applications.

6.02 Content of Specification

Content of Specification

(a)	  Title of the Invention: See  37 CFR 1.72(a).  The title of the
invention should be placed at the top of the first page of the
specification.  It should be brief but technically accurate and
descriptive, preferably from two to seven words. 

(b)	  Cross-References to Related Applications: See  37 CFR 1.78 and
MPEP Section  201.11.

(c)	  Statement Regarding Federally Sponsored Research or Development:
See MPEP Section   310.

(d)	  Reference to a "Microfiche Appendix": See  37 CFR 1.96(c) and MPEP
Section  608.05.  The total number of microfiche and the total number of
frames should be specified.

(e)	  Background of the Invention: The specification should set forth
the Background of the Invention in two parts:

(1) Field of the Invention: A statement of the field of art to which the
invention pertains.  This statement may include a paraphrasing of the
applicable U.S. patent classification definitions of the subject matter
of the claimed invention.  This item may also be titled "Technical
Field."

(2) Description of the Related Art: A description of the related art
known to the applicant and including, if applicable, references to
specific related art and problems involved in the prior art which are
solved by the applicant's invention.  This item may also be titled
"Background Art."

(f)	  Brief Summary of the Invention: A brief summary or general
statement of the invention as set forth in  37 CFR 1.73.  The summary is
separate and distinct from the abstract and is directed toward the
invention rather than the disclosure as a whole.  The summary may point
out the advantages of the invention or how it solves problems previously
existent in the prior art (and preferably indicated in the Background of
the Invention).  In chemical cases it should point out in general terms
the utility of the invention.  If possible, the nature and gist of the
invention or the inventive concept should be set forth.  Objects of the
invention should be treated briefly and only to the extent that they
contribute to an understanding of the invention.

(g)	  Brief Description of the Several Views of the Drawing(s): A
reference to and brief description of the drawing(s) as set forth in  37
CFR 1.74.

(h)	  Detailed Description of the Invention: A description of the
preferred embodiment(s) of the invention as required in  37 CFR 1.71. 
The description should be as short and specific as is necessary to
describe the invention adequately and accurately.  Where elements or
groups of elements, compounds, and processes, which are conventional and
generally widely known in the field of the invention described, and
their exact nature or type is not necessary for an understanding and use
of the invention by a person skilled in the art, they should not be
described in detail.  However, where particularly complicated subject
matter is involved or where the elements, compounds, or processes may
not be commonly or widely known in the field, the specification should
refer to another patent or readily available publication which
adequately describes the subject matter.

(i)	  Claim or Claims: See  37 CFR 1.75 and MPEP Section  608.01(m). 
The claim or claims must commence on a separate sheet (37 CFR 1.52(b)). 
Where a claim sets forth a plurality of elements or steps, each element
or step of the claim should be separated by a line indentation. There
may be plural indentations to further segregate subcombinations or
related steps.  See  37 CFR 1.75.

(j)	  Abstract of the Disclosure: A brief narrative of the disclosure as
a whole in a single paragraph of 250 words or less commencing on a
separate sheet following the claims.

(k)	  Drawings: See  37 CFR 1.81, 1.83-1.85, and MPEP Section  608.02.

(l)	  Sequence Listing: See  37 CFR 1.821-1.825.

Examiner Note:

In this paragraph an introductory sentence will be necessary.  This
paragraph is intended primarily for use in pro se applications.  See
also "pro se" form paragraphs in Chapter 1700 of the Manual of Patent
Examining Form Paragraphs.

---SECTION---608.01(b) Abstract of the Disclosure 

37 CFR 1.72 Title and abstract.

                  +++    

(b) A brief abstract of the technical disclosure in the specification
must commence on a separate sheet, preferably following the claims under
the heading "Abstract of the Disclosure." The purpose of the abstract is
to enable the Patent and Trademark Office and the public generally to
determine quickly from a cursory inspection the nature and gist of the
technical disclosure. The abstract shall not be used for interpreting
the scope of the claims.

In all applications which lack an abstract, the examiner in the first
Office action should require the submission of an abstract directed to
the technical disclosure in the specification. See Form Paragraph 6.12
(below). Applicants may use either "Abstract" or "Abstract of the
Disclosure" as a heading.

If the abstract contained in the application does not comply with the
guidelines, the examiner should point out the defect to the applicant in
the first Office action, or at the earliest point in the prosecution
that the defect is noted, and require compliance with the guidelines. 
Since the abstract of the disclosure has been interpreted to be a part
of the specification for the purpose of compliance with paragraph 1 of 
35 U.S.C. 112 (In re Armbruster, 512 F.2d 676, 678-79, 185 USPQ 152, 154
(CCPA 1975)), it would ordinarily be preferable that the applicant make
the necessary changes to the abstract to bring it into compliance with
the guidelines. See Form Paragraphs 6.13-6.16 (below).

Replies to such actions requiring either a new abstract or amendment to
bring the abstract into compliance with the guidelines should be treated
under  37 CFR 1.111(b) practice like any other formal matter.  Any
submission of a new abstract or amendment to an existing abstract should
be carefully reviewed for introduction of new matter,  35 U.S.C. 132, 
MPEP Section  608.04.

Upon passing the application to issue, the examiner should make certain
that the abstract is an adequate and clear statement of the contents of
the disclosure and generally in line with the guidelines. The abstract
shall be changed by the examiner's amendment in those instances where
deemed necessary. This authority and responsibility of the examiner
shall not be abridged by the desirability of having the applicant make
the necessary corrections.  For example, if the application is otherwise
in condition for allowance except that the abstract does not comply with
the guidelines, the examiner generally should make any necessary
revisions by examiner's amendment rather than issuing an Ex parte Quayle
action requiring applicant to make the necessary revisions.

Under current practice, in all instances where the application contains
an abstract when sent to issue, the abstract will be printed on the
patent.

GUIDELINES FOR THE PREPARATION OF PATENT ABSTRACTS

Background

The Rules of Practice in Patent Cases require that each application for
patent include an abstract of the disclosure,  37 CFR 1.72(b).

The content of a patent abstract should be such as to enable the reader
thereof, regardless of his or her degree of familiarity with patent
documents, to ascertain quickly the character of the subject matter
covered by the technical disclosure and should include that which is new
in the art to which the invention pertains.

The abstract is not intended nor designated for use in interpreting the
scope or meaning of the claims,  37 CFR 1.72(b).

Content

A patent abstract is a concise statement of the technical disclosure of
the patent and should include that which is new in the art to which the
invention pertains.

If the patent is of a basic nature, the entire technical disclosure may
be new in the art, and the abstract should be directed to the entire
disclosure.

If the patent is in the nature of an improvement in old apparatus,
process, product, or composition, the abstract should include the
technical disclosure of the improvement.

In certain patents, particularly those for compounds and compositions,
wherein the process for making and/or the use thereof are not obvious,
the abstract should set forth a process for making and/or a use thereof.

If the new technical disclosure involves modifications or alternatives,
the abstract should mention by way of example the preferred modification
or alternative.

The abstract should not refer to purported merits or speculative
applications of the invention and should not compare the invention with
the prior art.

Where applicable, the abstract should include the following: (1) if a
machine or apparatus, its organization and operation; (2) if an article,
its method of making; (3) if a chemical compound, its identity and use;
(4) if a mixture, its ingredients; (5) if a process, the steps. 
Extensive mechanical and design details of apparatus should not be
given.

With regard particularly to chemical patents, for compounds or
compositions, the general nature of the compound or composition should
be given as well as the use thereof, e.g., "The compounds are of the
class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics."
Exemplification of a species could be illustrative of members of the
class. For processes, the type reaction, reagents and process conditions
should be stated, generally illustrated by a single example unless
variations are necessary.

  Language and Format

The abstract must commence on a separate sheet, preferably following the
claims, under the heading "Abstract of the Disclosure."  Form Paragraph
6.16.01 (below) may be used if the abstract does not commence on a
separate sheet.

The abstract should be in narrative form and generally limited to a
single paragraph within the range of 50 to 250 words. The abstract
should not exceed 25 lines of text. Abstracts exceeding 25 lines of text
should be checked to see that it does not exceed 250 words in length
since the space provided for the abstract on the computer tape by the
printer is limited.  If the abstract cannot be placed on the computer
tape because of its excessive length, the application will be returned
to the examiner for preparation of a shorter abstract. The form and
legal phraseology often used in patent claims, such as  "means"  and 
"said",  should be avoided. The abstract should sufficiently describe
the disclosure to assist readers in deciding whether there is a need for
consulting the full patent text for details.

The language should be clear and concise and should not repeat
information given in the title. It should avoid using phrases which can
be implied, such as, "This disclosure concerns," "The disclosure defined
by this invention," "This disclosure describes,"  etc.

Responsibility

Preparation of the abstract is the responsibility of the applicant.
Background knowledge of the art and an appreciation of the applicant's
contribution to the art are most important in the preparation of the
abstract. The review of the abstract for compliance with these
guidelines, with any necessary editing and revision on allowance of the
application, is the responsibility of the examiner.

Sample Abstracts

(1) A heart valve which has an annular valve body defining an orifice
and a plurality of struts forming a pair of cages on opposite sides of
the orifice. A spherical closure member is captively held within the
cages and is moved by blood flow between open and closed positions in
check valve fashion. A slight leak or backflow is provided in the closed
position by making the orifice slightly larger than the closure member. 
Blood flow is maximized in the open position of the valve by providing
an inwardly convex contour on the orifice-defining surfaces of the body. 
An annular rib is formed in a channel around the periphery of the valve
body to anchor a suture ring used to secure the valve within a heart.

(2) A method for sealing whereby heat is applied to seal, overlapping
closure panels of a folding box made from paperboard having an extremely
thin coating of moisture-proofing thermoplastic material on opposite
surfaces. Heated air is directed at the surfaces to be bonded, the
temperature of the air at the point of impact on the surfaces being
above the char point of the board. The duration of application of heat
is made so brief, by a corresponding high rate of advance of the boxes
through the air stream, that the coating on the reverse side of the
panels remains substantially non-tacky. The bond is formed immediately
after heating within a period of time for any one surface point less
than the total time of exposure to heated air of that point.  Under such
conditions the heat applied to soften the thermoplastic coating is
dissipated after completion of the bond by absorption into the board
acting as a heat sink without the need for cooling devices.

(3) Amides are produced by reacting an ester of a carboxylic acid with
an amine, using as catalyst an alkoxide of an alkali metal.  The ester
is first heated to at least 75C under a pressure of no more than 500
mm. of mercury to remove moisture and acid gases which would prevent the
reaction, and then converted to an amide without heating to initiate the
reaction.

6.12 Abstract Missing (Background)

This application does not contain an abstract of the disclosure as
required by  37 CFR 1.72(b).  An abstract on a separate sheet is
required.

Examiner Note:

For pro se applicant, consider form paragraphs 6.14 to 6.16.

6.13 Abstract Objected To: Minor Informalities

The abstract of the disclosure is objected to because [1].  Correction
is required.  See MPEP Section  608.01(b).

Examiner Note:

In bracket 1, indicate the informalities that should be corrected.  Use
this paragraph for minor informalities such as the inclusion of legal
phraseology, undue length, etc.

6.14 Abstract of the Disclosure: Content

Applicant is reminded of the proper content of an abstract of the
disclosure.

A patent abstract is a concise statement of the technical disclosure of
the patent and should include that which is new in the art to which the
invention pertains.  If the patent is of a basic nature, the entire
technical disclosure may be new in the art, and the abstract should be
directed to the entire disclosure. If the patent is in the nature of an
improvement in an old apparatus, process, product, or composition, the
abstract should include the technical disclosure of the improvement.  In
certain patents, particularly those for compounds and compositions,
wherein the process for making and/or the use thereof are not obvious,
the abstract should set forth a process for making and/or use thereof. 
If the new technical disclosure involves modifications or alternatives,
the abstract should mention by way of example the preferred modification
or alternative.

The abstract should not refer to purported merits or speculative
applications of the invention and should not compare the invention with
the prior art.

Where applicable, the abstract should include the following:

(1) if a machine or apparatus, its organization and operation;

(2) if an article, its method of making;

(3) if a chemical compound, its identity and use;

(4) if a mixture, its ingredients;

(5) if a process, the steps.

Extensive mechanical and design details of an apparatus should not be
included in the abstract.

Examiner Note:

See form paragraph 6.16.

6.15 Abstract of the Disclosure: Chemical Cases

Applicant is reminded of the proper content of an abstract of the
disclosure.

In chemical patent abstracts for compounds or compositions, the general
nature of the compound or composition should be given as well as its
use, e.g., "The compounds are of the class of alkyl benzene sulfonyl
ureas, useful as oral anti-diabetics."  Exemplification of a species
could be illustrative of members of the class.  For processes, the type
reaction, reagents and process conditions should be stated, generally
illustrated by a single example unless variations are necessary.

Complete revision of the content of the abstract is required on a
separate sheet.

6.16 Abstract of the Disclosure: Language

Applicant is reminded of the proper language and format for an abstract
of the disclosure.

The abstract should be in narrative form and generally limited to a
single paragraph on a separate sheet within the range of 50 to 250
words.  It is important that the abstract not exceed 250 words in length
since the space provided for the abstract on the computer tape used by
the printer is limited.  The form and legal phraseology often used in
patent claims, such as "means" and "said," should be avoided.  The
abstract should describe the disclosure sufficiently to assist readers
in deciding whether there is a need for consulting the full patent text
for details.

The language should be clear and concise and should not repeat
information given in the title.  It should avoid using phrases which can
be implied, such as, "The disclosure concerns," "The disclosure defined
by this invention," "The disclosure describes," etc.

Examiner Note:

See also form paragraph 6.14.

6.16.01 Abstract of the Disclosure: Placement

The abstract of the disclosure does not commence on a separate sheet in
accordance with  37 CFR 1.52(b)(1).  A new abstract of the disclosure is
required and must be presented on a separate sheet, apart from any other
text.

Examiner Note:

This paragraph should only be used for applications filed on or after
September 23, 1996.

---SECTION---608.01(c) Background of the Invention

The Background of the Invention ordinarily comprises two parts:

(1) Field of the Invention: A statement of the field of art to which the
invention pertains. This statement may include a paraphrasing of the
applicable U.S. patent classification definitions. The statement should
be directed to the subject matter of the claimed invention.

(2) Description of the related art including information disclosed under 
37 CFR 1.97 and  37 CFR 1.98: A paragraph(s) describing to the extent
practical the state of the prior art or other information disclosed
known to the applicant, including references to specific prior art or
other information where appropriate. Where applicable, the problems
involved in the prior art or other information disclosed which are
solved by the applicant's invention should be indicated. See also MPEP
Section  608.01(a),  Section  608.01(p) and Section  707.05(b).

---SECTION---608.01(d) Brief Summary of Invention

37 CFR 1.73 Summary of the invention.

A brief summary of the invention indicating its nature and substance,
which may include a statement of the object of the invention, should
precede the detailed description. Such summary should, when set forth,
be commensurate with the invention as claimed and any object recited
should be that of the invention as claimed.

Since the purpose of the brief summary of invention is to apprise the
public, and more especially those interested in the particular art to
which the invention relates, of the nature of the invention, the summary
should be directed to the specific invention being claimed, in
contradistinction to mere generalities which would be equally applicable
to numerous preceding patents. That is, the subject matter of the
invention should be described in one or more clear, concise sentences or
paragraphs. Stereotyped general statements that would fit one case as
well as another serve no useful purpose and may well be required to be
canceled as surplusage, and, in the absence of any illuminating
statement, replaced by statements that are directly on point as
applicable exclusively to the case at hand.

The brief summary, if properly written to set out the exact nature,
operation, and purpose of the invention, will be of material assistance
in aiding ready understanding of the patent in future searches.  The
brief summary should be more than a mere statement of the objects of the
invention, which statement is also permissible under  37 CFR 1.73.

The brief summary of invention should be consistent with the subject
matter of the claims. Note final review of application and preparation
for issue,  MPEP Section  1302.

---SECTION---608.01(e) Reservation Clauses Not Permitted

37 CFR 1.79 Reservation clauses not permitted.

A reservation for a future application of subject matter disclosed but
not claimed in a pending application will not be permitted in the
pending application, but an application disclosing unclaimed subject
matter may contain a reference to a later filed application of the same
applicant or owned by a common assignee disclosing and claiming that
subject matter.

---SECTION---608.01(f) Brief Description of Drawings

37 CFR 1.74 Reference to drawings.

When there are drawings, there shall be a brief description of the
several views of the drawings and the detailed description of the
invention shall refer to the different views by specifying the numbers
of the figures, and to the different parts by use of reference letters
or numerals (preferably the latter).

The Office of Initial Patent Examination (OIPE) will review the
specification, including the brief description, to determine whether all
of the figures of drawings described in the specification are present. 
If the specification describes a figure which is not present in the
drawings, the application will be treated as an application filed
without all figures of drawings in accordance with MPEP Section 
601.01(g), unless the application lacks any drawings, in which case the
application will be treated as an application filed without drawings in
accordance with MPEP Section  601.01(f).

The examiner should see to it that the figures are correctly described
in the brief description of the drawing, that all section lines used are
referred to, and that all needed section lines are used.

The specification must contain or be amended to contain proper reference
to the existence of drawings executed in color as required by  37 CFR
1.84.

37 CFR 1.84 Standards for drawings.

(a) Drawings. There are two acceptable categories for presenting
drawings in utility patent applications:

(1) Black ink. Black and white drawings are normally required. India
ink, or its equivalent that secures solid black lines, must be used for
drawings, or

(2) Color. On rare occasions, color drawings may be necessary as the
only practical medium by which to disclose the subject matter sought to
be patented in a utility patent application or the subject matter of a
statutory invention registration. The Patent and Trademark Office will
accept color drawings in utility patent applications and statutory
invention registrations only after granting a petition filed under this
paragraph explaining why the color drawings are necessary. Any such
petition must include the following:

(i) The fee set forth in Section  1.17(i);

(ii) Three (3) sets of color drawings; and

(iii) The specification must contain the following language as the first
paragraph in that portion of the specification relating to the brief
description of the drawing:

The file of this patent contains at least one drawing executed in color.
Copies of this patent with color drawing(s) will be provided by the
Patent and Trademark Office upon request and payment of the necessary
fee.

If the language is not in the specification, a proposed amendment to
insert the language must accompany the petition.

                  +++    

---SECTION---608.01(g) Detailed Description of Invention 

A detailed description of the invention and drawings follows the general
statement of invention and brief description of the drawings. This
detailed description, required by  37 CFR 1.71, MPEP Section  608.01,
must be in such particularity as to enable any person skilled in the
pertinent art or science to make and use the invention without involving
extensive experimentation. An applicant is ordinarily permitted to use
his or her own terminology, as long as it can be understood. Necessary
grammatical corrections, however, should be required by the examiner,
but it must be remembered that an examination is not made for the
purpose of securing grammatical perfection.

The reference characters must be properly applied, no single reference
character being used for two different parts or for a given part and a
modification of such part.  In the latter case, the reference character,
applied to the given part, with a prime affixed may advantageously be
applied to the modification. Every feature specified in the claims must
be illustrated, but there should be no superfluous illustrations.

The description is a dictionary for the claims and should provide clear
support or antecedent basis for all terms used in the claims. See  37
CFR 1.75,  MPEP Section  608.01(i), Section  608.01(o), and Section 
1302.01.

For completeness, see MPEP Section  608.01(p).

USE OF SYMBOL "Phi" IN PATENT APPLICATION

The Greek letter "Phi'' has long been used as a symbol in equations in
all technical disciplines. It further has special uses which include the
indication of an electrical phase or clocking signal as well as an
angular measurement. The recognized symbols for the upper and lower case
Greek Phi characters, however, do not appear on most typewriters. This
apparently has led to the use of a symbol composed by first striking a
zero key and then backspacing and striking the "cancel" or "slash" key
to result in an approximation of accepted symbols for the Greek
character Phi. In other instances, the symbol is composed using the
upper or lower case letter "O" with the "cancel" or "slash" superimposed
thereon by backspacing, or it is simply handwritten in a variety of
styles.  These expedients result in confusion because of the variety of
type sizes and styles available on modern typewriters.

In recent years, the growth of data processing has seen the increasing
use of this symbol ("O") as the standard representation of zero.  The
"slashed" or "canceled" zero is used to indicate zero and avoid
confusion with the upper case letter  "O"  in both text and drawings.

Thus, when the symbol "" in one of its many variations, as discussed
above, appears in patent applications being prepared for printing,
confusion as to the intended meaning of the symbol arises. Those (such
as examiners, attorneys, and applicants) working in the art can usually
determine the intended meaning of this symbol because of their knowledge
of the subject matter involved, but editors preparing these applications
for printing have no such specialized knowledge and confusion arises as
to which symbol to print. The result, at the very least, is delay until
the intended meaning of the symbol can be ascertained.

Since the Office does not have the resources to conduct a technical
editorial review of each application before printing, and in order to
eliminate the problem of printing delays associated with the usage of
these symbols, any question about the intended symbol will be resolved
by the editorial staff of the Office of Patent Publication by printing
the symbol &Oslash; whenever that symbol is used by the applicant. Any
Certificate of Correction necessitated by the above practice will be at
the patentee's expense (37 CFR  1.323) because the intended symbol was
not accurately presented by the Greek upper or lower case Phi letters
(&Oslash;,&Oslash;) in the patent application.

---SECTION---608.01(h) Mode of Operation of Invention 

The best mode contemplated by the inventor of carrying out his or her
invention must be set forth in the description. See  35 U.S.C. 112.
There is no statutory requirement for the disclosure of a specific
example. A patent specification is not intended nor required to be a
production specification. Spectra-Physics, Inc. v. Coherent, Inc., 827
F.2d 1524, 1536, 3 USPQ2d 1737, 1745 (Fed. Cir. 1987);   In re Gay, 309
F.2d 768, 135 USPQ 311 (CCPA 1962). The absence of a specific working
example is not necessarily evidence that the best mode has not been
disclosed, nor is the presence of one evidence that it has. In re Honn,
364 F.2d 454, 150 USPQ 652 (CCPA 1966). In determining the adequacy of a
best mode disclosure, only evidence of concealment (accidental or
intentional) is to be considered. That evidence must tend to show that
the quality of an applicant's best mode disclosure is so poor as to
effectively result in concealment. Spectra-Physics, Inc. v. Coherent,
Inc., 827 F.2d 1524, 1536, 3 USPQ2d 1737, 1745 (Fed. Cir. 1987); In re
Sherwood, 613 F.2d 809, 204 USPQ 537 (CCPA 1980).

The question of whether an inventor has or has not disclosed what he or
she feels is his or her best mode is a question separate and distinct
from the question of sufficiency of the disclosure. Spectra-Physics,
Inc. v. Coherent, Inc., 827 F.2d 1524, 1532, 3 USPQ2d 1737, 1742 (Fed.
Cir. 1987); In re Glass, 492 F.2d 1228, 181 USPQ 31 (CCPA 1974); In re
Gay, 309 F.2d 708, 135 USPQ 311 (CCPA 1962). See  35 U.S.C. 112 and  37
CFR 1.71(b).

If the best mode contemplated by the inventor at the time of filing the
application is not disclosed, such defect cannot be cured by submitting
an amendment seeking to put into the specification something required to
be there when the application was originally filed. In re Hay, 534 F.2d
917, 189 USPQ 790 (CCPA 1976). Any proposed amendment of this type
should be treated as new matter.

Patents have been held invalid in cases where the patentee did not
disclose the best mode known to him. See Chemcast Corp. v. Arco Indus.
Corp., 913 F.2d 923. 16 USPQ2d 1033 (Fed. Cir. 1990); Dana Corp. v. IPC
Ltd. Partnership, 860 F.2d 415, 8 USPQ2d 1692 (Fed. Cir. 1988);
Spectra-Physics, Inc. v. Coherent, Inc., 821 F.2d 1524, 3 USPQ2d 1737
(Fed. Cir. 1987).

For completeness, see MPEP Section  608.01(p) and Section  2165 to
Section  2165.04.

---SECTION---608.01(i) Claims 

37 CFR 1.75 Claims

(a) The specification must conclude with a claim particularly pointing
out and distinctly claiming the subject matter which the applicant
regards as his invention or discovery.

(b) More than one claim may be presented provided they differ
substantially from each other and are not unduly multiplied.

(c) One or more claims may be presented in dependent form, referring
back to and further limiting another claim or claims in the same
application. Any dependent claim which refers to more than one other
claim ("multiple dependent claim" ) shall refer to such other claims in
the alternative only. A multiple dependent claim shall not serve as a
basis for any other multiple dependent claim. For fee calculation
purposes under Section  1.16, a multiple dependent claim will be
considered to be that number of claims to which direct reference is made
therein. For fee calculation purposes, also, any claim depending from a
multiple dependent claim will be considered to be that number of claims
to which direct reference is made in that multiple dependent claim. In
addition to the other filing fees, any original application which is
filed with, or is amended to include, multiple dependent claims must
have paid therein the fee set forth in Section  1.16(d). Claims in
dependent form shall be construed to include all the limitations of the
claim incorporated by reference into the dependent claim. A multiple
dependent claim shall be construed to incorporate by reference all the
limitations of each of the particular claims in relation to which it is
being considered.

(d)(1) The claim or claims must conform to the invention as set forth in
the remainder of the specification and the terms and phrases used in the
claims must find clear support or antecedent basis in the description so
that the meaning of the terms in the claims may be ascertainable by
reference to the description (See Section  1.58(a).)

(2) See Section Section  1.141 to 1.146 as to claiming different
inventions in one application.

(e) Where the nature of the case admits, as in the case of an
improvement, any independent claim should contain in the following
order, (1) a preamble comprising a general description of all the
elements or steps of the claimed combination which are conventional or
known, (2) a phrase such as  "wherein the improvement comprises," and
(3) those elements, steps and/or relationships which constitute that
portion of the claimed combination which the applicant considers as the
new or improved portion.

(f) If there are several claims, they shall be numbered consecutively in
Arabic numerals.

(g) The least restrictive claim should be presented as claim number 1,
and all dependent claims should be grouped together with the claim or
claims to which they refer to the extent practicable.

(h) The claim or claims must commence on a separate sheet.

(i) Where a claim sets forth a plurality of elements or steps, each
element or step of the claim should be separated by a line indentation.

For numbering of claims, see MPEP Section  608.01(j).

For form of claims, see MPEP Section  608.01(m).

For dependent claims, see MPEP Section  608.01(n).

For examination of claims, see MPEP Section  706.

For claims in excess of fee, see MPEP Section  714.10.

---SECTION---608.01(j) Numbering of Claims

37 CFR 1.126 Numbering of claims.

The original numbering of the claims must be preserved throughout the
prosecution. When claims are canceled the remaining claims must not be
renumbered.  When claims are added, they must be numbered by the
applicant consecutively beginning with the number next following the
highest numbered claim previously presented (whether entered or not).
When the application is ready for allowance, the examiner, if necessary,
will renumber the claims consecutively in the order in which they appear
or in such order as may have been requested by applicant.

In a single claim case, the claim is not numbered.

Form Paragraph 6.17 may be used to notify applicant.

6.17 Numbering of Claims, 37 CFR 1.126

The numbering of claims is not accordance with  37 CFR 1.126, which
requires the original numbering of the claims to be preserved throughout
the prosecution.  When claims are canceled, the remaining claims must
not be renumbered.  When new claims are presented, they must be numbered
consecutively beginning with the number next following the highest
numbered claims previously presented (whether entered or not).

Misnumbered claim  [1] been renumbered [2].

Examiner Note:

1. In bracket 1, insert appropriate claim number(s) and --has-- or --
have --.

2. In bracket 2, insert correct claim number(s) and --, respectively --
if more than one claim is involved.

---SECTION---608.01(k) Statutory Requirement of Claims

35 U.S.C. 112 requires that the applicant shall particularly point out
and distinctly claim the subject matter which he or she regards as his
or her invention. The portion of the application in which he or she does
this forms the claim or claims. This is an important part of the
application, as it is the definition of that for which protection is
granted.

---SECTION---608.01(l) Original Claims

In establishing a disclosure, applicant may rely not only on the
description and drawing as filed but also on the original claims if
their content justifies it.

Where subject matter not shown in the drawing or described in the
description is claimed in the case as filed, and such original claim
itself constitutes a clear disclosure of this subject matter, then the
claim should be treated on its merits, and requirement made to amend the
drawing and description to show this subject matter.  The claim should
not be attacked either by objection or rejection because this subject
matter is lacking in the drawing and description. It is the drawing and
description that are defective, not the claim.

It is, of course, to be understood that this disclosure in the claim
must be sufficiently specific and detailed to support the necessary
amendment of the drawing and description.

---SECTION---608.01(m) Form of Claims

The claim or claims must commence on a separate sheet and should appear
after the detailed description of the invention. While there is no set
statutory form for claims, the present Office practice is to insist that
each claim must be the object of a sentence starting with "I (or we)
claim'', "The invention claimed is'' (or the equivalent).  If, at the
time of allowance, the quoted terminology is not present, it is inserted
by the clerk. Each claim begins with a capital letter and ends with a
period. Periods may not be used elsewhere in the claims except for
abbreviations. See Fressola v.   Manbeck, 36 USPQ2d 1211 (D.D.C. 1995).
Where a claim sets forth a plurality of elements or steps, each element
or step of the claim should be separated by a line indentation,  37 CFR
1.75(i).

There may be plural indentations to further segregate subcombinations or
related steps. In general, the printed patent copies will follow the
format used but printing difficulties or expense may prevent the
duplication of unduly complex claim formats.

Reference characters corresponding to elements recited in the detailed
description and the drawings may be used in conjunction with the
recitation of the same element or group of elements in the claims. The
reference characters, however, should be enclosed within parentheses so
as to avoid confusion with other numbers or characters which may appear
in the claims. The use of reference characters is to be considered as
having no effect on the scope of the claims.

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.

Claims should preferably be arranged in order of scope so that the first
claim presented is the least restrictive. All dependent claims should be
grouped together with the claim or claims to which they refer to the
extent practicable. Where separate species are claimed, the claims of
like species should be grouped together where possible. Similarly,
product and process claims should be separately grouped. Such
arrangements are for the purpose of facilitating classification and
examination.

The form of claim required in  37 CFR 1.75(e) is particularly adapted
for the description of improvement-type inventions. It is to be
considered a combination claim. The preamble of this form of claim is
considered to positively and clearly include all the elements or steps
recited therein as a part of the claimed combination.

For rejections not based on prior art, see MPEP Section  706.03.

The following form paragraphs may be used to object to the form of the
claims.

6.18.01 Claims: Placement

The claims in this application do not commence on a separate sheet in
accordance with  37 CFR 1.52(b)(1).  Appropriate correction is required
in response to this action.

Examiner Note:

This paragraph should only be used for applications filed on or after
September 23, 1996.

7.29.01 Claims Objected to, Minor Informalities

Claim[1] objected to because of the following informalities: [2]. 
Appropriate correction is required.

Examiner Note:

1. Use this form paragraph to point out minor informalities such as
spelling errors, inconsistent terminology, etc., which should be
corrected.

2. If the informalities render the claim(s) indefinite, use form
paragraph 7.34.01 instead to reject the claim(s) under  35 U.S.C. 112,
second paragraph.

7.29.02 Claims Objected to, Reference Characters Not Enclosed Within
Parentheses

The claims are objected to because they include reference characters
which are not enclosed within parentheses. 

Reference characters corresponding to elements recited in the detailed
description of the drawings and used in conjunction with the recitation
of the same element or group of elements in the claims should be
enclosed within parentheses so as to avoid confusion with other numbers
or characters which may appear in the claims.  See MPEP Section 
608.01(m).

Examiner Note:

1. Use of this paragraph is optional.  You may instead choose to correct
the error yourself at time of allowance by informal examiner's
amendment.

2. If the lack of parentheses renders the claim(s) indefinite, use form
paragraph 7.34.01 instead to reject the claim(s) under  35 U.S.C. 112,
second paragraph.

7.29.03 Claims Objected to, Spacing of Lines

The claims are objected to because the lines are crowded too closely
together, making reading and entry of amendments difficult.  Substitute
claims with lines one and one-half or double spaced on good quality
paper are required.  See  37 CFR 1.52(b).

Amendments to the claims must be in compliance with  37 CFR 1.121(a)(2).
Form paragraphs 6.33 and 6.34 may be used to inform applicant of
nonentry of amendments to the claims.

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---608.01(n) Dependent Claims

I. MULTIPLE DEPENDENT CLAIMS

37 CFR 1.75 Claim(s).

                  +++    

(c) One or more claims may be presented in dependent form, referring
back to and further limiting another claim or claims in the same
application. Any dependent claim which refers to more than one other
claim ("multiple dependent claim") shall refer to such other claims in
the alternative only. A multiple dependent claim shall not serve as a
basis for any other multiple dependent claim. For fee calculation
purposes under Section  1.16, a multiple dependent claim will be
considered to be that number of claims to which direct reference is made
therein. For fee calculation purposes, also, any claim depending from a
multiple dependent claim will be considered to be that number of claims
to which direct reference is made in that multiple dependent claim. In
addition to the other filing fees, any original application which is
filed with, or is amended to include, multiple dependent claims must
have paid therein the fee set forth in Section  1.16(d). Claims in
dependent form shall be construed to include all the limitations of the
claim incorporated by reference into the dependent claim. A multiple
dependent claim shall be construed to incorporate by reference all the
limitations of each of the particular claims in relation to which it is
being considered.

                  +++    

Generally, a multiple dependent claim is a dependent claim which refers
back in the alternative to more than one preceding independent or
dependent claim.

The second paragraph of  35 U.S.C. 112 has been revised in view of the
multiple dependent claim practice introduced by the Patent Cooperation
Treaty. Thus  35 U.S.C. 112 authorizes multiple dependent claims in
applications filed on and after January 24, 1978, as long as they are in
the alternative form (e.g., "A machine according to claims 3 or 4,
further comprising --- "). Cumulative claiming (e.g., "A machine
according to claims 3 and 4, further comprising ---" ) is not permitted.
A multiple dependent claim may refer in the alternative to only one set
of claims. A claim such as "A device as in claims 1, 2, 3, or 4, made by
a process of claims 5, 6, 7, or 8" is improper. 35 U.S.C. 112 allows
reference to only a particular claim. Furthermore, a multiple dependent
claim may not serve as a basis for any other multiple dependent claim,
either directly or indirectly. These limitations help to avoid undue
confusion in determining how many prior claims are actually referred to
in a multiple dependent claim.

A multiple dependent claim which depends from another multiple dependent
claim should be objected to by using Form Paragraph 7.45.

7.45 Improper Multiple Dependent Claims

Claim  [1] objected to under  37 CFR 1.75(c) as being in improper form
because a multiple dependent claim [2].  See MPEP Section  608.01(n). 
Accordingly, the claim  [3] not been further treated on the merits.

Examiner Note:

1. In bracket 2, insert --should refer to other claims in the
alternative only--, and/or, --cannot depend from any other multiple
dependent claim--.

2. Use this paragraph rather than  35 U.S.C. 112, fifth paragraph.

3. In bracket 3, insert --has-- or --s have--.

Assume each claim example given below is from a different application.

A. Acceptable Multiple Dependent Claim Wording

Claim 5. A gadget according to claims 3 or 4, further comprising ---

Claim 5. A gadget as in any one of the preceding claims, in which ---

Claim 3. A gadget as in either claim 1 or claim 2, further comprising
---

Claim 4. A gadget as in claim 2 or 3, further compri sing ---

Claim 16. A gadget as in claims 1, 7, 12, or 15, further comprising ---

Claim 5. A gadget as in any of the preceding claims, in which ---

Claim 8. A gadget as in one of claims 4-7, in which ---

Claim 5. A gadget as in any preceding claim, in which ---

Claim 10. A gadget as in any of claims 1-3 or 7-9, in which ---

Claim 11. A gadget as in any one of claims 1, 2, or 7-10 inclusive, in
which ---

B. Unacceptable Multiple Dependent Claim Wording

1. Claim Does Not Refer Back in the Alternative Only

Claim 5. A gadget according to claim 3 and 4, further comprising ---

Claim 9. A gadget according to claims 1-3, in which ---

Claim 9. A gadget as in claims 1 or 2 and 7 or 8, which ---

Claim 6. A gadget as in the preceding claims in which ---

Claim 6. A gadget as in claims 1, 2, 3, 4 and/or 5, in which ---

Claim 10. A gadget as in claims 1-3 or 7-9, in which ---

2. Claim Does Not Refer to a Preceding Claim

Claim 3. A gadget as in any of the following claims, in which ---

Claim 5. A gadget as in either claim 6 or claim 8, in which ---

3. Reference to Two Sets of Claims to Different Features

Claim 9. A gadget as in claim 1 or 4 made by the process of claims 5, 6,
7, or 8, in which ---

4. Reference Back to Another Multiple Dependent Claim

Claim 8. A gadget as in claim 5 (claim 5 is a multiple dependent claim)
or claim 7, in which ---

35 U.S.C. 112 indicates that the limitations or elements of each claim
incorporated by reference into a multiple dependent claim must be
considered separately. Thus, a multiple dependent claim, as such, does
not contain all the limitations of all the alternative claims to which
it refers, but rather contains in any one embodiment only those
limitations of the particular claim referred to for the embodiment under
consideration. Hence, a multiple dependent claim must be considered in
the same manner as a plurality of single dependent claims.

C. Restriction Practice

For restriction purposes, each embodiment of a multiple dependent claim
is considered in the same manner as a single dependent claim. Therefore,
restriction may be required between the embodiments of a multiple
dependent claim. Also, some embodiments of a multiple dependent claim
may be held withdrawn while other embodiments are considered on their
merits.  

D. Handling of Multiple Dependent Claims by the Office of Initial Patent
Examination

The Office of Initial Patent Examination (OIPE) is responsible for
verifying whether multiple dependent claims filed with the application
are in proper alternative form, that they depend only upon prior
independent or single dependent claims and also for calculating the
amount of the filing fee. A new form, PTO-1360, has been designed to be
used in conjunction with the current fee calculation form PTO-875.

E. Handling of Multiple Dependent Claims by the Examining Group
Technical Support Staff

The examining group technical support staff is responsible for verifying
compliance with the statute and rules of multiple dependent claims added
by amendment and for calculating the amount of any additional fees
required.  This calculation should be performed on form PTO-1360.

There is no need for an examining group technical support staff to check
the accuracy of the initial filing fee since this has already been
verified by the Office of Initial Patent Examination when granting the
filing date.

If a multiple dependent claim (or claims) is added in an amendment
without the proper fee, either by adding references to prior claims or
by adding a new multiple dependent claim, the amendment should not be
entered until the fee has been received.  In view of the requirements
for multiple dependent claims, no amendment containing new claims or
changing the dependency of claims should be entered before checking
whether the paid fees cover the costs of the amended claims. The
applicant, or his or her attorney or agent, should be contacted to pay
the additional fee. Where a letter is written in an insufficient fee
situation, a copy of the multiple dependent claim fee calculation, form
PTO-1360, should be included for applicant's information.

If an application filed prior to October 1, 1982, is amended on or after
October 1, 1982, to include a proper multiple dependent claim for the
first time, the fee set forth in Section  1.16(d) must be paid.

If such an application contained a proper multiple dependent claim prior
to October 1, 1982, the fee set forth in Section  1.16(d) does not
apply.

Where the examining group technical support staff notes that the
reference to the prior claims is improper in an added or amended
multiple dependent claim, a notation should be made in the left margin
next to the claim itself and the number 1, which is inserted in the
"Dep. Claim" column of that amendment on form PTO-1360, should be
circled in order to call this matter to the examiner's attention.

F.	Handling of Multiple Dependent Claims by the Examiner

Public Law 94-131, the implementing legislation for the Patent
Cooperation Treaty amended  35 U.S.C. 112 to state that "a claim in
dependent form shall contain a reference to a claim   previously set
forth."  The requirement to refer to a previous claim had existed only
in  37 CFR 1.75(c) before.

The following procedures are to be followed by examiners when faced with
claims which refer to numerically succeeding claims:

If any series of dependent claims contains a claim with an improper
reference to a numerically following claim which cannot be understood,
the claim referring to a following claim should normally be objected to
and not treated on the merits.

However, in situations where a claim refers to a numerically following
claim and the dependency is clear, both as presented and as it will be
renumbered at issue, all claims should be examined on the merits and no
objection as to form need be made. In such cases, the examiner will
renumber the claims into proper order at the time the application is
allowed. (See Example B, below.)

Any unusual problems should be brought to the supervisor's attention.

Example A

(Claims 4 and 6 should be objected to as not being understood and should
not be treated on the merits.)

1. Independent

2. Dependent on claim 5

3. Dependent on claim 2

4.  ". . . as in any preceding claim"

5. Independent

6. Dependent on claim 4

Example B

Note: Parenthetical numerals represent the claim numbering for issue
should all claims be allowed.

(All claims should be examined.)

1. (1) Independent

2. (5) Dependent on claim 5 (4)

3. (2) Dependent on claim 1 (1)

4. (3) Dependent on claim 3 (2)

5. (4) Dependent on either claim 1 (1) or claim 3 (2)

The following practice is followed by patent examiners when making
reference to a dependent claim either singular or multiple:

(A) When identifying a singular dependent claim which does not include a
reference to a multiple dependent claim, either directly or indirectly,
reference should be made only to the number of the dependent claim.

(B) When identifying the embodiments included within a multiple
dependent claim, or a singular dependent claim which includes a
reference to a multiple dependent claim, either directly or indirectly,
each embodiment should be identified by using the number of the claims
involved, starting with the highest, to the extent necessary to
specifically identify each embodiment.

(C) When all embodiments included within a multiple dependent claim or a
singular dependent claim which includes a reference to a multiple
dependent claim, either directly or indirectly, are subject to a common
rejection, objection, or requirement, reference may be made only to the
number of the dependent claim.

The following table illustrates the current practice where each
embodiment of each claim must be treated on an individual basis:

ClaimNo. 	Claim dependency Identification

		All claims	Approved practice

 1	Independent	1	1

 2	Depends from 1	2/1	2

 3	Depends from 2	3/2/1	3

 4	Depends from 2 or 3	4/2/1 4/3/2/1	4/2 4/3

 5	Depends from 3	5/3/2/1	5

 6	Depends from 2, 3, or 5	6/2/1 6/3/2/1 6/5/3/2/1	6/2 6/3 6/5

 7	Depends from 6	7/6/2/1 7/6/3/2/1 7/6/5/3/2/1	7/6/2 7/6/3 7/6/5

When all embodiments in a multiple dependent claim situation (claims 4,
6, and 7 above) are subject to a common rejection, objection, or
requirements, reference may be made to the number of the individual
dependent claim only. For example, if 4/2 and 4/3 were subject to a
common ground of rejection, reference should be made only to claim 4 in
the statement of that rejection.

The provisions of  35 U.S.C. 132 require that each Office action make it
explicitly clear what rejection, objection and/or requirement is applied
to each claim embodiment.

G. Fees for Multiple Dependent Claims

1. Use of Form PTO-1360

To assist in the computation of the fees for multiple dependent claims,
a separate "Multiple Dependent Claim Fee Calculation Sheet," form
PTO-1360, has been designed for use with the current "Patent Application
Fee Determination Record," form PTO-875. Form PTO-1360 will be placed in
the file wrapper by the Office of Initial Patent Examination (OIPE)
where multiple dependent claims are in the application as filed. If
multiple dependent claims are not included upon filing, but are later
added by amendment, the examining group technical support staff will
place the form in the file wrapper. If there are multiple dependent
claims in the application, the total number of independent and dependent
claims for fee purposes will be calculated on form PTO-1360 and the
total number of claims and number of independent claims is then placed
on form PTO-875 for final fee calculation purposes.

2. Calculation of Fees

(a) Proper Multiple Dependent Claim

35 U.S.C. 41(a), provides that claims in proper multiple dependent form
may not be considered as single dependent claims for the purpose of
calculating fees. Thus, a multiple dependent claim is considered to be
that number of dependent claims to which it refers. Any proper claim
depending directly or indirectly from a multiple dependent claim is also
considered as the number of dependent claims as referred to in the
multiple dependent claim from which it depends.

(b) Improper Multiple Dependent Claim

If any multiple dependent claim is improper, OIPE may indicate that fact
by placing an encircled numeral "1'' in the "Dep. Claims" column of form
PTO-1360.  The fee for any improper multiple dependent claim, whether it
is defective for either not being in the alternative form or for being
directly or indirectly dependent on a prior multiple dependent claim,
will only be one, since only an objection to the form of such a claim
will normally be made. This procedure also greatly simplifies the
calculation of fees. Any claim depending from an improper multiple
dependent claim will also be considered to be improper and be counted as
one dependent claim.

(c) Fee calculation example

[GRAPHIC]

i) Comments On Fee Calculation Example

Claim 1  - This is an independent claim; therefore, a numeral  "1" is
placed opposite claim number 1 in the "Ind." column.

Claim 2  -  Since this is a claim dependent on a single independent
claim, a numeral "1" is placed opposite claim number 2 of the "Dep."
column.

Claim 3 -  Claim 3 is also a single dependent claim, so a numeral "1" is
placed in the "Dep." column.

Claim 4  -  Claim 4 is a proper multiple dependent claim. It refers
directly to two claims in the alternative, namely, claim 2 or 3.
Therefore, a numeral "2" to indicate direct reference to two claims is
placed in the "Dep." column opposite claim number 4.

Claim 5  -  This claim is a singularly dependent claim depending from a
multiple dependent claim. For fee calculation purposes, such a claim is
counted as being that number of claims to which direct reference is made
in the multiple dependent claim from which it depends. In this case, the
multiple dependent claim number 4 it depends from counts as 2 claims;
therefore, claim 5 also counts as 2 claims. Accordingly, a numeral  "2" 
is placed opposite claim number 5 in the  "Dep."  column.

Claim 6  -  Claim 6 depends indirectly from a multiple dependent claim
4.  Since claim 4 counts as 2 claims, claim 6 also counts as 2 dependent
claims.  Consequently, a numeral  "2"  is placed in the  "Dep."  column
after claim 6.

Claim 7  -  This claim is a multiple dependent claim since it refers to
claims 4, 5, or 6.  However, as can be seen by looking at the  "2"  in
the  "Dep."  column opposite claim 4, claim 7 depends from a multiple
dependent claim. This practice is improper under  35 U.S.C. 112 and  37
CFR 1.75(c).  Following the procedure for calculating fees for improper
multiple dependent claims, a numeral  "1"  is placed in the "Dep."
column with a circle drawn around it to alert the examiner that the
claim is improper.

Claim 8  -  Claim 8 is improper since it depends from an improper claim.
If the base claim is in error, this error cannot be corrected by adding
additional claims depending therefrom. Therefore, a numeral "1" with a
circle around it is placed in the "Dep." column.

Claim 9  -  Here again we have an independent claim which is always
indicated with a numeral "1" in the "Ind." column opposite the claim
number.

Claim 10  -  This claim refers to two independent claims in the
alternative. A numeral "2" is, therefore, placed in the "Dep." column
opposite claim 10.

Claim 11  -  Claim 11 is a dependent claim which refers to two claims in
the conjunctive ("1" and "9" ) rather than in the alternative ("1" or
"9" ). This form is improper under  35 U.S.C. 112 and  37 CFR 1.75(c).
Accordingly, since claim 11 is improper, an encircled number "1" is
placed in the "Dep." column opposite Claim 11.

ii) Calculation of Fee in Fee Example

After the number of  "Ind." and "Dep." claims are noted on form
PTO-1360, each column is added. In this example, there are 2 independent
claims and 13 dependent claims or a total of 15 claims. The number of
independent and total claims can then be placed on form PTO-875 and the
fee calculated.

II. TREATMENT OF IMPROPER DEPENDENT CLAIMS

The initial determination, for fee purposes, as to whether a claim is
dependent must be made by persons other than examiners; it is necessary,
at that time, to accept as dependent virtually every claim which refers
to another claim, without determining whether there is actually a true
dependent relationship. The initial acceptance of a claim as a dependent
claim does not, however, preclude a subsequent holding by the examiner
that a claim is not a proper dependent claim. Any claim which is in
dependent form but which is so worded that it, in fact is not, as, for
example, it does not include every limitation of the claim on which it
depends, will be required to be canceled as not being a proper dependent
claim; and cancelation of any further claim depending on such a
dependent claim will be similarly required. Where a claim in dependent
form is not considered to be a proper dependent claim under  37 CFR
1.75(c), the examiner should object to such claim under  37 CFR 1.75(c)
and require cancellation of such improper dependent claim or rewriting
of such improper dependent claim in independent form. See Ex parte
Porter, 25 USPQ2d 1144, 1147 (Bd. of Pat. App. & Inter. 1992)  (A claim
determined to be an improper dependent claim should be treated as a
formal matter, in that the claim should be objected to and applicant
should be required to cancel the claim (or replace the improper
dependent claim with an independent claim) rather than treated by a
rejection of the claim under  35 U.S.C. 112, fourth paragraph.). The
applicant may thereupon amend the claims to place them in proper
dependent form, or may redraft them as independent claims, upon payment
of any necessary additional fee.

Claims which are in improper dependent form for failing to further limit
the subject matter of a previous claim should be objected to under  37
CFR 1.75(c) by using Form Paragraph 7.36.

7.36 Objection, 37 CFR 1.75(c), Improper Dependent Claim

Claim  [1] objected to under  37 CFR 1.75(c), as being of improper
dependent form for failing to further limit the subject matter of a
previous claim. Applicant is required to cancel the claim(s), or amend
the claim(s) to place the claim(s) in proper dependent form, or rewrite
the claim(s) in independent form. [2].

Examiner Note:

1. In bracket 2, insert an explanation of what is in the claim and why
it does not constitute a further limitation.

2. Note Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992)
for situations where a method claim is considered to be properly
dependent upon a parent apparatus claim and should not be objected to or
rejected under  35 U.S.C. 112, fourth paragraph. See also MPEP Section 
608.01(n),  "Infringement Test" for dependent claims. The test for a
proper dependent claim is whether the dependent claim includes every
limitation of the parent claim. The test is not whether the claims
differ in scope.  A proper dependent claim shall not conceivably be
infringed by anything which would not also infringe the basic claim.

III. INFRINGEMENT TEST

The test as to whether a claim is a proper dependent claim is that it
shall include every limitation of the claim from which it depends (35
U.S.C. 112, fourth paragraph) or in other words that it shall not
conceivably be infringed by anything which would not also infringe the
basic claim.

A dependent claim does not lack compliance with  35 U.S.C. 112, fourth
paragraph, simply because there is a question as to (1) the significance
of the further limitation added by the dependent claim, or (2) whether
the further limitation in fact changes the scope of the dependent claim
from that of the claim from which it depends. The test for a proper
dependent claim under the fourth paragraph of  35 U.S.C. 112 is whether
the dependent claim includes every limitation of the claim from which it
depends. The test is not one of whether the claims differ in scope.

Thus, for example, if claim 1 recites the combination of elements A, B,
C, and D, a claim reciting the structure of claim 1 in which D was
omitted or replaced by E would not be a proper dependent claim, even
though it placed further limitations on the remaining elements or added
still other elements.

Examiners are reminded that a dependent claim is directed to a
combination including everything recited in the base claim and what is
recited in the dependent claim. It is this combination that must be
compared with the prior art, exactly as if it were presented as one
independent claim.

The fact that a dependent claim which is otherwise proper might relate
to a separate invention which would require a separate search or be
separately classified from the claim on which it depends would not
render it an improper dependent claim, although it might result in a
requirement for restriction.

The fact that the independent and dependent claims are in different
statutory classes does not, in itself, render the latter improper. Thus,
if claim 1 recites a specific product, a claim for the method of making
the product of claim 1 in a particular manner would be a proper
dependent claim since it could not be infringed without infringing claim
1. Similarly, if claim 1 recites a method of making a product, a claim
for a product made by the method of claim 1 could be a proper dependent
claim. On the other hand, if claim 1 recites a method of making a
specified product, a claim to the product set forth in claim 1 would not
be a proper dependent claim if the product might be made in other ways.
Note, that although  37 CFR 1.75(c) requires the dependent claim to
further limit a preceding claim, this rule does not apply to
product-by-process claims.

IV. CLAIM FORM AND ARRANGEMENT

A singular dependent claim 2 could read as follows:

2. The product of claim 1 in which . . . .

A series of singular dependent claims is permissible in which a
dependent claim refers to a preceding claim which, in turn, refers to
another preceding claim.

A claim which depends from a dependent claim should not be separated
therefrom by any claim which does not also depend from said "dependent
claim." It should be kept in mind that a dependent claim may refer back
to any preceding independent claim. These are are the only restrictions
with respect to the sequence of claims and, in general, applicant's
sequence should not be changed. See MPEP Section  608.01(j). Applicant
may be so advised by using Form Paragraph 6.18.

IV. CLAIM FORM AND ARRANGEMENT

A singular dependent claim 2 could read as follows:

2.	The product of claim 1 in which . . . .

A series of singular dependent claims is permissible in which a
dependent claim refers to a preceding claim which, in turn, refers to
another preceding claim.

A claim which depends from a dependent claim should not be separated
therefrom by any claim which does not also depend from said "dependent
claim." It should be kept in mind that a dependent claim may refer back
to any preceding independent claim. These are are the only restrictions
with respect to the sequence of claims and, in general, applicant's
sequence should not be changed. See MPEP Section  608.01(j). Applicant
may be so advised by using Form Paragraph 6.18.

6.18 Series of Singular Dependent Claims

A series of singular dependent claims is permissible in which a
dependent claim refers to a preceding claim which, in turn, refers to
another preceding claim.

A claim which depends from a dependent claim should not be separated by
any claim which does not also depend from said dependent claim.  It
should be kept in mind that a dependent claim may refer to any preceding
independent claim.  In general, applicant's sequence will not be
changed.  See MPEP Section  608.01(n).

During prosecution, the order of claims may change and be in conflict
with the requirement that dependent claims refer to a preceding claim.
Accordingly, the numbering of dependent claims and the numbers of
preceding claims referred to in dependent claims should be carefully
checked when claims are renumbered upon allowance.

V. REJECTION AND OBJECTION

If the base claim has been canceled, a claim which is directly or
indirectly dependent thereon should be rejected as incomplete. If the
base claim is rejected, the dependent claim should be objected to rather
than rejected, if it is otherwise allowable.

Form Paragraph 7.43 can be used to state the objection.

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.

---SECTION---608.01(o) Basis for Claim Terminology in Description

The meaning of every term used in any of the claims should be apparent
from the descriptive portion of the specification with clear disclosure
as to its import; and in mechanical cases, it should be identified in
the descriptive portion of the specification by reference to the
drawing, designating the part or parts therein to which the term
applies. A term used in the claims may be given a special meaning in the
description. No term may be given a meaning repugnant to the usual
meaning of the term.

Usually the terminology of the original claims follows the nomenclature
of the specification, but sometimes in amending the claims or in adding
new claims, new terms are introduced that do not appear in the
specification. The use of a confusing variety of terms for the same
thing should not be permitted.

New claims and amendments to the claims already in the case should be
scrutinized not only for new matter but also for new terminology. While
an applicant is not limited to the nomenclature used in the application
as filed, he or she should make appropriate amendment of the
specification whenever this nomenclature is departed from by amendment
of the claims so as to have clear support or antecedent basis in the
specification for the new terms appearing in the claims. This is
necessary in order to insure certainty in construing the claims in the
light of the specification, Ex parte Kotler,   1901 C.D. 62, 95 O.G.
2684 (Comm'r Pat. 1901). See  37 CFR 1.75,  MPEP Section  608.01(i) and
Section  1302.01.

The specification should be objected to if it does not provide proper
antecedent basis for the claims by using Form Paragraph 7.44.

7.44 Claimed Subject Matter Not in Specification

The specification is objected to as failing to provide proper antecedent
basis for the claimed subject matter.  See  37 CFR 1.75(d)(1) and MPEP
Section  608.01(o).  Correction of the following is required: [1]

---SECTION---608.01(p) Completeness

Newly filed applications obviously failing to disclose an invention with
the clarity required are discussed in MPEP Section  702.01.

A disclosure in an application, to be complete, must contain such
description and details as to enable any person skilled in the art or
science to which the invention pertains to make and use the invention as
of its filing date. In re Glass, 492 F.2d 1228, 181 USPQ 31 (CCPA 1974).

While the prior art setting may be mentioned in general terms, the
essential novelty, the essence of the invention, must be described in
such details, including proportions and techniques, where necessary, as
to enable those persons skilled in the art to make and utilize the
invention.

Specific operative embodiments or examples of the invention must be set
forth. Examples and description should be of sufficient scope as to
justify the scope of the claims.   Markush claims must be provided with
support in the disclosure for each member of the Markush group. Where
the constitution and formula of a chemical compound is stated only as a
probability or speculation, the disclosure is not sufficient to support
claims identifying the compound by such composition or formula.

A complete disclosure should include a statement of utility. This
usually presents no problem in mechanical cases. In chemical cases,
varying degrees of specificity are required.

A disclosure involving a new chemical compound or composition must teach
persons skilled in the art how to make the compound or composition.
Incomplete teachings may not be completed by reference to subsequently
filed applications.

For "Guidelines For Examination Of Applications For Compliance With The
Utility Requirement of  35 U.S.C. 101," see MPEP Section  706.03(a)(1).

For "General Principles Governing Utility Rejections," see MPEP Section 
2107.

For a discussion of the utility requirement under  35 U.S.C. 112, first
paragraph, in drug cases, see MPEP Section  2107.02 and Section 
2164.06(a).

For "Procedural Considerations Related to Rejections for Lack of
Utility," see MPEP Section  2107.01.

For "Special Considerations for Asserted Therapeutic or Pharmacological
Utilities," see MPEP Section  2107.02.

I. INCORPORATION BY REFERENCE

The Commissioner has considerable discretion in determining what may or
may not be incorporated by reference in a patent application. General
Electric Co. v.   Brenner, 407 F.2d 1258, 159 USPQ 335 (D.C. Cir. 1968).
The incorporation by reference practice with respect to applications
which issue as U.S. patents provides the public with a patent disclosure
which minimizes the public's burden to search for and obtain copies of
documents incorporated by reference which may not be readily available. 
Through the Office's incorporation by reference policy, the Office
ensures that reasonably complete disclosures are published as U.S.
patents.  The following is the manner in which the Commissioner has
elected to exercise that discretion. Section A provides the guidance for
incorporation by reference in applications which are to issue as U.S.
patents. Section B provides guidance for incorporation by reference in
benefit applications; i.e., those domestic (35 U.S.C. 120) or foreign
(35 U.S.C. 119(a)) applications relied on to establish an earlier
effective filing date.

A. Review of Applications Which Are To Issue as Patents.

An application as filed must be complete in itself in order to comply
with  35 U.S.C. 112.  Material nevertheless may be incorporated by
reference,   Ex parte Schwarze, 151 USPQ 426 (Bd. App. 1966). An
application for a patent when filed may incorporate "essential material"
by reference to (1) a U.S. patent or (2) a pending U.S. application,
subject to the conditions set forth below.

"Essential material" is defined as that which is necessary to (1)
describe the claimed invention, (2) provide an enabling disclosure of
the claimed invention, or (3) describe the best mode (35 U.S.C. 112). In
any application which is to issue as a U.S. patent, essential material
may not be incorporated by reference to  (1) patents or applications
published by foreign countries or a regional patent office, (2)
non-patent publications, (3) a U.S. patent or application which itself
incorporates "essential material" by reference, or (4) a foreign
application.

Nonessential subject matter may be incorporated by reference to (1)
patents or applications published by the United States or foreign
countries or regional patent offices, (2) prior filed, commonly owned
U.S. applications, or (3) non-patent publications.  Nonessential subject
matter is subject matter referred to for purposes of indicating the
background of the invention or illustrating the state of the art.

Mere reference to another application, patent, or publication is not an
incorporation of anything therein into the application containing such
reference for the purpose of the disclosure required by  35 U.S.C. 112,
first paragraph.  In re de Seversky, 474 F.2d 671, 177 USPQ 144 (CCPA
1973).  In addition to other requirements for an application, the
referencing application should include an identification of the
referenced patent, application, or publication. Particular attention
should be directed to specific portions of the referenced document where
the subject matter being incorporated may be found. Guidelines for
situations where applicant is permitted to fill in a number for
Application No. __________ left blank in the application as filed can be
found in In re Fouche, 439 F.2d 1237, 169 USPQ 429 (CCPA 1971)
(Abandoned applications less than 20 years old can be incorporated by
reference to the same extent as copending applications; both types are
open to the public upon the referencing application issuing as a patent.
See MPEP Section  103).

1. Complete Disclosure Filed

If an application is filed with a complete disclosure, essential
material may be canceled by amendment and may be substituted by
reference to a U.S. patent or an earlier filed pending U.S. application.
The amendment must be accompanied by an affidavit or declaration signed
by the applicant, or a practitioner representing the applicant, stating
that the material canceled from the application is the same material
that has been incorporated by reference.

If an application as filed incorporates essential material by reference
to a U.S. patent or a pending and commonly owned U.S. application,
applicant may be required prior to examination to furnish the Office
with a copy of the referenced material together with an affidavit or
declaration executed by the applicant, or a practitioner representing
the applicant, stating that the copy consists of the same material
incorporated by reference in the referencing application. However, if a
copy of a printed U.S. patent is furnished, no affidavit or declaration
is required.

Prior to allowance of an application that incorporates essential
material by reference to a pending U.S. application, the examiner shall
determine if the referenced application has issued as a patent.  If the
referenced application has issued as a patent, the examiner shall enter
the U.S. Patent No. of the referenced application in the specification
of the referencing application (see MPEP Section  1302.04).  If the
referenced application has not issued as a patent, applicant will be
required to amend the disclosure of the referencing application to
include the material incorporated by reference. The amendment must be
accompanied by an affidavit or declaration executed by the applicant, or
a practitioner representing the applicant, stating the amendatory
material consists of the same material incorporated by reference in the
referencing application.

2. Improper Incorporation

The filing date of any application wherein essential material is
improperly incorporated by reference to a foreign application or patent
or to a publication will not be affected because of the reference. In
such a case, the applicant will be required to amend the specification
to include the material incorporated by reference. The following form
paragraphs may be used.

6.19 Incorporation by Reference, Foreign Patent or Application

The incorporation of essential material in the specification by
reference to a foreign application or patent, or to a publication is
improper.  Applicant is required to amend the disclosure to include the
material incorporated by reference.  The amendment must be accompanied
by an affidavit or declaration executed by the applicant, or a
practitioner representing the applicant, stating that the amendatory
material consists of the same material incorporated by reference in the
referencing application.  In re Hawkins, 486 F.2d 569, 179 USPQ 157
(CCPA 1973); In re Hawkins, 486 F.2d 579, 179 USPQ 163 (CCPA 1973); In
re Hawkins, 486 F.2d 577, 179 USPQ 167 (CCPA 1973).

6.19.01 Improper Incorporation by Reference, General

The attempt to incorporate subject matter into this application by
reference to   [1] is improper because [2].

Examiner Note:

1. In bracket 1, identify the document such as an application or patent
number or other identification.

2. In bracket 2, give reason why it is improper.

The amendment must be accompanied by an affidavit or declaration
executed by the applicant, or a practitioner representing the applicant,
stating that the amendatory material consists of the same material
incorporated by reference in the referencing application. In re Hawkins,
486 F.2d 569, 179 USPQ 157 (CCPA 1973);   In re Hawkins, 486 F.2d 579,
179 USPQ 163 (CCPA 1973);   In re Hawkins, 486 F.2d 577, 179 USPQ 167
(CCPA 1973).

Reliance on a commonly assigned copending application by a different
inventor may ordinarily be made for the purpose of completing the
disclosure. See In re Fried, 329 F.2d 323, 141 USPQ 27 (CCPA 1964), and
General Electric Co. v.   Brenner, 407 F.2d 1258, 159 USPQ 335 (D.C.
Cir. 1968).

Since a disclosure must be complete as of the filing date, subsequent
publications or subsequently filed applications cannot be relied on to
establish a constructive reduction to practice or an enabling disclosure
as of the filing date. White Consol. Indus., Inc. v. Vega Servo-Control,
Inc., 713 F.2d 788, 218 USPQ 961 (Fed. Cir. 1983); In re Scarbrough, 500
F.2d 560, 182 USPQ 298 (CCPA 1974); In re Glass, 492 F.2d 1228, 181 USPQ
31 (CCPA 1974).

B. Review of Applications Which Are Relied on To Establish an Earlier
Effective Filing Date.

The limitations on the material which may be incorporated by reference
in U.S. patent applications which are to issue as U.S. patents do not
apply to applications relied on only to establish an earlier effective
filing date under  35 U.S.C. 119 or  35 U.S.C. 120.  Neither  35 U.S.C.
119(a) nor  35 U.S.C. 120 places any restrictions or limitations as to
how the claimed invention must be disclosed in the earlier application
to comply with  35 U.S.C. 112, first paragraph.  Accordingly, an
application is entitled to rely upon the filing date of an earlier
application, even if the earlier application itself incorporates
essential material by reference to another document.  See Ex parte
Maziere, 27 USPQ2d 1705, 1706-07 (Bd. Pat. App. & Inter. 1993).

The reason for incorporation by reference practice with respect to
applications which are to issue as U.S. patents is to provide the public
with a patent disclosure which minimizes the public's burden to search
for and obtain copies of documents incorporated by reference which may
not be readily available. Through the Office's incorporation by
reference policy, the Office ensures that reasonably complete
disclosures are published as U.S. patents. The same policy concern does
not apply where the sole purpose for which an applicant relies on an
earlier U.S. or foreign application is to establish an earlier filing
date. Incorporation by reference in the earlier application of (1)
patents or applications published by foreign countries or regional
patent offices, (2) nonpatent publications, (3) a U.S. patent or
application which itself incorporates "essential material" by reference,
or (4) a foreign application, is not critical in the case of a "benefit"
application.

When an applicant, or a patent owner in a reexamination or interference,
claims the benefit of the filing date of an earlier application which
incorporates material by reference, the applicant or patent owner may be
required to supply copies of the material incorporated by reference. For
example, an applicant may claim the benefit of the filing date of a
foreign application which itself incorporates by reference another
earlier filed foreign application. If necessary, due to an intervening
reference, applicant should be required to supply a copy of the earlier
filed foreign application, along with an English language translation. A
review can then be made of the foreign application and all material
incorporated by reference to determine whether the foreign application
discloses the invention sought to be patented in the manner required by
the first paragraph of  35 U.S.C. 112 so that benefit may be accorded.
In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989).

II. SIMULATED OR PREDICTED TEST RESULTS OR PROPHETIC EXAMPLES

Simulated or predicted test results and prophetical examples (paper
examples) are permitted in patent applications. Working examples
correspond to work actually performed and may describe tests which have
actually been conducted and results that were achieved. Paper examples
describe the manner and process of making an embodiment of the invention
which has not actually been conducted. Paper examples should not be
represented as work actually done. No results should be represented as
actual results unless they have actually been achieved. Paper examples
should not be described using the past tense.

For problems arising from the designation of materials by trademarks and
trade names, see MPEP Section  608.01(v).

---SECTION---608.01(q) Substitute or Rewritten Specification

37 CFR 1.125 Substitute specification.

(a) If the number or nature of the amendments or the legibility of the
application papers renders it difficult to consider the application, or
to arrange the papers for printing or copying, the Office may require
the entire specification, including the claims, or any part thereof, be
rewritten.

(b) A substitute specification, excluding the claims, may be filed at
any point up to payment of the issue fee if it is accompanied by:

(1) A statement that the substitute specification includes no new
matter; and

(2) A marked-up copy of the substitute specification showing the matter
being added to and the matter being deleted from the specification of
record.

(c) A substitute specification submitted under this section must be
submitted in clean form without markings as to amended material.

(d) A substitute specification under this section is not permitted in a
reissue application or in a reexamination proceeding.

The specification is sometimes in such faulty English that a new
specification is necessary; in such instances, a new specification
should be required.

Form Paragraph 6.28 may be used where the specification is in faulty
English.

6.28 Idiomatic English

A substitute specification in proper idiomatic English and in compliance
with  37 CFR 1.52(a) and (b) is required.  The substitute specification
filed must be accompanied by a statement that it contains no new matter.

37 CFR 1.125(a) applies to a substitute specification required by the
Office.  If the number or nature of the amendments or the legibility of
the application papers renders it difficult to consider the application,
or to arrange the papers for printing or copying, the Office may require
the entire specification, including the claims, or any part thereof be
rewritten.

Form Paragraph 6.28.01 may be used where the examiner, for reasons other
than faulty English, requires a substitute specification.

6.28.01 Substitute Specification Required by Examiner

A substitute specification excluding claims is required pursuant to  37
CFR 1.125(a) because   [1].

A substitute specification filed under  37 CFR 1.125(a) must only
contain subject matter from the original specification and any
previously entered amendment under  37 CFR 1.121.  If the substitute
specification contains additional subject matter not of record, the
substitute specification must be filed under  37 CFR 1.125(b) and 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. 

Examiner Note:

1. In bracket 1, insert clear and concise examples of why a new
specification is required.

2. A new specification is required if the number or nature of the
amendments render it difficult to consider the application or to arrange
the papers for printing or copying,  37 CFR 1.125.

3. See also form paragraph 13.01 for partial rewritten specification.

4. 37 CFR 1.125(b) provides applicants with the right of entry of
substitute specifications, under the conditions set forth in the
section, in applications other than reissue applications (37 CFR
1.125(d)),that have not been required by the examiner.

37 CFR 1.125(b) applies to a substitute specification voluntarily filed
by the applicant.  A substitute specification, excluding claims, may be
voluntarily filed by the applicant at any point up to the payment of the
issue fee provided it is accompanied by (1) a statement that the
substitute specification includes no new matter, and (2) a marked-up
copy of the substitute specification showing the matter being added to
and the matter being deleted from the specification of record. 37 CFR
1.125(b).  The Office will accept a substitute specification voluntarily
filed by the applicant if the requirements of  37 CFR 1.125(b) are
satisfied.

37 CFR 1.125(c) requires a substitute specification filed under  37 CFR
1.125(a) or (b) be submitted in clean form without markings as to
amended material.

Form Paragraph 6.28.02 may be used to notify applicant that a substitute
specification submitted under  37 CFR 1.125(b) has not been entered.

6.28.02 Substitute Specification Filed Under 37 CFR 1.125(b) Not Entered

The substitute specification filed [1] has not been entered because it
does not conform to  37 CFR 1.125(b) because: [2]

Examiner Note:

1.	In bracket 2, insert statement of why the substitute specification is
improper, for example:

-- the statement as to a lack of new matter under  37 CFR 1.125(b) is
missing--,

-- a marked-up copy of the substitute specification has not been
supplied (in addition to the clean copy)--;

-- a clean copy of the substitute specification has not been supplied
(in addition to the marked-up copy)--; or,

-- the substitute specification has been filed:

- in a reissue application or in a reexamination proceedings,  37 CFR
1.125(d)-, or

- after payment of the issue fee-, or

- containing claims (to be amended)- --.

A substitute specification filed under  37 CFR 1.125(b) must be
accompanied by a statement indicating that no new matter was included.
There is no obligation on the examiner to make a detailed comparison
between the old and the new specifications for determining whether or
not new matter has been added. If, however, an examiner becomes aware
that new matter is present, objection thereto should be made.

The filing of a substitute specification rather than amending the
original application has the advantage for applicants of eliminating the
need to prepare an amendment of the specification. If word processing
equipment is used by applicants, substitute specifications can be easily
prepared. The Office receives the advantage of saving the time needed to
enter amendments in the specification and a reduction in the number of
printing errors. A substitute specification is not permitted in a
reissue application or in a reexamination proceeding.  37 CFR 1.125(d).

A substitute specification should normally be entered. See MPEP Section 
714.20.

For new matter in amendment, see MPEP Section  608.04.

For application prepared for issue, see MPEP Section  1302.02.

---SECTION---608.01(r) Derogatory Remarks About Prior Art in
Specification

The applicant may refer to the general state of the art and the advance
thereover made by his or her invention, but he or she is not permitted
to make derogatory remarks concerning the inventions of others.
Derogatory remarks are statements disparaging the products or processes
of any particular person other than the applicant, or statements as to
the merits or validity of applications or patents of another person.
Mere comparisons with the prior art are not considered to be
disparaging, per se.

---SECTION---608.01(s) Restoration of Canceled Matter

Canceled text in the specification can be reinstated only by a
subsequent amendment presenting the previously canceled matter as a new
insertion. 37 CFR 1.121(a)(1)(iii).  A claim canceled by amendment,
which was not deleted and rewritten, can be reinstated only by a
subsequent amendment presenting the claim as a new claim with a new
claim number. 37 CFR 1.121(a)(2)(ii).  See MPEP Section  714.24.

---SECTION---608.01(t) Use in Subsequent Application

A reservation for a future application of subject matter disclosed but
not claimed in a pending application will not be permitted in the
pending application.  37 CFR 1.79;  MPEP Section  608.01(e).

No part of a specification can normally be transferred to another
application. Drawings may be transferred to another application only
upon the granting of a petition filed under the provisions of  37 CFR
1.182.

---SECTION---608.01(u) Use of Formerly Filed Incomplete Application 

	Parts of an incomplete application which have been retained by the
Office may be used as part of a complete application if the missing
parts are later supplied. See MPEP Section  506 and Section  506.01.

---SECTION---608.01(v) Trademarks and Names Used in Trade

The expressions "trademarks" and "names used in trade" as used below
have the following meanings:

Trademark: a word, letter, symbol, or device adopted by one manufacturer
or merchant and used to identify and distinguish his or her product from
those of others.  It is a proprietary word, letter, symbol, or device
pointing distinctly to the product of one producer.

Names Used in Trade: a nonproprietary name by which an article or
product is known and called among traders or workers in the art,
although it may not be so known by the public, generally. Names used in
trade do not point to the product of one producer, but they identify a
single article or product irrespective of producer.

Names used in trade are permissible in patent applications if:

(A) Their meanings are established by an accompanying definition which
is sufficiently precise and definite to be made a part of a claim, or

(B) In this country, their meanings are well-known and satisfactorily
defined in the literature.

Condition (A) or (B) must be met at the time of filing of the complete
application.

TRADEMARKS

The relationship between a trademark and the product it identifies is
sometimes indefinite, uncertain, and arbitrary. The formula or
characteristics of the product may change from time to time and yet it
may continue to be sold under the same trademark. In patent
specifications, every element or ingredient of the product should be set
forth in positive, exact, intelligible language, so that there will be
no uncertainty as to what is meant. Arbitrary trademarks which are
liable to mean different things at the pleasure of manufacturers do not
constitute such language. Ex Parte Kattwinkle, 12 USPQ 11 (Bd. App.
1931).

However, if the product to which the trademark refers is set forth in
such language that its identity is clear, the examiners are authorized
to permit the use of the trademark if it is distinguished from common
descriptive nouns by capitalization.  If the trademark has a fixed and
definite meaning, it constitutes sufficient identification unless some
physical or chemical characteristic of the article or material is
involved in the invention. In that event, as also in those cases where
the trademark has no fixed and definite meaning, identification by
scientific or other explanatory language is necessary. In re
Gebauer-Fuelnegg, 121 F.2d 505, 50 USPQ 125 (CCPA 1941).

The matter of sufficiency of disclosure must be decided on an individual
case-by-case basis. In re Metcalfe, 410 F.2d 1378, 161 USPQ 789 (CCPA
1969).

Where the identification of a trademark is introduced by amendment, it
must be restricted to the characteristics of the product known at the
time the application was filed to avoid any question of new matter.

If proper identification of the product sold under a trademark, or a
product referred to only by a name used in trade, is omitted from the
specification and such identification is deemed necessary under the
principles set forth above, the examiner should hold the disclosure
insufficient and reject on the ground of insufficient disclosure any
claims based on the identification of the product merely by trademark or
by the name used in trade. If the product cannot be otherwise defined,
an amendment defining the process of its manufacture may be permitted.
Such amendments must be supported by satisfactory showings establishing
that the specific nature or process of manufacture of the product as set
forth in the amendment was known at the time of filing of the
application.

Although the use of trademarks having definite meanings is permissible
in patent applications, the proprietary nature of the marks should be
respected. Trademarks should be identified by capitalizing each letter
of the mark (in the case of word or letter marks) or otherwise
indicating the description of the mark (in the case of marks in the form
of a symbol or device or other nontextual form). Every effort should be
made to prevent their use in any manner which might adversely affect
their validity as trademarks.

Form Paragraph 6.20 may be used.

6.20 Trademarks and Their Use

The use of the trademark   [1] has been noted in this application.  It
should be capitalized wherever it appears and be accompanied by the
generic terminology.

Although the use of trademarks is permissible in patent applications,
the proprietary nature of the marks should be respected and every effort
made to prevent their use in any manner which might adversely affect
their validity as trademarks.

Examiner Note:

Capitalize each letter of the word in the bracket or include a proper
trademark symbol, such as &trade; or  &reg; following the word.

The examiner should not permit the use of language such as "the product
X (a descriptive name) commonly known as Y (trademark)" since such
language does not bring out the fact that the latter is a trademark.
Language such as "the product X (a descriptive name) sold under the
trademark Y" is permissible.

The use of a trademark in the title of an application should be avoided
as well as the use of a trademark coupled with the word "type", e.g.,
"Band-Aid type bandage."

In the event that the proprietary trademark is a "symbol or device"
depicted in a drawing, either the brief description of the drawing or
the detailed description of the drawing should specify that the "symbol
or device" is a registered trademark of Company X.

The owner of a trademark may be identified in the specification.

Group directors should reply to all trademark misuse complaint letters
and forward a copy to the editor of this manual.

See Appendix I for a partial listing of trademarks and the particular
goods to which they apply.

INCLUSION OF COPYRIGHT OR MASK WORK NOTICE IN PATENTS

37 CFR 1.71 Detailed description and specification of the invention

                  +++    

(d) A copyright or mask work notice may be placed in a design or utility
patent application adjacent to copyright and mask work material
contained therein. The notice may appear at any appropriate portion of
the patent application disclosure. For notices in drawings, see Section 
1.84(s). The content of the notice must be limited to only those
elements provided for by law. For example, "&copy;1983 John Doe" (17
U.S.C. 401) and "*M* John Doe" (17 U.S.C. 909) would be properly limited
and, under current statutes, legally sufficient notices of copyright and
mask work, respectively. Inclusion of a copyright or mask work notice
will be permitted only if the authorization language set forth in
paragraph (e) of this section is included at the beginning (preferably
as the first paragraph) of the specification.

(e) The authorization shall read as follows:

A portion of the disclosure of this patent document contains material
which is subject to (copyright or mask work) protection. The (copyright
or mask work) owner has no objection to the facsimile reproduction by
anyone of the patent document or the patent disclosure, as it appears in
the Patent and Trademark Office patent file or records, but otherwise
reserves all (copyright or mask work) rights whatsoever.

                  +++    

37 CFR 1.84 Standards for drawings

                  +++    

(s) Copyright or Mask Work Notice.  A copyright or mask work notice may
appear in the drawing, but must be placed within the sight of the
drawing immediately below the figure representing the copyright or mask
work material and be limited to letters having a print size of .32 cm.
to .64 cm. (1/8 to 1/4 inches) high. The content of the notice must be
limited to only those elements provided for by law. For example, "
&copy;1983 John Doe"  (17 U.S.C. 401) and  "*M* John Doe" (17 U.S.C.
909) would be properly limited and, under current statutes, legally
sufficient notices of copyright and mask work, respectively. Inclusion
of a copyright or mask work notice will be permitted only if the
authorization language set forth in Section  1.71(e) is included at the
beginning (preferably as the first paragraph) of the specification.

                  +++    

The Patent and Trademark Office will permit the inclusion of a copyright
or mask work notice in a design or utility patent application, and
thereby any patent issuing therefrom,which discloses material on which
copyright or mask work protection has previously been established, under
the following conditions:

(A) The copyright or mask work notice must be placed adjacent to the
copyright or mask work material. Therefore, the notice may appear at any
appropriate portion of the patent application disclosure, including the
drawing. However, if appearing in the drawing, the notice must comply
with  37 CFR 1.84(s). If placed on a drawing in conformance with these
provisions, the notice will not be objected to as extraneous matter
under  37 CFR 1.84.

(B) The content of the notice must be limited to only those elements
required by law. For example, "&copy;1983 John Doe"(17 U.S.C. 401) and
"*M* John Doe" (17 U.S.C. 909) would be properly limited, and under
current statutes, legally sufficient notices of copyright and mask work
respectively.

(C) Inclusion of a copyright or mask work notice will be permitted only
if the following authorization in  37 CFR 1.71(e) is included at the
beginning (preferably as the first paragraph) of the specification to be
printed for the patent:

A portion of the disclosure of this patent document contains material
which is subject to (copyright or mask work) protection. The (copyright
or mask work) owner has no objection to the facsimile reproduction by
any one of the patent disclosure, as it appears in the Patent and
Trademark Office patent files or records, but otherwise reserves all
(copyright or mask work) rights whatsoever.

(D) Inclusion of a copyright or mask work notice after a Notice of
Allowance has been mailed will be permitted only if the criteria of  37
CFR 1.312 have been satisfied.

The inclusion of a copyright or mask work notice in a design or utility
patent application, and thereby any patent issuing therefrom, under the
conditions set forth above will serve to protect the rights of the
author/inventor, as well as the public, and will serve to promote the
mission and goals of the Patent and Trademark Office. Therefore, the
inclusion of a copyright or mask work notice which complies with these
conditions will be permitted. However, any departure from these
conditions may result in a refusal to permit the desired inclusion. If
the authorization required under condition (C) above does not include
the specific language "(t)he (copyright or mask work) owner has no
objection to the facsimile reproduction by anyone of the patent document
or the patent disclosure, as it appears in the Patent and Trademark
Office patent files or records, ..." the notice will be objected to as
improper by the examiner of the application. If the examiner maintains
the objection upon reconsideration, a petition may be filed in
accordance with  37 CFR 1.181.

---SECTION---608.02 Drawing

35 U.S.C. 113 Drawings.

The applicant shall furnish a drawing where necessary for the
understanding of the subject matter to be patented. When the nature of
such subject matter admits of illustration by a drawing and the
applicant has not furnished such a drawing, the Commissioner may require
its submission within a time period of not less than two months from the
sending of a notice thereof. Drawings submitted after the filing date of
the application may not be used (i) to overcome any insufficiency of the
specification due to lack of an enabling disclosure or otherwise
inadequate disclosure therein, or (ii) to supplement the original
disclosure thereof for the purpose of interpretation of the scope of any
claim.

37 CFR 1.81 Drawings required in patent application.

(a) The applicant for a patent is required to furnish a drawing of his
or her invention where necessary for the understanding of the subject
matter sought to be patented; this drawing , or a high quality copy
thereof, must be filed with the application. Since corrections are the
responsibility of the applicant, the original drawing(s) should be
retained by the applicant for any necessary future correction.

(b) Drawings may include illustrations which facilitate an understanding
of the invention (for example, flow sheets in cases of processes, and
diagrammatic views).

(c) Whenever the nature of the subject matter sought to be patented
admits of illustration by a drawing without its being necessary for the
understanding of the subject matter and the applicant has not furnished
such a drawing, the examiner will require its submission within a time
period of not less than two months from the date of the sending of a
notice thereof.

(d) Drawings submitted after the filing date of the application may not
be used to overcome any insufficiency of the specification due to lack
of an enabling disclosure or otherwise inadequate disclosure therein, or
to supplement the original disclosure thereof for the purpose of
interpretation of the scope of any claim.

37 CFR 1.84 Standards for drawings.

(a) Drawings. There are two acceptable categories for presenting
drawings in utility patent applications:

(1) Black ink. Black and white drawings are normally required. India
ink, or its equivalent that secures solid black lines, must be used for
drawings, or

(2) Color. On rare occasions, color drawings may be necessary as the
only practical medium by which to disclose the subject matter sought to
be patented in a utility patent application or the subject matter of a
statutory invention registration. The Patent and Trademark Office will
accept color drawings in utility patent applications and statutory
invention registrations only after granting a petition filed under this
paragraph explaining why the color drawings are necessary. Any such
petition must include the following:

(i) The fee set forth in Section  1.17(i);

(ii) Three (3) sets of color drawings; and

(iii) The specification must contain the following language as the first
paragraph in that portion of the specification relating to the brief
description of the drawing:

The file of this patent contains at least one drawing executed in color.
Copies of this patent with color drawing(s) will be provided by the
Patent and Trademark Office upon request and payment of the necessary
fee.

If the language is not in the specification, a proposed amendment to
insert the language must accompany the petition.

(b) Photographs.

(1) Black and white.  Photographs are not ordinarily permitted in
utility patent applications.  However, the Office will accept
photographs in utility patent applications only after the granting of a
petition filed under this paragraph which requests that photographs be
accepted. Any such petition must include the following:

(i) The fee set forth in Section  1.17(i); and

(ii) Three (3) sets of photographs. Photographs must either be developed
on double weight photographic paper or be permanently mounted on bristol
board. The photographs must be of sufficient quality so that all details
in the drawings are reproducible in the printed patent.

(2) Color.  Color photographs will be accepted in utility patent
applications if the conditions for accepting color drawings have been
satisfied.  See paragraph (a)(2) of this section.

(c) Identification of drawings.  Identifying indicia, if provided,
should include the application number or the title of the invention,
inventor's name, docket number (if any), and the name and telephone
number of a person to call if the Office is unable to match the drawings
to the proper application. This information should be placed on the back
of each sheet of drawings a minimum distance of 1.5 cm. (5/8 inch) down
from the top of the page. In addition, a reference to the application
number, or, if an application number has not been assigned, the
inventor's name, may be included in the left-hand corner, provided that
the reference appears within 1.5 cm. (5/8 inch) from the top of the
sheet.

(d) Graphic forms in drawings. Chemical or mathematical formulae,
tables, and waveforms may be submitted as drawings and are subject to
the same requirements as drawings. Each chemical or mathematical formula
must be labeled as a separate figure, using brackets when necessary, to
show that information is properly integrated. Each group of waveforms
must be presented as a single figure, using a common vertical axis with
time extending along the horizontal axis. Each individual waveform
discussed in the specification must be identified with a separate letter
designation adjacent to the vertical axis.

(e) Type of paper. Drawings submitted to the Office must be made on
paper which is flexible, strong, white, smooth, nonshiny, and durable.
All sheets must be free from cracks, creases, and folds. Only one side
of the sheet shall be used for the drawing. Each sheet must be
reasonably free from erasures and must be free from alterations,
overwritings, and interlineations. Photographs must either be developed
on double weight photographic paper or be permanently mounted on bristol
board. See paragraph (b) of this section for other requirements for
photographs.

(f)  Size of paper. All drawing sheets in an application must be the
same size. One of the shorter sides of the sheet is regarded as its top.
The size of the sheets on which drawings are made must be:

(1) 21.0 cm. by 29.7 cm. (DIN size A4), or

(2) 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).

(g) Margins.  The sheets must not contain frames around the sight (i.e.,
the usable surface), but should have scan target points (i.e.,
cross-hairs) printed on two catercorner margin corners.  Each sheet must
include a top margin of at least 2.5 cm. (1 inch), a left side margin of
at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (5/8
inch), and a bottom margin of at least 1.0 cm. (3/8 inch), thereby
leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7
cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm.
by 24.4 cm. (6 15/16 by 9 5/8 inches) on 21.6 cm. by 27.9 cm. (8 1/2 by
11 inch) drawing sheets.

(h) Views. The drawing must contain as many views as necessary to show
the invention. The views may be plan, elevation, section, or perspective
views. Detail views of portions of elements, on a larger scale if
necessary, may also be used. All views of the drawing must be grouped
together and arranged on the sheet(s) without wasting space, preferably
in an upright position, clearly separated from one another, and must not
be included in the sheets containing the specifications, claims, or
abstract. Views must not be connected by projection lines and must not
contain center lines. Waveforms of electrical signals may be connected
by dashed lines to show the relative timing of the waveforms.

(1) Exploded views. Exploded views, with the separated parts embraced by
a bracket, to show the relationship or order of assembly of various
parts are permissible. When an exploded view is shown in a figure which
is on the same sheet as another figure, the exploded view should be
placed in brackets.

(2) Partial views.  When necessary, a view of a large machine or device
in its entirety may be broken into partial views on a single sheet, or
extended over several sheets if there is no loss in facility of
understanding the view. Partial views drawn on separate sheets must
always be capable of being linked edge to edge so that no partial view
contains parts of another partial view. A smaller scale view should be
included showing the whole formed by the partial views and indicating
the positions of the parts shown. When a portion of a view is enlarged
for magnification purposes, the view and the enlarged view must each be
labeled as separate views.

(i) Where views on two or more sheets form, in effect, a single complete
view, the views on the several sheets must be so arranged that the
complete figure can be assembled without concealing any part of any of
the views appearing on the various sheets.

(ii) A very long view may be divided into several parts placed one above
the other on a single sheet. However, the relationship between the
different parts must be clear and unambiguous.

(3) Sectional views. The plane upon which a sectional view is taken
should be indicated on the view from which the section is cut by a
broken line. The ends of the broken line should be designated by Arabic
or Roman numerals corresponding to the view number of the sectional
view, and should have arrows to indicate the direction of sight.
Hatching must be used to indicate section portions of an object, and
must be made by regularly spaced oblique parallel lines spaced
sufficiently apart to enable the lines to be distinguished without
difficulty. Hatching should not impede the clear reading of the
reference characters and lead lines. If it is not possible to place
reference characters outside the hatched area, the hatching may be
broken off wherever reference characters are inserted. Hatching must be
at a substantial angle to the surrounding axes or principal lines,
preferably 45.  A cross section must be set out and drawn to show all
of the materials as they are shown in the view from which the cross
section was taken. The parts in cross section must show proper
material(s) by hatching with regularly spaced parallel oblique strokes,
the space between strokes being chosen on the basis of the total area to
be hatched. The various parts of a cross section of the same item should
be hatched in the same manner and should accurately and graphically
indicate the nature of the material(s) that is illustrated in cross
section. The hatching of juxtaposed different elements must be angled in
a different way. In the case of large areas, hatching may be confined to
an edging drawn around the entire inside of the outline of the area to
be hatched. Different types of hatching should have different
conventional meanings as regards the nature of a material seen in cross
section.

(4) Alternate position.  A moved position may be shown by a broken line
superimposed upon a suitable view if this can be done without crowding;
otherwise, a separate view must be used for this purpose.

(5) Modified forms. Modified forms of construction must be shown in
separate views. 

(i) Arrangement of views. One view must not be placed upon another or
within the outline of another. All views on the same sheet should stand
in the same direction and, if possible, stand so that they can be read
with the sheet held in an upright position.  If views wider than the
width of the sheet are necessary for the clearest illustration of the
invention, the sheet may be turned on its side so that the top of the
sheet, with the appropriate top margin to be used as the heading space,
is on the right-hand side. Words must appear in a horizontal,
left-to-right fashion when the page is either upright or turned so that
the top becomes the right side, except for graphs utilizing standard
scientific convention to denote the axis of abscissas (of X) and the
axis of ordinates (of Y).

(j) View for Official Gazette. One of the views should be suitable for
publication in the Official Gazette as the illustration of the
invention.

(k) Scale.

(1) The scale to which a drawing is made must be large enough to show
the mechanism without crowding when the drawing is reduced in size to
two-thirds in reproduction. Views of portions of the mechanism on a
larger scale should be used when necessary to show details clearly. Two
or more sheets may be used if one does not give sufficient room. The
number of sheets should be kept to a minimum.

(2) When approved by the examiner, the scale of the drawing may be
graphically represented. Indications such as "actual size" or "scale
1/2" on the drawings, are not permitted, since these lose their meaning
with reproduction in a different format.

(3) Elements of the same view must be in proportion to each other,
unless a difference in proportion is indispensable for the clarity of
the view. Instead of showing elements in different proportion, a
supplementary view may be added giving a larger-scale illustration of
the element of the initial view. The enlarged element shown in the
second view should be surrounded by a finely drawn or "dot-dash" circle
in the first view indicating its location without obscuring the view.

(l) Character of lines, numbers, and letters.  All drawings must be made
by a process which will give them satisfactory reproduction
characteristics. Every line, number, and letter must be durable, clean,
black (except for color drawings), sufficiently dense and dark, and
uniformly thick and well-defined. The weight of all lines and letters
must be heavy enough to permit adequate reproduction. This requirement
applies to all lines however fine, to shading, and to lines representing
cut surfaces in sectional views. Lines and strokes of different
thicknesses may be used in the same drawing where different thicknesses
have a different meaning.

(m) Shading.  The use of shading in views is encouraged if it aids in
understanding the invention and if it does not reduce legibility. 
Shading is used to indicate the surface or shape of spherical,
cylindrical, and conical elements of an object. Flat parts may also be
lightly shaded. Such shading is preferred in the case of parts shown in
perspective, but not for cross sections.  See paragraph (h)(3) of this
section. Spaced lines for shading are preferred. These lines must be
thin, as few in number as practicable, and they must contrast with the
rest of the drawings.  As a substitute for shading, heavy lines on the
shade side of objects can be used except where they superimpose on each
other or obscure reference characters.  Light should come from the upper
left corner at an angle of 45.  Surface delineations should preferably
be shown by proper shading. Solid black shading areas are not permitted,
except when used to represent bar graphs or color.

(n) Symbols. Graphical drawing symbols may be used for conventional
elements when appropriate. The elements for which such symbols and
labeled representations are used must be adequately identified in the
specification. Known devices should be illustrated by symbols which have
a universally recognized conventional meaning and are generally accepted
in the art. Other symbols which are not universally recognized may be
used, subject to approval by the Office, if they are not likely to be
confused with existing conventional symbols, and if they are readily
identifiable. 

(o) Legends  .  Suitable descriptive legends may be used, or may be
required by the Examiner, where necessary for understanding of the
drawing, subject to approval by the Office.  They should contain as few
words as possible.

(p) Numbers, letters, and reference characters.

(1) Reference characters (numerals are preferred), sheet numbers, and
view numbers must be plain and legible, and must not be used in
association with brackets or inverted commas, or enclosed within
outlines, e.g., encircled. They must be oriented in the same direction
as the view so as to avoid having to rotate the sheet.  Reference
characters should be arranged to follow the profile of the object
depicted.

(2) The English alphabet must be used for letters, except where another
alphabet is customarily used, such as the Greek alphabet to indicate
angles, wavelengths, and mathematical formulas.

(3) Numbers, letters, and reference characters must measure at least .32
cm. (1/8 inch) in height. They should not be placed in the drawing so as
to interfere with its comprehension. Therefore, they should not cross or
mingle with the lines. They should not be placed upon hatched or shaded
surfaces. When necessary, such as indicating a surface or cross section,
a reference character may be underlined and a blank space may be left in
the hatching or shading where the character occurs so that it appears
distinct.

(4) The same part of an invention appearing in more than one view of the
drawing must always be designated by the same reference character, and
the same reference character must never be used to designate different
parts.

(5) Reference characters not mentioned in the description shall not
appear in the drawings. Reference characters mentioned in the
description must appear in the drawings.

(q) Lead lines. Lead lines are those lines between the reference
characters and the details referred to. Such lines may be straight or
curved and should be as short as possible. They must originate in the
immediate proximity of the reference character and extend to the feature
indicated. Lead lines must not cross each other.  Lead lines are
required for each reference character except for those which indicate
the surface or cross section on which they are placed. Such a reference
character must be underlined to make it clear that a lead line has not
been left out by mistake. Lead lines must be executed in the same way as
lines in the drawing. See paragraph (l) of this section.

(r) Arrows. Arrows may be used at the ends of lines, provided that their
meaning is clear, as follows:

(1) On a lead line, a freestanding arrow to indicate the entire section
towards which it points;

(2) On a lead line, an arrow touching a line to indicate the surface
shown by the line looking along the direction of the arrow; or

(3) To show the direction of movement.

(s) Copyright or Mask Work Notice. A copyright or mask work notice may
appear in the drawing, but must be placed within the sight of the
drawing immediately below the figure representing the copyright or mask
work material and be limited to letters having a print size of .32 cm.
to .64 cm. (1/8 to 1/4 inches) high. The content of the notice must be
limited to only those elements provided for by law. For example, "
&copy;1983 John Doe" (17 U.S.C. 401) and "M. John Doe" (17 U.S.C. 909)
would be properly limited and, under current statutes, legally
sufficient notices of copyright and mask work, respectively. Inclusion
of a copyright or mask work notice will be permitted only if the
authorization language set forth in Section  1.71(e) is included at the
beginning (preferably as the first paragraph) of the specification.

(t) Numbering of sheets of drawings. The sheets of drawings should be
numbered in consecutive Arabic numerals, starting with 1, within the
sight as defined in paragraph (g) of this section. These numbers, if
present, must be placed in the middle of the top of the sheet, but not
in the margin. The numbers can be placed on the right-hand side if the
drawing extends too close to the middle of the top edge of the usable
surface. The drawing sheet numbering must be clear and larger than the
numbers used as reference characters to avoid confusion. The number of
each sheet should be shown by two Arabic numerals placed on either side
of an oblique line, with the first being the sheet number and the second
being the total number of sheets of drawings, with no other marking.

(u) Numbering of views.

(1) The different views must be numbered in consecutive Arabic numerals,
starting with 1, independent of the numbering of the sheets and, if
possible, in the order in which they appear on the drawing sheet(s).
Partial views intended to form one complete view, on one or several
sheets, must be identified by the same number followed by a capital
letter. View numbers must be preceded by the abbreviation "FIG."  Where
only a single view is used in an application to illustrate the claimed
invention, it must not be numbered and the abbreviation "FIG." must not
appear.

(2) Numbers and letters identifying the views must be simple and clear
and must not be used in association with brackets, circles, or inverted
commas. The view numbers must be larger than the numbers used for
reference characters.

(v) Security markings  . Authorized security markings may be placed on
the drawings provided they are outside the sight, preferably centered in
the top margin.

(w) Corrections. Any corrections on drawings submitted to the Office
must be durable and permanent.

(x)   Holes. No holes should be made by applicant in the drawing sheets.

Drawings on paper are acceptable as long as they are in compliance with 
37 CFR 1.84. Corrections thereto must be made in the form of replacement
sheets since the Office does not release drawings for correction.  See 
37 CFR 1.85.

Good quality copies made on office copiers are acceptable if the lines
are uniformly thick, black, and solid. Facsimile copies of drawings
however, are not acceptable (37 CFR 1.6(d)(4)).

Drawings are currently accepted in two different size formats. It is,
however, required that all drawings in a particular application be the
same size for ease of handling and reproduction.

For design patent drawings,  37 CFR 1.152, see MPEP Section  1503.02.

For plant patent drawings,  37 CFR 1.165, see MPEP Section  1606.

For reissue application drawings, see MPEP Section  1413.

For correction of drawings, see MPEP Section  608.02(p). For prints,
preparation and distribution, see MPEP Section  508 and Section 
608.02(m). For prints, return of drawings, see MPEP Section  608.02(y).

For pencil notations of classification and name or initials of assistant
examiner to be placed on drawings, see MPEP Section  719.03.

The filing of a divisional or continuation case under the provisions of 
37 CFR 1.53(b) (unexecuted case) does not obviate the need for formal
drawings. See MPEP Section  608.02(b).

DEFINITIONS

A number of different terms are used when referring to drawings in
patent applications. The following definitions are used in this Manual.

Original drawings: The drawing submitted with the application when
filed. It may be either a formal or an informal drawing.

Substitute drawing: A drawing filed later than the filing date of an
application. Usually submitted to replace an original informal drawing.

Formal drawing: A drawing in a form that complies with  37 CFR 1.84.
Formal drawings are stamped "approved" by the Draftsperson.

Informal drawing: A drawing which does not comply with the form
requirements of  37 CFR 1.84. Drawings may be informal because they are
not on the proper size sheets, the quality of the lines is poor, or for
other reasons such as the size of reference elements.  Such objections
are made by the Draftsman on form PTO-948.

Drawing print: This term is used for the white paper print prepared by
the Micrographics Division of the Office of Initial Patent Examination
(OIPE) of all original drawings. The drawing prints contain the notation
"Print of Drawing as originally filed'' near the top. Drawing prints
should be placed on the top on the right-hand flap of the application
file wrapper.

Interference print: This term is used to designate the copy prepared of
the original drawings filed in file cabinets separate from the file
wrappers and are used to make interference searches.

Plan:  This term is used to illustrate the top view.

Elevation:  This term is used to illustrate views showing the height of
objects.

The following Form Paragraphs should be used when notifying applicants
of drawing corrections.

6.38 Acknowledgment of Proposed Drawing Correction

The proposed drawing correction and/or the proposed substitute sheets of
drawings, filed on   [1] have been   [2].

Examiner Note:

1. In bracket 2, insert either --approved-- or --disapproved--.

2. If approved, form paragraph 6.39 and one or more of paragraphs 6.40
or 6.41 or 6.44 must follow.

3. If disapproved, an explanation must be provided.

6.38.01 Proposed Drawing Correction Disapproved, Changes Not Highlighted

The proposed drawing correction filed on [1] has been disapproved
because it is not in the form of a pen-and-ink sketch showing changes in
red ink or with the changes otherwise highlighted.  See MPEP Section 
608.02(v).

6.38.02 Proposed Drawing Correction Disapproved, New Matter

The proposed drawing correction and/or the proposed substitute sheets of
drawings, filed on [1] have been disapproved because they introduce new
matter into the drawings. 37 CFR 1.121(a)(6) states that no amendment
may introduce new matter into the disclosure of an application.  The
original disclosure does not support the showing of [2].

Examiner Note:

In bracket 2, explain which feature(s) of the proposed drawing
correction constitute(s) new matter.

6.39 PTO No Longer Makes Drawing Changes

The Patent and Trademark Office no longer makes drawing changes.  See
1017 O.G. 4.  It is applicant's responsibility to ensure that the
drawings are corrected.  Corrections must be made in accordance with the
instructions below.

Examiner Note:

This paragraph is to be used whenever the applicant has filed a request
for the Office to make drawing changes.  Form paragraph 6.40 must
follow.

6.40 Information on How To Effect Drawing Changes

INFORMATION ON HOW TO EFFECT DRAWING CHANGES

 1. Correction of Informalities -- 37 CFR 1.85; 1097 O.G. 36

New formal drawings must be filed with the changes incorporated therein. 
The art unit number, application number (including series code) and
number of drawing sheets should be written on the reverse side of the
drawings.  Applicant may delay filing of the new drawings until receipt
of the "Notice of Allowability" (PTOL-37 or PTO-37).  If delayed, the
new drawings MUST be filed within the THREE MONTH shortened statutory
period set for reply in the "Notice of Allowability" to avoid extension
of time fees. Extensions of time may be obtained under the provisions of 
37 CFR 1.136(a) for filing the corrected drawings (but not for payment
of the issue fee).  The drawings should be filed as a separate paper
with a transmittal letter addressed to the Official Draftsperson.

 2. Corrections other than Informalities Noted by Draftsperson on form
PTO-948.

All changes to the drawings, other than informalities noted by the
Draftsperson, MUST be made in the same manner as above except that,
normally, a highlighted (preferably red ink) sketch of the changes to be
incorporated into the new drawings MUST be approved by the examiner
before the application will be allowed.  No changes will be permitted to
be made, other than correction of informalities, unless the examiner has
approved the proposed changes.

Timing of Corrections

Applicant is required to submit acceptable corrected drawings within the
three month shortened statutory period set in the "Notice of
Allowability".  Within that three month period, two weeks should be
allowed for review of the new drawings by the Office.  If a correction
is determined to be unacceptable by the Office, applicant must arrange
to have an acceptable correction re-submitted within the original three
month period to avoid the necessity of obtaining an extension of time
with extension fees.  Therefore, applicant should file corrected
drawings as soon as possible.

Failure to take corrective action within the set (or extended) period
will result in ABANDONMENT of the application.

6.41 Reminder That PTO No Longer Makes Drawing Changes

Applicant is reminded that the Patent and Trademark Office no longer
makes drawing changes and that it is applicant's responsibility to
ensure that the drawings are corrected in accordance with the
instructions set forth in Paper No. [1], mailed on   [2].

Examiner Note:

This paragraph is to be used when the applicant has been previously
provided with information on how to effect drawing changes (i.e., either
by way of form paragraph 6.40 or a PTO-948 has been previously sent).

6.42 Reminder That Applicant Must Make Drawing Changes

Applicant is reminded that in order to avoid an abandonment of this
application, the drawings must be corrected in accordance with the
instructions set forth in Paper No.   [1], mailed on [2].

Examiner Note:

This paragraph is to be used when allowing the application and when
applicant has previously been provided with information on how to effect
drawing changes (i.e., by way of form paragraph 6.40 or a PTO-948 has
been previously sent).

6.43 Drawings Contain Informalities, Application Allowed

The drawings filed on   [1] are acceptable subject to correction of the
informalities indicated on the attached "Notice of Draftsperson's Patent
Drawing Review," PTO-948.  In order to avoid abandonment of this
application, correction is required.

Examiner Note:

Use this paragraph when allowing the application, particularly at time
of first action issue.  Form paragraph 6.40 or 6.41 must follow.

6.44 Drawing Informalities Previously Indicated

In order to avoid abandonment, the drawing informalities noted in Paper
No. [1], mailed on [2], must now be corrected.  Correction can only be
effected in the manner set forth in the above noted paper.

Examiner Note:

Use this paragraph when allowing the application and applicant has
previously been informed of informalities in the drawings.

6.47 Examiner's Amendment Involving Drawing Changes

The following changes to the drawings have been approved by the examiner
and agreed upon by applicant:   [1].  In order to avoid abandonment of
the application, applicant must make these agreed upon drawing changes.

Examiner Note:

1. In bracket 1, insert the agreed upon drawing changes.

2. Form paragraphs 6.39 and 6.40 must follow.

DRAWING SYMBOLS

37 CFR 1.84(n) indicates that graphic drawing symbols and other labeled
representations may be used for conventional elements where appropriate,
subject to approval by the Office.  Also, suitable legends may be used,
or may be required, in proper cases.

The publications listed below have been reviewed by the Office and the
symbols therein are considered to be generally acceptable in patent
drawings. Although the Office will not "approve" all of the listed
symbols as a group because their use and clarity must be decided on a
case-by-case basis, these publications may be used as guides when
selecting graphic symbols. Overly specific symbols should be avoided. 
Symbols with unclear meanings should be labeled for clarification.

These publications are available from the American National Standards
Institute Inc., 11 West 42nd Street, New York, New York 10036.

The publications reviewed are the following:

Y32.2-1970 Graphic Symbols for Electrical & Electronics Diagrams

Y32.10-1967 (R1994) Graphic Symbols for Fluid Power Diagrams

Y32.11-1961 (R1993) Graphic for Process Flow Diagrams in the Petroleum &
Chemical Industries

Y32.14-1962  Graphic Symbols for Logic Diagrams

Z32.2.3-1949 (R1994) Graphical Symbols for Pipe Fittings, Valves and
Piping

Z32.2.4-1949 (R1953) Graphic Symbols for Heating, Ventilating & Air
Conditioning

Z32.2.6-1950 (R1993) Graphic Symbols for Heat-Power Apparatus

The following symbols should be used to indicate various materials where
the material is an important feature of the invention.  The use of
conventional features is very helpful in making prior art searches. 

[GRAPHIC]

See MPEP Section  601.01(f) for treatment of applications filed without
drawings and MPEP Section  601.01(g) for treatment of applications filed
without all figures of drawings.

ILLUSTRATION SUBSEQUENTLY REQUIRED

The acceptance of an application without a drawing does not preclude the
examiner from requiring an illustration in the form of a drawing under 
37 CFR 1.81(c) or  37 CFR 1.83(c).  In requiring such a drawing, the
examiner should clearly indicate that the requirement is made under  37
CFR 1.81(c) or  37 CFR 1.83(c) and be careful not to state that he or
she is doing so "because it is necessary for the understanding of the
invention," as that might give rise to an erroneous impression as to the
completeness of the application as filed. Examiners making such
requirements are to specifically require, as a part of the applicant's
next reply, at least an ink sketch or permanent print of any drawing
proposed in reply to the requirement, even though no allowable subject
matter is yet indicated. This will afford the examiner an early
opportunity to determine the sufficiency of the illustration and the
absence of new matter.  See  37 CFR 1.121 and  37 CFR 1.81(d). The
description should of course be amended to contain reference to the new
illustration. This may obviate further correspondence where an amendment
places the case in condition for allowance, except for the formal
requirement relating to the drawing.  In the event of a final
determination that there is nothing patentable in the case, a formal
drawing will not be required.

BLACK AND WHITE PHOTOGRAPHS

37 CFR 1.84 Standards for drawings.

                  +++    

(b) Photographs.

(1) Black and white.  Photographs are not ordinarily permitted in
utility patent applications.  However, the Office will accept
photographs in utility patent applications only after the granting of a
petition filed under this paragraph which requests that photographs be
accepted. Any such petition must include the following:

(i) The fee set forth in Section  1.17(i); and

(ii) Three (3) sets of photographs. Photographs must either be developed
on double weight photographic paper or be permanently mounted on bristol
board. The photographs must be of sufficient quality so that all details
in the drawings are reproducible in the printed patent.

                  +++    

Photographs are not normally considered to be proper drawings. 
Photographs are acceptable for a filing date and are generally
considered to be informal drawings. Photographs may be acceptable as
formal drawings when a petition filed under the provisions of  37 CFR
1.84(b) is granted. The petition must be accompanied by the fee set
forth in  37 CFR 1.17(i) and one set of the photographs in question. The
requirement of  37 CFR 1.84(b)(1)(ii) of three sets of black and white
photographs has been waived, and only one set of black and white
photographs is now required. See 1211 O.G. 34 (June 9, 1998).
Photolithographs of photographs are never acceptable.  See In re Myers,
1959 C.D. 2, 738 O.G. 947 and In re Taggart, 1957 C.D. 6, 725 O.G. 397.

PETITIONABLE SUBJECT MATTER

The Patent and Trademark Office is willing to accept photographs or
photomicrographs (not photolithographs or other reproductions of
photographs made by using screens) printed on sensitized paper in lieu
of India ink drawings, to illustrate inventions which are incapable of
being accurately or adequately depicted by India ink drawings, e.g.,
crystalline structures, metallurgical microstructures, textile fabrics,
grain structures and ornamental effects. The photographs or
photomicrographs must show the invention more clearly than they can be
done by India ink drawings and otherwise comply with the rules
concerning such drawings.

Such photographs to be acceptable must be made on photographic paper
having the following characteristics which are generally recognized in
the photographic trade: double weight paper with a surface described as
smooth; tint, white, or be photographs mounted on proper size bristol
board.

See MPEP Section  1503.02 for discussion of photographs used in design
patent applications.

COLOR DRAWINGS OR COLOR PHOTOGRAPHS

37 CFR 1.84 Standards for drawings.

(a) Drawings. There are two acceptable categories for presenting
drawings in utility patent applications:

                  +++    

(2) Color  . On rare occasions, color drawings may be necessary as the
only practical medium by which to disclose the subject matter sought to
be patented in a utility patent application or the subject matter of a
statutory invention registration. The Patent and Trademark Office will
accept color drawings in utility patent applications and statutory
invention registrations only after granting a petition filed under this
paragraph explaining why the color drawings are necessary. Any such
petition must include the following:

(i) The fee set forth in Section  1.17(i);

(ii) Three (3) sets of color drawings; and

(iii) The specification must contain the following language as the first
paragraph in that portion of the specification relating to the brief
description of the drawing:

The file of this patent contains at least one drawing executed in color.
Copies of this patent with color drawing(s) will be provided by the
Patent and Trademark Office upon request and payment of the necessary
fee.

If the language is not in the specification, a proposed amendment to
insert the language must accompany the petition.

(b) Photographs  .

                  +++    

(2) Color. Color photographs will be accepted in utility patent
applications if the conditions for accepting color drawings have been
satisfied. See paragraph (a)(2) of this section.

                  +++    

Limited use of color drawings in utility patent applications is provided
for in  37 CFR 1.84(a)(2) and (b)(2). Unless a petition is filed and
granted, the Draftsperson will not approve color drawings or color
photographs in a utility or design patent application. The examiner must
object to the color drawings or color photographs as being improper and
require applicant either to cancel the drawings or to provide substitute
black and white drawings.

Under  37 CFR 1.84(a)(2) and (b)(2), the applicant must file a petition
with fee requesting acceptance of the color drawings or color
photographs. The petition is decided by a Supervisory Patent Examiner.
See MPEP Section  1002.02(d).

Where color drawings or color photographs are filed in a continuing
application, applicant must renew the petition under  37 CFR 1.84(a)(2)
and (b)(2) even though a similar petition was filed in the prior
application. Until the renewed petition is granted, the examiner must
object to the color drawings or color photographs as being improper.

In light of the substantial administrative and economic burden
associated with printing a utility patent with color drawings or color
photographs, the patent copies which are printed at issuance of the
patent will depict the drawings in black and white only.  However, a set
of color drawings or color photographs will be attached to the Letters
Patent. Moreover, copies of the patent with color drawings or color
photographs attached thereto will be provided by the Patent and
Trademark Office upon special request and payment of the fee necessary
to recover the actual costs associated therewith.

Accordingly, the petition must also be accompanied by a proposed
amendment to insert the following language as the first paragraph in the
portion of the specification containing a brief description of the
drawings:

The file of this patent contains at least one drawing executed in color. 
Copies of this patent with color drawing(s) will be provided by the
Patent and Trademark Office upon request and payment of the necessary
fee.

It is anticipated that such a petition will be granted only when the
Patent and Trademark Office has determined that a color drawing or color
photograph is the only practical medium by which to disclose in a
printed utility patent the subject matter to be patented.

It is emphasized that a decision to grant the petition should not be
regarded as an indication that color drawings or color photographs are
necessary to comply with a statutory requirement. In this latter
respect, clearly it is desirable to file any desired color drawings or
color photographs as part of the original application papers in order to
avoid issues concerning statutory defects (e.g., lack of enablement
under  35 U.S.C. 112 or new matter under  35 U.S.C. 132). The filing of
the petition, however, may be deferred until acceptable formal drawings
are required by the examiner.

NOTIFYING APPLICANT

If the original drawings are informal but may be admitted for
examination purposes, the Draftsperson indicates on a 2-part form,
PTO-948, what the informalities are and that new corrected drawings are
required. In either case, the informal drawings are accepted as
satisfying the requirements of  37 CFR 1.51.

The examiners are directed to advise the applicants by way of form
PTO-948 (see MPEP Section  707.07(a)) in the first Office action of the
conditions which the Draftsperson considers to render the drawing
informal.

Drawing corrections should be made when the application is in condition
for allowance unless the examiner requires correction at an earlier
date.

If the examiner discovers a defect in the content of the drawing, the
applicant should be notified by using a Form Paragraph, where
appropriate.

6.21 New Drawings, Competent Draftsperson

New formal drawings are required in this application because [1]. 
Applicant is advised to employ the services of a competent patent
draftsperson outside the Office, as the Patent and Trademark Office no
longer prepares new drawings.

6.22 Drawings Objected To

The drawings are objected to because [1].  Correction is required.

Examiner Note:

Follow with paragraph 6.27, if appropriate.

6.22.01 Drawings Objected To, Details Not Shown

The drawings are objected to under  37 CFR 1.83(a) because they fail to
show [1] as described in the specification.  Any structural detail that
is essential for a proper understanding of the disclosed invention
should be shown in the drawing. MPEP Section  608.02(d).  Correction is
required.

Examiner Note:

1. In bracket 1, identify the structural details not shown in the
drawings.

2. Follow with form paragraph 6.27, if appropriate.

6.22.02 Drawings Objected to, Different Numbers Refer to Same Part

The drawings are objected to as failing to comply with  37 CFR
1.84(p)(4) because reference characters "  [1]" and "  [2]" have both
been used to designate [3].  Correction is required.

Examiner Note:

1. In brackets 1 and 2, identify the numbers which refer to the same
part.

2. In bracket 3, identify the part which is referred to by different
numbers.

3. Follow with form paragraph 6.27, if appropriate.

6.22.03 Drawings Objected to, Different Parts Referred to by Same Number

The drawings are objected to as failing to comply with  37 CFR
1.84(p)(4) because reference character "  [1]" has been used to
designate both [2] and [3].  Correction is required.

Examiner Note:

1. In bracket 1, identify the number which refers to the different
parts.

2. In brackets 2 and 3, identify the parts which are referred to by the
same number.

3. Follow with form paragraph 6.27, if appropriate.

6.22.04 Drawings Objected to, Incomplete

The drawings are objected to under  37 CFR 1.83(b) because they are
incomplete. 37 CFR 1.83(b) reads as follows:

When the invention consists of an improvement on an old machine the
drawing must when possible exhibit, in one or more views, the improved
portion itself, disconnected from the old structure, and also in another
view, so much only of the old structure as will suffice to show the
connection of the invention therewith.

Correction is required.

Examiner Note:

1. Supply a full explanation, if it is not readily apparent how the
drawings are incomplete.

2. Follow with form paragraph 6.27, if appropriate.

6.22.05 Drawings Objected to, Modifications in Same Figure

The drawings are objected to under  37 CFR 1.84(h)(5) because Figure 
[1] show(s) modified forms of construction in the same view.  Correction
is required.

Examiner Note:

1. In brackets 1, insert the appropriate Figure number(s).

2. Follow with form paragraph 6.27, if appropriate.

6.22.06 Drawings Objected to, Reference Numbers Not in Drawings

The drawings are objected to as failing to comply with  37 CFR
1.84(p)(5) because they do not include the following reference sign(s)
mentioned in the description: [1].  Correction is required.

Examiner Note:

1. In bracket 1, specify the reference characters which are not found in
the drawings, including the page and line number where they first occur
in the specification.

2. Follow with form paragraph 6.27, if appropriate.

6.22.07 Drawings Objected to, Reference Numbers Not in Specification

The drawings are objected to as failing to comply with  37 CFR
1.84(p)(5) because they include the following reference sign(s) not
mentioned in the description: [1].  Correction is required.

Examiner Note:

1. In bracket 1, specify the reference characters which are not found in
the specification, including the figure in which they occur.

2. Follow with form paragraph 6.27, if appropriate.

6.23 Subject Matter Admits of Illustration

The subject matter of this application admits of illustration by a
drawing to facilitate understanding of the invention. Applicant is
required to furnish a drawing under  37 CFR 1.81.  No new matter may be
introduced in the required drawing.

Examiner Note:

When requiring drawings before examination use form paragraph 6.23.01
with a PTOL-90 or PTO-90C form as a cover sheet.

6.23.01 Subject Matter Admits of Illustration (No Examination of Claims)

The subject matter of this application admits of illustration by a
drawing to facilitate understanding of the invention. Applicant is
required to furnish a drawing under  37 CFR 1.81.  No new matter may be
introduced in the required drawing.

Applicant is given a TWO MONTH time period to submit a drawing in
compliance with  37 CFR 1.81.  Extensions of time may be obtained under
the provisions of  37 CFR 1.136(a). Failure to timely submit a drawing
will result in ABANDONMENT of the application.

Examiner Note:

1. Use of this form paragraph should be extremely rare and limited to
those instances where no examination can be performed due to lack of an
illustration of the invention resulting in a lack of understanding of
the claimed subject matter.

2. Use a PTOL-90 or PTO-90C form as a cover sheet for this
communication.

6.24 Informal Drawings

This application has been filed with informal drawings which are
acceptable for examination purposes only.  Formal drawings will be
required when the application is allowed.

6.24.01 Photographs and Color Drawings, Petition Required

The drawings are considered to be informal because they fail to comply
with  37 CFR 1.84(a)(1) which requires black and white drawings using
India ink or its equivalent.

Photographs and color drawings are acceptable only for examination
purposes unless a petition filed under  37 CFR 1.84(a)(2) or (b)(1) is
granted permitting their use as formal drawings.  In the event applicant
wishes to use the drawings currently on file as formal drawings, a
petition must be filed for acceptance of the photographs or color
drawings as formal drawings.  Any such petition must be accompanied by
the appropriate fee as set forth in  37 CFR 1.17(i), three sets of
drawings or photographs, as appropriate, and, if filed under the
provisions of  37 CFR 1.84(a)(2), an amendment to the first paragraph of
the brief description of the drawings section of the specification which
states:

The file of this patent contains at least one drawing executed in color.
Copies of this patent with color drawing(s) will be provided by the
Patent and Trademark Office upon request and payment of the necessary
fee.

Color photographs will be accepted if the conditions for accepting color
drawings have been satisfied.

Examiner Note:

This form paragraph should be used after form paragraph 6.24 only if the
application contains photographs or color drawings as the drawings
required by  37 CFR 1.81.

6.25.01 Formal Drawings Suggested, Allowable Subject Matter Indicated

Since allowable subject matter has been indicated, applicant is
encouraged to submit formal drawings in response to this Office action. 
The early submission of formal drawings will permit the Office to review
the drawings for acceptability and to resolve any informalities
remaining therein before the application is passed to issue.  This will
avoid possible delays in the issue process.

6.26 Informal Drawings Do Not Permit Examination

The informal drawings are not of sufficient quality to permit
examination.  Accordingly, new drawings are required in reply to this
Office action.

Applicant is given a TWO MONTH time period to submit new drawings in
compliance with  37 CFR 1.81.  Extensions of time may be obtained under
the provisions of  37 CFR 1.136(a).  Failure to timely submit new
drawings will result in ABANDONMENT of the application.

Examiner Note:

1. Use of this form paragraph should be extremely rare and limited to
those instances where no examination can be performed due to the poor
quality of the drawings resulting in a lack of understanding of the
claimed subject matter.

2. Use a PTOL-90 or PTO-90C form as a cover sheet for this
communication.

6.27 Correction Held in Abeyance

Applicant is required to submit a proposed drawing correction in reply
to this Office action.  However, formal correction of the noted defect
can be deferred until the application is allowed by the examiner.

DRAWING REQUIREMENTS

The first sentence of  35 U.S.C. 113 requires a drawing to be submitted
upon filing where such drawing is necessary for the understanding of the
invention. In this situation, the lack of a drawing renders the
application incomplete and, as such, the application cannot be given a
filing date until the drawing is received. The second sentence of  35
U.S.C. 113 deals with the situation wherein a drawing is not necessary
for the understanding of the invention, but the case admits of
illustration and no drawing was submitted on filing. The lack of the
drawing in this situation does not render the application incomplete but
rather is treated much in the same manner as an informality. The
examiner should require such drawings in almost all such instances. Such
drawings could be required during the processing of the application but
do not have to be furnished at the time the application is filed. The
applicant is allowed at least 2 months from the date of the letter
requiring drawings to submit them.

Handling of Drawing Requirements Under the First Sentence of 35 U.S.C.
113

The Office of Initial Patent Examination (OIPE) will make the initial
decision in all new applications as to whether a drawing is "necessary"
under the first sentence of  35 U.S.C. 113.  A drawing will be
considered necessary under the first sentence of  35 U.S.C. 113 in all
cases where the drawing is referred to in the specification and one or
more figures have been omitted.

The determination under  35 U.S.C. 113 (first sentence) as to when a
drawing is necessary will be handled in OIPE according to the following
procedure. OIPE will make the initial determination whether or not
drawings are required for the understanding of the subject matter of the
invention. Mechanical and electrical cases which lack a drawing, but in
which one appears to be needed for an understanding of the invention,
will be referred to the Classification and Routing Unit of OIPE for
advice.  If the Classification and Routing Unit cannot reach a prompt
and decisive response, the application will be referred to the
supervisory patent examiner for a determination. When drawings are
required, the application is treated as incomplete and the applicant is
so informed by OIPE. The filing date will not be granted and applicant
will be notified to complete the application (37 CFR 1.53(e)).  However,
the practice with respect to chemical cases is that, unless a drawing or
drawing figure is specifically referred to in the specification of the
application, the application will initially be considered by the OIPE
formality examiner as being complete and will be given a filing date.
Only in those chemical cases wherein there is a reference in the
specification to a drawing and no drawing was present on filing will a
chemical application initially be held incomplete and denied a filing
date.  If a drawing is later furnished, a filing date may be granted as
of the date of receipt of such drawing.

If an examiner feels that a filing date should not have been granted in
an application because it does not contain drawings, the matter should
be brought to the attention of the supervisory patent examiner (SPE) for
review. If the SPE decides that drawings are required to understand the
subject matter of the invention, the SPE should return the application
to OIPE with a typed, signed, and dated memorandum requesting
cancellation of the filing date and identifying the subject matter
required to be illustrated.

---SECTION---608.02(a) New Drawing - When Required

Utility and design patent applications should be taken up for the first
Office action without a request for formal drawings unless the informal
drawings are so unclear that they do not facilitate an understanding of
the invention as to permit examination of the application. If at the
time of the initial assignment of an application to an examiner's
docket, or if at the time the application is taken up for action, the
supervisory patent examiner believes the informal drawings to be of such
a condition as to not permit reasonable examination of the application,
applicant should be required to immediately submit formal drawings.
However, if the informal drawings do not permit examination and the
supervisory patent examiner believes the drawings are of such a
character as to render the application defective under  35 U.S.C. 112,
examination should begin immediately with a requirement for formal
drawings and a rejection of the claims as not being in compliance with 
35 U.S.C. 112, first paragraph, being made.

Formal drawings should be required when the application is allowed.

Forms PTOL-326 and PTOL-37 now provide items for requiring formal
drawings.

Form Paragraph 6.45 may also be used to inform applicant that formal
drawings are required.

6.45 Application Allowed, Formal Drawings Needed

Formal drawings are now required and must be filed within the THREE
MONTH shortened statutory period set for reply in the "Notice of
Allowability" (PTOL-37 or PTO-37).  Extensions of time may be obtained
under the provisions of  37 CFR 1.136(a).  Failure to timely submit the
drawings will result in ABANDONMENT of the application.  The drawings
should be submitted as a separate paper with a transmittal letter which
is addressed to the Official Draftsperson.  The art unit number,
application number and number of drawing sheets should be written on the
reverse side of the drawings.

HANDLING OF DRAWING REQUIREMENTS UNDER THE SECOND SENTENCE OF 35 U.S.C.
113

35 U.S.C. 113 deals with the situation wherein the drawing is not
necessary for the understanding of the invention, but the subject matter
admits of illustration by a drawing and the applicant has not furnished
a drawing. The lack of the drawing in this situation does not render the
application incomplete but rather is treated as an informality. A filing
date will be accorded with the original presentation of the papers,
despite the absence of drawings. In these situations, a drawing or
further illustration will normally be required by the examiner. This
should be done prior to examination in a separate letter. The examiner
should require additional drawings, where appropriate, as early as
possible since the possession of the additional drawings would
facilitate the examination process. A letter requiring drawings may
contain wording similar to the following:

The examiner has decided that the subject matter of this application
admits of illustration by a drawing and that a drawing would facilitate
the understanding of the subject matter disclosed. (Continue with a
specific mention of those items of which drawings are desired.)
Applicant is required to furnish a drawing under  37 CFR 1.81
(Incorporate in Office action or send a separate letter setting a
2-month period for reply.)

The applicant should be given at least 2 months from the date of a
requirement to submit drawings made in a separate letter. If the
requirement for drawings is included in an Office action, the time for
supplying the additional drawings will be the same as the time for reply
to the Office action.

RECEIPT OF DRAWING AFTER THE FILING DATE

If new matter is noticed by the examiner in a substitute or additional
drawing, the drawing should not be entered. It should be objected to as
containing new matter. A new drawing without such new matter may be
required if the examiner feels a drawing is needed under  37 CFR 1.81 or 
37 CFR 1.83. The examiner's decision would be reviewable by petition to
the Commissioner under  37 CFR 1.181. The decision on such a petition
would be handled by the Group Director.

UNTIMELY FILED DRAWINGS

If a drawing is not timely received in reply to a letter from the
examiner who requires a drawing, the application becomes abandoned for
failure to reply.

For the handling of additional, duplicate, or substitute drawings, see
MPEP Section  608.02(h).

---SECTION---608.02(b) Informal Drawings 

37 CFR 1.85 Corrections to drawings.

(a) The requirements of Section  1.84 relating to drawings will be
strictly enforced. A drawing not executed in conformity thereto, if
suitable for reproduction, may be admitted for examination but in such
case a new drawing must be furnished.

(b) The Patent and Trademark Office will not release drawings in
applications having a filing date after January 1, 1989, or any drawings
from any applications after January 1, 1991, for purposes of correction.
If corrections are necessary, new corrected drawings must be submitted
within the time set by the Office.

(c) When corrected drawings are required to be submitted at the time of
allowance, the applicant is required to submit acceptable drawings
within three months from the mailing of the "Notice of Allowability."
Within that three-month period, two weeks should be allowed for review
of the drawings by the Drafting Branch. If the Office finds that
correction is necessary, the applicant must submit a new corrected
drawing to the Office within the original three-month period to avoid
the necessity of obtaining an extension of time and paying the extension
fee.  Therefore, the applicant should file corrected drawings as soon as
possible following the receipt of the Notice of Allowability. The
provisions with respect to obtaining an extension of time relates only
to the late filing of corrected drawings. The time limit for payment of
the issue fee is a fixed three-month period which cannot be extended as
set forth in  35 U.S.C. 151.

In instances where the drawing is such that the prosecution can be
carried on without the corrections, applicant is informed of the reasons
why the drawing is objected to on Form PTO-948 or in an examiner's
action, and that the drawing is admitted for examination purposes only
(see MPEP Section  707.07(a)). To be fully responsive, an amendment must
include a request for drawing corrections when the application is
allowed or an appeal is filed. See  37 CFR 1.111(b).

INFORMAL DRAWINGS

To expedite filing, applicants sometimes submit applications with
informal drawings. Such applications are accepted by the Office of
Initial Patent Examination (OIPE) for filing only, provided the informal
drawings are readable and reproducible. Applicant is notified on Form
PTO-948 or in an Office action that formal drawings, in compliance with 
37 CFR 1.84 will be required when the application is allowed. Form
Paragraph 6.24 may be used for this purpose.

6.24 Informal Drawings

This application has been filed with informal drawings which are
acceptable for examination purposes only.  Formal drawings will be
required when the application is allowed.

Alternatively, the examiner may check the appropriate box on the Office
Action Summary, PTOL-326.

HANDLING OF NEW DRAWINGS

In those situations where an application is filed with informal
drawings, applicants are requested to wait until they receive their
"Notice of Draftsperson's Patent Drawing Review" form, PTO-948, or the
first Office action utilizing form PTOL-326 or PTOL-37 from the group
art unit before submitting the formal drawings. The letter of
transmittal accompanying the formal drawings should identify the group
art unit indicated on form PTO-948 or form PTOL-326. If the informal
notification appears on form PTOL-37, the date of the mailing of the
Notice of Allowance and Issue Fee as well as the Issue Batch Number must
be given. Also, each sheet of the drawing should include the application
number and group art unit in the upper right margin. In the past, some
drawings have been misdirected because the group art unit indicated on
the filing receipt was used rather than that indicated on the informal
notice forms.

The Draftsperson is the judge of drawings, as to the execution of the
same, and the arrangement of the views thereon, while the examiner is
the judge as to the sufficiency of the showing.  The drawings received
with an application are inspected by the draftsperson. If the drawing is
satisfactory, he or she stamps on each sheet "Approved by Draftsman" and
checks the approved box on Form PTO-948. See also MPEP Section  608.02.

RECEIPT OF SUBSTITUTE DRAWINGS

If substitute drawings are timely filed, the examining group technical
support staff should immediately send the new substitute drawings with
the file wrapper to the Draftsperson for approval as to form.

If the application is allowed on the first action, the examiner should
require formal drawings using form PTOL-37.

COMPARISON OF SUBSTITUTE DRAWINGS

In utility applications, the examination will normally be conducted
using any informal drawings presented.  The sufficiency of disclosure,
as concerns the subject matter claimed, will be made by the examiner
utilizing the informal drawings. IT IS APPLICANT'S RESPONSIBILITY TO SEE
THAT NO NEW MATTER IS ADDED when submitting substitute drawings since
they will not normally be reviewed by an examiner. Of course, if the
examiner notices new matter in the substitute drawings, appropriate
action to have the new matter deleted should be undertaken.

---SECTION---608.02(c) Drawing Print Kept in File Wrapper

The drawing prints must always be kept on top of the papers on the right
side of the file wrapper so as to be visible upon opening the wrapper
and to permit them to be easily detached.

Applications may be sent to issue or to the Files Repository without the
original drawing, if any, if the drawing cannot be located. For an
application sent to issue with missing drawings, see MPEP Section 
608.02(z). For abandoned applications sent to the Files Repository, a
notation should be made on the Contents portion of the file wrapper that
the drawings were missing.

Upon initial processing, the original drawings are placed in the center
portion of the application file wrapper underneath the application
papers by the Micrographics Division. The formal drawings should be
retained in this position.

---SECTION---608.02(d) Complete Illustration in Drawings

37 CFR 1.83 Content of drawing.

(a) The drawing in a nonprovisional application must show every feature
of the invention specified in the claims.  However, conventional
features disclosed in the description and claims, where their detailed
illustration is not essential for a proper understanding of the
invention, should be illustrated in the drawing in the form of a
graphical drawing symbol or a labeled representation (e.g., a labeled
rectangular box).

(b) When the invention consists of an improvement on an old machine the
drawing must when possible exhibit, in one or more views, the improved
portion itself, disconnected from the old structure, and also in another
view, so much only of the old structure as will suffice to show the
connection of the invention therewith.

(c) Where the drawings in a nonprovisional application do not comply
with the requirements of paragraphs (a) and (b) of this section, the
examiner shall require such additional illustration within a time period
of not less than two months from the date of the sending of a notice
thereof. Such corrections are subject to the requirements of Section 
1.81(d).

Any structural detail that is of sufficient importance to be described
should be shown in the drawing. (Ex parte Good, 1911 C.D. 43, 164 O.G.
739 (Comm'r Pat. 1911).)

Form Paragraph 6.36 should be used to require illustration.

6.36 Drawings Do Not Show Claimed Subject Matter

The drawings are objected to under  37 CFR 1.83(a).  The drawings must
show every feature of the invention specified in the claims.  Therefore,
the   [1] must be shown or the feature(s) canceled from the claim(s). 
No new matter should be entered.

Examiner Note:

In bracket 1, insert the features that must be shown.

See also MPEP Section  608.02(a).

---SECTION---608.02(e) Examiner Determines Completeness of Drawings

The examiner should see to it that the figures are correctly described
in the brief description of the several views of the drawing section of
the specification, that the reference characters are properly applied,
that no single reference character is used for two different parts or
for a given part and a modification of such part, and that there are no
superfluous illustrations.

---SECTION---608.02(f) Modifications in Drawings

Modifications may not be shown in broken lines on figures which show in
solid lines another form of the invention.    Ex parte Badger, 1901 C.D.
195, 97 O.G. 1596 (Comm'r Pat. 1901).

All modifications described must be illustrated, or the text canceled.
(Ex parte Peck, 1901 C.D. 136, 96 O.G. 2409 (Comm'r Pat. 1901).) This
requirement does not apply to a mere reference to minor variations nor
to well-known and conventional parts.

---SECTION---608.02(g) Illustration of Prior Art

Figures showing the prior art are usually unnecessary and should be
canceled. Ex parte Elliott, 1904 C.D. 103, 109 O.G. 1337 (Comm'r Pat.
1904). However, where needed to understand applicant's invention, they
may be retained if designated by a legend such as "Prior Art." 

If the prior art figure is not labeled, Form Paragraph 6.36.01 may be
used.

6.36.01 Illustration of "Prior Art"

Figure [1] should be designated by a legend such as --Prior Art--
because only that which is old is illustrated.  See MPEP Section 
608.02(g).

---SECTION---608.02(h) Additional, Duplicate, or Substitute Drawings 

When an amendment is filed stating that substitute or additional sheets
of drawings are filed with the amendment and such drawings have not been
transmitted to the examining group, the technical support staff in the
examining group should call the Office of Initial Patent Examination
(OIPE) before entering the amendment to ascertain if the drawings were
not received.  In the next communication of the examiner, the applicant
is notified if the drawings have been received and whether or not the
substitute or additional drawings have been entered in the application.

Additional and substitute drawings, together with the file wrapper, are
routed through the Drafting Review Branch where any defects in execution
will be noted. If there are none, they will be stamped, "Approved By
Draftsman."  When such drawings are considered by the examiner, it
should be kept in mind that the "Approved" stamp applies only to the
size and quality of paper, lines rough and blurred, and other details of
execution. The additional or substitute drawing sheets should be entered
by the technical support staff after approval by both the draftsman and
the examiner.

The examiner should not overlook such factors as new matter, the
necessity for the additional sheets and consistency with other sheets.
The technical support staff will routinely enter all additional and
substitute sheets on the file wrapper.  Additional and substitute sheets
of drawings are also indicated on the face of the file wrapper under the
heading  "Parts of application separately filed." If the examiner
decides that the sheets should not be entered, applicant is so informed,
giving the reasons. The entries made by the technical support staff will
be marked "(N.E.)."

Form Paragraph 6.37 may be used to acknowledge corrected or substituted
drawings.

6.37 Acknowledgment of Corrected or Substitute Drawings

The corrected or substitute drawings were received on [1].  These
drawings are [2].

Examiner Note:

1. In bracket 2, insert either --acceptable-- or --not acceptable--.

2. If not acceptable, an explanation must be provided.

3. If not acceptable because of informalities noted on PTO-948, use form
paragraph 6.43.

Alternatively, PTOL-326 Office Action Summary includes a block for
acknowledgment of corrected or substitute drawings.

If an additional sheet of drawing is considered unnecessary and the
original drawing requires alterations which are taken care of in the
proffered additional sheet, the latter may be used in lieu of the usual
sketch required in making the correction of the original drawing.

For return of drawing, see MPEP Section  608.02(y).

---SECTION---608.02(i) Transfer of Drawings From Prior Applications

Transfer of drawings from a first pending application to another will be
made only upon the granting of a petition filed under  37 CFR 1.182
which must set forth a hardship situation requiring such transfer of
drawings.

---SECTION---608.02(m) Drawing Prints 

Preparation and distribution of drawing prints is discussed in MPEP
Section  508.

Prints are made of the drawings of an acceptable application. These
prints are marked "Prints of drawing as originally filed" and are
entered in the application, given a paper number, and kept on top of the
papers on the right side of the file wrapper, see MPEP Section 
719.01(b).

All prints and inked sketches subsequently filed to be part of the record are
endorsed with the date of their receipt in the Office and given their
appropriate paper number.

The print being thus an official paper in the record should not be
marked or in any way altered. The original drawing, of course, should
not be marked up by the examiner. Where, as in an electrical wiring
case, it is desirable to identify the various circuits by different
colors, or in any more or less complex case, it is advantageous to apply
legends, arrows, or other indicia, an additional print for such use
should be made or ordered by the examiner and placed unofficially in the
file.

Prints remain in the file at all times except as provided in MPEP
Section  608.02(c).

INTERFERENCE PRINTS

A print is prepared of each drawing in all applications having a filing
date. This interference print is in addition to the drawing print on
white paper.

Primary examiners should place the classification and the name of the
examiner on the interference print.

The interference prints are located above the drawing prints on the
right-hand portion of the file wrapper when initially received in the
examining group.

After the application has been classified and assigned to an examiner,
the interference prints should be removed and placed in the drawing
cabinets.

If an application has several sheets of drawings, the interference
prints should be stapled together at their bottom edges before being
filed. If the number of sheets of prints is too large to be stapled, a
fastener should be placed through the holes at the top.

The time when the interference prints are removed from the drawing
cabinets is determined by the Group Director.

The drawings filed by applicant remain in the file wrapper.

---SECTION---608.02(n) Duplicate Prints in Patentability Report Cases

In patentability report cases having drawings, the examiner to whom the
case is assigned should normally obtain a duplicate set of the
interference prints of the drawing for filing in the group to which the
case is referred.

When a case that has had patentability report prosecution is passed for
issue or becomes abandoned, notification of this fact is given by the
group having jurisdiction of the case to each group that submitted a
patentability report. The examiner of each such reporting group notes
the date of allowance or abandonment on his or her duplicate set of
prints.  At such time as these prints become of no value to the
reporting group, they may be destroyed.

For patentability reports, see MPEP Section  705 to Section  705.01(f).

---SECTION---608.02(o) Dates Entered on Drawing 

The Mail Center (Office Date) stamp and the "Corrected" stamp applied by
the Drafting Review Branch are impressed on the back of the drawings. If
the drawings are filed in the examining group, the group date of receipt
stamp should be applied to the back of the drawing near the top.

Approval by the Drafting Review Branch is indicated by a legend
associated with the "O.G. Fig. Cl. . . . Sub. . . ." stamp on the front
of each sheet.

---SECTION---608.02(p) Correction of Drawings 

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.

                  +++    

(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.

                  +++    

For corrections which are deferrable, see MPEP Section  608.02(b). For
correction at allowance and issue, see MPEP Section  608.02(w) and MPEP
Section  1302.05.

A canceled figure may be reinstated. An amendment should be made to the
specification adding the brief description of the view if a canceled
figure is reinstated.

---SECTION---608.02(q) Conditions Precedent to Amendment of Drawing

No alterations will be permitted unless required by an examiner's letter
in each case or proposed in writing by applicant or his or her attorney
or agent. In either case, the alterations or corrections as indicated in
the sketches filed with the request of the applicant or his or her
attorney or agent must be given written approval by the examiner before
the drawing is corrected.

CORRECTION OF INFORMALITIES (DRAFTSPERSON'S OBJECTIONS ON PTO-948)

Form Paragraph 6.40 (reproduced in MPEP Section  608.02), the back page
of PTO-948, and the back page of PTOL-37, the "Notice of Allowability,"
provide detailed information on how to effect drawing changes.

In order to correct any informalities in the drawings, applicants   MUST
comply with the requirements set forth below. Failure to do so will
result in ABANDONMENT of the application.

File new drawings with the changes incorporated therein. Applicant may
delay filing of the new drawings until the application is allowed by the
examiner.  If delayed, the new drawings MUST be filed within the period
set for reply in the "NOTICE OF ALLOWABILITY" (PTOL-37). The drawings
should be filed as a separate paper with a transmittal letter addressed
to the Official Draftsperson which indicates the following in the upper
right-hand corner:

Date of the Notice of Allowability

Issue Batch Number

Application Number

CORRECTIONS OTHER THAN INFORMALITIES NOTED BY THE DRAFTSPERSON ON THE
PTO-948

All changes to the drawings, other than informalities noted by the
Draftsperson, MUST be made in the same manner as above except that,
normally, a sketch of the changes to be incorporated into the new
drawings MUST be approved by the examiner before the application will be
allowed. No changes will be permitted to be made, other than correction
of informalities, unless the examiner has approved the proposed changes.

---SECTION---608.02(r) Separate Letter to Draftsperson

Any proposal by the applicant for amendment of the drawing to cure
defects must be embodied in a separate letter. Otherwise the case,
unless in other respects ready for issue, cannot be corrected, and
applicant must be so advised in the next action by the examiner.

For changes which may require sketches, see MPEP Section  608.02(v).

---SECTION---608.02(t) Cancelation of Figures

Cancelation of one or more figures which do not occupy entire sheets of
the drawings is done by the technical support staff in the examining
group who encloses a figure and its legend with a red ink line. No
portion of the figure itself should be crossed by the red line.  The
words "CANCEL per'' and the date of the amendment directing the
cancelation or the date that substitute sheets are filed should be
written in red ink within the red line. Cancelation of an entire sheet
of drawings is done by stamping the words "CANCEL per" in the top right
corner of the drawing.  Canceled drawing sheets should be placed at the
bottom of the papers on the right side of the file wrapper.

When the cancelation of some of the figures from one sheet of drawings
has left the remaining figures with an inartistic arrangement, the
Draftsperson should be consulted as to whether the remaining figures
should be transferred to other sheets already in the case or shown in
additional drawings. Cancelation of a figure may necessitate renumbering
of the remaining figures.

---SECTION---608.02(v) Drawing Changes Which Require Sketches

When changes are to be made in the drawing itself, other than mere
changes in reference characters, designations of figures, or inking over
lines pale and rough, a print or pen-and-ink sketch must be filed
showing such changes in red ink or with the changes otherwise
highlighted. Ordinarily, broken lines may be changed to full without a
sketch.

Sketches filed by an applicant and used for correction of the drawing
will not be returned. All such sketches must be in ink or permanent
prints.

---SECTION---608.02(w) Drawing Changes Which May Be Made Without
Applicant's Sketch

Where an application is ready for issue except for a slight defect in
the drawing not involving change in structure, the examiner will prepare
a letter indicating the change to be made and note in pencil on the
drawing the addition or alteration to be made.

The correction must be made at applicant's expense.

As a guide to the examiner, the following corrections are illustrative
of those that may be made by penciling in the change on the drawing
without a sketch:

(A) Adding two or three reference characters or exponents.

(B) Changing one or two numerals or figure ordinals.   Garrett v. Cox,
233 F.2d 343, 346, 110 USPQ 52, 54 (CCPA 1956).

(C) Removing superfluous matter.

(D) Adding or reversing directional arrows.

(E) Changing Roman Numerals to Arabic Numerals to agree with
specification.

(F) Adding section lines or brackets, where easily executed.

(G) Changing lead lines.

(H) Correcting misspelled legends.

---SECTION---608.02(x) Disposition of Orders for Amendment of Drawing 

Where the correction of the drawing is approved by the examiner, the
application and drawing are forwarded to the Publishing Division along
with the Notice of Allowance.

CORRECTION NOT APPROVED

Where the correction is not approved, for example, because the proposed
changes are erroneous, or involve new matter or (although otherwise
proper) do not include all necessary corrections, the case and request
for correction of drawing are not approved. The examiner's reasons for
not approving the corrections to the drawing should be set forth in the
next Office action.

---SECTION---608.02(y) Return of Drawing 

If there is a formal drawing in the case, nonentered drawings (except
those originally filed) that have been finally denied admission will be
returned to the applicant only at applicant's request.

A request for return of nonentered drawings must be filed within a
reasonable time; otherwise, the drawing may be disposed of at the
discretion of the Commissioner.

When a drawing is to be returned, the file, the examiner's letter
stating that the drawing is being returned, and the drawing are taken to
the Drafting Review Branch where the letter will be stamped and the
drawing returned. The letter is mailed by the examining group.

Before drawings are returned, prints are made and put in the application
file.

---SECTION---608.02(z) Allowable Applications Needing Drawing
Corrections or Formal Drawings

Allowable applications can be turned in for counting and forwarding to
the Publishing Division without the drawings having been corrected. When
sending allowed applications to the Publishing Division which require
drawing corrections, use yellow tag form PTO-1364.  The approved formal
drawings requiring correction should be placed as the top papers in the
center fold of the file wrapper. The drawing correction instructions
should be stapled to the right outside flap of the file wrapper over the
area having the search information. Care should be taken to make certain
that the corrections have been approved by the examiner. Such approval
should be made by the examiner prior to counting the allowance of the
application.

The yellow tag procedure normally should be used only where drawing
corrections are involved. The yellow tag procedure must be used where
the Draftsperson has objected to the drawing because of an informality
such as improper shading or pale lines and has indicated that this can
be corrected.

The yellow tag procedure should not normally be used in other situations
where corrected drawings have been filed but have not been approved by
the Draftsperson unless the examiner is quite sure that the Draftsperson
will approve the new drawings or in the situation where the application
was examined utilizing an informal drawing and the request for formal
drawings was not made until the Notice of Allowability was mailed. The
yellow tag procedure should not be used in design applications where the
drawings have not been approved by the Draftsperson because of shading
problems which can arise. If the substitute drawings are not approved by
the Draftsperson, the application should be promptly taken up for action
by the examiner.

[GRAPHIC]

APPLICATIONS HAVING LOST DRAWINGS

A yellow tag is to be attached to the file wrapper and a "Drawing
Missing" memo is to be stapled to the face of the file wrapper. The
Notice of Allowability is verified and printed using PALM, and the
Notice is mailed to the applicant.

The application is then forwarded to Licensing and Review or the
Publishing Division, as appropriate, using the PALM transaction code
after the application has been revised for issue.

UTILITY PATENT APPLICATIONS RECEIVING FORMAL DRAWINGS AFTER THE NOTICE
OF ALLOWABILITY

Where substitute drawings are received in utility patent applications
examined with informal drawings and the Notice of Allowability was
mailed prior to the receipt of the substitute drawings, the clerk should
enter the substitute drawings into the application and forward the
application to the Publishing Division via Licensing and Review, if
appropriate, using the yellow tag procedure.  Submission to the examiner
is not necessary unless an amendment accompanies the drawings which
changes the specification, such as where the description of figures is
added or canceled.

BORROWING FILES FROM DRAFTING REVIEW BRANCH

Allowed files requiring drawing corrections are sent to the Draftsperson
from the Publishing Division. At times, examiners have a need to borrow
these applications. When borrowing applications, examining corps
personnel must submit a request to the Office of Patent Publications
Customer Service Center.

 37 CFR 1.312 AMENDMENTS

In handling  37 CFR 1.312 amendments, the examining corps should process
drawings canceled in the normal manner. If there are corrections to the
drawing, approval, if appropriate, is indicated by the examiner on form
PTOL-271 in conjunction with Form Paragraph 6.48; the paragraph sets the
appropriate period for effecting the approved drawing change.

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.

Formal drawings may be required in an allowed application by using Form
Paragraph 6.25 in an Office action or by checking the appropriate box on
form letter PTOL-37.

6.25 Formal Drawings Required, Application Allowed

The application having been allowed, formal drawings are required in
response to this Office action.

Examiner Note:

Use this form paragraph only with the Notice of Allowability/Examiner's
Amendment.

---SECTION---608.03 Models, Exhibits, Specimens

35 U.S.C. 114 Models, specimens.

The Commissioner may require the applicant to furnish a model of
convenient size to exhibit advantageously the several parts of his
invention.

When the invention relates to a composition of matter, the Commissioner
may require the applicant to furnish specimens or ingredients for the
purpose of inspection or experiment.

37 CFR 1.91 Models or exhibits not generally admitted as part of
application or patent.

(a) A model or exhibit will not be admitted as part of the record of an
application unless it:

(1) Substantially conforms to the requirements of Section  1.52 or
Section  1.84;

(2) Is specifically required by the Office; or

(3) Is filed with a petition under this section including:

(i) The petition fee as set forth in Section  1.17(i); and

(ii) An explanation of why entry of the model or exhibit in the file
record is necessary to demonstrate patentability.

(b) Notwithstanding the provisions of paragraph (a) of this section, a
model, working model, or other physical exhibit may be required by the
Office if deemed necessary for any purpose in examination of the
application.

Models or exhibits are generally not admitted as part of an application
or patent unless the requirements of  37 CFR 1.91 are satisfied.

With the exception of cases involving perpetual motion, a model is not
ordinarily required by the Office to demonstrate the operativeness of a
device. If operativeness of a device is questioned, the applicant must
establish it to the satisfaction of the examiner, but he or she may
choose his or her own way of so doing.

A physical exhibit, not to be part of the application, is generally not
refused except when bulky or dangerous. Such exhibit, if left with the
examiner, may be disposed of at the discretion of the Office.

37 CFR 1.93 Specimens.

When the invention relates to a composition of matter, the applicant may
be required to furnish specimens of the composition, or of its
ingredients or intermediates, for the purpose of inspection or
experiment.

See MPEP Chapter 2400 regarding treatment of biotechnology deposits.

---SECTION---608.03(a) Handling of Models, Exhibits, and Specimens 

All models and exhibits received in the Patent and Trademark Office
should be taken to the examining group assigned the related application
for examination. The receipt of all models and exhibits which are to be
entered into the application file record must be properly recorded on
the "Contents" portion of the application file wrapper.

A label indicating the application number, filing date, and attorney's
name and address should be attached to the model or exhibit so that it
is clearly identified and easily returned after prosecution of the
application is closed, if return is requested and the model or exhibit
is deemed not necessary for the examination of the application.  See  37
CFR 1.94.

If the model or exhibit cannot be conveniently stored within the
application file wrapper, it should not be accepted.

Models and exhibits may be presented for demonstration purposes during
an interview.  The models and exhibits should be taken away by applicant
or his/her attorney or agent at the conclusion of the interview since
models or exhibits are generally not permitted to be admitted as part of
the application or patent unless the requirements of  37 CFR 1.91 are
satisfied.  See MPEP Section  713.08.  A full description of what was
demonstrated or exhibited during the interview must be made of record. 
See  37 CFR 1.133.  Any model or exhibit that is left with the examiner
at the conclusion of the interview, which is not made part of the
application or patent, may be disposed of at the discretion of the
Office. 

37 CFR 1.94 Return of models, exhibits or specimens.

Models, exhibits, or specimens in applications which have be come
abandoned, and also in other applications on conclusion of the
prosecution, may be returned to the applicant upon demand and at his
expense, unless it be deemed necessary that they be preserved in the
Office. Such physical exhibits in contested cases may be returned to the
parties at their expense. If not claimed within a reasonable time, they
may be disposed of at the discretion of the Commissioner.

Upon request by applicant for the return of a model or exhibit, the
model or exhibit will be returned to applicant at applicant's expense if
(1) the examiner determines that it is not necessary to preserve the
model or exhibit in the Office, and (2) the model or exhibit has not
been earlier disposed of by the Office. A letter should be written to
applicant by the examining group stating that the model or exhibit is
being returned under separate cover, and the model or exhibit should be
forwarded with a copy of the letter and an address label to the Mail
Center for wrapping and return.

For disposition of exhibits which are part of the record, see MPEP
Section  715.07(d).

For plant specimens, see MPEP Section  1607 and  37 CFR 1.166.

37 CFR 1.95 Copies of exhibits.

Copies of models or other physical exhibits will not ordinarily be
furnished by the Office, and any model or exhibit in an application or
patent shall not be taken from the Office except in the custody of an
employee of the Office specially authorized by the Commissioner.

---SECTION---608.04 New Matter

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.

                  +++    

(6) No amendment may introduce new matter into the disclosure of an
application.

                  +++    

In establishing a disclosure, applicant may rely not only on the
specification and drawing as filed but also on the original claims if
their content justifies it. See MPEP Section  608.01(l).

While amendments to the specification and claims involving new matter
are ordinarily entered, such matter is required to be canceled from the
descriptive portion of the specification, and the claims affected are
rejected under  35 U.S.C. 112, first paragraph.

When new matter is introduced into the specification, the amendment
should be objected to under  35 U.S.C. 132 (35 U.S.C. 251 if a reissue
application) and a requirement made to cancel the new matter. The
subject matter which is considered to be new matter must be clearly
identified by the examiner.  If the new matter has been entered into the
claims or affects the scope of the claims, the claims affected should be
rejected under  35 U.S.C. 112, first paragraph, because the new matter
is not described in the application as originally filed.

A "new matter" amendment of the drawing is ordinarily not entered;
neither is an additional or substitute sheet containing "new matter"
even though stamped APPROVED by the Draftsman and provisionally entered
by the examining group technical support staff.  See MPEP Section 
608.02(h).

The examiner's holding of new matter may be petitionable or appealable.
See MPEP Section  608.04(c).

For new matter in reissue application, see MPEP Section  1411.02. For
new matter in substitute specification, see MPEP Section  608.01(q).

Note: No amendment is permitted in a provisional application after it
receives a filing date.

---SECTION---608.04(a) Matter Not in Original Specification, Claims, or
Drawings

Matter not in the original specification, claims, or drawings is usually
new matter. Depending on circumstances such as the adequacy of the
original disclosure, the addition of inherent characteristics such as
chemical or physical properties, a new structural formula or a new use
may be new matter.  See Ex parte Vander Wal, 109 USPQ 119, 1956 C.D. 11,
705 O.G. 5 (Bd. App. 1955) (physical properties), Ex parte Fox, 128 USPQ
157, 1960 C.D. 28, 761 O.G. 906 (Bd. App. 1957) (new formula) and Ex
parte Ayers, 108 USPQ 444 (Bd. App. 1955) (new use). For rejection of
claim involving new matter, see MPEP Section  706.03(o).

For completeness of disclosure, see MPEP Section  608.01(p). For
trademarks and tradenames, see MPEP Section  608.01(v).

---SECTION---608.04(b) New Matter by Preliminary Amendment 

An amendment is sometimes filed along with the filing of the
application. Such amendment does not enjoy the status as part of the
original disclosure in an application filed under  37 CFR 1.53(b)
accompanied by a signed oath or declaration unless it is referred to in
the oath or declaration filed therewith. Once an oath or declaration is
submitted in an application filed under  37 CFR 1.53(b) identifying the
papers which the inventor(s) has "reviewed and understands" as required
by  37 CFR 1.63, the original disclosure of the application is defined
and cannot be altered merely by filing of a subsequent oath or
declaration referring to different papers.  Where a  37 CFR 1.53(b)
application 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.  The subsequently filed oath or
declaration must refer to both the application and the amendment.  See
MPEP Section  714.09. If the original executed oath or declaration filed
on the filing date of the application fails to refer to the preliminary
amendment which was included with the application papers on filing, the
preliminary amendment will not be considered part of the original
disclosure. Any request to treat the preliminary amendment as a part of
the original disclosure is by way of petition under  37 CFR 1.182,
requesting that the original oath or declaration be disregarded and that
the application be treated as an application filed without an executed
oath or declaration under  37 CFR 1.53(f). Any such petition must be
timely filed and be accompanied by a newly executed oath or declaration
(which identifies the application and refers to the preliminary
amendment), the surcharge set forth in  37 CFR 1.16(e), and the $130.00
petition fee.

An amendment which adds additional disclosure filed with a request for a
continuation-in-part application filed prior to December 1, 1997 under
former  37 CFR 1.62 is automatically considered a part of the original
disclosure of the application by virtue of the rule. Therefore, the oath
or declaration filed in such an application must identify the amendment
adding additional disclosure as one of the papers which the inventor(s)
has "reviewed and understands'' in order to comply with  37 CFR 1.63. If
the original oath or declaration submitted in a continuation-in-part
application filed prior to December 1, 1997 under former  37 CFR 1.62
does not contain a reference to the amendment filed with the request for
an application under former  37 CFR 1.62, the examiner must require a
supplemental oath or declaration referring to the amendment.

---SECTION---608.04(c) Review of Examiner's Holding of New Matter

Where the new matter is confined to amendments to the specification,
review of the examiner's requirement for cancelation is by way of
petition. But where the alleged new matter is introduced into or affects
the claims, thus necessitating their rejection on this ground, the
question becomes an appealable one, and should not be considered on
petition even though that new matter has been introduced into the
specification also.  37 CFR 1.181 and  37 CFR 1.191 afford the
explanation of this seemingly inconsistent practice as affecting new
matter in the specification.

---SECTION---608.05 Deposit of Computer Program Listings

37 CFR 1.96 Submission of computer program listings.

(a)  	General. Description s of the operation and general content of
computer program listings should appear in the description portion of
the specification. A computer program listing for the purpose of this
section is defined as a printout that lists in appropriate sequence the
instructions, routines, and other contents of a program for a computer.
The program listing may be either in machine or machine-independent
(object or source) language which will cause a computer to perform a
desired procedure or task such as solve a problem, regulate the flow of
work in a computer, or control or monitor events. Computer program
listings may be submitted in patent applications as set forth in
paragraphs (b) and (c) of this section.

(b) Material which will be printed in the patent. If the computer
program listing is contained on ten printout pages or less, it must be
submitted either as drawings or as part of the specification.

(1) Drawings. If the listing is submitted as drawings, it must be
submitted in the manner and complying with the requirements for drawings
as provided in Section  1.84. At least one figure numeral is required on
each sheet of drawing.

(2) Specification. (i) If the listing is submitted as part of the
specification, it must be submitted in accordance with the provisions of
Section  1.52, at the end of the description but before the claims.

(ii) Any listing submitted as part of the specification must be direct
printouts (i.e., not copies) from the computer`s printer with dark solid
black letters not less than 0.21 cm. high, on white, unshaded and
unlined paper, and the sheets should be submitted in a protective cover.
Any amendments must be made by way of submission of a substitute sheet.

(c) As an appendix which will not be printed. If a computer program
listing printout is eleven or more pages long, applicants must submit
such listing in the form of microfiche, referred to in the specification
(see Section  1.77(a)(6)). Such microfiche filed with a patent
application is to be referred to as a "microfiche appendix." The
"microfiche appendix" will not be part of the printed patent. Reference
in the application to the "microfiche appendix" must be made at the
beginning of the specification at the location indicated in Section 
1.77(a)(6).  Any amendments thereto must be made by way of revised
microfiche.

(1) Availability of appendix. Such computer program listings on
microfiche will be available to the public for inspection, and
microfiche copies thereof will be available for purchase with the file
wrapper and contents, after a patent based on such application is
granted or the application is otherwise made publicly available.

(2) Submission requirements. Except as modified or clarified in this
paragraph (c)(2), computer-generated information submitted as a
"microfiche appendix" to an application shall be in accordance with the
standards set forth in 36 CFR Part 1230 (Micrographics).

(i) Film submitted shall be a first generation (camera film) negative
appearing microfiche (with emulsion on the back side of the film when
viewed with the images right reading).

(ii) Reduction ratio of microfiche submitted should be 24:1 or a similar
ratio where variation from said ratio is required in order to fit the
documents into the image area of the microfiche format used.

(iii) At least the left-most third (50 mm. x 12 mm.) of the header or
title area of each microfiche submitted shall be clear or positive
appearing so that the Patent and Trademark Office can apply an
application number and filing date thereto in an eye-readable form. The
middle portion of the header shall be used by applicant to apply an
eye-readable application identification such as the title and/or the
first inventor's name. The attorney's docket number may be included. The
final right-hand portion of the microfiche shall contain sequence
information for the microfiche, such as 1 of 4, 2 of 4, etc.

(iv) Additional requirements which apply specifically to microfiche of
filmed paper copy:

(A) The first frame of each microfiche submitted shall contain a test
target.

(B) The second frame of each microfiche submitted must contain a fully
descriptive title and the inventor's name as filed.

(C) The pages or lines appearing on the microfiche frames should be
consecutively numbered.

(D) Pagination of the microfiche frames shall be from left to right and
from top to bottom.

(E) At a reduction of 24:1, resolution of the original microfilm shall
be at least 120 lines per mm. (5.0 target).

(F) An index, when included, should appear in the last frame (lower
right hand corner when data is right-reading) of each microfiche.

(v) Microfiche generated by Computer Output Microfilm.

(A) The first frame of each microfiche submitted should contain a
resolution test frame.

(B) The second frame of each microfiche submitted must contain a fully
descriptive title and the inventor's name as filed.

(C) The pages or lines appearing on the microfiche frames should be
consecutively numbered.

(D) It is preferred that pagination of the microfiche frames be from
left to right and top to bottom but the alternative, i.e., from top to
bottom and from left to right, is also acceptable.

(E) An index, when included, should appear on the last frame (lower
right hand corner when data is right reading) of each microfiche.

Special procedures for presentation of computer program listings in the
form of microfiche in U.S. national patent applications are set forth in 
37 CFR 1.96. Use of microfiche is desirable in view of the number of
computer program listings being submitted as part of the disclosure in
patent applications. Such listings are often several hundred pages in
length. By filing and publishing such computer program listings on
microfiche rather than on paper, substantial cost savings can result to
the applicants, the public, and the Patent and Trademark Office.

BACKGROUND

A computer program listing, as used in these rules, means the printout
that lists, in proper sequence, the instructions, routines, and other
contents of a program for a computer. The listing may be either in
machine or machine-independent (object or source) programming language
which will cause a computer to perform a desired task, such as solving a
problem, regulating the flow of work in computer, or controlling or
monitoring events. The general description of the computer program
listing will appear in the specification while the computer program
listing may appear either directly or as a microfiche appendix to the
specification and be incorporated into the specification by reference.

DISCUSSION OF THE BACKGROUND AND MAJOR ISSUES INVOLVED

The provisions of  37 CFR 1.52 and  37 CFR 1.84 for submitting
specifications and drawings on paper have been found suitable for most
patent applications. However, when lengthy computer program listings
must be disclosed in a patent application in order to provide a complete
disclosure, use of paper copies can become burdensome.

The cost of printing long computer programs in patent documents is also
very expensive to the Patent and Trademark Office.

In the past, all disclosures forming part of a patent application were
presented on paper with the exception of microorganisms. Under  37 CFR
1.96, several different methods for submitting computer program
listings, including the use of microfiche, are set forth.

A computer program listing contained on ten printout pages or less must
be submitted either as drawings (in compliance with  37 CFR 1.84) or as
part of the specification (in compliance with  37 CFR 1.52).  A computer
program listing contained on eleven printout pages or more must be
submitted as microfiche (in compliance with  37 CFR 1.96(c)).

Form Paragraphs 6.02.02 through 6.02.04 may be used to notify the
applicant of this requirement.

6.02.02 Microfiche Appendix Requirement (Computer Program Listing in
Specification)

The description portion of this application contains a computer program
listing consisting of more than ten (10) pages.  In accordance with  37
CFR 1.96(c), a computer program listing printout of more than ten pages
must be submitted as a "microfiche appendix" conforming to the standards
set forth in  37 CFR 1.96(c)(2) and must be appropriately referenced in
the specification (see  37 CFR 1.77(a)(6)).  Accordingly, applicant is
required to cancel the computer program listing appearing in the
specification on pages [1], file a "microfiche appendix" in compliance
with  37 CFR 1.96(c) and insert an appropriate reference to the newly
added "microfiche appendix" at the beginning of the specification.

Examiner Note:

1. This form paragraph must be used whenever an application filed on or
after September 23, 1996 contains a computer program listing consisting
of more than ten pages as part of the descriptive portion of the
specification.

2. In bracket 1, insert the range of page numbers of the specification
which include the computer program listing.

6.02.03 Computer Program Listing as Printout in Appendix (Not More Than
Ten Pages)

This application contains an appendix consisting of a computer program
listing of no more than ten (10) pages.  In accordance with  37 CFR
1.96(b), a computer program listing contained on ten (10) pages or less,
must be submitted either as drawings or as part of the specification. 
Accordingly, applicant is required to cancel the appendix and either
incorporate such listing in a drawing in compliance with  37 CFR 1.84
(identifying each page as a separate figure), or insert the computer
program listing in the descriptive portion of the specification. If the
listing is submitted as part of the specification, it must appear after
the detailed description of the invention but before the claims and must
be in the form of direct printouts from a computer's printer with dark
solid black letters not less than 0.21 cm. high, on white, unshaded and
unlined paper.  The sheets should be submitted in a protective cover. 
See  37 CFR 1.96(b)(2).

Examiner Note:

This form paragraph must be used whenever an application filed on or
after September 23, 1996 contains a computer program listing consisting
of a paper printout appendix of no more than ten pages.

6.02.04 Computer Program Listing as Printout in Appendix (More Than Ten
Pages)

This application contains an appendix consisting of a computer program
listing of more than ten (10) pages.  In accordance with  37 CFR
1.96(c), a computer program listing contained on more than ten (10)
pages, must be submitted as a "microfiche appendix" conforming to the
standards set forth in  37 CFR 1.96(c)(2) and must be appropriately
referenced in the specification (see  37 CFR 1.77(a)(6)).  Accordingly,
applicant is required to cancel the computer program listing appearing
in the current appendix to the specification, file a "microfiche
appendix" in compliance with  37 CFR 1.96(c), and insert an appropriate
reference to the newly added "microfiche appendix" at the beginning of
the specification.

Examiner Note:

This form paragraph must be used whenever an application filed on or
after September 23, 1996 contains a computer program listing consisting
of a paper printout appendix of more than ten pages.

Copies of publicly available computer program listings are available
from the Patent and Trademark Office on paper and on microfiche at the
cost set forth in  37 CFR 1.19(a).

OTHER INFORMATION

The micrographic standards are set forth in 36 CFR Part 1230.

A microfiche filed with a patent application will be referred to as a
"Microfiche Appendix," and will be identified as such on the front page
of the patent but will not be part of the printed patent. "Microfiche
Appendix" denotes the total microfiche, whether only one or two or more.
One microfiche is equivalent to a maximum of either 63 (9x7) or 98
(14x7) frames (pages), or less.

The face of the file wrapper will bear a label to denote that a
Microfiche Appendix is included in the application. A statement must be
included in the specification to the effect that a microfiche appendix
is included in the application. The specification entry must appear at
the beginning of the specification immediately following any
cross-reference to related applications.  37 CFR 1.77 (a)(6).  The
patent front page and the Official Gazette entry will both contain
information as to the number of microfiche and frames of computer
program listings appearing in the microfiche appendix.

When an application containing microfiche is received in the Office of
Initial Patent Examination (OIPE), a special envelope will be affixed to
the right side of the file wrapper underneath all papers, and the
microfiche inserted therein. The application file will then proceed on
its normal course.  A label which sticks up above the file wrapper will
be placed at the center section of the face of the wrapper by OIPE. When
the application file reaches the Micrographics Division, the Microfiche
Appendix label will be placed on the face of the file wrapper. When the
Publishing Division of the Office of Patent Publication receives the
application file, the person placing the patent number on the face of
the file, upon seeing the Microfiche Appendix label, will give the file
to the Supervisor who will call Micrographics Division and give the
application number and patent number, and request copies of the
microfiche. Micrographics Division personnel will then put the patent
number on the microfiche(s), making certain each microfiche is the most
recent, and numbering each correctly, e.g., 1 of 1, 1 of 2, etc.  Upon
completion, two copies will be produced and provided to Publishing
Division - one for the grant head and one for the file wrapper.

At the time of assembly, the Microfiche Appendix will be placed inside
the grant head behind the patent grant for eyeletting, ribboning, and
mailing to the patentee/attorney. During the signing of the grant heads
by the Attesting Officer, the patent will be checked to assure proper
assembly prior to mailing.

---SECTION---609 Information Disclosure Statement

37 CFR 1.97 Filing of information disclosure statement.

(a) In order for an applicant for a patent or for a reissue of a patent
to have an information disclosure statement in compliance with Section 
1.98  considered by the Office during the pendency of the application,
it must satisfy paragraph (b), (c), or (d) of this section.

(b) An information disclosure statement shall be considered by the
Office if filed by the applicant:

(1) Within three months of the filing date of a national application;

(2) Within three months of the date of entry of the national stage as
set forth in Section  1.491 in an international application; or

(3) Before the mailing date of a first Office action on the merits,

whichever event occurs last.

(c) An information disclosure statement shall be considered by the
Office if filed by the applicant after the period specified in paragraph
(b) of this section, provided that the information disclosure statement
is filed before the mailing date of either a final action under Section 
1.113, or a notice of allowance under Section  1.311, whichever occurs
first, and is accompanied by either:

(1) A statement as specified in paragraph (e) of this section; or

(2) The fee set forth in Section  1.17(p).

(d) An information disclosure statement shall be considered by the
Office if filed by the applicant after the period specified in paragraph
(c) of this section, provided that the information disclosure statement
is filed on or before payment of the issue fee and is accompanied by:

(1) A statement as specified in paragraph (e) of this section;

(2) A petition requesting consideration of the information disclosure
statement; and

(3) The petition fee set forth in Section  1.17(i).

(e) A statement under this section must state either:

(1) That each item of information contained in the information
disclosure statement was cited in a communication from a foreign patent
office in a counterpart foreign application not more than three months
prior to the filing of the information disclosure statement; or

(2) That no item of information contained in the information disclosure
statement was cited in a communication from a foreign patent office in a
counterpart foreign application, and, to the knowledge of the person
signing the statement after making reasonable inquiry, no item of
information contained in the information disclosure statement was known
to any individual designated in Section  1.56(c) more than three months
prior to the filing of the information disclosure statement.

(f) No extensions of time for filing an information disclosure statement
are permitted under Section  1.136. If a bona fide attempt is made to
comply with Section 1.98, but part of the required content is
inadvertently omitted, additional time may be given to enable full
compliance.

(g) An information disclosure statement filed in accordance with this
section shall not be construed as a representation that a search has
been made.

(h) The filing of an information disclosure statement shall not be
construed to be an admission that the information cited in the statement
is, or is considered to be, material to patentability as defined in
Section  1.56(b).

(i) Information disclosure statements, filed before the grant of a
patent, which do not comply with this section and Section  1.98 will be
placed in the file, but will not be considered by the Office.

37 CFR 1.98 Content of information disclosure statement.

(a) Any information disclosure statement filed under Section  1.97 shall
include:

(1) A list of all patents, publications or other information submitted
for consideration by the Office;

(2) A legible copy of :

(i) Each U.S. and foreign patent;

(ii) Each publication or that portion which caused it to be listed; and

(iii) All other information or that portion which caused it to be
listed, except that no copy of a U.S. patent application need be
included; and

(3) A concise explanation of the relevance, as it is presently
understood by the individual designated in Section  1.56(c) most
knowledgeable about the content of the information, of each patent,
publication, or other information listed that is not in the English
language. The concise explanation may be either separate from the
specification or incorporated therein.

(b) Each U.S. patent listed in an information disclosure statement shall
be identified by patentee, patent number and issue date. Each foreign
patent or published foreign patent application shall be identified by
the country or patent office which issued the patent or published the
application, an appropriate document number, and the publication date
indicated on the patent or published application. Each publication shall
be identified by author (if any), title, relevant pages of the
publication, date and place of publication.

(c) When the disclosures of two or more patents or publications listed
in an information disclosure statement are substantively cumulative, a
copy of one of the patents or publications may be submitted without
copies of the other patents or publications provided that a statement is
made that these other patents or publications are cumulative. If a
written English-language translation of a non-English language document,
or portion thereof, is within the possession, custody or control of, or
is readily available to any individual designated in Section  1.56(c), a
copy of the translation shall accompany the statement.

(d) A copy of any patent, publication or other information listed in an
information disclosure statement is not required to be provided if it
was previously cited by or submitted to the Office in a prior
application, provided that the prior application is properly identified
in the statement and relied upon for an earlier filing date under  35
U.S.C. 120.

---SECTION---MINIMUM REQUIREMENTS FOR AN INFORMATION DISCLOSURE
STATEMENT

Information Disclosure Statements are not permitted in provisional
applications filed under  35 U.S.C. 111(b).  Since no substantive
examination is given in provisional applications, a disclosure of
information is unnecessary. Any such statement filed in a provisional
application will be returned or destroyed at the option of the Office. 
In applications filed under  35 U.S.C. 111(a), applicants and other
individuals substantively involved with the preparation and/or
prosecution of the application have a duty to submit to the Office
information which is material to patentability as defined in  37 CFR
1.56.  These individuals also may want the Office to consider
information for a variety of other reasons; e.g., without first
determining whether the information meets any particular standard of
materiality, or because another patent office considered the information
to be relevant in a counterpart or related patent application filed in
another country, or to make sure that the examiner has an opportunity to
consider the same information that was considered by the individuals
that were substantively involved with the preparation or prosecution of
a patent application.

An information disclosure statement filed in accordance with the
provisions of  37 CFR 1.97 and  37 CFR 1.98 provides the procedure
available to an applicant to submit information to the Office so that
the information will be considered by the examiner assigned to the
application. The requirements for the content of a statement have been
simplified in the rules which became effective on March 16, 1992, to
encourage individuals associated in a substantive way with the filing
and prosecution of a patent application to submit information to the
Office so the examiner can determine its relevance to the claimed
invention. The procedures for submitting an information disclosure
statement under the rules are designed to encourage individuals to
submit information to the Office promptly.

In order to have information considered by the Office during the
pendency of a patent application, an information disclosure statement in
compliance with  37 CFR 1.98 as to content must be filed in accordance
with the procedural requirements of  37 CFR 1.97. The requirements as to
content are discussed in A below. The requirements based on the time of
filing the statement are discussed in B below.  Examiner handling of
information disclosure statements is discussed in C below.

The Office has set forth the minimum requirements for information to be
considered in  37 CFR 1.97 and  37 CFR 1.98. Once the minimum
requirements are met, the examiner has an obligation to consider the
information. These rules provide certainty for the public by defining
the requirements for submitting information to the Office so that the
Office will consider information before a patent is granted. Information
submitted to the Office that does not comply with the requirements of 
37 CFR 1.97 and  37 CFR 1.98 will not be considered by the Office but
will be placed in the application file. 

The filing of an information disclosure statement shall not be construed
as a representation that a search has been made.  37 CFR 1.97(g).  There
is no requirement that an applicant for a patent make a patentability
search. Further, the filing of an information disclosure statement shall
not be construed to be an admission that the information cited in the
statement is, or is considered to be, material to patentability as
defined in  37 CFR 1.56(b).  37 CFR 1.97(h).  See MPEP Section  2129
regarding admissions by applicant.

Multiple information disclosure statements may be filed in a single
application, and they will be considered, provided each is in compliance
with the appropriate requirements. Use of form PTO-1449, "Information
Disclosure Citation," or PTO/SB/08A and 08B, "Information Disclosure
Statement," is encouraged as a means to provide the required list of
information.  See C(2) below.

Information which has been considered by the Office in the parent
application of a continued prosecution application (CPA) filed under  37
CFR 1.53(d) or a file wrapper continuing application (FWC) filed prior
to December 1, 1997 under former  37 CFR 1.62 will be part of the file
before the examiner and need not be resubmitted in the continuing
application to have the information considered and listed on the patent. 
Likewise, the examiner will consider information which has been
considered by the Office in a parent application when examining (A) a
continuation application filed under  37 CFR 1.53(b) or filed under
former  37 CFR 1.60, (B) a divisional application filed under  37 CFR
1.53(b) or filed under former  37 CFR 1.60, or (C) a
continuation-in-part application (see MPEP Section  201.06(b)) filed
under  37 CFR 1.53(b), and a list of the information need not be
submitted in the continuation, divisional, or continuation-in-part
application unless applicant desires the information to be printed on
the patent.

The examiner will consider the documents cited in the international
search report in a PCT national stage application when the Form
PCT/DO/EO/903 indicates that both the international search report and
the copies of the documents are present in the national stage file.  In
such a case, the examiner should consider the documents from the
international search report and indicate by a statement in the first
Office action that the information has been considered. There is no
requirement that the examiner list the documents on a PTO-892 form.

In a national stage application, the following form paragraphs may be
used where appropriate to notify applicant regarding references listed
in the search report of the international application:

---SECTION---6.53 References Considered in 37 U.S.C. 371 Application
Based Upon Search Report - Prior to Allowance

The references cited in the Search Report [1] have been considered, but
will not be listed on any patent resulting from this application because
they were not provided on a separate list in compliance with  37 CFR
1.98(a)(1).  In order to have the references printed on such resulting
patent, a separate listing, preferably on a PTO-1449 form, must be filed
within the set period for reply to this Office action.

Examiner Note:

1. This form paragraph may be used for PCT National Stage applications
submitted under  35 USC 371 where the examiner has obtained copies of
the cited references.  For applications filed from US, JPO or EPO search
authorities, the copies of the references should be supplied by those
offices under the trilateral agreement.  However, if receipt of such
copies is not indicated on the PCT/DO/EO/903 form in the file, burden is
on the applicant to supply copies for consideration.  See MPEP Section 
1893.03(g).

2. Instead of using this form paragraph, the examiner may list the
references on a PTO-892, thereby notifying the applicant that the
references have been considered and will be printed on any patent
resulting from this application.

3. This form paragraph should only be used prior to allowance when a
statutory period for reply is being set in the Office action.

4. If the application is being allowed, form paragraph 6.54 should be
used with the Notice of Allowance instead of this form paragraph.

6.54 References Considered in 37 U.S.C. 371 Application Based Upon
Search Report - Ready for Allowance

The references cited in the Search Report [1] have been considered, but
will not be listed on any patent resulting from this application because
they were not provided on a separate list in compliance with  37 CFR
1.98(a)(1).  In order to have the references printed on such resulting
patent, a separate listing, preferably on a PTO-1449 form, must be filed
within ONE MONTH of the mailing date of this communication.  NO
EXTENSION OF TIME WILL BE GRANTED UNDER EITHER  37 CFR 1.136(a) OR (b)
to comply with this requirement.

Examiner Note:

1. See the Examiner Note for form paragraph 6.53.

---SECTION---6.55 References Not Considered in 37 U.S.C. 371 Application
Based Upon Search Report

The listing of references in the Search Report is not considered to be
an information disclosure statement (IDS) complying with  37 CFR 1.98.
37 CFR 1.98(a)(2) requires a legible copy of each U.S. and foreign
patent, each publication or that portion which caused it to be listed. 
In addition, each IDS must include a list of all patents, publications,
or other information submitted for consideration by the Office (see  37
CFR 1.98(a)(1) and (b)), and MPEP Section  609 A(1) states, "the list
... must be submitted on a separate paper."  Therefore,  the references
cited in the Search Report have not been considered.  Applicant is
advised that the date of submission of any item of information or any
missing element(s) will be the date of submission for purposes of
determining compliance with the requirements based on the time of filing
the IDS, including all "statement requirements of  37 CFR 1.97(e).  See
MPEP Section  609 C(1).

Examiner Note:

1. This form paragraph may be used in National Stage applications
submitted under  35 U.S.C. 371 where the international searching
authority was not the US, EPO or JPO.

A. Content

An information disclosure statement must comply with the provisions of 
37 CFR 1.98 as to content in order to be considered by the Office. Each
information disclosure statement must comply with the applicable
provisions of A(1), A(2), and A(3) below.

A (1)	List of All Patents, Publications, or Other Information

Each information disclosure statement must include a list of all
patents, publications, or other information submitted for consideration
by the Office.

37 CFR 1.98(b) requires that each U.S. patent listed in an information
disclosure statement be identified by patentee, patent number, and issue
date. Each foreign patent or published foreign patent application must
be identified by the country or patent office which issued the patent or
published the application, an appropriate document number, and the
publication date indicated on the patent or published application. Each
publication must be identified by author (if any), title, relevant pages
of the publication, date and place of publication. The date of
publication supplied must include at least the month and year of
publication, except that the year of publication (without the month)
will be accepted if the applicant points out in the information
disclosure statement that the year of publication is sufficiently
earlier than the effective U.S. filing date and any foreign priority
date so that the particular month of publication is not in issue. The
place of publication refers to the name of the journal, magazine, or
other publication in which the information being submitted was
published.

To comply with this requirement, the list may not be incorporated into
the specification but must be submitted in a separate paper. A separate
list is required so that it is easy to confirm that applicant intends to
submit an information disclosure statement and because it provides a
readily available checklist for the examiner to indicate which
identified documents have been considered. A copy of a separate list
will also provide a simple means of communication to applicant to
indicate the listed documents that have been considered and those listed
documents that have not been considered. Use of either form PTO-1449,
Information Disclosure Citation, or PTO/SB/08A and 08B, Information
Disclosure Statement, is encouraged.  See C(2) below.

A (2)	Legible Copies

In addition to the list, each information disclosure statement must also
include a legible copy of:

(A) Each U.S. and foreign patent;

(B) Each publication or that portion which caused it to be listed; and

(C) All other information or that portion which caused it to be listed,
except that no copy of a U.S. patent application need be included.

There are exceptions to this general rule that a copy must be provided.
First,  37 CFR 1.98(d) states that a copy of any patent, publication, or
other information listed in an information disclosure statement is not
required to be provided if it was previously cited by or submitted to
the Office in a prior application, provided that the prior application
is properly identified in the statement and relied on for an earlier
filing date under  35 U.S.C. 120. The examiner will consider information
cited or submitted to the Office and considered by the Office in a prior
application relied on under  35 U.S.C. 120. This exception to the
requirement for copies of information does not apply to information
which was cited in an international application under the Patent
Cooperation Treaty. If the information cited or submitted in the prior
application was not in English, a concise explanation of the relevance
of the information to the new application is not required unless the
relevance of the information differs from its relevance as explained in
the prior application. See A(3) below.

Second,  37 CFR 1.98(c) states that when the disclosures of two or more
patents or publications listed in an information disclosure statement
are substantively cumulative, a copy of one of the patents or
publications may be submitted without copies of the other patents or
publications provided that a statement is made that these other patents
or publications are cumulative. The examiner will then consider only the
patent or publication of which a copy is submitted and will so indicate
on the list,  form PTO-1449, or PTO/SB/08A and 08B, submitted, e.g., by
crossing out the listing of the cumulative information.

37 CFR 1.98(c) further states that if a written English language
translation of a non-English language document, or portion thereof, is
within the possession, custody or control of, or is readily available to
any individual designated in  37 CFR 1.56(c), a copy of the translation
shall accompany the statement. Translations are not required to be filed
unless they have been reduced to writing and are actually translations
of what is contained in the non-English language information. If no
translation is submitted, the examiner will consider the information in
view of the concise explanation and insofar as it is understood on its
face, e.g., drawings, chemical formulas, English language abstracts, in
the same manner that non-English language information in Office search
files is considered by examiners in conducting searches.

A (3)	Concise Explanation of Relevance

Each information disclosure statement must further include a concise
explanation of the relevance, as it is presently understood by the
individual designated in  37 CFR 1.56(c) most knowledgeable about the
content of the information, of each patent, publication, or other
information listed that is not in the English language. The concise
explanation may be either separate from the specification or
incorporated therein.

The requirement for a concise explanation of relevance is limited to
information that is not in the English language. The explanation
required is limited to the relevance as understood by the individual
designated in  37 CFR 1.56(c) most knowledgeable about the content of
the information at the time the information is submitted to the Office.
If a translation of the information into English is submitted with the
foreign language information, no concise explanation is required. An
English-language equivalent application may be submitted to fulfill this
requirement if it is, in fact, a translation of a for eign language
application being listed in an information disclosure statement. There
is no requirement for the translation to be verified. Submission of an
English language abstract of a reference may fulfill the requirement for
a concise explanation. Where the information listed is not in the
English language, but was cited in a search report or other action by a
foreign patent office in a counterpart foreign application, the
requirement for a concise explanation of relevance can be satisfied by
submitting an English-language version of the search report or action
which indicates the degree of relevance found by the foreign office.
This may be an explanation of which portion of the reference is
particularly relevant, to which claims it applies, or merely an "X",
"Y", or "A" indication on a search report. The requirement for a concise
explanation of non-English language information would not be satisfied
by a statement that a reference was cited in the prosecution of a United
States application which is not relied on under  35 U.S.C. 120.

If information cited or submitted in a prior application relied on under 
35 U.S.C. 120 was not in English, a concise explanation of the relevance
of the information to the new application is not required unless the
relevance of the information differs from its relevance as explained in
the prior application.

The concise explanation may indicate that a particular figure or
paragraph of the patent or publication is relevant to the claimed
invention. It might be a simple statement pointing to similarities
between the item of information and the claimed invention. It is
permissible but not necessary to discuss differences between the cited
information and the claims.

Applicants may, if they wish, provide a concise explanation of why
English-language information is being submitted and how it is understood
to be relevant. Concise explanations are helpful to the Office,
particularly where documents are lengthy and complex and applicant is
aware of a section that is highly relevant to patentability or where a
large number of documents are submitted and applicant is aware that one
or more are highly relevant to patentability.

B. Time for Filing

The procedure and requirements for submitting an information disclosure
statement are linked to four stages in the processing of a patent
application: (1) within 3 months of filing, or before first Office
action, whichever is later; (2) after the period in (1), but before
final Office action or a Notice of Allowance, whichever is earlier; (3)
after the period in (2) but on or before the date the issue fee is paid;
and (4) after the period in (3) and up to the time the patent
application can be effectively withdrawn from issue. The procedures and
requirements apply to applications filed under  35 U.S.C. 111(a)
(utility), 161 (plants), 171 (designs), and 251 (reissue), as well as
international applications entering the national stage under  35 U.S.C.
371.

The requirements based on the time when the information disclosure
statement is filed are summarized as follows.

Time when IDS is filed 	37 CFR 1.97 Requirements

 (1)	Within 3 months of filing or before first Office action on the
merits, whichever is later.	None (always considered).

 (2)	After (1) but before final action or notice of allowance.	1.97(e)
statement or 1.17(p) fee.

 (3)	After final action or notice of 		allowance and before payment of
issue.	1.97(e) statement, petition, and petition fee.

B (1)	Information Disclosure Statement Filed BEFORE First Action on the
Merits or Within Three (3) Months of Actual Filing Date (37 CFR 1.97(b))

An information disclosure statement will be considered by the examiner
if filed:

(A) within 3 months of the filing date of a national application;

(B) within 3 months of the date of entry of the national stage as set
forth in  37 CFR 1.491 in an international application; or

(C) before the mailing date of a first Office action on the merits,
whichever event occurs last. An information disclosure statement filed
within this period requires neither a fee nor a statement under  37 CFR
1.97(e).

The term "national application" includes continuing applications
(continuations, divisions, continuations-in-part) so 3 months will be
measured from the actual filing date of an application as opposed to the
effective filing date of a continuing application.

All information disclosure statements that comply with the content
requirements of  37 CFR 1.98 and are filed within 3 months of the filing
date, including the filing date of a CPA, will be considered by the
examiner, regardless of whatever else has occurred in the examination
process up to that point in time. Thus, in the rare instance that a
final Office action or a notice of allowance is prepared and mailed
prior to a date which is 3 months from the filing date, any information
contained in a complete information disclosure statement filed within
that 3-month window will be considered by the examiner. Since the
preexamination processing of a CPA is performed by the examining group
rather than by the Office of Initial Patent Examination (OIPE), it
should be expected that a first Office action will normally issue in a
CPA (continuation) well within 3 months from the filing date of the CPA
request.  The submission of an information disclosure statement after
the first Office action is mailed could delay prosecution.  Therefore,
applicants are encouraged to file any information disclosure statement
in a CPA (especially continuation) as early as possible, preferably at
the time of filing of the CPA request or before the first Office action.

Likewise, an information disclosure statement will be considered if it
is filed later than 3 months after the filing date but before the
mailing date of a first Office action on the merits.  An action on the
merits means an action which treats the patentability of the claims in
an application, as opposed to only formal or procedural requirements. An
action on the merits would, for example, contain a rejection or
indication of allowability of a claim or claims rather than just a
restriction requirement (37 CFR 1.142) or just a requirement for
additional fees to have a claim considered (37 CFR 1.16(d)).  Thus, if
an application was filed on January 2 and the first Office action on the
merits was not mailed until 6 months later on July 2, the examiner would
be required to consider any proper information disclosure statement
filed prior to July 2.

An information disclosure statement will be considered to have been
filed on the day it was received in the Office, or on an earlier date of
mailing if accompanied by a properly executed certificate of mailing or
facsimile transmission under  37 CFR 1.8, or if it is in proper
compliance with the provisions for "Express Mail" delivery under  37 CFR
1.10.  An Office action is mailed on the date indicated in the Office
action.

B (2)	Information Disclosure Statement Filed After B(1), but BEFORE
Mailing of Final Action or Notice of Allowance (37 CFR 1.97(c))

An information disclosure statement will be considered by the examiner
if filed after the period specified in B(1) above, but before (not on
the same day as) the mailing date of either:

a final action under  37 CFR 1.113, e.g., final rejection or notice of
allowability, or

a notice of allowance under  37 CFR 1.311, whichever occurs first,
provided: (1) the information disclosure statement is accompanied by
either a statement as specified in  37 CFR 1.97(e); or (2) the fee set
forth in  37 CFR 1.17(p). If a final action or notice of allowance is
mailed in an application and later withdrawn, the application will be
considered as not having had a final action or notice of allowance
mailed for purposes of considering an information disclosure statement.

An Ex parte Quayle action is not a final action under  37 CFR 1.113 as
referred to in  37 CFR 1.97.  Therefore, an information disclosure
statement filed after an Ex parte Quayle action, but before mailing of a
notice of allowance, must comply with the provisions of  37 CFR 1.97(c)
rather than those of  37 CFR 1.97(d). However, where an Ex parte Quayle
action is issued after a final rejection which has not been withdrawn,
any information disclosure statement filed after the Ex parte Quayle
action must comply with the provisions of  37 CFR 1.97(d).

(A) If information submitted during the period set forth in  37 CFR
1.97(c) with a statement under  37 CFR 1.97(e) is used in a new ground
of rejection on unamended claims, the next Office action will not be
made final since in this situation it is clear that applicant has
submitted the information to the Office promptly after it has become
known and the information is being submitted prior to a final
determination on patentability by the Office. The information submitted
with a statement under  37 CFR 1.97(e) can be used in a new ground of
rejection and the next Office action made final, however, if the new
ground of rejection was necessitated by amendment of the application by
applicant. Where the information is submitted during this period with a
fee, the examiner may use the information submitted, e.g., 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  706.07(a).
If a new ground of rejection is introduced that is neither necessitated
by an amendment to the claims nor based on the information submitted
with the fee set forth in  37 CFR 1.17(p), the Office action shall not
be made final.

(B) A statement under  37 CFR 1.97(e) must state either

(1) that each item of information contained in the information
disclosure statement was cited in a communication from a foreign patent
office in a counterpart foreign application not more than three months
prior to the filing of the statement, or

(2) that no item of information contained in the information disclosure
statement was cited in a communication from a foreign patent office in a
counterpart foreign application, and, to the knowledge of the person
signing the statement after making reasonable inquiry, no item of
information contained in the information disclosure statement was known
to any individual designated in  37 CFR 1.56(c) more than three months
prior to the filing of the statement.

A statement under  37 CFR 1.97(e) can contain either of two statements. 
One statement is that each item of information in an information
disclosure statement was cited in a communication, such as a search
report, from a patent office outside the U.S. in a counterpart foreign
application not more than 3 months prior to the filing date of the
statement. Under this statement, it does not matter whether any
individual with a duty of disclosure actually knew about any of the
information cited before receiving the search report. The date on the
communication by the foreign patent office begins the 3-month period in
the same manner as the mailing of an Office action starts a 3-month
shortened statutory period for reply. If the communication contains two
dates, the mailing date of the communication is the one which begins the
3-month period. The date which begins the 3-month period is not the date
the communication was received by a foreign associate or the date it was
received by a U.S. registered practitioner. Likewise,the statement will
be considered to have been filed on the date the statement was received
in the Office, or on an earlier date of mailing or transmission if
accompanied by a properly executed certificate of mailing or facsimile
transmission under  37 CFR 1.8, or if it is in compliance with the
provisions for "Express Mail" delivery under  37 CFR 1.10.

The term counterpart foreign patent application means that a claim for
priority has been made in either the U.S. application or a foreign
application based on the other, or that the disclosures of the U.S. and
foreign patent applications are substantively identical (e.g., an
application filed in the European Patent Office claiming the same U.K.
priority as claimed in the U.S. application).

Communications from foreign patent offices in foreign applications
sometimes include a list of the family of patents corresponding to a
particular patent being cited in the communication. The family of
patents may include a United States patent or other patent in the
English language. Some applicants submit information disclosure
statements to the PTO which list and include copies of both the
particular patent cited in the foreign patent office communication and
the related United States or other English language patent from the
family list. Since this is to be encouraged, the United States or other
English language patent will be construed as being cited by the foreign
patent office for purposes of a statement under  37 CFR 1.97(e)(1). The
examiner should consider the United States or other English language
patent if  37 CFR 1.97 and  37 CFR 1.98 are complied with.

If an information disclosure statement includes a copy of a dated
communication from a foreign patent office which clearly shows that the
statement is being submitted within 3 months of the date on the
communication, the copy will be accepted as the required communication.
It will be assumed, in the absence of evidence to the contrary, that the
communication was for a counterpart foreign application.

In the alternative, a statement can be made if no item of information
contained in the information disclosure statement was cited in a
communication from a foreign patent office in a counterpart foreign
application and, to the knowledge of the person signing the statement
after making reasonable inquiry, neither was it known to any individual
having a duty to disclose more than 3 months prior to the filing of the
statement.

The phrase "after making reasonable inquiry" makes it clear that the
individual making the statement has a duty to make reasonable inquiry
regarding the facts that are being stated. The statement can be made by
a registered practitioner who represents a foreign client and who relies
on statements made by the foreign client as to the date the information
first became known. A registered practitioner who receives information
from a client without being informed whether the information was known
for more than 3 months, however, cannot make the statement under  37 CFR
1.97(e)(2) without making reasonable inquiry. For example, if an
inventor gave a publication to the attorney prosecuting an application
with the intent that it be cited to the Office, the attorney should
inquire as to when that inventor became aware of the publication and
should not submit a statement under  37 CFR 1.97(e)(2) to the Office
until a satisfactory response is received. The statement can be based on
present, good faith knowledge about when information became known
without a search of files being made.

A statement under  37 CFR 1.97(e) need not be in the form of an oath or
a declaration under  37 CFR 1.68.  A statement under  37 CFR 1.97(e) by
a registered practitioner or any other individual that the statement was
filed within the 3-month period of either first citation by a foreign
patent office or first discovery of the information will be accepted as
dispositive of compliance with this provision in the absence of evidence
to the contrary. For example, a statement under  37 CFR 1.97(e) could
read as follows:

I hereby state that each item of information contained in this
Information Disclosure Statement was cited in a communication from a
foreign patent office in a counterpart foreign application not more than
3 months prior to the filing of this statement.,

or

I hereby state that no item of information in the Information Disclosure
Statement filed herewith was cited in a communication from a foreign
patent office in a counterpart foreign application, and, to my knowledge
after making reasonable inquiry, no item of information contained in
this Information Disclosure Statement was known to any individual
designated in  37 CFR 1.56(c) more than 3 months prior to the filing of
this Information Disclosure Statement.

An information disclosure statement may include two lists and two
statements, similar to the above examples, in situations where some of
the information listed was cited in a communication from a foreign
patent office not more than 3 months prior to filing the statement and
some was not, but was not known more than 3 months prior to filing the
statement.

A copy of the foreign search report need not be submitted with the
statement under  37 CFR 1.97(e), but an individual may wish to submit an
English-language version of the search report to satisfy the requirement
for a concise explanation where non-English language information is
cited. The time at which information was known to any individual
designated in  37 CFR 1.56(c) is the time when the information was
discovered in association with the application even if awareness of the
materiality came later. The Office wishes to encourage prompt evaluation
of the relevance of information and to have a date certain for
determining if a statement under  37 CFR 1.97(e) can properly be made. A
statement on information and belief would not be sufficient. Examiners
should not remind or otherwise make any comment about an individual's
duty of candor and good faith, but questions about the adequacy of any
statement received in writing by the Office should be directed to the
Office of the Assistant Commissioner for Patents.

B(3)	Information Disclosure Statement Filed After B(2), but Prior to
Payment of Issue Fee (37 CFR 1.97(d))

An information disclosure statement will be considered by the examiner
if filed on or after the mailing date of either a final action under  37
CFR 1.113 or a notice of allowance under  37 CFR 1.311, whichever occurs
first, but before or simultaneous with payment of the issue fee,
provided the statement is accompanied by:

(A) a statement as specified in  37 CFR 1.97(e) (see the discussion in
B(2) above);

(B) a petition requesting consideration of the information disclosure
statement; and

(C) the petition fee set forth in  37 CFR 1.17(i).

These requirements are appropriate in view of the late stage of
prosecution when the information is being submitted, i.e., after the
examiner has reached a final determination on the patentability of the
claims presented for examination. The petition should be directed to the
Group Director of the examining group handling the application. The
petition need do nothing more than request consideration of the
information being submitted. Payment of the petition fee (37 CFR
1.17(i)) and submission of the appropriate statement (37 CFR 1.97(e))
are the essential elements for having information considered at this
advanced stage of prosecution, assuming the content requirements of  37
CFR 1.98 are satisfied.

Form paragraph 6.52 may be used to inform the applicant that the
information disclosure statement is being considered.

---SECTION---6.52 Information Disclosure Statement, Petition Granted

The information disclosure statement (IDS) submitted on [1] was filed
after the mailing date of the [2] on [3].  The submission is in
compliance with the provisions of  37 CFR 1.97.  Accordingly, the
petition is granted and the information disclosure statement is being
considered by the examiner.

Examiner Note:

1. This form paragraph may be used in an Office action only when signed
by a Supervisory Patent Examiner.

2. In bracket 2, insert either --final Office action-- or --Notice of
Allowance--, as appropriate.

The requirements of  37 CFR 1.97 provide for consideration by the Office
of information which is submitted within a reasonable time, i.e., within
3 months after an individual designated in  37 CFR 1.56(c) becomes aware
of the information or within 3 months of the information being cited in
a communication from a foreign patent office in a counterpart foreign
application. This undertaking by the Office to consider information
would be available throughout the pendency of the application until the
point where the patent issue fee was paid. If an applicant chose not to
comply, or could not comply, with the requirements of  37 CFR 1.97(d), a
continuing application could be filed to have the information considered
by the examiner. The parent application could be permitted to become
abandoned by not paying the issue fee required in the Notice of
Allowance, for example, or by the filing of a continued prosecution
application under  37 CFR 1.53(d). All information disclosure statements
filed in the prior application that comply with the content requirements
of  37 CFR 1.98 but have not been considered in the prior application
will be considered by the examiner in a continued prosecution
application filed under  37 CFR 1.53(d).  No specific request that the
previously submitted information disclosure statement be considered in
the continued prosecution application is required.  However, for file
wrapper continuing (FWC) applications filed prior to December 1, 1997
under former  37 CFR 1.62, in order to ensure consideration of
information complying with the content requirements of  37 CFR 1.98
previously submitted in a parent application which has not been
considered in the parent application, applicant must either specifically
request that the previously submitted information be considered in the
FWC or resubmit the information complying with  37 CFR 1.97 and  37 CFR
1.98 in the FWC.  For continuing applications filed under  37 CFR
1.53(b), in order to ensure consideration of information previously
submitted in a parent application which has not been considered in the
parent application, applicant must resubmit the information complying
with  37 CFR 1.97 and  37 CFR 1.98 in the continuing application. It
would not be proper to make final a first Office action in the
continuing application if the information submitted is used in a new
ground of rejection.

B(4) 	Information Disclosure Statement Filed AfterPayment of Issue Fee

After the issue fee has been paid on an application, it is impractical
for the Office to attempt to consider newly submitted information.
Information disclosure statements filed after payment of the issue fee
in an application will not be considered but will merely be placed in
the application file.  See C below.  The application may be withdrawn
from issue at this point, however, pursuant to  37 CFR 1.313(b)(5) so
that the information can be considered in a continuing application. In
this situation, a continued prosecution application under  37 CFR
1.53(d) could be filed even though the issue fee had already been paid. 
All information disclosure statements filed in the prior application
that comply with the content requirements of  37 CFR 1.98 but have not
been considered in the prior application will be considered by the
examiner in a continued prosecution application filed under  37 CFR
1.53(d).  No specific request that the previously submitted information
disclosure statement be considered in the continued prosecution
application is required.  However, for file wrapper continuing (FWC)
applications filed prior to December 1, 1997 under former  37 CFR 1.62,
in order to ensure consideration of information complying with the
content requirements of  37 CFR 1.98 previously submitted in a parent
application which has not been considered in the parent application,
applicant must either specifically request that the previously submitted
information be considered in the FWC or resubmit the information
complying with  37 CFR 1.97 and  37 CFR 1.98 in the FWC.  For continuing
applications filed under  37 CFR 1.53(b), in order to ensure
consideration of information previously submitted in a parent
application which has not been considered in the parent application,
applicant must resubmit the information complying with  37 CFR 1.97 and 
37 CFR 1.98 in the continuing application.  Alternatively, for example,
a petition pursuant to  37 CFR 1.313(b)(3) could be filed if applicant
states that one or more claims are unpatentable. This statement that one
or more claims are unpatentable over the information must be
unequivocal.  A statement that a serious question as to patentability of
a claim has been raised, for example, would not be acceptable to
withdraw an application from issue under  37 CFR 1.313(b)(3). Form
paragraph 13.09 may be used.

13.09 Information Disclosure Statement, Issue Fee Paid

Applicant's information disclosure statement of   [1] was filed after
the issue fee was paid.  Information disclosure statements filed after
payment of the issue fee will not be considered, but will be placed in
the file.  However, the application may be withdrawn from issue in order
to file a continuing application under  37 CFR 1.53(b) or 1.53(d) upon
the grant of a petition filed under the provisions of  37 CFR
1.313(b)(5).  Alternatively, the other provisions of  37 CFR 1.313 may
apply, e.g., a petition to withdraw the application from issue under the
provisions of  37 CFR 1.313(b)(3) may be filed together with an
unequivocal statement by the applicant that one or more claims are
unpatentable over the information contained in the statement.  The
information disclosure statement would then be considered upon
withdrawal of the application from issue under  37 CFR 1.313(b)(3).

Examiner Note:

1. For information disclosure (Prior Art) statements submitted after the
issue fee has been paid, use this paragraph with form PTOL-90 or
PTO-90C.

2. In bracket 1, insert the filing date of the IDS.

If an application has been withdrawn from issue under one of the
provisions of  37 CFR 1.313(b)(1)-(4), it will be treated as though no
notice of allowance had been mailed and the issue fee had not yet been
paid with regard to the time for filing information disclosure
statements. Petitions under  37 CFR 1.313(b) should be directed to the
Office of Petitions in the Office of the Deputy Assistant Commissioner
for Patent Policy and Projects.

B(5)	Extensions of Time (37 CFR 1.97(f))

No extensions of time for filing an information disclosure statement are
permitted under  37 CFR 1.136(a) or (b). If a bona fide attempt is made
to comply with the content requirements of  37 CFR 1.98, but part of the
required content is inadvertently omitted, additional time may be given
to enable full compliance.

C. Examiner Handling of Information Disclosure Statements

Information disclosure statements will be reviewed for compliance with
the requirements of  37 CFR 1.97 and  37 CFR 1.98 as discussed in A and
B above. Applicant will be notified of compliance and noncompliance with
the rules as discussed below.

C(1)	Noncomplying Statements

Pursuant to  37 CFR 1.97(i), submitted information, filed before the
grant of a patent, which does not comply with  37 CFR 1.97 and  37 CFR
1.98 will be placed in the file, but will not be considered by the
Office. Information submitted after the grant of a patent must comply
with  37 CFR 1.501.

If an information disclosure statement does not comply with the
requirements based on the time of filing the statement as discussed in B
above, including the requirements for fees and/or statement under  37
CFR 1.97(e), the statement will be placed in the application file, but
none of the information will be considered by the examiner. The examiner
may use Form Paragraph 6.49 which is reproduced below to inform
applicant that the information has not been considered. Applicant may
then file a new information disclosure statement or correct the
deficiency in the previously filed statement, but the date that the new
statement or correction is filed will be the date of the statement for
purposes of determining compliance with the requirements based on the
time of filing the statement (37 CFR 1.97).

The examiner should write "not considered" on an information disclosure
statement where none of the information listed complies with the
requirements, e.g., no copies of listed items submitted.  If none of the
information listed on a PTO-1449 or PTO/SB/08A and 08B form is
considered, a diagonal line should also be drawn in pencil across the
form and the form placed on the right side of the application file to
instruct the printer not to list the information on the face of the
patent if the application goes to issue.  The paper containing the
disclosure statement or list will be placed in the record in the
application file. The examiner will inform applicant that the
information has not been considered and the reasons why by using form
paragraphs 6.49 through 6.49.09. If the improper citation appears as
part of another paper, e.g., an amendment, which may be properly entered
and considered, the portion of the paper which is proper for
consideration will be considered.

---SECTION---6.49 Information Disclosure Statement Not Considered

The information disclosure statement filed   [1] fails to comply with
the provisions of  37 CFR 1.97, 1.98 and MPEP Section   609 because  
[2].  It has been placed in the application file, but the information
referred to therein has not been considered as to the merits.  Applicant
is advised that the date of any resubmission of any item of information
contained in this information disclosure statement or the submission of
any missing element(s) will be the date of submission for purposes of
determining compliance with the requirements based on the time of filing
the statement, including all requirements for statements under  37 CFR
1.97(e).  See MPEP Section  609 &para; C(1).

Examiner Note:

See MPEP Section  609 for situations where the use of this form
paragraph would be appropriate.

---SECTION---6.49.01 Information Disclosure Statement Not Considered,
After First Action, Before Final or Allowance, No Statement

The information disclosure statement filed [1] fails to comply with  37
CFR 1.97(c) because it lacks a statement as specified in  37 CFR
1.97(e).  It has been placed in the application file, but the
information referred to therein has not been considered.

---SECTION---6.49.02 Information Disclosure Statement Not Considered,
After First Action, Before Final or Allowance, No Fee

The information disclosure statement filed [1] fails to comply with  37
CFR 1.97(c) because it lacks the fee set forth in  37 CFR 1.17(p).  It
has been placed in the application file, but the information referred to
therein has not been considered.

---SECTION---6.49.03 Information Disclosure Statement Not Considered,
After Final or Allowance, Issue Fee Not Paid No Statement

The information disclosure statement filed [1] fails to comply with  37
CFR 1.97(d) because it lacks a statement as specified in  37 CFR
1.97(e).  It has been placed in the application file, but the
information referred to therein has not been considered.

---SECTION---6.49.04 Information Disclosure Statement Not Considered,
After Final or Allowance, Issue Fee Not Paid No Petition Requesting
Consideration

The information disclosure statement filed [1] fails to comply with  37
CFR 1.97(d) because it lacks a petition requesting consideration of the
information disclosure statement.  It has been placed in the application
file, but the information referred to therein has not been considered.

---SECTION---6.49.05 Information Disclosure Statement Not Considered,
After Final or Allowance, Issue Fee Not Paid No Petition Fee

The information disclosure statement filed [1] fails to comply with  37
CFR 1.97(d) because it lacks the petition fee set forth in  37 CFR
1.17(i).  It has been placed in the application file, but the
information referred to therein has not been considered.

---SECTION---6.49.06 Information Disclosure Statement Not Considered,
References Listed in Specification

The listing of references in the specification is not a proper
information disclosure statement. 37 CFR 1.98(b) requires a list of all
patents, publications, or other information submitted for consideration
by the Office, and MPEP Section  609 A(1) states, "the list may not be
incorporated into the specification but must be submitted in a separate
paper."  Therefore, unless the references have been cited by the
examiner on form PTO-892, they have not been considered.

---SECTION---6.49.07 Information Disclosure Statement Not Considered, No
Copy of References

The information disclosure statement filed [1] fails to comply with  37
CFR 1.98(a)(2), which requires a legible copy of each U.S. and foreign
patent; each publication or that portion which caused it to be listed;
and all other information or that portion which caused it to be listed. 
It has been placed in the application file, but the information referred
to therein has not been considered.

---SECTION---6.49.08 Information Disclosure Statement Not Considered, No
List of References

The information disclosure statement filed [1] fails to comply with  37
CFR 1.98(a)(1), which requires a list of all patents, publications, or
other information submitted for consideration by the Office.  It has
been placed in the application file, but the information referred to
therein has not been considered.

---SECTION---6.49.09 Information Disclosure Statement Not Considered, No
Explanation of Relevance

The information disclosure statement filed [1] fails to comply with  37
CFR 1.98(a)(3) because it does not include a concise explanation of the
relevance, as it is presently understood by the individual designated in 
37 CFR 1.56(c) most knowledgeable about the content of the information,
of each patent listed that is not in the English language.  It has been
placed in the application file, but the information referred to therein
has not been considered.

If an information disclosure statement complies with the requirements
based on the time of filing the statement as discussed in B above,
including the requirements for fees and/or statement under  37 CFR
1.97(e), but part of the content requirements as discussed in A above
has been inadvertently omitted, the examiner may set a 1-month time
period to correct the omission. Form paragraph 6.51 may be used for this
purpose.

---SECTION---6.51 Time for Completing Information Disclosure Statement

The information disclosure statement filed on [1] does not fully comply
with the requirements of  37 CFR 1.98 because:  [2].  Since the
submission appears to be bona fide, applicant is given ONE (1) MONTH
from the date of this notice to supply the above-mentioned omissions or
corrections in the information disclosure statement.  NO EXTENSION OF
THIS TIME LIMIT MAY BE GRANTED UNDER EITHER  37 CFR 1.136(a) OR (b). 
Failure to timely comply with this notice will result in the
above-mentioned information disclosure statement being placed in the
application file with the non-complying information not being
considered.  See  37 CFR 1.97(i).

Examiner Note:

This practice does not apply where there has been a deliberate omission
of some necessary part of an Information Disclosure Statement or where
the requirements based on the time of filing the statement, as set forth
in  37 CFR 1.97, have not been complied with.

If a statement fails to comply with requirements as discussed in this
section for an item of information, that item of information in the
statement will not be considered and a line should be drawn through the
citation to show that it has not been considered.  However, other items
of information that do comply with all the requirements will be
considered by the examiner.

If information is listed in the specification rather than in a separate
paper, or if the other content requirements as discussed in A above are
not complied with, the information need not be considered by the
examiner, in which case the examiner should notify applicant in the next
Office action that the information has not been considered. It should be
noted, however, that no copy of a U.S. patent application is required to
be submitted.  See A(2) above. Where a U.S. patent application is
properly cited on a separate list, the examiner should obtain access to
that file within the Office.

C (2)	Complying Statements

The information contained in information disclosure statements which
comply with both the content requirements as discussed in A above and
the requirements based on the time of filing the statement as discussed
in B above will be considered by the examiner.

Applicants, patent owners, reexamination requesters, protestors, and
others are encouraged to use form PTO-1449, "Information Disclosure
Citation," or PTO/SB/08A and 08B "Information Disclosure Statement,"
when preparing an information disclosure statement.  A copy of each form
is reproduced in this section to indicate how the form should be
completed.  The form will enable persons to comply with the requirement
to list each item of information being submitted and to provide the
Office with a uniform listing of citations and with a ready way to
indicate that information has been considered. Examiners must consider
all citations submitted in conformance with the rules and this section,
and their initials when placed adjacent to the considered citations on
the list or in the boxes provided on a form PTO-1449 or PTO/SB/08A and
08B provides a clear record of which citations have been considered by
the Office. The examiner must also fill in his or her name and the date
the information was considered in blocks at the bottom of the PTO-1449
or PTO/SB/08A and 08B form. If the citations are submitted on a list
other than on a form PTO-1449 or PTO/SB/08A and 08B, the examiner may
write "all considered" and his or her initials to indicate that all
citations have been considered. If any of the citations are considered,
a copy of the submitted list, form PTO-1449, or PTO/SB/08A and 08B, as
reviewed by the examiner, will be returned to the applicant with the
next communication. Those citations not considered by the examiner will
have a line drawn through the citation and any citations considered will
have the examiner's initials adjacent thereto. The original copy of the
list,  form PTO-1449, or PTO/SB/08A and 08B will be entered into the
application file. The copy returned to applicant will serve both as
acknowledgement of receipt of the information disclosure statement and
as an indication as to which references were considered by the examiner.
Forms PTO-326 and PTOL-37 include a box to indicate the attachment of
form PTO-1449 or PTO/SB/08A and 08B .

Information which complies with requirements as discussed in this
section but which is in a non-English language will be considered in
view of the concise explanation submitted (A(3) above) and insofar as it
is understood on its face, e.g., drawings, chemical formulas, in the
same manner that non-English language information in Office search files
is considered by examiners in conducting searches. The examiner need not
have the information translated unless it appears to be necessary to do
so. The examiner will indicate that the non-English language information
has been considered in the same manner as consideration is indicated for
information submitted in English. The examiner should not require that a
translation be filed by applicant. The examiner should not make any
comment such as that the non-English language information has only been
considered to the extent understood, since this fact is inherent.

Since information is required to be submitted in a separate paper
listing the citations rather than in the specification, there is no need
to mark "All checked"  or  "Checked" in the margin of a specification
containing citations.

If a statement fails to comply with requirements as discussed in this
section for an item of information, a line should be drawn through the
citation to show that it has not been considered. The other items of
information listed that do comply with the rules and this section will
be considered by the examiner and will be appropriately initialed.

C (3)	Documents Submitted As Part of Applicant's Reply to Office Action

Occasionally, documents are submitted and relied on by an applicant when
replying to an Office action. These documents may be relied on by an
applicant, for example, to show that an element recited in the claim is
operative or that a term used in the claim has a recognized meaning in
the art.  Documents may be in any form but are typically in the form of
an affidavit, declaration, patent, or printed publication.

To the extent that a document is submitted as evidence directed to an
issue of patentability raised in an Office action, and the evidence is
timely presented, applicant need not satisfy the requirements of  37 CFR
1.97 and  37 CFR 1.98 in order to have the examiner consider the
information contained in the document relied on by applicant. In other
words, compliance with the information disclosure rules is not a
threshold requirement to have information considered when submitted by
applicant to support an argument being made in a reply to an Office
action.

At the same time, the document supplied and relied on by applicant as
evidence need not be processed as an item of information that was cited
in an information disclosure statement. The record should reflect
whether the evidence was considered, but listing on a form (e.g.,
PTO-892, PTO-1449, or PTO/SB/08A and 08B) and appropriate marking of the
form by the examiner is not required.

For example, if applicant submits and relies on three patents as
evidence in reply to the first Office action and also lists those
patents on a PTO-1449 or PTO/SB/08A and 08B along with two journal
articles, but does not file a statement under  37 CFR 1.97(e) or the fee
set forth in  37 CFR 1.17(p), it would be appropriate for the examiner
to indicate that the teachings relied on by applicant in the three
patents have been considered,  but to line through the citation of all
five documents on the PTO-1449 or PTO/SB/08A and 08B and to inform
applicant that the information disclosure statement did not comply with 
37 CFR 1.97(c).

D. Information Printed on Patent

A citation listed on form PTO-1449 or PTO/SB/08A and 08B and considered
by the examiner in accordance with this section will be printed on the
patent. A citation listed in a separate paper, equivalent to but not on
form PTO-1449 or PTO/SB/08A and 08B, and considered by the examiner in
accordance with this section will be printed on the patent if the list
is on a separate sheet which is clearly identified as an information
disclosure statement and the list lends itself to easy capture of the
necessary information by the Office printing contractor, i.e., each item
of information is listed on a single line, the lines are at least
double-spaced from each other, the information is uniform in format for
each listed item, and the list includes a column for the examiner's
initials to indicate that the information was considered. If a U.S.
patent application number is listed on a PTO-1449 or PTO/SB/08A and 08B
form or its equivalent and the examiner considers the information and
initials the form, the application number will be printed on the patent.

Applicants may wish to list U.S. patent application numbers on other
than a form PTO-1449 or PTO/SB/08A and 08B format to avoid the
application numbers of pending applications being published on the
patent. If a citation is not printed on the patent but has been
considered by the examiner in accordance with this section, the patented
file will reflect that fact as noted in C(2) above.

Form PTO-1449. Information Disclosure Citation in an
Application[GRAPHIC]

Form PTO/SB/08A. Information Disclosure Statement by Applicant[GRAPHIC]

Form PTO/SB/08B. Information Disclosure Statement by Applicant[GRAPHIC]