MPEP § 608 — MPEP § 608
Current through: 2022-07-01

608-Disclosure 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 0600 

 Section 608 
 

 
 
 
 
 
 608 Disclosure [R-11.2013]

 To obtain a valid patent, a patent application as filed must contain a full
 and clear disclosure of the invention in the manner prescribed by 35 U.S.C.
 112(a) . The requirement for an adequate disclosure ensures that the
 public receives something in return for the exclusionary rights that are granted to the
 inventor by a patent. All amendments and claims must find descriptive basis in the original
 disclosure. No new matter may be introduced into an application after its filing date.
 Applicant may rely for disclosure upon the specification with original claims and drawings,
 as filed. See also 37 CFR
 1.121(f) and MPEP § 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 37 CFR
 1.3 which proscribes the presentation of papers which are lacking in
 decorum and courtesy. 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.
 

 An application should not be classified for publication under
 35 U.S.C.
 122(b) and an 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 § 1504 et seq. 

 See MPEP § 714.25 for information pertaining
 to amendments and other papers presented in violation of 37 CFR 1.3 .
 

 
 608.01 Specification [R-01.2024]

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

 The Director may require papers filed in the Patent and Trademark
 Office to be printed, typewritten, or on an electronic medium.
 

 

 
 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 §
 1.84(s) . The content of the notice must be limited to only
 those elements provided for by law. For example, “©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.
 

 
 

 (f) The specification must commence on a separate sheet. Each sheet
 including part of the specification may not include other parts of the
 application or other information. The claim(s), abstract, and "Sequence
 Listing" (if required or submitted under § 1.821(c) ) should not be
 included on a sheet including any other part of the application. 
 

 (g)
 
 (1) The specification may disclose or be amended to disclose
 the names of the parties to a joint research agreement as defined in
 § 1.9(e) .
 

 (2) An amendment under paragraph (g)(1) of this section must
 be accompanied by the processing fee set forth §
 1.17(i) if not filed within one of the following
 time periods: 
 
 (i) Within three months of the filing date of a
 national application;
 

 (ii) Within three months of the date of entry of the
 national stage as set forth in § 1.491 in an
 international application; 
 

 (iii) Before the mailing of a first Office action on the
 merits; or
 

 (iv) Before the mailing of a first Office action after
 the filing of a request for continued examination under
 § 1.114 .
 

 
 

 (3) If an amendment under paragraph (g)(1) of this section is
 filed after the date the issue fee is paid, the patent as issued may not
 necessarily include the names of the parties to the joint research
 agreement. If the patent as issued does not include the names of the
 parties to the joint research agreement, the patent must be corrected to
 include the names of the parties to the joint research agreement by a
 certificate of correction under 35 U.S.C. 255 and
 §
 1.323 for the amendment to be effective.
 

 
 

 
 

 The specification is a written description of the invention and of the
 manner and process of making and using the same. The specification must be in such full,
 clear, concise, and exact terms as to enable any person skilled in the art or science to
 which the invention pertains to make and use the same. See 35 U.S.C. 112 and
 37 CFR
 1.71 . 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 § 702.01 . The written description
 must not include information that is not related to applicant’s invention, e.g.,
 prospective disclaimers regarding comments made by examiners. If such information is
 included in the written description, the examiner will object to the specification and
 require applicant to take appropriate action, e.g., cancel the information. The
 specification must commence on a separate sheet. Each sheet including part of the
 specification may not include other parts of the application or other information. The
 claim(s), abstract and "Sequence Listing" (if required or submitted under
 37 CFR
 1.821(c) on physical sheets of paper ( 37 CFR
 1.821(c)(3) ) or as a PDF image file via the USPTO patent
 electronic filing system ( 37 CFR 1.821(c)(2) ) should not be
 included on a sheet including any other part of the application ( 37 CFR 1.71(f) ).
 That is, the claim(s), abstract and "Sequence Listing" (if required or submitted under
 37 CFR
 1.821(c) on physical sheets of paper ( 37 CFR
 1.821(c)(3) ) or as a PDF image file via the USPTO patent
 electronic filing system ( 37 CFR 1.821(c)(2) ) should each
 begin on a new page since each of these sections (specification, abstract, claims,
 "Sequence Listing") of the disclosure are separately indexed in the Image File Wrapper
 (IFW). There should be no overlap on a single page of more than one section of the
 disclosure.
 

 The specification does not require a date.

 Certain cross references 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. U.S. applications identified only by
 the attorney’s docket number may be amended to properly identify the earlier
 application(s). See 37 CFR 1.78 .
 

 As the specification is never returned to applicant under any
 circumstances, the applicant should retain an accurate copy thereof. In amending the
 specification, the attorney or the applicant must comply with 37 CFR 1.121 (see
 MPEP §
 714 ).
 

 Examiners should not object to the specification and/or claims in patent
 applications merely because applicants are using British English spellings (e.g.,
 colour) rather than American English spellings. It is not 
 necessary to replace the British English spellings with the equivalent American English
 spellings in the U.S. patent applications. Note that 37 CFR 1.52(b)(1)(ii) only requires
 the application to be in the English language. There is no additional requirement that
 the English must be American English.
 

 Form paragraph 7.29 may be used where the disclosure
 contains minor 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 (see the requirement of 37 CFR 1.71(a) for
 “full, clear, concise, and exact terms”), numbering of elements (see 37 CFR 1.74 ), etc.,
 which should be corrected. See form paragraphs 6.28 to 6.31 for specific informalities.
 

 

 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
 difficult. New application papers with lines 1 1/2 or double spaced (see 37 CFR 1.52(b)(2) ) on
 good quality paper are required. 
 

 

 ¶ 6.30 Numerous Errors in Specification

 35 U.S.C.
 112(a) or 35 U.S.C. 112 (pre-AIA), 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(a) or 35 U.S.C. 112 (pre-AIA) . Examples of
 some unclear, inexact or verbose terms used in the specification are:
 [1] .
 

 

 ¶ 6.31 Lengthy Specification

 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.
 
 

 
 I. PAPER REQUIREMENTS 
 37 CFR 1.52 Language, paper, writing, margins, read-only optical disc
 specifications. 

 
 (a) Papers that are to become a part of the permanent United States
 Patent and Trademark Office records in the file of a patent
 application, or a reexamination or supplemental examination
 proceeding. 
 (1) All papers, other than drawings, that are submitted on
 paper or by facsimile transmission, and are to become a part of the
 permanent United States Patent and Trademark Office records in the
 file of a patent application or reexamination or supplemental
 examination proceeding, must be on sheets of paper that are the same
 size, not permanently bound together, and: 
 
 (i) Flexible, strong, smooth, non-shiny, durable,
 and white;
 

 (ii) 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), with each sheet including 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);
 

 (iii) Written on only one side in portrait
 orientation;
 

 (iv) Plainly and legibly written either by a
 typewriter or machine printer in permanent dark ink or its
 equivalent; and
 

 (v) 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 capture by use of digital
 imaging and optical character recognition.
 

 
 

 (2) All papers that are submitted on paper or by facsimile
 transmission and are to become a part of the permanent records of the
 United States Patent and Trademark Office should have no holes in the
 sheets as submitted. 
 

 (3) The provisions of this paragraph and paragraph (b) of
 this section do not apply to the pre-printed information on paper
 forms provided by the Office, or to the copy of the patent submitted
 on paper in double column format as the specification in a reissue
 application or request for reexamination.
 

 (4) See §
 1.58 for chemical and mathematical formulae and
 tables, and § 1.84 for
 drawings. 
 

 (5) Papers that are submitted electronically to the Office
 must be formatted and transmitted in compliance with the USPTO patent
 electronic filing system requirements.
 

 
 

 (b) The application (specification, including the claims, drawings, and
 the inventor’s oath or declaration) or reexamination or supplemental
 examination proceeding, any amendments to the application or
 reexamination proceeding, or any corrections to the application, or
 reexamination or supplemental examination proceeding. 
 (1) The application or proceeding and any amendments or
 corrections to the application (including any translation submitted
 pursuant to paragraph (d) of this section) or proceeding, except as
 provided for in § 1.69 and
 paragraph (d) of this section, must:
 
 (i) Comply with the requirements of paragraph (a) of
 this section; and
 

 (ii) Be in the English language 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.
 

 
 

 (2) The specification (including the abstract and claims)
 for other than reissue applications and reexamination or supplemental
 examination proceedings, and any amendments for applications
 (including reissue applications) and reexamination proceedings to the
 specification, except as provided for in §§
 1.821 through 1.825 , must have:
 
 (i) Lines that are 1 1/2 or double spaced;

 (ii) Text written in a nonscript type font
 ( e.g., Arial, Times Roman, or Courier,
 preferably a font size of 12) lettering style having capital
 letters which should be at least 0.3175 cm. (0.125 inch) high,
 but may be no smaller than 0.21 cm. (0.08 inch) high
 ( e.g., a font size of 6); and 
 

 (iii) Only a single column of text.

 
 

 (3) The claim or claims must commence on a separate
 physical sheet or electronic page ( § 1.75(h) ).
 

 (4) The abstract must commence on a separate physical
 sheet or electronic page or be submitted as the first page of the
 patent in a reissue application or reexamination or supplemental
 examination proceeding ( § 1.72(b) ). 
 

 (5) Other than in a reissue application or reexamination
 or supplemental examination proceeding, 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. 
 

 (6) Other than in a reissue application or reexamination
 or supplemental examination proceeding, the paragraphs of the
 specification, other than in the claims or abstract, may be numbered
 at the time the application is filed, and should be individually and
 consecutively numbered using Arabic numerals, so as to unambiguously
 identify each paragraph. The number should consist of at least four
 numerals enclosed in square brackets, including leading zeros
 ( e.g., [0001]). The numbers and enclosing
 brackets should appear to the right of the left margin as the first
 item in each paragraph, before the first word of the paragraph, and
 should be highlighted in bold. A gap, equivalent to approximately four
 spaces, should follow the number. Nontext elements
 ( e.g., tables, mathematical or chemical
 formulae, chemical structures, and sequence data) are considered part
 of the numbered paragraph around or above the elements, and should not
 be independently numbered. If a nontext element extends to the left
 margin, it should not be numbered as a separate and independent
 paragraph. A list is also treated as part of the paragraph around or
 above the list, and should not be independently numbered. Paragraph or
 section headers (titles), whether abutting the left margin or centered
 on the page, are not considered paragraphs and should not be numbered.
 
 

 
 

 (c) Interlineation, erasure, cancellation, or
 other alteration of the application papers may be made before or after the
 signing of the inventor's oath or declaration referring to those application
 papers, provided that the statements in the inventor's oath or declaration
 pursuant to § 1.63 remain applicable
 to those application papers. A substitute specification ( §
 1.125 ) may be required if the application papers do
 not comply with paragraphs (a) and (b) of this section.
 

 (d) A nonprovisional or provisional application under
 35 U.S.C. 111 may be in a language other than
 English.
 
 (1) Nonprovisional application. If a nonprovisional
 application under 35 U.S.C. 111(a) 
 is filed in a language other than English, an English language
 translation of the non-English language application, a statement that
 the translation is accurate, and the processing fee set forth in
 § 1.17(i) are
 required. If these items are not filed with the application, applicant
 will be notified and given a period of time within which they must be
 filed in order to avoid abandonment.
 

 (2) Provisional application. If a provisional
 application under 35 U.S.C. 111(b) 
 is filed in a language other than English, an English language
 translation of the non-English language provisional application will
 not be required in the provisional application. See §
 1.78(a) for the requirements for claiming the
 benefit of such provisional application in a nonprovisional
 application.
 

 
 

 (e) Electronic documents submitted on a read-only optical disc that are
 to become part of the permanent United States Patent and Trademark Office
 records in the file of a patent application, reexamination, or
 supplemental examination proceeding. 
 (1) The following documents may be submitted to the
 Office on a read-only optical disc in compliance with this paragraph
 (e):
 
 (i) A “Computer Program Listing Appendix”
 ( see § 
 1.96(c) );
 

 (ii) A “Sequence Listing” (submitted under §
 1.821(c) in
 compliance with §§ 1.822 through 1.824 ) or a “Sequence Listing XML”
 (submitted under § 1.831(a) in compliance with §§
 1.832 
 through 1.834 );
 or
 

 (iii) “Large Tables” ( see §
 
 1.58(c) ).
 

 
 

 (2) Read-only optical disc as used in this part means a
 finalized disc, in conformance with International Organization for
 Standardization (ISO) 9660, on which the data is recorded so it is
 permanent and cannot be changed or erased, and is one of:
 
 (i) Compact Disc-Read-Only Memory
 (CD–ROM) or a Compact Disc-Recordable (CD–R); or 
 

 (ii) Digital Video Disc-Recordable
 (DVD–R or DVD+R);
 

 
 

 (3) Each read-only optical disc must conform
 to the following requirements:
 
 (i) Computer compatibility: PC or
 Mac ® ; 
 

 (ii) Operating system compatibility:
 MS–DOS ® ,
 MS–Windows ® ,
 MacOS ® , or
 Unix ® /Linux ® ;
 

 (iii) The contents of each read-only
 optical disc must be in American Standard Code for Information
 Interchange (ASCII) plain text and if compressed, must be
 compressed in accordance with § 
 1.58 for “Large Tables,” with §
 1.96 for a
 “Computer Program Listing Appendix,” or § 1.824 for a “Sequence Listing” or
 Computer Readable Form (CRF) of the “Sequence Listing,” as
 applicable; and
 

 (iv) The contents of each read-only
 optical disc for a “Sequence Listing XML” must be in eXtensible
 Markup Language (XML) file format, and if compressed, must be
 compressed in accordance with § 1.834 .
 

 
 

 (4) Each read-only optical disc must be enclosed in a
 hard case within an unsealed, padded, and protective mailing envelope,
 and must be accompanied by a transmittal letter in accordance with
 paragraph (a) of this section, including the following
 information:
 
 (i) First-named inventor (if known);
 
 

 (ii) Title of the invention; 

 (iii) Attorney docket or file reference
 number (if applicable); 
 

 (iv) Application number and filing date
 (if known); 
 

 (v) The operating system
 (MS–DOS ® ,
 MS-Windows ® , Mac
 OS ® , or
 Unix ® /
 Linux ® ) used to produce the disc;
 and 
 

 (vi) The file(s) contained on the
 read-only optical disc, including the name of the file, the size
 of the file in bytes, and the date of creation.
 

 
 

 (5) Each read-only optical disc must have a label
 permanently affixed thereto on which the following information has
 been hand-printed or typed: 
 
 (i) First-named inventor (if known);
 
 

 (ii) Title of the invention; 

 (iii) Attorney docket or file reference
 number (if applicable); 
 

 (iv) Application number and filing date
 (if known); 
 

 (v) Date on which the data were
 recorded on the read-only optical disc; and 
 

 (vi) Disc order
 ( e.g., “1 of X”), if multiple read-only
 optical discs are submitted.
 

 
 

 (6) Read-only optical discs will not be returned to the
 applicant and may not be retained as part of the patent application
 file.
 

 (7) Any amendment to the information on a read-only
 optical disc must be by way of a replacement read-only optical disc,
 in compliance with § 1.58(g) for “Large
 Tables,” § 1.96(c)(5) for a
 “Computer Program Listing Appendix,” § 1.825(b) for a “Sequence Listing” or CRF of a
 “Sequence Listing,” and § 1.835(b) for a “Sequence Listing XML.”
 

 (8) The specification must contain an
 incorporation by reference of the material on each read-only optical
 disc in a separate paragraph (§ 1.77(b)(5) ),
 identifying the name of each file, their date of creation, and their
 size in bytes, except for an international application in the
 international stage. The Office may require the applicant to amend the
 specification to include the material incorporated by reference. 
 

 (9) If a file is unreadable, it will be
 treated as not having been submitted, and a notice will be issued to
 require a compliant submission.
 

 
 

 (f) Determining application size fees for
 applications containing electronic documents submitted on a read-only
 optical disc or via the USPTO patent electronic filing
 system— 
 (1) Submission on read-only optical
 discs. The application size fee required by §
 1.16(s) or § 1.492(j) , for an application component
 submitted in part on a read-only optical disc in compliance with
 paragraph (e) of this section, shall be determined such that each
 three kilobytes of content submitted on a read-only optical disc shall
 be counted as a sheet of paper. Excluded from this determination is
 any ASCII plain text file or any XML file (as applicable) submitted on
 a read-only optical disc under paragraph (e) of this section
 containing:
 
 (i) Any “Sequence Listing” or CRF of a
 “Sequence Listing” in compliance with § 1.821(c) or (e) , or any “Sequence Listing XML” in
 compliance with § 1.831(a) ; or
 

 (ii) Any “Computer Program Listing
 Appendix” in compliance with § 1.96(c) .
 

 
 

 (2) Submission via the USPTO patent electronic filing
 system. The application size fee required by §
 1.16(s) or § 1.492(j) , for an application submitted in whole
 or in part via the USPTO patent electronic filing system, shall be
 determined such that the paper size equivalent will be considered to
 be 75% of the number of sheets of paper present in the specification
 and drawings for the application when entered into the Office records
 after being rendered by the USPTO patent electronic filing system.
 Excluded from this determination is any ASCII plain text file or any
 XML file (as applicable) submitted via the USPTO patent electronic
 filing system containing: 
 
 (i) Any “Sequence Listing” or CRF of a
 “Sequence Listing” in compliance with § 1.821(c)(1) or (e) , or any “Sequence Listing XML” in
 compliance with § 1.831(a) ; or 
 

 (ii) Any “Computer Program Listing
 Appendix” in compliance with § 1.96(c) .
 

 
 

 (3) Oversized submission. 
 Any submission of a “Sequence Listing” in electronic form or a
 “Sequence Listing XML” of 300 MB–800 MB filed in an application under
 35 U.S.C. 111 or
 371 will be subject to the fee set forth in §
 1.21(o)(1) . Any
 submission of a “Sequence Listing” in electronic form or a “Sequence
 Listing XML” that exceeds 800 MB filed in an application under
 35 U.S.C. 111 or
 371 will be subject to the fee set forth in §
 1.21(o)(2) .
 

 
 

 
 

 
 37 CFR 1.58 Chemical and mathematical formulas and tables. 

 
 (a) The specification, including the claims, may contain
 chemical and mathematical formulae, but shall not contain drawings or flow
 diagrams. The description portion of the specification may contain tables,
 but the same tables should not be included in both the drawings and
 description portion of the specification. Claims may contain tables either
 if necessary to conform to 35 U.S.C. 112 or if
 otherwise found to be desirable.
 

 (b) Chemical and mathematical formulas and tables must be
 presented in compliance with § 1.52(a) and (b) , except
 that chemical and mathematical formulas or tables may be placed in a
 landscape orientation if they cannot be presented satisfactorily in a
 portrait orientation. Typewritten characters used in such formulas and
 tables must be chosen from a block (nonscript) type font or lettering style
 having capital letters that should be at least 0.422 cm (0.166 inches) high
 ( e.g., preferably Arial, Times Roman, or Courier, with
 a font size of 12 points), but may be no smaller than 0.21 cm (0.08 inches)
 high ( e.g., a font size of 6 points). A space at least
 0.64 cm (0.25 inches) high should be provided between complex formulas and
 tables and the text. Chemical and mathematical formulas must be configured
 to maintain the proper positioning of their characters when displayed in
 order to preserve their intended meaning. Tables should have the lines and
 columns of data closely spaced to conserve space, consistent with a high
 degree of legibility.
 

 (c) The following “Large Tables” may be submitted
 in electronic form in ASCII plain text via the USPTO patent electronic
 filing system or on a read-only optical disc, in compliance with §
 1.52(e) , excluding an international application
 during the international stage: 
 
 (1) Any individual table that is more than 50
 pages in length; or 
 

 (2) Multiple tables, if the total number of
 pages of all the tables in an application exceeds 100 pages in length,
 where a table page is a page printed on paper, in conformance with
 paragraph (b) of this section. 
 

 
 

 (d) “Large Tables” submitted in electronic form in
 ASCII plain text must conform to the following requirements: 
 
 (1) Must maintain the spatial relationships
 ( e.g., alignment of columns and rows) of the
 table elements when displayed to visually preserve the relational
 information they convey; 
 

 (2) Must have the following compatibilities: 
 
 (i) Computer compatibility: PC or
 Mac ® ;
 

 (ii) Operating system compatibility:
 MS–DOS ® ,
 MS-Windows ® , Mac
 OS ® , or
 Unix ® /Linux ® .
 

 
 

 (3) Must be in ASCII plain text, where: 
 
 (i) All printable characters (including
 the space character) are permitted; 
 

 (ii) No nonprintable (ASCII control)
 characters are permitted, except ASCII Carriage Return plus
 ASCII Line Feed (CRLF) or Line Feed (LF) as line terminators.
 
 

 
 

 (4) Must be named as *.txt, where “*” is one
 character or a combination of characters limited to upper- or
 lowercase letters, numbers, hyphens, and underscores and does not
 exceed 60 characters in total, excluding the extension. No spaces or
 other types of characters are permitted in the file name; and 
 

 (5) Must be incorporated by reference in a
 separate paragraph of the specification, in accordance with §
 1.77(b)(5) . 
 

 
 

 (e) “Large Tables” submitted via the USPTO patent
 electronic filing system must not exceed 25 MB, and file compression is not
 permitted. 
 

 (f) “Large Tables” submitted in compliance with §
 1.52(e) via read-only optical disc must meet the
 following requirements: 
 
 (1) The ASCII plain text file may be
 compressed using WinZip ® , 7-Zip, or
 Unix ® /Linux ® 
 Zip; 
 

 (2) A compressed file must not be
 self-extracting; and
 

 (3) A compressed ASCII plain text file that
 does not fit on a single read-only optical disc may be split into
 multiple file parts in accordance with the target read-only optical
 disc size and labeled in compliance with § 1.52(e)(5)(vi) .
 

 
 

 (g) Any amendments to “Large Tables” in electronic
 form in ASCII plain text format must include: 
 
 (1) A replacement ASCII plain text file, in
 accordance with the requirements of paragraphs (d) through (f) of this
 section, submitted via the USPTO patent electronic filing system or on
 a read-only optical disc, in compliance with § 1.52(e) , labeled as “REPLACEMENT MM/DD/YYYY”
 (with the month, day, and year of creation indicated); 
 

 (2) A request that the amendment be made by
 incorporation by reference of the material in the replacement ASCII
 plain text file, in a separate paragraph of the specification
 (replacing any prior such paragraph, as applicable) identifying the
 name of the file, the date of creation, and the size of the file in
 bytes ( see § 1.77(b)(5) );
 

 (3) A statement that identifies the location
 of all deletions, replacements, or additions to the ASCII plain text
 file; and 
 

 (4) A statement that the replacement ASCII
 plain text file contains no new matter. 
 

 
 

 (h) The specification of an application with “Large
 Tables” as an ASCII plain text file, present on the application filing date,
 without an incorporation by reference of the material contained in the ASCII
 plain text file, must be amended to contain a separate paragraph
 incorporating by reference the material contained in the ASCII plain text
 file, in accordance with § 1.77(b)(5) .
 

 (i) Any read-only optical disc for “Large Tables”
 must be submitted in duplicate. The read-only optical disc and duplicate
 copy must be labeled “Copy 1” and “Copy 2,” respectively. The transmittal
 letter that accompanies the read-only optical discs must include a statement
 that the two read-only optical discs are identical. In the event that the
 two read-only optical disc copies are not identical, the Office will use the
 read-only optical disc labeled “Copy 1” for further processing. 
 

 (j) Any amendment to the information on a read-only
 optical disc must be by way of a replacement read-only optical disc, in
 compliance with paragraph (g) of this section, where the replacement
 read-only optical disc and copy must be labeled “COPY 1 REPLACEMENT MM/
 DD/YYYY” (with the month, day, and year of creation indicated), and “COPY 2
 REPLACEMENT MM/DD/YYYY,” respectively.
 

 
 

 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. The text must be written in a
 nonscript type font (e.g., Arial, Times Roman, or Courier, preferably a font size of
 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125
 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size
 of 6) ( 37
 CFR1.52(b)(2)(ii) ). The text may not be written solely in
 capital letters.
 

 All application papers (specification, including claims, abstract,
 any drawings, 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
 specification must commence on a separate sheet. Each sheet including part of the
 specification may not include other parts of the application or other information.
 The claim(s), abstract and “Sequence Listing” (if required or submitted under
 37 CFR
 1.821(c) on physical sheets of paper ( 37 CFR
 1.821(c)(3) ) or as a PDF image file via the USPTO patent
 electronic filing system ( 37 CFR 1.821(c)(2) ) should not be
 included on a sheet including any other part of the application ( 37 CFR
 1.71(f) ). The claim or claims must commence on a separate sheet or
 electronic page and any sheet including a claim or portion of a claim may not contain
 any other parts of the application or other material ( 37 CFR
 1.75(h) ). The abstract must commence on a separate sheet and any
 sheet including an abstract or portion of an abstract may not contain any other parts
 of the application or other material ( 37 CFR 1.72(b) ). 
 

 All application papers that are submitted on paper or by facsimile
 transmission which are to become a part of the permanent record of the U.S. Patent
 and Trademark Office must be on sheets of paper which are the same size (for example,
 an amendment should not have two different sizes of paper, but the specification can
 have one size of paper and the drawings a different 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). See
 37 CFR
 1.52(a)(1) and 37 CFR 1.84(f) . Each sheet, other
 than the drawings, 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). No holes should be
 made in the sheets as submitted. 
 

 Application papers that are submitted electronically to
 the Office must be formatted and transmitted in compliance with the USPTO patent
 electronic filing system requirements. See 37 CFR 1.52(a)(5) . See also
 MPEP §
 502.05 and the Legal Framework for Patent Electronic System
 ( www.uspto.gov/PatentLegalFramework ) for details regarding
 correspondence transmitted to the Office using the USPTO patent electronic filing
 system.
 

 Applicants must make every effort to file patent applications, and
 papers that are to become a part of the permanent United States Patent and Trademark
 Office records in the file of a patent application or a reexamination proceeding, in
 a form that is clear and reproducible. If the papers are not of the required quality,
 substitute papers of suitable quality will be required. See 37 CFR 1.125 
 for filing rewritten papers constituting a substitute specification required by the
 Office. See also MPEP
 § 608.01(q) . All papers which are to become a part of the
 permanent records of the U.S. Patent and Trademark Office must be legibly written
 either by a typewriter or machine 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. 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)(1)(iv) . Since application papers are now maintained in
 an Image File Wrapper, the type of paper is unlikely to be an issue so long as the
 Office is able to scan and reproduce the papers that were filed.
 

 Where an application is filed with papers that do not comply with
 37 CFR
 1.52 , the Office of Patent Application Processing will mail a
 “Notice to File Corrected Application Papers” 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 does not affect the grant of a filing date, and original
 application papers that do not comply with 37 CFR 1.52 will be retained in
 the application file as the original disclosure of the invention. The USPTO will not
 return papers simply because they do not comply with 37 CFR
 1.52 .
 

 Legibility includes ability to be photocopied and scanned so that
 suitable reprints can be made and paper can 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 and if present in application papers, will likely
 result in a notification (e.g. Notice to File Corrected Application Papers) that the
 papers are not in compliance with 37 CFR 1.52 . In order to enhance
 readability of electronic submissions, the USPTO strongly recommends use of a black
 colored font for text on a white background.
 

 Some of the patent application papers received by the U.S. 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.
 

 ¶ 6.32.01 Application Papers Must Be Legible

 The specification (including the
 abstract and claims), and any amendments for applications, except as provided for in
 37 CFR
 1.821 through 1.825 , must have text written plainly and
 legibly either by a typewriter or machine printer in a nonscript type font ( e.g.,
 Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having
 capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller
 than 0.21 cm. (0.08 inch) high ( e.g. , a font size of 6) in portrait
 orientation and 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 capture by use of digital imaging and optical character recognition; and only a
 single column of text. See 37 CFR 1.52(a) and (b). 
 

 The application papers are objected to because [1] .
 

 A legible substitute specification in
 compliance with 37 CFR
 1.52(a) and (b) and 1.125 is required.
 

 Examiner Note:
 
 1. In bracket 1, identify the part of the specification that is illegible: all of the specification; or certain pages of the
 specification.
 

 2. Do not use this form paragraph for reissue applications or reexamination proceedings.
 
 
 II. ALTERATION OF APPLICATION PAPERS 37 CFR
 1.52(c) does not prohibit interlineations and other alterations
 of the application papers from being made after the signing of the inventor’s oath or
 declaration. However, it should be noted that if such interlineations or other
 alterations are made after the signing of the inventor’s oath or declaration, then
 the statements in the inventor’s oath or declaration pursuant to 37 CFR 1.63 
 must remain applicable to the application papers. Otherwise, the inventor may need to
 execute a new inventor’s oath or declaration. See also MPEP §
 602.08(b) . 
 

 III. CERTIFIED COPIES OF AN APPLICATION-AS-FILED If an application-as-filed does not meet the sheet size/margin and
 quality requirements of 37 CFR 1.52 and 1.84(f) and
 (g) , certified copies of such application may be illegible
 and/or ineffective as priority documents. When an applicant requests that the USPTO
 provide a certified copy of an application-as-filed and pays the fee set forth in
 37 CFR
 1.19(b)(1) , the USPTO will make a copy of the
 application-as-filed from the records in the IFW database (or the microfilm
 database). If papers submitted in the application-as-filed are not legible, certified
 copies of the application as originally filed will not be legible.
 

 The USPTO performs exception processing when scanning application
 papers that do not comply with the sheet size/margin and quality requirements. If
 papers submitted in the application-as-filed (including any transmittal letter or
 cover sheet) do not meet the sheet size requirement of 37 CFR 1.52 and
 1.84(f) (e.g., the papers are legal size (8 1/2 by 14
 inches)), the USPTO must reduce such papers to be able to image-scan the entire
 application and record it in the IFW database. In addition, if papers submitted in
 the application-as-filed do not meet the quality requirements of 37 CFR 1.52 
 (e.g., the papers are shiny or non-white), the USPTO will attempt to enhance such
 papers before scanning to make the resulting electronic record in the IFW database
 more readable. However, if exception processing is required to make the IFW copy,
 certified copies of the application as originally filed may not be legible.
 

 If application papers are filed that do not meet sheet size/margin
 and quality requirements, the USPTO will require the applicant to file substitute
 papers that do comply with the requirements of 37 CFR 1.52 and 1.84(e), (f) and
 (g) . The substitute papers submitted in reply to the
 above-mentioned requirement will provide the USPTO with an image- and OCR-scannable
 copy of the application for printing the application as a patent publication or
 patent. However, the USPTO will not treat application papers submitted after the
 filing date of an application as the original disclosure of the application for
 making a certified copy of the application-as-filed or any other purpose. That is,
 even if an applicant subsequently files substitute application papers that comply
 with 37 CFR
 1.52 and then requests that the USPTO provide a certified copy
 of an application-as-filed, paying the fee set forth in 37 CFR
 1.19(b)(1) , the USPTO will still make a copy of the
 application-as-filed rather than a copy of the subsequently filed substitute
 papers.
 

 IV. 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 Système International d’ Unités,” 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.
 

 V. FILING OF NON-ENGLISH LANGUAGE APPLICATIONS 
 37 CFR 1.52 Language, paper, writing, margins, read-only optical disc
 specifications. 

 *****

 
 (d) A nonprovisional or provisional application under
 35 U.S.C. 111 may be in a language other than
 English.
 
 (1) Nonprovisional application. If a nonprovisional
 application under 35 U.S.C. 111(a) 
 is filed in a language other than English, an English language
 translation of the non-English language application, a statement that
 the translation is accurate, and the processing fee set forth in
 § 1.17(i) are
 required. If these items are not filed with the application, applicant
 will be notified and given a period of time within which they must be
 filed in order to avoid abandonment.
 

 (2) Provisional application. If a provisional
 application under 35 U.S.C. 111(b) 
 is filed in a language other than English, an English language
 translation of the non-English language provisional application will
 not be required in the provisional application. See §
 1.78(a) for the requirements for claiming the
 benefit of such provisional application in a nonprovisional
 application.
 

 
 

 
 *****

 

 The U.S. 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 any
 claims, is in a language other than English and hence does not comply with
 37 CFR
 1.52 .
 

 As provided in 35 U.S.C.
 111(c) , a nonprovisional application filed under
 35 U.S.C.
 111(a) on or after December 18, 2013, may be filed by a
 reference to a previously filed application (foreign, international, provisional, or
 nonprovisional) indicating that the specification and any drawings of the application
 are replaced by the reference to the previously filed application. See
 MPEP §
 601.01(a) , subsection III, for more information on the
 filing and treatment of such applications.
 

 If a nonprovisional application under 35 U.S.C.
 111(a) is filed in a language other than English, an English
 translation of the non-English language papers, a statement that the translation is
 accurate, the fees set forth in 37 CFR 1.16 , the oath or
 declaration and fee set forth in 37 CFR 1.17(i) should either
 accompany the nonprovisional application papers or be filed in the Office within the
 time set by the Office. If a provisional application is filed in a language other
 than English, an English translation of the non-English language provisional
 application and a statement that the translation is accurate must be submitted if
 benefit of the provisional application is claimed in a later-filed nonprovisional
 application (see 37 CFR 1.78(a)(5) ). If
 the translation and statement were not previously filed in the provisional
 application, applicant will be notified in the nonprovisional application that claims
 the benefit of the provisional application and be given a period of time within which
 to file the translation and statement in the provisional application. Applicants may
 file the translation and statement in the provisional application even if the
 provisional application has become abandoned. A timely reply to such notice must
 include the filing in the nonprovisional application of either a confirmation that
 the translation and statement were filed in the provisional application or withdrawal
 of the benefit claim. For applications filed before September 16, 2012, an amendment
 or Supplemental Application Data Sheet withdrawing the benefit claim may be filed.
 For applications filed on or after September 16, 2012, a corrected application data
 sheet withdrawing the benefit claim may be filed. Failure to take one of the above
 actions will result in the abandonment of the nonprovisional application.
 

 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 filed via the USPTO patent electronic filing system or 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 an oath or declaration was filed and (e) amount and manner of paying the fees
 set forth in 37 CFR
 1.16 .
 

 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 or applicant's 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 . If such an application is published as a patent
 application publication, the document that is published is the translation. See
 37 CFR
 1.215(a) and MPEP § 1121 regarding the content of
 the application publication. In the event that the English translation and the
 statement are not timely filed in the nonprovisional application, the nonprovisional
 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
 applicant 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. See also MPEP § 601.01(a) , subsection III,
 for information on reference filing, which is also a practice intended for emergency
 situations to prevent the loss of rights and should not be routinely used for filing
 applications.
 

 VI. 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, chemical and mathematical
 formulas in the specification in lieu of drawings. The examiner should object to such
 descriptive illustrations in the specification and request drawings in accordance
 with 37 CFR
 1.81 when an application contains graphs, drawings, or flow
 charts in the specification.
 

 The specification, including any claims, may contain chemical
 formulas and mathematical equations, but the written description portion of the
 specification must not contain drawings or flow diagrams. A claim may incorporate by
 reference to a specific figure or table where there is no practical way to define the
 invention in words. See MPEP § 2173.05(s) . The description
 portion of the specification may contain tables, but the same tables should not be
 included in both the drawings as a figure and in the description portion of the
 specification. Claims may contain tables either if necessary to conform to
 35 U.S.C.
 112 or if otherwise found to be desirable. See
 MPEP §
 2173.05(s) . When such a patent is printed, however, the
 table will not be included as part of the claim, and instead the claim will contain a
 reference to the table number.
 

 VII. HYPERLINKS AND OTHER FORMS OF BROWSER-EXECUTABLE CODE IN THE
 SPECIFICATION Examiners must review patent applications to make certain that
 hyperlinks and other forms of browser-executable code, especially commercial site
 URLs, are not included in a patent application. 37 CFR 1.57(e) states that an
 incorporation by reference by hyperlink or other form of browser executable code is
 not permitted. Examples of a hyperlink or a browser-executable code are a URL placed
 between these symbols “< >” and http:// followed by a URL address. When a
 patent application with embedded hyperlinks and/or other forms of browser-executable
 code issues as a patent (or is published as a patent application publication) and the
 patent document is placed on the USPTO webpage, when the patent document is retrieved
 and viewed via a web browser, the URL is interpreted as a valid HTML code and it
 becomes a live web link. When a user clicks on the link with a mouse, the user will
 be transferred to another webpage identified by the URL, if it exists, which could be
 a commercial website. USPTO policy does not permit the USPTO to link to any
 commercial sites since the USPTO exercises no control over the organization, views or
 accuracy of the information contained on these outside sites. 
 

 If hyperlinks and/or other forms of browser-executable code are
 embedded in the text of the patent application, examiners should object to the
 specification and indicate to applicants that the embedded hyperlinks and/or other
 forms of browser-executable code are impermissible and that references to websites
 should be limited to the top-level domain name without any prefix such as http:// or
 other browser-executable code. This requirement does not apply to electronic
 documents listed on forms PTO-892 and PTO/SB/08 where the electronic document is
 identified by reference to a URL. 
 

 The attempt to incorporate subject matter into the patent application
 by reference to a hyperlink and/or other forms of browser-executable code is
 considered to be an improper incorporation by reference. See 37 CFR 1.57(e) 
 and MPEP §
 608.01(p) , paragraph I regarding incorporation by
 reference. Where the hyperlinks and/or other forms of browser-executable codes
 themselves rather than the contents of the site to which the hyperlinks are directed
 are part of applicant’s invention and it is necessary to have them included in the
 patent application in order to comply with the requirements of 35 U.S.C.
 112(a) , and applicant does not intend to have these hyperlinks
 be active links, examiners should not object to these hyperlinks. The Office will
 disable these hyperlinks when preparing the text to be loaded onto the USPTO web
 database.
 

 Note that nucleotide and/or amino acid sequence data placed between
 the symbols “< >” are not considered to be hyperlinks and/or browser-executable
 code and therefore should not be objected to as being an improper incorporation by
 reference (see 37
 CFR 1.821 – 1.825 ). 
 

 ¶ 7.29.04 Disclosure Objected To, Embedded Hyperlinks or Other Forms of
 Browser-Executable Code
 

 The disclosure is objected to because
 it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is
 required to delete the embedded hyperlink and/or other form of browser-executable code;
 references to websites should be limited to the top-level domain name without any prefix such
 as http:// or other browser-executable code. See MPEP § 608.01 . 
 

 Examiner Note:
 
 1. Examples of a hyperlink or a
 browser-executable code are a URL placed between these symbols 
 "< >"
 
 
 and 
 "http://"
 
 
 followed by a URL address.
 Nucleotide and/or amino acid sequence data placed between the symbols
 
 "< >"
 
 
 are not
 considered to be hyperlinks and/or browser-executable code.
 

 2. If the application attempts to
 incorporate essential or nonessential subject matter into the patent application by
 reference to the contents of the site to which a hyperlink and/or other form of
 browser-executable code is directed, use form paragraph 6.19 or 6.19.01 instead. See also
 MPEP §
 608.01(p) .
 

 3. The requirement to delete an embedded hyperlink or other form of
 browser-executable code does not apply to electronic documents listed on forms PTO-892
 and PTO/SB/08 where the electronic document is identified by reference to a URL.
 

 4. Examiners should not object to
 hyperlinks where the hyperlinks and/or browser-executable codes themselves (rather than
 the contents of the site to which the hyperlinks are directed) are necessary to be
 included in the patent application in order to meet the requirements of
 35 U.S.C.
 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, and
 applicant does not intend to have those hyperlinks be active links.
 
 
 

 
 608.01(a) Arrangement of Application [R-07.2022]

 
 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) Application data sheet (see §
 1.76 ).
 

 (4) Specification.

 (5) Drawings.

 (6) The inventor’s oath or declaration.

 
 

 (b) The specification should include the following sections in
 order:
 
 (1) Title of the invention, which may be accompanied by an
 introductory portion stating the name, citizenship, and residence of
 the applicant (unless included in the application data sheet).
 

 (2) Cross-reference to related applications.

 (3) Statement regarding federally sponsored research or
 development.
 

 (4) The names of the parties to a joint research
 agreement.
 

 (5) An incorporation by reference statement regarding
 the material in:
 
 (i) One or more ASCII plain text files,
 submitted via the USPTO patent electronic filing system or on
 one or more read-only optical discs ( see §
 1.52(e)(8) ),
 identifying the names of each file, the date of creation of each
 file, and the size of each file in bytes, for the following
 document types:
 
 (A) A “Computer Program Listing
 Appendix” ( see § 1.96(c) ); 
 

 (B) A “Sequence Listing”
 ( see § 1.821(c) ); or 
 

 (C) “Large Tables”
 ( see § 1.58(c) ).
 

 
 

 (ii) An XML file for a “Sequence Listing
 XML” ( see § 1.831(a) ), submitted via the USPTO patent
 electronic filing system or on one or more read-only optical
 discs ( see § 1.52(e)(8) ), identifying the names of
 each file, the date of creation of each file, and the size of
 each file in bytes.
 

 (iii)

 
 

 (6) Statement regarding prior disclosures by the inventor
 or a joint inventor.
 

 (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) A claim or claims.

 (12) Abstract of the disclosure.

 (13) "Sequence Listing," required by §
 1.821(c) , that is submitted as a Portable
 Document Format (PDF) file (as set forth in § 1.821(c)(2) ) via the USPTO patent electronic
 filing system or on physical sheets of paper (as set forth in §
 1.821(c)(3) ).
 

 
 

 (c) The text of the specification sections defined in paragraphs
 (b)(1) through (b)(12) of this section, if applicable, should be preceded by
 a section heading in uppercase and without underlining or bold type.
 

 
 

 For design patent specification, see MPEP §
 1503.01 .
 

 For plant patent specification, see MPEP § 1605 .
 

 For reissue patent specification, see MPEP § 1411 .
 

 The order of arrangement of specification elements as set forth in
 37 CFR
 1.77(b) is preferable (e.g., not required) in framing the
 nonprovisional specification and each of the 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. If an application data sheet ( 37 CFR 1.76 ) is
 used, data supplied in the application data sheet need not be provided elsewhere in
 the application except that for applications filed before September 16, 2012, the
 citizenship of each inventor must be provided in the oath or declaration under
 37 CFR
 1.63 even if this information is provided in the application
 data sheet.
 

 For applications filed on or after September 16, 2012,
 if there is a discrepancy between the information submitted in an application data
 sheet and the information submitted elsewhere in the application, the application
 data sheet will control except for the naming of inventors. The naming of the
 inventorship is governed by 37 CFR 1.41 , and changes to
 inventorship or the names of inventors is governed by 37 CFR 1.48 . In
 addition, for applications filed on or after September 16, 2012, the most recent
 application data sheet in compliance with 37 CFR 1.76 will govern with
 respect to foreign priority claims or domestic benefit claims. See 37 CFR
 1.76(d) and MPEP § 601.05(a) .
 

 For applications filed before September 16, 2012, if
 there is a discrepancy between the information submitted in an application data sheet
 and the information submitted elsewhere in the application, the application data
 sheet will control except for the naming of the inventors and the citizenship of the
 inventors. See pre-AIA 37 CFR 1.76(d) and MPEP §
 601.05(b) .
 

 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 the Sections of the Specification in a Utility
 Application
 

 The following guidelines illustrate the
 preferred layout for the specification of a utility application. These guidelines are
 suggested for the applicant’s use.
 

Arrangement of the Specification
 As provided in 37 CFR 1.77(b) , the
 specification of a utility application should include the following sections in order. Each of
 the lettered items should appear in upper case, without underlining or bold type, as a section
 heading. 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) THE NAMES OF THE PARTIES TO A JOINT
 RESEARCH AGREEMENT.
 

 (e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY
 OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM. 
 

 (f) STATEMENT REGARDING PRIOR
 DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
 

 (g) 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 .
 

 (h) BRIEF SUMMARY OF THE
 INVENTION.
 

 (i) BRIEF DESCRIPTION OF THE SEVERAL
 VIEWS OF THE DRAWING(S).
 

 (j) DETAILED DESCRIPTION OF THE
 INVENTION.
 

 (k) CLAIM OR CLAIMS (commencing on a
 separate sheet).
 

 (l) ABSTRACT OF THE DISCLOSURE
 (commencing on a separate sheet).
 

 (m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR
 1.821 - 1.825 ). A “Sequence Listing” is required on paper if the application
 discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if
 the required “Sequence Listing” is not submitted as an electronic document either on read-only
 optical disc or as a text file via the patent electronic system.
 

 Examiner Note:

 For the arrangement of the sections of the specification in a design
 application, see 37 CFR
 1.154(b) . Form paragraph 15.05 may be used for a design application. For the
 arrangement of the sections of the specification in a plant application, see
 37 CFR
 1.163(c) . For the requirements of the specification in a reissue
 application, see 37 CFR
 1.173(a)(1) . 
 

 

 

 ¶ 6.02 Content of Specification
Content of Specification
 (a) TITLE OF THE
 INVENTION : See 37 CFR 1.72(a) and MPEP § 606 . The title of the invention should
 be placed at the top of the first page of the specification unless the title is provided in an
 application data sheet. The title of the invention should be brief but technically accurate
 and descriptive, preferably from two to seven words. It may not contain more than 500
 characters. 
 

 (b) CROSS-REFERENCES TO
 RELATED APPLICATIONS : See 37 CFR 1.78 and MPEP §
 211 et seq.
 

 (c) STATEMENT REGARDING
 FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT : See MPEP § 310 .
 

 (d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH
 AGREEMENT . See 37 CFR 1.71(g) .
 

 (e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A
 READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC
 SYSTEM: The specification is required to include an incorporation-by-reference
 of electronic documents that are to become part of the permanent United States Patent and
 Trademark Office records in the file of a patent application. See 37 CFR 1.77(b)(5) and
 MPEP §
 608.05 . See also the Legal Framework for Patent Electronic System
 posted on the USPTO website ( https://www.uspto.gov/sites/default/files/ documents/2019LegalFrameworkPES.pdf
 ) and MPEP §
 502.05 . 
 

 (f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT
 INVENTOR. See 35
 U.S.C. 102(b) and 37 CFR 1.77 .
 

 (g) BACKGROUND OF THE INVENTION : See MPEP § 608.01(c) . 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 including information disclosed under 37 CFR 1.97 and 37 CFR 1.98 :
 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.”
 

 (h) BRIEF SUMMARY OF THE
 INVENTION : See MPEP § 608.01(d) . 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.
 

 (i) BRIEF DESCRIPTION OF
 THE SEVERAL VIEWS OF THE DRAWING(S) : See MPEP § 608.01(f) . A reference to and brief
 description of the drawing(s) as set forth in 37 CFR 1.74 .
 

 (j) DETAILED DESCRIPTION OF
 THE INVENTION : See MPEP § 608.01(g) . 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.
 

 (k) CLAIM OR CLAIMS : See 37 CFR 1.75 and
 MPEP §
 608.01(m) . The claim or claims must commence on a separate sheet or
 electronic page ( 37 CFR
 1.52(b)(3) ). 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
 and MPEP
 608.01(i) - (p) .
 

 (l) ABSTRACT OF THE DISCLOSURE : See
 37 CFR
 1.72 (b) and MPEP § 608.01(b) . The abstract is a brief
 narrative of the disclosure as a whole, as concise as the disclosure permits, in a single
 paragraph preferably not exceeding 150 words, commencing on a separate sheet following the
 claims. In an international application which has entered the national stage
 ( 37 CFR
 1.491(b) ), the applicant need not submit an abstract commencing on a
 separate sheet if an abstract was published with the international application under
 PCT Article
 21 . The abstract that appears on the cover page of the pamphlet
 published by the International Bureau (IB) of the World Intellectual Property Organization
 (WIPO) is the abstract that will be used by the USPTO. See MPEP § 1893.03(e) .
 

 (m) SEQUENCE
 LISTING : See 37 CFR 1.821 - 1.825 and MPEP §§
 2421 - 2431 . The requirement for a sequence listing applies to all
 sequences disclosed in a given application, whether the sequences are claimed or not. See
 MPEP §
 2422.01 .
 

 Examiner Note:

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

 

 

 
 608.01(b) Abstract of the Disclosure [R-01.2024]

 
 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” or “Abstract of the Disclosure.” The
 sheet or sheets presenting the abstract may not include other parts of the
 application or other material. The abstract must be as concise as the
 disclosure permits, preferably not exceeding 150 words in length. The
 purpose of the abstract is to enable the Office and the public generally to
 determine quickly from a cursory inspection the nature and gist of the
 technical disclosure.
 

 
 

 The Office of Patent Application Processing (OPAP) will review all
 applications filed under 35 U.S.C. 111(a) for compliance
 with 37 CFR
 1.72 and will require an abstract, if one has not been filed.
 In all other 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
 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 §
 608.04 . The abstract will be printed on the patent.
 

 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. 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 a formal
 examiner’s amendment after obtaining applicant’s authorization (see
 MPEP §
 1302.04 ) rather than issuing an Ex parte Quayle action requiring applicant to make the necessary
 revisions.
 

 I. GUIDELINES FOR THE PREPARATION OF PATENT ABSTRACTS 

 A. 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 determine quickly from a cursory inspection of the abstract the
 nature and gist of the technical disclosure and that which is new in the art to
 which the invention pertains.
 

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

 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.
 

 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 included in the
 abstract.
 

 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
 of reaction, reagents and process conditions should be stated, generally
 illustrated by a single example unless variations are necessary.
 

 C. Language and Format The abstract must commence on a separate sheet, preferably
 following the claims, under the heading “Abstract” or “Abstract of the
 Disclosure.” The sheet or sheets presenting the abstract may not include other
 parts of the application or other material. Form paragraph
 6.16.01 (below) may be used if the abstract
 does not commence on a separate sheet. Note that the abstract for a national
 stage application filed under 35 U.S.C. 371 may be found
 on the front page of the Patent Cooperation Treaty publication (i.e.,
 pamphlet). See MPEP § 1893.03(e) .
 

 The abstract should be in narrative form and generally limited
 to a single paragraph preferably within the range of 50 to 150 words in length.
 The abstract should not exceed 15 lines of text. Abstracts exceeding 15 lines
 of text or 150 words should be checked to see that they are as concise as the
 disclosure permits. 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.
 

 D. 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
 is the responsibility of the examiner. Any necessary amendment to the abstract
 at the time of allowance or a printer query must be made either by the
 applicant or by the examiner with applicant’s approval. See
 MPEP §
 1302.04 .
 

 E. 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. 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 carbonized
 acid with an amine, using as catalyst an dioxide of an alkali metal. The
 ester is first heated to at least 75 ° C 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.
 

 
 F. Form Paragraphs ¶ 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:
 
 1. For a pro se 
 applicant, consider following this paragraph with form paragraphs
 6.14 to
 6.16 as
 applicable.
 

 2. This form paragraph should not be used during the national stage
 prosecution of international applications (“371 applications”) if an abstract was
 published with the international application under PCT Article 21 .
 
 
 

 ¶ 6.13 Abstract Objected To

 The abstract of the disclosure is objected to because [1] . A
 corrected abstract of the disclosure is required and must be presented on a separate sheet,
 apart from any other text. See MPEP § 608.01(b) .
 

 Examiner Note:
 
 1. In bracket 1, indicate the informalities that require correction
 such as the inclusion of legal phraseology, undue length, etc.
 

 2. For a pro se applicant, this paragraph
 should be followed by form paragraphs 6.14 to 6.16 as applicable. 
 
 
 

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

 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. The abstract should also mention by way of example any
 preferred modifications or alternatives. 
 

 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. The abstract should be in narrative form and generally limited to a
 single paragraph within the range of 50 to 150 words in length.
 

 See MPEP § 608.01(b) for guidelines for the preparation of patent
 abstracts.
 

 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 of reaction, reagents and process conditions
 should be stated, generally illustrated by a single example unless variations are necessary. 
 

 Examiner Note:

 See also form paragraphs
 6.12 –
 6.14 and
 6.16 .
 

 

 ¶ 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 preferably within the
 range of 50 to 150 words in length. 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. In addition, the form and legal phraseology
 often used in patent claims, such as “means” and “said,” should be avoided. 
 

 Examiner Note:

 See also form paragraph
 6.12 -
 6.15 .
 

 

 ¶ 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)(4) and 1.72(b) . A new abstract of the disclosure
 is required and must be presented on a separate sheet, apart from any other text. 
 

 Examiner Note:
 
 1. 37 CFR
 1.72(b) requires that the abstract be set forth on a separate
 sheet. This requirement applies to amendments to the abstract as well as to the initial
 filing of the application.
 

 2. This form paragraph should not be used during the national stage
 prosecution of international applications (“371 applications”) if an abstract was
 published with the international application under PCT Article 21 .
 
 
 

 

 
 608.01(c) Background of the Invention [R-07.2022]

 The Background of the Invention may (but is not required to) include
 the following 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
 Cooperative Patent Classification (CPC) 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 § 608.01(a) ,
 §
 608.01(p) and § 707.05(b) . 
 

 

 
 608.01(d) Brief Summary of Invention [R-07.2015]

 
 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.
 

 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 §
 1302 .
 

 

 
 608.01(e) [Reserved]

 

 
 608.01(f) Brief Description of Drawings [R-01.2024]

 
 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 Patent Application Processing (OPAP) 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 or lacks any drawings, and if
 the application, other than a design application, is filed on or after December 18,
 2013, the application will be treated as an application filed without all figures of
 drawings in accordance with MPEP § 601.01(g) . If the application
 is filed prior to December 18, 2013 or is a design application and lacks any
 drawings, the application will be treated as an application filed without drawings in
 accordance with MPEP
 § 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. If the drawings show Figures
 1A, 1B, and 1C and the brief description of the drawings refers only to Figure 1, the
 examiner should object to the brief description, and require applicant to provide a
 brief description of Figures 1A, 1B, and 1C.
 

 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 and design 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. Color drawings are permitted in design
 applications. Where a design application contains color drawings, the
 application must include the number of sets of color drawings required
 by paragraph (a)(2)(ii) of this section and the specification must
 contain the reference required by paragraph (a)(2)(iii) of this
 section. 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. The color drawings
 must be of sufficient quality such that all details in the drawings
 are reproducible in black and white in the printed patent. Color
 drawings are not permitted in international applications (see
 PCT Rule 11.13 ). The Office will accept color
 drawings in utility patent applications 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 § 1.17(h) ;
 

 (ii) One (1) set of color drawings if submitted via
 the USPTO patent electronic filing system, or three (3) sets of
 color drawings if not submitted via the USPTO patent electronic
 filing system; and
 

 (iii) An amendment to the specification to insert
 (unless the specification contains or has been previously
 amended to contain) the following language as the first
 paragraph of the brief description of the drawings:
 

 
 

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

 
 

 (b) Photographs. — 
 
 (1) Black and white. Photographs, including photocopies
 of photographs, are not ordinarily permitted in utility and design
 patent applications. The Office will accept photographs in utility and
 design patent applications, however, if photographs are the only
 practicable medium for illustrating the claimed invention. For
 example, photographs or photomicrographs of: electrophoresis gels,
 blots ( e.g., immunological, western, Southern, and
 northern), auto- radiographs, cell cultures (stained and unstained),
 histological tissue cross sections (stained and unstained), animals,
 plants, in vivo imaging, thin layer chromatography plates, crystalline
 structures, and, in a design patent application, ornamental effects,
 are acceptable. If the subject matter of the application admits of
 illustration by a drawing, the examiner may require a drawing in place
 of the photograph. The photographs must be of sufficient quality so
 that all details in the photographs are reproducible in the printed
 patent.
 

 (2) Color photographs. Color photographs will be
 accepted in utility and design patent applications if the conditions
 for accepting color drawings and black and white photographs have been
 satisfied. See paragraphs (a)(2) and (b)(1) of this section.
 

 
 

 
 *****

 
 (y) Types of drawings. See §
 1.152 for design drawings, §
 1.1026 for international design reproductions,
 §
 1.165 for plant drawings, and §
 1.173(a)(2) for reissue drawings.
 

 
 

 

 
 608.01(g) Detailed Description of Invention [R-10.2019]

 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 §§
 608.01 , 2161 , and 2162 , 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 and must
 clearly convey enough information about the invention to show that applicant invented
 the subject matter that is claimed. 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. See 37 CFR 1.84(p) . 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 § 608.01(i) ,
 § 608.01(o) , and § 1302.01 , and § 2111.01 .
 

 For completeness of the specification, see MPEP §
 608.01(p) .
 

 

 
 608.01(h) Mode of Operation of Invention [R-11.2013]

 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 769, 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 769, 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.
 

 For completeness, see MPEP § 608.01(p) . For a discussion
 of the best mode requirement see MPEP § 2165 to § 2165.04 .
 

 

 
 608.01(i) Claims [R-08.2012]

 
 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
 §
 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 §
 1.16(j) . 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
 §
 1.58(a) .)
 

 (2) See §§ 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 physical
 sheet or electronic page. Any sheet including a claim or portion of a claim
 may not contain any other parts of the application or other material.
 

 (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 § 608.01(j) .
 

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

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

 For examination of claims, see MPEP § 706 .
 

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

 

 
 608.01(j) Numbering of Claims [R-08.2012]

 
 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.
 
 

 

 
 608.01(k) Statutory Requirement of Claims [R-10.2019]

 35 U.S.C.
 112 requires that the specification shall particularly point
 out and distinctly claim the subject matter which the inventor or joint inventor
 regards as his or her invention. The portion of the application in which this is done
 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.
 

 

 
 608.01(l) Claims Present on the Application Filing Date [R-10.2019]

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

 Where subject matter not shown in the drawing or described in the
 description is claimed in the application as filed, and such 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 objected to or rejected 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.
 

 On the other hand, when the subject matter is not
 shown in the drawing or described in the description, the words of the original claim
 must sufficiently describe the invention so that one of ordinary skill in the art
 would recognize that the inventor had possession of the full scope of the claimed
 invention. If the claim does not provide its own description in this case, the claim
 should be rejected under 35 U.S.C. 112(a) as failing to be
 supported by an adequate written description.
 

 

 
 608.01(m) Form of Claims [R-10.2019]

 The claim or claims must commence on a separate physical sheet or
 electronic page and should appear after the detailed description of the invention.
 Any sheet including a claim or portion of a claim may not contain any other parts of
 the application or other material. 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 Office of Data Management. 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. Generally, the presence or
 absence of such reference characters does not affect the scope of a claim.
 

 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.
 

 When two claims in an application comply with the requirements of
 35
 U.S.C. 112(d) but are duplicates, or else are so close in
 content that they both cover the same thing, despite a slight difference in wording,
 it is proper after allowing one claim to object to the other claim under
 37 CFR
 1.75 as being a substantial duplicate of the allowed claim.
 Note however, that court decisions have confirmed applicant’s right to restate (i.e.,
 by plural claiming) the invention in a reasonable number of ways. Indeed, a mere
 difference in scope between claims has been held to be enough. Form paragraphs
 7.05.05 and 7.05.06 may be used
 where duplicate claims are present in an application.
 

 See MPEP § 608.01(n) , subsection II, for rejections under
 35
 U.S.C. 112(d) of dependent claims that do not specify a further
 limitation of the subject matter claimed. See MPEP § 804 for double patenting
 rejections of claims in different applications that are not patentable over each
 other.
 

 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.
 

 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 or electronic page in accordance with 37 CFR 1.52(b)(3) and
 1.75(h) . Appropriate correction is required in response to this
 action.
 

 

 ¶ 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 (see the requirement of 37 CFR 1.71(a) for
 “full, clear, concise, and exact terms”), 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(b) or 35 U.S.C. 112 (pre-AIA), 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 §
 608.01(m) .
 

 Examiner Note:
 
 1. 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(b) or pre-AIA
 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 difficult. Substitute claims
 with lines one and one-half or double spaced on good quality paper are required. See 37 CFR 1.52(b) .
 

 

 ¶ 7.05.05 Duplicate Claims, Warning

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

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

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

 3. When a dependent claim does not specify a further limitation of
 the subject matter claimed as required by 35 U.S.C. 112(d) , the dependent
 claim should be rejected using form paragraphs 7.36 and 7.36.01 . See MPEP § 608.01(n) ,
 subsection III. It is not necessary to also warn of the prohibition against duplicate
 claims using this form paragraph. 
 
 
 

 ¶ 7.05.06 Duplicate Claims, Objection

 Claim [1] objected under 37 CFR 1.75 as being a substantial
 duplicate of claim [2] . When two claims in an application are duplicates or else
 are so close in content that they both cover the same thing, despite a slight difference in
 wording, it is proper after allowing one claim to object to the other as being a substantial
 duplicate of the allowed claim. See MPEP § 608.01(m) .
 

 Examiner Note:
 
 1. If the duplicate claims are not allowable, use form paragraph
 7.05.05 .
 

 2. When a dependent claim does not specify a further limitation of
 the subject matter claimed as required by 35 U.S.C. 112(d) , the dependent
 claim should be rejected using form paragraphs 7.36 and 7.36.01 . See MPEP § 608.01(n) ,
 subsection III. It is not necessary to also object to the improper dependent claim using
 this form paragraph.
 
 
 

 Amendments to the claims must be in compliance with 37 CFR
 1.121(c) . 
 

 

 
 608.01(n) Dependent Claims [R-01.2024]
 I. MULTIPLE DEPENDENT CLAIMS 
 35 U.S.C. 112 
 Specification. 

 *****

 
 (e) REFERENCE IN MULTIPLE DEPENDENT FORM. — A
 claim in multiple dependent form shall contain a reference, in the
 alternative only, to more than one claim previously set forth and then
 specify a further limitation of the subject matter claimed. A multiple
 dependent claim shall not serve as a basis for any other multiple
 dependent claim. A multiple dependent claim shall be construed to
 incorporate by reference all the limitations of the particular claim in
 relation to which it is being considered.
 

 
 *****

 

 
 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 § 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
 §
 1.16(j) . 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.
 

 35
 U.S.C. 112(e) , authorizes multiple dependent claims in
 applications 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.
 

 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. See
 Nested Bean, Inc. v. Big Beings Pty Ltd., IPR2020-01234,
 Paper 42 (Feb. 24, 2023).
 

 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 §
 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(e) or 35 U.S.C. 112 (pre-AIA), 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 5. A gadget as in any one of claims 1, 2, and 3, 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
 comprising ---
 

 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 ---
 

 

 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 Patent
 Application Processing The Office of Patent Application Processing (OPAP) 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. Form PTO/SB/07 has been designed to be used in conjunction with
 the current fee calculation form PTO/SB/06.
 

 E. Handling of Multiple Dependent Claims by the Technology Center
 Technical Support Staff The Technology Center (TC) 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/SB/07.
 

 There is no need for a TC technical support staff to check the
 accuracy of the initial filing fee since this has already been verified by
 the Office of Patent Application Processing. 

 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 the applicant's
 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/SB/07 should be included for
 applicant’s information.
 

 Where the TC 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/SB/07 should be circled in order to call this matter to
 the examiner’s attention.
 

 F. Handling of Multiple Dependent Claims by the
 Examiner Pursuant to 35 U.S.C. 112 and
 37 CFR
 1.75(c) , a claim in dependent form must refer only to a
 claim or claims previously set forth. 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. (See Example A, below.)
 

 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, an examiner’s amendment
 should be prepared if the order of the claims is changed. (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:
 

 
 
 
 
 Claim No. 
 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/SB/07 To assist in the computation of the fees for multiple
 dependent claims, a separate “Multiple Dependent Claim Fee Calculation
 Sheet,” form PTO/SB/07 has been designed for use with the current “Patent
 Application Fee Determination Record,” form PTO/SB/06. Form PTO/SB/07 will
 be placed in the application file by the Office of Patent Application
 Processing (OPAP) where multiple dependent claims are in the application as
 filed or submitted in response to an OPAP notice requiring claims. If
 multiple dependent claims are not included upon filing or submitted in
 response to an OPAP notice requiring claims, but are later added by
 amendment, the TC technical support staff will place the form in the
 application file. 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/SB/07 and the total number of claims and number of
 independent claims is then placed on form PTO/SB/06 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 none of the multiple dependent claims is proper, the
 multiple dependent claim fee set forth in 37 CFR
 1.16(j) will not be required. However, the multiple
 dependent claim fee is required if at least one multiple dependent claim
 is proper. 
 

 If any multiple dependent claim is improper, OPAP may
 indicate that fact by placing an encircled numeral “1” in the “Dep.
 Claims” column of form PTO/SB/07. 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 
 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/SB/07, 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/SB/06 and the fee calculated.
 

 II. INITIAL TREATMENT OF 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. 
 

 III. TEST FOR PROPER
 DEPENDENCY In accordance with 35 U.S.C.
 112(d) , or pre-AIA 35 U.S.C. 112, fourth paragraph , a
 claim in dependent form shall contain:
 

 
 (i) a reference to a claim previously set forth,
 and 
 

 (ii) then specify a further limitation of the
 subject matter claimed. 
 

 A claim in dependent form shall be construed to
 incorporate by reference all the limitations of the claim to which it
 refers.
 

 Following the statute, 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 and specify a further limitation of the subject
 matter claimed. 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. A
 dependent claim does not lack compliance with 35 U.S.C.
 112(d) simply because there is a question as to the
 significance of the further limitation added by the dependent claim.
 

 
 The fact that a dependent claim, which is otherwise
 proper might relate to a separate invention that would require a separate search
 or be separately classified from the claim on which it depends would not render it
 an improper dependent claim.
 

 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 further specifies limitations relating to the method of making the
 product of 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 can be made by a method other than that recited in
 the base method claim, and thus, does not include the limitations of the base
 claim.
 

 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.
 

 When examining a dependent claim, the examiner
 should determine whether the claim complies with 35 U.S.C.
 112(d) , which requires that dependent claims contain a
 reference to a previous claim in the same application, specify a further
 limitation of the subject matter claimed, and include all the limitations of the
 previous claim. If the dependent claim does not comply with the requirements of
 35
 U.S.C. 112(d) , the examiner should reject the dependent
 claim under 35 U.S.C. 112(d) as
 unpatentable rather than objecting to the claim. See Pfizer, Inc. v.
 Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92, 79 USPQ2d 1583, 1589-90
 (Fed. Cir. 2006) (holding a dependent claim in a patent invalid for failure to
 comply with pre-AIA 35 U.S.C. 112, fourth paragraph (now
 35
 U.S.C. 112(d) )). Although the requirements of
 35
 U.S.C. 112(d) are related to matters of form, non-compliance
 with 35 U.S.C. 112(d) renders the claim unpatentable just as
 non-compliance with other paragraphs of 35 U.S.C.
 112 would. For example, a dependent claim must be rejected
 under 35 U.S.C. 112(d) if it omits an element from the claim upon
 which it depends or it fails to add a limitation to the claim upon which it
 depends.
 

 Claims which are in improper dependent form for
 failing to further limit the subject matter of a previous claim, or for not
 including every limitation of the claim from which it depends, should be rejected
 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, fourth
 paragraph by using form paragraphs
 7.36 and 7.36.01 .
 

 ¶ 7.36 Statement of Statutory Basis, 35 U.S.C. 112(d) and Pre-AIA 35
 U.S.C. 112, Fourth Paragraph
 

 The following is a quotation of 35 U.S.C.
 112(d) :
 

 
 (d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim
 in dependent form shall contain a reference to a claim previously set forth and then
 specify a further limitation of the subject matter claimed. A claim in dependent form shall
 be construed to incorporate by reference all the limitations of the claim to which it
 refers.
 

 
 The following is a quotation of pre-AIA 35 U.S.C. 112 , fourth
 paragraph:
 

 
 Subject to the following paragraph [i.e., the fifth paragraph of
 pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim
 previously set forth and then specify a further limitation of the subject matter claimed. A
 claim in dependent form shall be construed to incorporate by reference all the limitations
 of the claim to which it refers.
 

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

 2. Form paragraph 7.36 is to be used ONLY ONCE in a given Office
 action.
 
 
 

 ¶ 7.36.01 Rejection under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th
 Paragraph, Improper Dependent Claim
 

 Claim [1] rejected under 35 U.S.C.
 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph , as
 being of improper dependent form for failing to further limit the subject matter of the claim
 upon which it depends, or for failing to include all the limitations of the claim upon which
 it depends. [2] . Applicant may cancel the claim(s), amend the claim(s) to place
 the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a
 sufficient showing that the dependent claim(s) complies with the statutory
 requirements.
 

 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. The U.S. Court of Appeals for the Federal Circuit indicated that
 although the requirements of pre-AIA 35 U.S.C. 112 , 4th
 paragraph, are related to matters of form, non-compliance with pre-AIA 35 U.S.C. 112, 4th
 paragraph , renders the claim unpatentable just as non-compliance
 with other paragraphs of 35 U.S.C. 112 would. See
 Pfizer, Inc. v. Ranbaxy Labs., Ltd. , 457 F.3d 1284, 1291-92, 79
 USPQ2d 1583, 1589-90 (Fed. Cir. 2006) (holding a dependent claim in a patent invalid for
 failure to comply with pre-AIA 35 U.S.C. 112, 4th paragraph ). Therefore, if a dependent
 claim does not comply with the requirements of 35 U.S.C.
 112(d) or pre-AIA 35 U.S.C. 112, 4th
 paragraph , the dependent claim should be rejected under
 35 U.S.C.
 112(d) or pre-AIA 35 U.S.C. 112, 4th
 paragraph , as unpatentable rather than objecting to the claim.
 

 3. This form paragraph must be preceded by form
 paragraph 7.36 . 
 
 
 
 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 the only restrictions with
 respect to the sequence of claims and, in general, applicant’s sequence should not
 be changed. See MPEP
 § 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 § 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.
 

 

 

 
 608.01(o) Basis for Claim Terminology in Description [R-07.2015]

 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. See MPEP § 2111.01 and
 §
 2173.05(a) .
 

 Usually the terminology of the claims present on the filing date of
 the application 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, including claims first presented after the application
 filing date where no claims were submitted on filing, and amendments to the claims
 already in the application 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. See 37 CFR 1.75 ,
 MPEP §
 608.01(i) and § 1302.01 and §
 2103 . Note that examiners should ensure that the terms and
 phrases used in claims presented late in prosecution of the application (including
 claims amended via an examiner’s amendment) 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 37 CFR 1.75(d)(1) . If the
 examiner determines that the claims presented late in prosecution do not comply with
 37 CFR
 1.75(d)(1) , applicant will be required to make appropriate
 amendment to the description to provide clear support or antecedent basis for the
 terms appearing in the claims provided no new matter is introduced.
 

 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 § 608.01(o) . Correction of the
 following is required: [1] 

 

 

 
 608.01(p) Completeness of Specification [R-07.2022]

 Newly filed applications obviously failing to disclose an invention
 with the clarity required are discussed in MPEP § 702.01 .
 

 The contents of an application, to be complete, must include a
 specification containing a written description of the invention using 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. See
 35 U.S.C.
 112 . At least one specific operative embodiment or example of
 the invention must be set forth. The example(s) and description should be of
 sufficient scope as to justify the scope of the claims.
 

 For the written description requirement, an applicant’s specification
 must reasonably convey to those skilled in the art that the applicant was in
 possession of the claimed invention as of the date of invention. See
 MPEP §
 2163 et seq. for further guidance with respect to the evaluation of a
 patent application for compliance with the written description requirement. 
 

 An applicant’s specification must enable a person
 skilled in the art to make and use the claimed invention without undue
 experimentation. The fact that experimentation is complex, however, will not make it
 undue if a person of skill in the art typically engages in such complex
 experimentation. See MPEP § 2164 et seq. for detailed guidance with regard to the enablement
 requirement of 35 U.S.C. 112 . 
 

 

 See also MPEP § 2161.01 regarding computer
 programming and 35 U.S.C. 112 ; and MPEP § 2181 and
 §
 2185 regarding 35 U.S.C. 112 in the context of
 functional claims. 
 

 The specification should include a statement which
 identifies a specific and substantial credible utility for the claimed invention.
 This usually presents no problem in mechanical or electrical cases. Questions
 regarding compliance with the utility requirement arise more often in
 biotechnological or chemical cases.
 

 For “Guidelines For Examination Of Applications For Compliance With
 The Utility Requirement of 35 U.S.C. 101 ,” see
 MPEP §
 2107 .
 

 For “General Principles Governing Utility Rejections,” see
 MPEP §
 2107.01 .
 

 For a discussion of the utility requirement under 35 U.S.C.
 111(a) in drug cases, see MPEP § 2107.03 and
 §
 2164.06(a) . 
 

 For “Procedural Considerations Related to Rejections for Lack of
 Utility,” see MPEP §
 2107.02 .
 

 For “Special Considerations for Asserted Therapeutic or
 Pharmacological Utilities,” see MPEP § 2107.03 .
 

 I. INCORPORATION BY REFERENCE 
 37 CFR 1.57 Incorporation by reference. 

 [Editor Note: Paragraph (a) below is only applicable to patent
 applications filed under 35 U.S.C. 111(a) on or
 after December 18, 2013.] 

 
 (a) Subject to the conditions and requirements
 of this paragraph, a reference made in the English language in an
 application data sheet in accordance with §
 1.76 upon the filing of an application under
 35 U.S.C. 111(a) to a
 previously filed application, indicating that the specification and any
 drawings of the application under 35 U.S.C.
 111(a) are replaced by the reference to the
 previously filed application, and specifying the previously filed
 application by application number, filing date, and the intellectual
 property authority or country in which the previously filed application
 was filed, shall constitute the specification and any drawings of the
 application under 35 U.S.C. 111(a) for
 purposes of a filing date under § 1.53(b) .
 
 (1) If the applicant has provided a
 correspondence address ( § 1.33(a) ), the
 applicant will be notified and given a period of time within which
 to file a copy of the specification and drawings from the
 previously filed application, an English language translation of
 the previously filed application, and the fee required by
 § 1.17(i) if it
 is in a language other than English, and pay the surcharge required
 by § 1.16(f) , to
 avoid abandonment. Such a notice may be combined with a notice
 under § 1.53(f) . 
 

 (2) If the applicant has not provided a
 correspondence address ( § 1.33(a) ), the
 applicant has three months from the filing date of the application
 to file a copy of the specification and drawings from the
 previously filed application, an English language translation of
 the previously filed application, and the fee required by
 § 1.17(i) if it
 is in a language other than English, and pay the surcharge required
 by § 1.16(f) , to
 avoid abandonment. 
 

 (3) An application abandoned under
 paragraph (a)(1) or (a)(2) of this section shall be treated as
 having never been filed, unless:
 
 (i) The application is revived
 under § 1.137 ;
 and
 

 (ii) A copy of the specification and
 any drawings of the previously filed application are filed in
 the Office.
 

 
 

 (4) A certified copy of the previously
 filed application must be filed in the Office, unless the
 previously filed application is an application filed under
 35 U.S.C. 111 
 or 363 , or the
 previously filed application is a foreign priority application and
 the conditions set forth in §
 1.55(i) are satisfied with respect to such
 foreign priority application. The certified copy of the previously
 filed application, if required by this paragraph, must be filed
 within the later of four months from the filing date of the
 application or sixteen months from the filing date of the
 previously filed application, or be accompanied by a petition
 including a showing of good and sufficient cause for the delay and
 the petition fee set forth in §
 1.17(g) .
 

 
 

 (b) Subject to the conditions and requirements of this
 paragraph, if all or a portion of the specification or drawing(s) is
 inadvertently omitted from an application, but the application contains a
 claim under § 1.55 for priority
 of a prior-filed foreign application, or a claim under §
 1.78 for the benefit of a prior-filed provisional,
 nonprovisional, international application, or international design
 application, that was present on the filing date of the application, and
 the inadvertently omitted portion of the specification or drawing(s) is
 completely contained in the prior-filed application, the claim under
 § 1.55 or 1.78 shall also be
 considered an incorporation by reference of the prior-filed application
 as to the inadvertently omitted portion of the specification or
 drawing(s).
 
 (1) The application must be amended to include the
 inadvertently omitted portion of the specification or drawing(s)
 within any time period set by the Office, but in no case later than
 the close of prosecution as defined by §
 1.114(b) , or abandonment of the application,
 whichever occurs earlier. The applicant is also required to:
 
 (i) Supply a copy of the prior-filed application,
 except where the prior-filed application is an application
 filed under 35 U.S.C.
 111 ;
 

 (ii) Supply an English language translation of any
 prior-filed application that is in a language other than
 English; and
 

 (iii) Identify where the inadvertently omitted
 portion of the specification or drawings can be found in the
 prior-filed application.
 

 
 

 (2) Any amendment to an international application
 pursuant to paragraph (b)(1) of this section shall be effective
 only as to the United States, and shall have no effect on the
 international filing date of the application. In addition, no
 request under this section to add the inadvertently omitted portion
 of the specification or drawings in an international application
 designating the United States will be acted upon by the Office
 prior to the entry and commencement of the national stage
 ( § 1.491 ) or the
 filing of an application under 35 U.S.C.
 111(a) which claims benefit of the
 international application. Any omitted portion of the international
 application which applicant desires to be effective as to all
 designated States, subject to PCT Rule
 20.8(b) , must be submitted in accordance with
 PCT Rule 20 .
 
 

 (3) If an application is not otherwise entitled to a
 filing date under § 1.53(b) , the
 amendment must be by way of a petition pursuant to
 § 1.53(e) 
 accompanied by the fee set forth in §
 1.17(f) . 
 

 (4) Any amendment to an international
 design application pursuant to paragraph (b)(1) of this section
 shall be effective only as to the United States and shall have no
 effect on the filing date of the application. In addition, no
 request under this section to add the inadvertently omitted portion
 of the specification or drawings in an international design
 application will be acted upon by the Office prior to the
 international design application becoming a nonprovisional
 application.
 

 
 

 (c) Except as provided in paragraphs (a) or (b) of this
 section, an incorporation by reference must be set forth in the
 specification and must:
 
 (1) Express a clear intent to incorporate by reference
 by using the root words “incorporat(e)” and “reference” ( e.g. , “incorporate by reference”);
 and
 

 (2) Clearly identify the referenced patent,
 application, or publication.
 

 
 

 (d) “Essential material” may be incorporated by reference,
 but only by way of an incorporation by reference to a U.S. patent or U.S.
 patent application publication, which patent or patent application
 publication does not itself incorporate such essential material by
 reference. “Essential material” is material that is necessary to:
 
 (1) Provide a written description of the claimed
 invention, and of the manner and process of making and using it, in
 such full, clear, concise, and exact terms as to enable any person
 skilled in the art to which it pertains, or with which it is most
 nearly connected, to make and use the same, and set forth the best
 mode contemplated by the inventor of carrying out the invention as
 required by 35 U.S.C.
 112(a) ;
 

 (2) Describe the claimed invention in terms that
 particularly point out and distinctly claim the invention as
 required by 35 U.S.C.
 112(b) ; or
 

 (3) Describe the structure, material, or acts that
 correspond to a claimed means or step for performing a specified
 function as required by 35
 U.S.C. 112(f) .
 

 
 

 (e) Other material (“Nonessential material”) may be
 incorporated by reference to U.S. patents, U.S. patent application
 publications, foreign patents, foreign published applications, prior and
 concurrently filed commonly owned U.S. applications, or non-patent
 publications. An incorporation by reference by hyperlink or other form of
 browser executable code is not permitted.
 

 (f) The examiner may require the applicant to supply a copy
 of the material incorporated by reference. If the Office requires the
 applicant to supply a copy of material incorporated by reference, the
 material must be accompanied by a statement that the copy supplied
 consists of the same material incorporated by reference in the
 referencing application.
 

 (g) Any insertion of material incorporated by reference into
 the specification or drawings of an application must be by way of an
 amendment to the specification or drawings. Such an amendment must be
 accompanied by a statement that the material being inserted is the
 material previously incorporated by reference and that the amendment
 contains no new matter.
 

 (h) An incorporation of material by reference that does not
 comply with paragraphs (c), (d), or (e) of this section is not effective
 to incorporate such material unless corrected within any time period set
 by the Office, but in no case later than the close of prosecution as
 defined by § 1.114(b) , or
 abandonment of the application, whichever occurs earlier. In
 addition:
 
 (1) A correction to comply with paragraph (c)(1) of
 this section is permitted only if the application as filed clearly
 conveys an intent to incorporate the material by reference. A mere
 reference to material does not convey an intent to incorporate the
 material by reference.
 

 (2) A correction to comply with paragraph (c)(2) of
 this section is only permitted for material that was sufficiently
 described to uniquely identify the document.
 
 (i) An application transmittal
 letter limited to the transmittal of a copy of the
 specification and drawings from a previously filed
 application submitted under paragraph (a) or (b) of this
 section may be signed by a juristic applicant or patent
 owner.
 

 
 

 
 

 
 

 The Director 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). In 2004, the Office codified in 37 CFR 1.57(b) – (g) existing
 practice with respect to explicit incorporations by reference with a few changes
 to reflect the eighteen-month publication of applications. In addition, in 2004,
 37 CFR
 1.57(a) was added to provide a safeguard for applicants when
 a page(s) of the specification, or a portion thereof, or a sheet(s) of the
 drawing(s), or a portion thereof, is inadvertently omitted from an application,
 such as through a clerical error. In 2013, the Office moved the provisions of
 former 37
 CFR 1.57(a) to 37 CFR 1.57(b) in order to
 provide for reference filing in 37 CFR 1.57(a) , which is a new
 procedure provided by the implementation of section 201(a) of the Patent Law
 Treaties Implementation Act of 2012 (PLTIA) (Public Law 112-211).
 37
 CFR 1.57(b) permits inadvertently omitted material to be
 added to the application by way of a later filed amendment if the inadvertently
 omitted portion of the specification or drawing(s) is completely contained in a
 prior-filed application (for which priority/benefit is claimed) even though there
 is no explicit incorporation by reference of the prior-filed application. See
 MPEP § 217 for discussion regarding 37 CFR
 1.57(b) . 
 

 As mentioned above, 37 CFR
 1.57 was revised, effective December 18, 2013, to implement
 the reference filing provisions in title II of the PLTIA, which amended the patent
 laws in accordance with the Patent Law Treaty. As provided in 35 U.S.C.
 111(c) , as amended by the PLTIA, a nonprovisional
 application filed under 35 U.S.C. 111(a) on or after
 December 18, 2013, may be filed by a reference to a previously filed application
 (foreign, international, provisional, or nonprovisional) indicating that the
 specification and any drawings of the application are replaced by the reference to
 the previously filed application. See MPEP § 601.01(a) , subsection III,
 for information on the conditions, including the payment of a surcharge, under
 which a reference made upon the filing of an application under 35 U.S.C.
 111(a) to a previously filed application shall constitute
 the specification and any drawings of the subsequent application for purposes of a
 filing date.
 

 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 Director 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. See MPEP § 2181 for the impact of
 incorporation by reference on the determination of whether applicant has complied
 with the requirements of 35 U.S.C. 112(b) when
 35
 U.S.C. 112(f) is invoked.
 

 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. An application for a patent when filed may incorporate “essential
 material” by reference to (1) a U.S. patent, or (2) a U.S. patent application
 publication, which patent or patent application publication does not itself
 incorporate such essential material by reference. See 37 CFR
 1.57(d) . 
 

 “Essential material” is defined in 37 CFR
 1.57(d) as that which is necessary to (1) provide a
 written description of the claimed invention, and of the manner and process of
 making and using it, in such full, clear, concise, and exact terms as to enable
 any person skilled in the art to which it pertains, or with which it is most
 nearly connected, to make and use the same, and set forth the best mode
 contemplated by the inventor of carrying out the invention as required by
 35 U.S.C. 112(a) ; (2) describe the claimed invention in
 terms that particularly point out and distinctly claim the invention as
 required by 35 U.S.C. 112(b) ; or (3)
 describe the structure, material, or acts that correspond to a claimed means or
 step for performing a specified function as required by 35 U.S.C.
 112(f) . In any application that is to issue as a U.S.
 patent, essential material may only be incorporated by reference to a U.S.
 patent or patent application publication.
 

 Other material (“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 and
 concurrently 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. See 37 CFR 1.57(e) .
 

 An incorporation by reference by hyperlink or other form of
 browser executable code is not permitted. See 37 CFR
 1.57(e) and MPEP § 608.01 .
 

 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 . In re de Seversky, 474 F.2d 671,
 177 USPQ 144 (CCPA 1973). 37 CFR 1.57(c)(1) limits a
 proper incorporation by reference (except as provided in 37 CFR
 1.57(b) ) to instances only where the perfecting words
 “incorporated by reference” or the root of the words “incorporate” (e.g.,
 incorporating, incorporated) and “reference” (e.g., referencing) appear. The
 requirement for specific root words will bring greater clarity to the record
 and provide a bright line test as to where something is being referred to is an
 incorporation by reference. The Office intends to treat references to documents
 that do not meet this “bright line” test as noncompliant incorporations by
 reference and may require correction pursuant to 37 CFR
 1.57(h) . If a reference to a document does not clearly
 indicate an intended incorporation by reference, examination will proceed as if
 no incorporation by reference statement has been made and the Office will not
 expend resources trying to determine if an incorporation by reference was
 intended. In addition to other requirements for an application, the referencing
 application must include an identification of the referenced patent,
 application, or publication. See 37 CFR 1.57(c)(2) .
 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 37 CFR 1.14(a)(i), (iv), and
 (vi) , and MPEP § 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 a U.S. patent application publication. The
 amendment must be accompanied by a statement 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 and no new matter has been included (see 37 CFR
 1.57(g) ). The same procedure is available for
 nonessential material.
 

 If an application as filed incorporates material by
 reference, a copy of the incorporated by reference material may be required
 to be submitted to the Office even if the material is properly incorporated
 by reference. The examiner may require a copy of the incorporated material
 to review and to understand what is being incorporated or to put the
 description of the material in its proper context. Another instance where a
 copy of the incorporated material may be required is where the material is
 being inserted by amendment into the body of the application to replace an
 improper incorporation by reference statement so that the Office can
 determine that the material being added by amendment in lieu of the
 incorporation is the same material as was attempted to be incorporated. If
 the Office requires the applicant to supply a copy of the material
 incorporated by reference, the material must be accompanied by a statement
 that the copy supplied consists of the same material incorporated by
 reference in the referencing application. See 37 CFR
 1.57(f) .
 

 2. Improper Incorporation 37 CFR
 1.57(g) addresses corrections of incorporation by
 reference by inserting the material previously incorporated by reference. A
 noncompliant incorporation by reference statement may be corrected by an
 amendment. 37 CFR 1.57(g) . However, the amendment must not
 include new matter. Incorporating by reference material that was not
 incorporated by reference on filing of an application may introduce new
 matter. An incorporation by reference of essential material to an
 unpublished U.S. patent application, a foreign application or patent, or to
 a publication is improper under 37 CFR 1.57(d) . The
 improper incorporation by reference is not effective to incorporate the
 material unless corrected by the applicant ( 37 CFR
 1.57(h) ). Any underlying objection or rejection (e.g.,
 under 35
 U.S.C. 112 ) should be made by the examiner until
 applicant corrects the improper incorporation by reference by submitting an
 amendment to amend the specification or drawings to include the material
 incorporated by reference. A statement that the material being inserted is
 the material previously incorporated by reference and that the amendment
 contains no new matter is also required. 37 CFR 1.57(g) . See also
 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).
 Improper incorporation by reference statements and late corrections thereof
 require expenditure of unnecessary examination resources and slow the
 prosecution process. Applicants know (or should know) whether they want
 material incorporated by reference, and must timely correct any
 incorporation by reference errors. Correction must be done within the time
 period set forth in 37 CFR 1.57(h) .
 

 An incorporation by reference that does not comply with
 37 CFR
 1.57(c), (d), or (e) is not effective to incorporate
 such material unless corrected within any time period set by the Office
 (should the noncompliant incorporation by reference be first noticed by the
 Office and applicant informed thereof), but in no case later than the close
 of prosecution as defined by 37 CFR 1.114(b) (should
 applicant be the first to notice the noncompliant incorporation by reference
 and the Office informed thereof), or abandonment of the application,
 whichever occurs earlier. The phrase “or abandonment of the application” is
 included in 37 CFR 1.57(h) to
 address the situations where an application is abandoned prior to the close
 of prosecution, e.g., the situation where an application is abandoned after
 a non-final Office action.
 

 37 CFR
 1.57(h)(1) authorizes the correction of noncompliant
 incorporation by reference statements that do not use the root of the words
 “incorporate” and “reference” in the incorporation by reference statement
 when the application as filed clearly conveys an intent to incorporate the
 material by reference. This correction can usually be made, for example,
 when an originally filed claim of an application identifies an amino acid or
 nucleotide sequence by database accession number. In making the
 determination of clear intent the examiner should consider the language used
 in referencing the sequence, the context in which it is disclosed, and any
 additional arguments or evidence presented by applicants. 
 

 37 CFR
 1.57(h)(2) states that a citation of a document can be
 corrected where the document is sufficiently described to uniquely identify
 the document. Correction of a citation for a document that cannot be
 identified as the incorporated document may be new matter and is not
 authorized by 37 CFR 1.57(h)(2) . An
 example would be where applicant intended to incorporate a particular
 journal article but supplied the citation information for a completely
 unrelated book by a different author, and there is no other information to
 identify the correct journal article. Since it cannot be determined from the
 citation originally supplied what article was intended to be incorporated,
 it would be improper (e.g., new matter) to replace the original
 incorporation by reference with the intended incorporation by reference. A
 citation of a patent application by attorney docket number, inventor name,
 filing date and title of invention may sufficiently describe the document,
 but even then correction should be made to specify the application
 number.
 

 A petition under 37 CFR 1.183 to suspend
 the time period requirement set forth in 37 CFR 1.57(h) will not
 be appropriate. After the application has been abandoned, applicant must
 file a petition to revive under 37 CFR 1.137 for the
 purpose of correcting the incorporation by reference. After the application
 has issued as a patent, applicant may correct the patent by filing a reissue
 application. Correcting an improper incorporation by reference with a
 certificate of correction is not an appropriate means of correction because
 it may alter the scope of the claims. The scope of the claims may be altered
 because 37
 CFR 1.57(h) provides that an incorporation by
 reference that does not comply with paragraph (c), (d), or (e) is not an
 effective incorporation. For example, an equivalent means omitted from a
 patent disclosure by an ineffective incorporation by reference would be
 outside the scope of the patented claims. Hence, a correction of an
 incorporation by reference pursuant to 37 CFR 1.57 may alter
 the scope of the claims by adding the omitted equivalent means. Changes
 involving the scope of the claims should be done via the reissue process.
 Additionally, the availability of the reissue process for corrections would
 make a successful showing required under 37 CFR 1.183 unlikely.
 The following examples show when an improper incorporation by reference is
 required to be corrected:
 

 Example 1: Upon review of the specification, the examiner noticed
 that the specification included an incorporation by reference statement
 incorporating essential material disclosed in a foreign patent. In a
 non-final Office action, the examiner required the applicant to amend the
 specification to include the essential material.
 

 In reply to the non-final Office action, applicant must
 correct the improper incorporation by reference by filing an amendment to
 add the essential material disclosed in the foreign patent and a
 statement in compliance with 37 CFR 1.57(g) within
 the time period for reply set forth in the non-final Office action. 
 

 

 Example 2: Upon review of the specification, the examiner determined
 that the subject matter incorporated by reference from a foreign patent
 was “nonessential material” and therefore, did not object to the
 incorporation by reference. In reply to a non-final Office action,
 applicant filed an amendment to the claims to add a new limitation that
 was supported only by the foreign patent. The amendment filed by the
 applicant caused the examiner to re-determine that the incorporated
 subject matter was “essential material” under 37 CFR
 1.57(d) . The examiner rejected the claims that
 include the new limitation under 35 U.S.C.
 112(a) in a final Office action.
 

 Since the rejection under 35 U.S.C.
 112(a) was necessitated by the applicant’s
 amendment, the finality of the Office action is proper. If the applicant
 wishes to overcome the rejection under 35 U.S.C.
 112(a) by filing an amendment under
 37
 CFR 1.57(g) to add the subject material disclosed
 in the foreign patent into the specification, applicant may file the
 amendment as an after final amendment in compliance with
 37
 CFR 1.116 . Alternatively, applicant may file an RCE
 under 37 CFR 1.114 accompanied by the appropriate fee,
 and an amendment per 37 CFR 1.57(g) within
 the time period for reply set forth in the final Office action.
 

 The following form paragraphs may be used:

 

 ¶ 6.19 Incorporation by Reference, Unpublished U.S. Application, Foreign
 Patent or Application, Publication
 

 The incorporation of essential material in the specification by reference
 to an unpublished U.S. application, foreign application or patent, or to a publication is
 improper. Applicant is required to amend the disclosure to include the material incorporated
 by reference, if the material is relied upon to overcome any objection, rejection, or other
 requirement imposed by the Office. The amendment must be accompanied by a statement executed
 by the applicant, or a practitioner representing the applicant, stating that the material
 being inserted is the material previously incorporated by reference and that the amendment
 contains no new matter. 37
 CFR 1.57(g) .
 

 Examiner Note:

 Since the material that applicant is
 attempting to incorporate in the specification is considered to be essential material, an
 appropriate objection to the specification under 35 U.S.C. 132 and/or rejection of the
 claim(s) under 35 U.S.C. 112 , should be made. One or more of form paragraphs
 7.31.01 to 7.31.04 , as for example, should be used
 following this form paragraph.
 

 

 

 ¶ 6.19.01 Ineffective Incorporation by Reference, General

 The attempt to incorporate subject matter into this application by reference to [1] is ineffective 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(s) why it is ineffective (e.g., the root
 words 
 "incorporate"
 
 
 and/or
 
 "reference"
 
 
 have been
 omitted, see 37 CFR
 1.57(c)(1) ; the reference document is not clearly identified as
 required by 37 CFR
 1.57(c)(2) ).
 

 3. This form paragraph should be followed by form paragraph 6.19.03 .
 
 
 

 ¶ 6.19.03 Correction of Ineffective Incorporation by Reference

 The incorporation by reference will
 not be effective until correction is made to comply with 37 CFR 1.57(c), (d), or (e) . If the
 incorporated material is relied upon to meet any outstanding objection, rejection, or other
 requirement imposed by the Office, the correction must be made within any time period set by
 the Office for responding to the objection, rejection, or other requirement for the
 incorporation to be effective. Compliance will not be held in abeyance with respect to
 responding to the objection, rejection, or other requirement for the incorporation to be
 effective. In no case may the correction be made later than the close of prosecution as
 defined in 37 CFR
 1.114(b) , or abandonment of the application, whichever occurs
 earlier.
 

 Any correction inserting material by
 amendment that was previously incorporated by reference must be accompanied by a statement
 that the material being inserted is the material incorporated by reference and the amendment
 contains no new matter. 37
 CFR 1.57(g) .
 

 

 The filing date of any application wherein essential
 material is improperly incorporated by reference will not be affected by
 applicant’s correction where (A) there is a clear intent to incorporate by
 reference the intended material and the correction is to add the root words
 of “incorporate” and “reference,” (B) the incorporated document can be
 uniquely identified and the correction is to clarify the document’s
 identification, and (C) where the correction is to insert the material from
 the reference where incorporation is to an unpublished U.S. patent
 application, foreign application or patent, or to a publication.
 

 Reliance on a commonly assigned, prior filed or concurrently
 filed copending application by a different inventor may ordinarily be made
 for the purpose of completing the disclosure provided the incorporated
 material is directed to nonessential material. See 37 CFR
 1.57(e) . 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(a) . 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 35 U.S.C. 112(a) so that
 benefit may be accorded. In re Gosteli, 872 F.2d 1008, 10
 USPQ2d 1614 (Fed. Cir. 1989).
 

 As a safeguard against the omission of a portion of a prior
 application for which priority is claimed under 35 U.S.C. 119(a)-(d) or
 (f) , or for which benefit is claimed under
 35 U.S.C.
 119(e) or 120 , applicant may include
 a statement at the time of filing of the later application incorporating by
 reference the prior application. See MPEP §
 201.06(c) and 211 et seq. where domestic benefit is claimed. See
 MPEP §§ 213 - 216 where foreign priority is claimed. See
 MPEP § 217 regarding 37 CFR
 1.57(b) . The inclusion of such an incorporation by
 reference statement in the later-filed application will permit applicant to
 include subject matter from the prior application into the later-filed
 application without the subject matter being considered as new matter. For the
 incorporation by reference to be effective as a proper safeguard, the
 incorporation by reference statement must be filed at the time of filing of the
 later-filed application. An incorporation by reference statement added after an
 application’s filing date is not effective because no new matter can be added
 to an application after its filing date (see 35 U.S.C.
 132(a) ). Although, as discussed above, an incorporation
 by reference statement can be used as a safeguard against an omission of a
 portion of a prior application for which priority is claimed under
 35 U.S.C.
 119(a)-(d) or (f) , or for which benefit is claimed under
 35 U.S.C.
 119(e) or 120 , it should be noted
 that an incorporation by reference statement will not satisfy the specific
 reference requirement of 35 U.S.C. 119(e) or
 120 or 37 CFR 1.78 . See
 Droplets, Inc. v. E*TRADE Bank, 887 F.3d 1309, 126 USPQ2d
 317 (Fed. Cir. 2018).
 

 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.
 Hoffman-La Roche, Inc. v. Promega Corp., 323 F.3d 1354,
 1367, 66 USPQ2d 1385, 1394 (Fed. Cir. 2003). For further guidance, see
 “ Properly Presenting Prophetic and Working Examples in a Patent
 Application, ” 86 FR 35074 (July 1, 2021). 
 

 For problems arising from the designation of materials by
 trademarks and trade names, see MPEP § 608.01(v) .
 

 

 
 608.01(q) Substitute or Rewritten Specification [R-07.2015]

 
 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) Subject to § 1.312 , a substitute
 specification, excluding the claims, may be filed at any point up to payment
 of the issue fee if it is accompanied by a statement that the substitute
 specification includes no new matter. 
 

 (c) A substitute specification submitted under this section must
 be submitted with markings showing all the changes relative to the immediate
 prior version of the specification of record. The text of any added subject
 matter must be shown by underlining the added text. The text of any deleted
 matter must be shown by strike-through except that double brackets placed
 before and after the deleted characters may be used to show deletion of five
 or fewer consecutive characters. The text of any deleted subject matter must
 be shown by being placed within double brackets if strike-through cannot be
 easily perceived. An accompanying clean version (without markings) must also
 be supplied. Numbering the paragraphs of the specification of record is not
 considered a change that must be shown pursuant to this paragraph.
 

 (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. Note that legibility includes
 ability to be photocopied and scanned so that suitable reprints can be made and
 papers can be electronically reproduced by use of digital imaging and optical
 character recognition. See MPEP § 608.01 .
 

 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
 [1] the claims is required pursuant to 37 CFR 1.125(a) because
 [2] .
 

 A substitute specification must not
 contain new matter. The substitute specification must be submitted with markings showing all
 the changes relative to the immediate prior version of the specification of record. The text
 of any added subject matter must be shown by underlining the added text. The text of any
 deleted matter must be shown by strikethrough except that double brackets placed before and
 after the deleted characters may be used to show deletion of five or fewer consecutive
 characters. The text of any deleted subject matter must be shown by being placed within double
 brackets if strikethrough cannot be easily perceived. An accompanying clean version (without
 markings) and a statement that the substitute specification contains no new matter must also
 be supplied. Numbering the paragraphs of the specification of record is not considered a
 change that must be shown. 
 

 Examiner Note:
 
 1. In bracket 1, insert either
 --excluding-- or --including--. 
 

 2. In bracket 2, insert clear and
 concise examples of why a new specification is required.
 

 3. 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 .
 

 4. See also form paragraph
 13.01 for
 partial rewritten specification.
 
 
 

 37 CFR
 1.125(b) applies to a substitute specification voluntarily
 filed by the applicant. Subject to the provisions of 37 CFR 1.312 , 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 a
 statement that the substitute specification includes no new matter. 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. A marked-up
 copy of the substitute specification showing all the changes relative to the
 immediate prior version of the specification of record must also be submitted. The
 text of any added subject matter must be shown by underlining the added text. The
 text of any deleted matter must be shown by strike-through except that double
 brackets placed before and after the deleted characters may be used to show deletion
 of five or fewer consecutive characters. The text of any deleted subject matter must
 be shown by being placed within double brackets if strike-through cannot be easily
 perceived. Numbering the paragraphs of the specification of record is not considered
 a change that must be shown under 37 CFR 1.125(c) . The paragraphs
 of any substitute specification, other than the claims, should be individually
 numbered in Arabic numerals (for example [0001]) so that any amendment to the
 specification may be made by replacement paragraph in accordance with
 37 CFR
 1.121(b)(1) . 
 

 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 new matter has been added. If,
 however, an examiner becomes aware that new matter is present, an 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. 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 which complies with 37 CFR 1.125 
 should normally be entered. A substitute specification which is denied entry should
 be so marked. 
 

 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) and (c) Not
 Entered.
 

 The substitute specification filed
 [1] has not been entered because it does not conform to 37 CFR 1.125(b) and (c)
 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 proceeding, 37 CFR 1.125(d) -, or 
 

 - after payment of the issue
 fee-, or 
 

 - containing claims (to be
 amended)- --. 
 

 

 2. A substitute specification filed after final action or appeal
 (prior to the date an appeal brief is filed pursuant to 37 CFR 41.37 , see
 37 CFR
 41.33(a) ) is governed by 37 CFR 1.116 . A substitute
 specification filed after the mailing of a notice of allowance is governed by
 37 CFR
 1.312 .
 
 
 

 See MPEP § 714.20 regarding entry of amendments which include
 an unacceptable substitute specification.
 

 For new matter in amendment, see MPEP § 608.04 .
 

 For application prepared for issue, see MPEP
 § 1302.02 .
 

 

 
 608.01(r) Derogatory Remarks About Prior Art in
 Specification [R-08.2012]
 

 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. 

 

 
 608.01(s) Restoration of Canceled Matter [R-08.2012]

 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(b)(4) . A claim canceled by amendment (deleted in its
 entirety) may be reinstated only by a subsequent amendment presenting the claim as a
 new claim with a new claim number. 37 CFR 1.121(c)(5) . See
 MPEP §
 714 .
 

 

 
 608.01(t) Use in Subsequent Application [R-10.2019]

 No part of a specification can normally be transferred to another
 application. Similarly, drawings cannot normally be transferred to another
 application See MPEP §
 608.02(i) .
 

 

 
 608.01(u) [Reserved]

 

 

 
 608.01(v) Marks Used in Commerce and Trade Names [R-01.2024]

 
 15 U.S.C. 1127 
 Construction and definitions; intent of chapter 

 *****

 The terms "trade name" and "commercial name" mean
 any name used by a person to identify his or her business or vocation.
 

 The term "trademark" includes any word, name, symbol,
 or device, or any combination thereof-
 

 
 (1) used by a person, or

 (2) which a person has a bona fide intention to use
 in commerce and applies to register on the principal register established by
 this chapter,
 

 
 to identify and distinguish his or her goods,
 including a unique product, from those manufactured or sold by others and to
 indicate the source of the goods, even if that source is unknown.
 

 The term "service mark" means any word, name, symbol,
 or device, or any combination thereof-
 

 
 (1) used by a person, or

 (2) which a person has a bona fide intention to use
 in commerce and applies to register on the principal register established by
 this chapter,
 

 
 to identify and distinguish the services of one
 person, including a unique service, from the services of others and to indicate
 the source of the services, even if that source is unknown. Titles, character
 names, and other distinctive features of radio or television programs may be
 registered as service marks notwithstanding that they, or the programs, may
 advertise the goods of the sponsor.
 

 The term "certification mark" means any word, name,
 symbol, or device, or any combination thereof-
 

 
 (1) used by a person other than its owner, or

 (2) which its owner has a bona fide intention to
 permit a person other than the owner to use in commerce and files an
 application to register on the principal register established by this
 chapter,
 

 
 to certify regional or other origin, material, mode
 of manufacture, quality, accuracy, or other characteristics of such person's goods
 or services or that the work or labor on the goods or services was performed by
 members of a union or other organization.
 

 The term "collective mark" means a trademark or
 service mark-
 

 
 (1) used by the members of a cooperative, an
 association, or other collective group or organization, or
 

 (2) which such cooperative, association, or other
 collective group or organization has a bona fide intention to use in
 commerce and applies to register on the principal register established by
 this chapter,
 

 
 and includes marks indicating membership in a union,
 an association, or other organization.
 

 The term "mark" includes any trademark, service
 mark, collective mark, or certification mark.
 

 *****

 
 I. PERMISSIBLE USE IN PATENT APPLICATIONS A mark as defined by 15 U.S.C. 1127 (i.e., trademark, service
 mark, collective mark, or certification mark) or trade name may be used in a
 patent application to identify an article or product, service, or organization
 if:
 

 
 (A) its meaning is established by an accompanying definition in the
 specification which is sufficiently descriptive, enabling, precise and definite
 such that a claim including the mark or trade name complies with the
 requirements of 35 U.S.C. 112 , or 
 

 (B) its meaning is well-known to one skilled in the relevant art
 and is satisfactorily defined in the literature. 
 

 
 See, e.g., United States Gypsum Co. v. National Gypsum
 Co., 74 F.3d 1209, 1214 n.6, 37 USPQ2d 1388, 1392 n. 6 (Fed. Cir. 1996).
 Condition (A) or (B) must be met at the time of filing of the complete application. 
 

 The relationship between a mark or trade name and the product,
 service, or organization it identifies is sometimes indefinite, uncertain, and
 arbitrary. For example, the formula or characteristics of a product may change from
 time to time and yet it may continue to be sold under the same mark or trade name. In
 patent specifications, the details of the product, service, or organization
 identified by a mark or trade name should be set forth in positive, exact,
 intelligible language, so that there will be no uncertainty as to what is meant.
 Arbitrary marks or trade names which are liable to mean different things at the
 pleasure of the owner do not constitute such language. Ex Parte
 Kattwinkle, 12 USPQ 11 (Bd. App. 1931).
 

 If the product, service, or organization to which a mark refers is
 set forth in such language that its identity is clear, examiners are authorized to
 permit the use of the mark if it is distinguished from common descriptive nouns by
 capitalization. See subsection II, below. If a mark or trade name has a fixed and
 definite meaning, it constitutes sufficient identification unless some specific
 characteristic of the product, service, or organization is involved in the invention
 such that further description is necessary to comply with the requirements of
 35 U.S.C.
 112 . In that event, as also in those cases where the mark or
 trade name has no fixed and definite meaning, identification by scientific or other
 explanatory language is necessary. See, e.g., United States Gypsum Co. v.
 National Gypsum Co., 74 F3d 1209, 1214 n.6, 37 USPQ2d 1388, 1392 n. 6
 (Fed. Cir. 1996); 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 mark or trade name is introduced by
 amendment, it must be restricted to the characteristics of the product, service, or
 organization known at the time the application was filed to avoid any question of new
 matter.
 

 If proper identification of the product, service, or organization
 identified by a mark or a trade name 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, service, or
 organization merely by mark or trade name. If, for example, a product cannot be
 otherwise defined, an amendment defining the process of its manufacture may be
 permitted unless such amendment would result in the introduction of new matter. 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.
 

 II. PROPRIETARY NATURE OF MARKS USED IN COMMERCE Although the use of marks having definite meanings is permissible
 in patent applications, the proprietary nature of the marks should be respected.
 Marks 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 marks.
 

 Examiners may conduct a search for registered marks
 by using Trademark Search which is available on the USPTO website to determine
 whether an apparent or identified mark in the patent application is a registered
 mark or to what particular goods a registered mark applies.
 

 Form paragraph 6.20 may be used to inform
 applicant of the proprietary nature of marks used in commerce.
 

 ¶ 6.20 Trade Names, Trademarks, and Other Marks Used in Commerce 

 The use of the term [1] , which is a trade name or a mark used
 in commerce, has been noted in this application. The term should be accompanied by the generic
 terminology; furthermore the term should be capitalized wherever it appears or, where
 appropriate, include a proper symbol indicating use in commerce such as ™,
 SM , or ® following the term.
 

 Although the use of trade names and
 marks used in commerce (i.e., trade marks, service marks, certification marks, and collective
 marks) are 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 commercial marks.
 

 Examiner Note:
 
 1. Capitalize each letter of the term in the bracket or, where
 appropriate, include a proper symbol indicating use in commerce such as ™,
 SM , or ® following the
 term.
 

 2. Examiners may conduct a search for registered marks by using
 Trademark Search which is available on the USPTO website to determine whether a mark
 identified in the patent application is a registered mark or not.
 
 
 

 The examiner should not permit the use of language such as “the
 product X (a descriptive name) commonly known as Y (trade name or mark)” since
 such language does not bring out the fact that the latter is a trade name or mark.
 Language such as “the product X (a descriptive name) sold under the trademark Y”
 is permissible.
 

 The use of a mark in the title of an application should be avoided
 as well as the use of a mark coupled with the word “type”, e.g., “Band-Aid type
 bandage.” 
 

 In the event that a registered mark 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 mark of Company X. The owner of a mark may be identified in the
 specification.
 

 Technology Center Directors should reply to all complaint letters
 regarding the misuse of marks used in commerce and forward a copy of the complaint
 letter and reply to the Office of the Deputy Commissioner for Patents who oversees
 the Office of Petitions. Where a letter demonstrates the misuse of a mark in a
 patent application publication, the Office should, where the application is still
 pending, ensure that the mark is replaced by appropriate generic terminology.
 

 

 
 608.01(w) Copyright and Mask Work Notices [R-11.2013]

 
 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
 §
 1.84(s) . The content of the notice must be limited to
 only those elements provided for by law. For example, “©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, “ ©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
 §
 1.71(e) is included at the beginning (preferably as
 the first paragraph) of the specification.
 

 
 *****

 

 The U.S. 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, “©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 anyone 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 U.S.
 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 .
 

 

 

 
 608.02 Drawing [R-01.2024]

 
 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. 

 [Editor Note: Para. (a) below is only applicable to patent applications
 filed under 35 U.S.C. 111 on or after
 December 18, 2013.] 

 
 (a) The applicant for a patent is required to furnish a drawing of
 the invention where necessary for the understanding of the subject matter
 sought to be patented. 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 1.81 (pre-PLT) Drawings required in patent application 

 [Editor Note: Para. (a) below is applicable to patent applications filed
 before December 18, 2013.] 

 
 (a) The applicant for a patent is required to furnish
 a drawing of the 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.
 

 
 *****

 
 I. FILING DATE IN THE ABSENCE OF DRAWING 

 A. Applications Filed under 35 U.S.C. 111 on or after December 18,
 2013 For applications filed on or after December 18,
 2013, other than design applications, 35 U.S.C. 111 no longer
 requires that an application contain a drawing where necessary for the
 understanding of the subject matter sought to be patented to be entitled to a
 filing date. 35
 U.S.C. 113 continues to provide, however, that “[t]he
 applicant shall furnish a drawing where necessary for the understanding of the
 subject matter sought to be patented” and that “[d]rawings 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.” Thus, the absence of any
 drawing on the filing date of an application where a drawing is necessary for the
 understanding of the subject matter sought to be patented may result in an
 applicant not being able to obtain a patent for any claimed invention presented in
 the application, but except for design applications, the absence of any drawing on
 the filing of an application no longer raises a question as to whether the
 application is entitled to a filing date.
 

 Pursuant to 35 U.S.C. 171 , a design
 application (whether filed before, on, or after December 18, 2013) must be filed
 with any required drawing to be entitled to a filing date.
 

 The preparation of drawings for a provisional or
 nonprovisional application is prudent where a drawing is necessary for the
 understanding of the subject matter sought to be patented, and inclusion of such
 drawing(s) with the application on filing will help ensure that the requirements
 of 35 U.S.C.
 113 are satisfied for any such claimed invention.
 

 B. Applications Filed before December 18, 2013 For applications filed under 35 U.S.C.
 111 before December 18, 2013, a drawing (where necessary for
 the understanding of the subject matter sought to be patented), or a high quality
 copy thereof, must be filed with the application. See pre-PLT 35 U.S.C.
 111 , 35 U.S.C. 113 , and
 pre-PLT 37 CFR 1.81 .
 

 In accordance with pre-PLT 35 U.S.C. 111 , a
 specification and any necessary drawing(s) are among the requirements for an
 application to be given a filing date. The first sentence of 35 U.S.C 113 
 requires a drawing to be submitted 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 addresses the situation wherein a drawing is not
 necessary for the understanding of the invention, but the subject matter sought to
 be patented admits of illustration and no drawing was submitted on filing. The
 lack of a drawing in this situation does not render the application incomplete but
 rather is treated as an informality. The examiner should require such drawings in
 almost all such instances. Such drawings could be required during the initial
 processing of the application but do not have to be furnished at the time the
 application is filed. The applicant is given at least two months from the date of
 the letter requiring drawings to submit the drawing(s).
 

 II. RECEIPT OF DRAWING AFTER THE FILING DATE If the examiner discovers new matter in a substitute or additional
 drawing, the drawing should not be entered and the examiner should describe the new
 matter that resulted in non-entry in the next Office action. A new drawing without
 such new matter may be required if the examiner determines that a drawing is needed
 under 37 CFR
 1.81 or 37 CFR 1.83 . Form paragraph
 6.37 ,
 reproduced in MPEP §
 608.02(h) , may be used. The examiner’s decision would be
 reviewable by filing a petition under 37 CFR 1.181 . The Technology
 Center (TC) Director would decide such a petition.
 

 III. HANDLING OF DRAWING REQUIREMENTS UNDER THE FIRST SENTENCE OF 35 U.S.C.
 113 The Office of Patent Application Processing (OPAP) 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 applications
 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 OPAP in accordance with the
 following procedure. OPAP will make the initial determination as to whether drawings
 are required for the understanding of the subject matter of the invention. When no
 drawings are included in the application as filed and drawings are required, the
 applicant is so informed by OPAP. A filing date will not be granted if the
 application was filed under 35 U.S.C. 111 before December 18,
 2013 and applicant will be notified to complete the application ( 37 CFR
 1.53(e) ). If a drawing is later furnished in an application filed
 under 35
 U.S.C. 111 before December 18, 2013, a filing date may be
 granted as of the date of receipt of such drawing.
 

 An OPAP formality examiner should not treat an application without
 drawings as incomplete if drawings are not required. A drawing is not required for a
 filing date for applications, other than design applications, filed under
 35 U.S.C.
 111 on or after December 18, 2013. For applications filed
 before December 18, 2013 a drawing is not required for a filing date under
 pre-PLT 35
 U.S.C. 111 if the application contains:
 

 
 (A) at least one process claim including the term “process” or
 “method” in its introductory phrase;
 

 (B) at least one composition claim including the term
 “composition,” “compound,” “mixture” or “pharmaceutical” in its introductory
 phrase;
 

 (C) at least one claim directed to a coated article or product or
 to an article or product made from a particular material or composition (i.e.,
 an article of known and conventional character (e.g., a table), coated with or
 made of a particular composition (e.g., a specified polymer such as
 polyvinyl-chloride));
 

 (D) at least one claim directed to a laminated article or product
 (i.e., a laminated article of known and conventional character (e.g., a
 table)); or
 

 (E) at least one claim directed to an article, apparatus, or system
 where the sole distinguishing feature is the presence of a particular material
 (e.g., a hydraulic system using a particular hydraulic fluid, or a conventional
 packaged suture using a particular material). 
 

 
 For a more complete explanation about when a drawing is required, see
 MPEP §
 601.01(f) . For applications submitted without all of the
 drawings described in the specification, see MPEP § 601.01(g) .
 

 If an examiner determines that a filing date should not have been
 granted in an application filed before December 18, 2013 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 OPAP with a typed, signed, and dated memorandum requesting cancellation of the
 filing date and identifying the subject matter required to be illustrated.
 

 IV. HANDLING OF DRAWING REQUIREMENTS UNDER THE SECOND SENTENCE OF 35 U.S.C. 113 -
 ILLUSTRATION SUBSEQUENTLY REQUIRED 35
 U.S.C.113 addresses the situation wherein a drawing is not
 necessary for the understanding of the invention, but the subject matter sought to be
 patented admits of illustration by a drawing and the applicant has not furnished a
 drawing. The lack of a drawing in this situation is treated as an informality. A
 filing date will be accorded with the original presentation of the papers. 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) .
 In requiring such a drawing, the examiner should clearly indicate that the
 requirement is made under 37 CFR 1.81(c) which applies when
 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.
 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 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) . One of the following form paragraphs may be used to
 require a drawing:
 

 ¶ 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(c) . No new matter may be
 introduced in the required drawing. Each drawing sheet submitted after the filing date of an
 application must be labeled in the top margin as either 
 "Replacement Sheet"
 
 
 or 
 "New Sheet"
 
 
 pursuant to 37 CFR
 1.121(d) .
 

 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 shortened statutory period of TWO (2)
 MONTHS 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) but in no case can any
 extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set
 by statute ( 35 U.S.C.
 133 ). 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.
 
 

 Applicant should also amend the specification accordingly to refer to
 the new illustration at the time of submission of the drawing(s). This may obviate
 further correspondence where an amendment places the application in condition for
 allowance. 
 

 V. DRAWING STANDARDS 
 37 CFR 1.84 Standards for drawings. 

 
 (a) Drawings. There are two acceptable categories for
 presenting drawings in utility and design 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. Color drawings are permitted in design
 applications. Where a design application contains color drawings, the
 application must include the number of sets of color drawings required
 by paragraph (a)(2)(ii) of this section and the specification must
 contain the reference required by paragraph (a)(2)(iii) of this
 section. 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. The color drawings
 must be of sufficient quality such that all details in the drawings
 are reproducible in black and white in the printed patent. Color
 drawings are not permitted in international applications (see
 PCT Rule 11.13 ). The Office will accept color
 drawings in utility patent applications 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 § 1.17(h) ;
 

 (ii) One (1) set of color drawings if submitted via
 the USPTO patent electronic filing system, or three (3) sets of
 color drawings if not submitted via the USPTO patent electronic
 filing system; and
 

 (iii) An amendment to the specification to insert
 (unless the specification contains or has been previously
 amended to contain) the following language as the first
 paragraph of the brief description of the drawings:
 
 The patent or application file
 contains at least one drawing executed in color. Copies of
 this patent or patent application publication with color
 drawing(s) will be provided by the Office upon request and
 payment of the necessary fee.
 

 
 

 
 

 
 

 (b) Photographs.— 
 (1) Black and white. Photographs, including photocopies
 of photographs, are not ordinarily permitted in utility and design
 patent applications. The Office will accept photographs in utility and
 design patent applications, however, if photographs are the only
 practicable medium for illustrating the claimed invention. For
 example, photographs or photomicrographs of: electrophoresis gels,
 blots ( e.g., immunological, western, Southern, and
 northern), auto- radiographs, cell cultures (stained and unstained),
 histological tissue cross sections (stained and unstained), animals,
 plants, in vivo imaging, thin layer chromatography plates, crystalline
 structures, and, in a design patent application, ornamental effects,
 are acceptable. If the subject matter of the application admits of
 illustration by a drawing, the examiner may require a drawing in place
 of the photograph. The photographs must be of sufficient quality so
 that all details in the photographs are reproducible in the printed
 patent.
 

 (2) Color photographs. Color photographs will be
 accepted in utility and design patent applications if the conditions
 for accepting color drawings and black and white photographs have been
 satisfied. See paragraphs (a)(2) and (b)(1) of this section.
 

 
 

 (c) Identification of drawings. Identifying indicia should be
 provided, and if provided, should include the title of the invention,
 inventor’s name, and application number, or docket number (if any) if an
 application number has not been assigned to the application. If this
 information is provided, it must be placed on the front of each sheet within
 the top margin. Each drawing sheet submitted after the filing date of an
 application must be identified as either “Replacement Sheet” or “New Sheet”
 pursuant to § 1.121(d) . If a
 marked-up copy of any amended drawing figure including annotations
 indicating the changes made is filed, such marked-up copy must be clearly
 labeled as “Annotated Sheet” pursuant to § 1.121(d)(1) .
 

 (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, non-shiny, and
 durable. All sheets must be reasonably free from cracks, creases, and folds.
 Only one side of the sheet may be used for the drawing. Each sheet must be
 reasonably free from erasures and must be free from alterations,
 overwritings, and interlineations. Photographs must be developed on paper
 meeting the sheet-size requirements of paragraph (f) of this section and the
 margin requirements of paragraph (g) of this section. 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
 cater-corner 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) Front page view. The drawing must contain as many views
 as necessary to show the invention. One of the views should be suitable for
 inclusion on the front page of the patent application publication and patent
 as the illustration of the invention. Views must not be connected by
 projection lines and must not contain center lines. Applicant may suggest a
 single view (by figure number) for inclusion on the front page of the patent
 application publication and patent.
 

 (k) Scale. 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. 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.
 

 (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 subject
 to approval by the Office, or may be required by the examiner where
 necessary for understanding of the drawing. 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, “©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 §
 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.
 

 (y) Types of drawings. See §
 1.152 for design drawings, §
 1.1026 for international design reproductions,
 §
 1.165 for plant drawings, and §
 1.173(a)(2) for reissue drawings.
 

 
 

 See MPEP § 608.02(b) for information pertaining to the
 acceptability of drawings. Note that good quality copies are acceptable if the lines
 are uniformly thick, black, and solid.
 

 Each drawing sheet submitted after the filing date of an application
 must be identified as either “Replacement Sheet” or “New Sheet” so that the Office
 will recognize how to treat such a drawing sheet for entry into the application. See
 37 CFR
 1.84(c) . Corrections to drawings must be made in the form of
 replacement sheets labeled, in the header, “Replacement Sheet” since the Office does
 not release drawings for correction. See 37 CFR 1.85 . If a marked-up copy
 of any amended drawing figure, including annotations indicating the changes made, is
 filed, such marked-up copy must be clearly labeled as “Annotated Sheet.”
 

 Black and white drawings are permitted to be transmitted by facsimile
 if the drawings are being submitted after the filing date of the application.
 Applicants should ensure that the facsimile transmission process does not
 unreasonably degrade the quality of the drawings. Color drawings are not permitted to
 be transmitted by facsimile. See 37 CFR 1.6(d)(4) . 
 

 Drawings are currently accepted in two different size formats. It is,
 however, required that all drawing sheets in a particular application be the same
 size for ease of handling.
 

 For information regarding certified copies of an application-as-filed
 which does not meet the sheet size/margin and quality requirements of
 37 CFR
 1.52 , 1.84(f) , and 1.84(g) , see
 MPEP §
 608.01 , subsection III.
 

 For design patent drawings, 37 CFR 1.152 , see
 MPEP
 § 1503.02 .
 

 For international design reproductions,
 37 CFR
 1.1026 , see MPEP §
 2920.04(b) . Note that pursuant to 37 CFR
 1.1061 , the provisions of 37 CFR 1.84 , except for
 1.84(c) , do not apply to international design
 applications.
 

 For plant patent drawings, 37 CFR 1.165 , see
 MPEP
 § 1606 .
 

 For reissue application drawings, see MPEP § 1413 .
 

 For correction of drawings, see MPEP § 608.02(p) .
 For return of drawings, see MPEP § 608.02(y) .
 

 For amendment of drawings, 37 CFR 1.121(d) , see
 MPEP §
 714 .
 

 The filing of a divisional or continuation application under the
 provisions of 37
 CFR 1.53(b) does not obviate the need for acceptable drawings.
 See MPEP
 § 608.02(b) .
 

 See MPEP § 601.01(f) for treatment of design applications
 without drawings or applications filed prior to December 18, 2013 without drawings
 and MPEP
 § 601.01(g) for treatment of applications filed without all
 figures of drawings or applications, other than a design application, filed on or
 after December 18, 2013 without drawings.
 

 VI. 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.
 

 Substitute drawing: A drawing filed later than the filing date of
 an application. Usually submitted to replace an original drawing that was
 unacceptable.
 

 Acceptable drawing: A drawing that is acceptable for publication
 of the application or issuance of the patent.
 

 Corrected drawing: A drawing that includes corrections of
 informalities and changes approved by the examiner.
 

 Unacceptable drawing: The Office no longer considers drawings as
 formal or informal; drawings are either acceptable or unacceptable. Drawings that do
 not comply with all of the form requirements of 37 CFR 1.84 , e.g., because they
 are not on the proper size sheets, or the quality of the lines is poor, may be
 acceptable for the purposes of publication and examination if the drawings are
 readable and reproducible for publication purposes. An objection will generally only
 be made to a drawing that does not comply with the form requirements of
 37 CFR
 1.84 if the Office is unable to reproduce the drawing or the
 contents of the drawing are unacceptable to the examiner.
 

 Plan: This term is used to illustrate the top view.
 

 Elevation: This term is used to illustrate views showing the
 height of objects.
 

 VII. BLACK AND WHITE PHOTOGRAPHS AND LINE DRAWINGS 
 37 CFR 1.84 Standards for drawings. 

 
 (a) Drawings. There are two acceptable categories
 for presenting drawings in utility and design 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
 

 
 

 
 *****

 
 (b) Photographs.— 
 (1) Black and white. Photographs, including photocopies
 of photographs, are not ordinarily permitted in utility and design
 patent applications. The Office will accept photographs in utility and
 design patent applications, however, if photographs are the only
 practicable medium for illustrating the claimed invention. For
 example, photographs or photomicrographs of: electrophoresis gels,
 blots ( e.g., immunological, western, Southern, and
 northern), auto- radiographs, cell cultures (stained and unstained),
 histological tissue cross sections (stained and unstained), animals,
 plants, in vivo imaging, thin layer chromatography plates, crystalline
 structures, and, in a design patent application, ornamental effects,
 are acceptable. If the subject matter of the application admits of
 illustration by a drawing, the examiner may require a drawing in place
 of the photograph. The photographs must be of sufficient quality so
 that all details in the photographs are reproducible in the printed
 patent.
 

 
 

 
 *****

 
 A. Black And White Drawings Black and white drawings are normally required in
 utility patent applications. India ink, or its equivalent that secures solid black
 lines, must be used for drawings. See MPEP § 608.02(c) for information
 relating to the location of drawings in IFW applications.
 

 B. Black And White Photographs And Grayscale Drawings Black and white photographs, including photocopies of photographs,
 are not ordinarily permitted in utility and design patent applications.
 Photographs or photomicrograph printed on sensitized paper are acceptable as
 drawings, in lieu of India ink drawings, as are photographic images submitted via
 the USPTO patent electronic filing system, to illustrate inventions which are
 incapable of being accurately or adequately depicted by India ink drawings, e.g.,
 electrophoresis gels, blots, (e.g., immunological, western, Southern, and
 northern), autoradiographs, cell cultures (stained and unstained), histological
 tissue cross sections (stained and unstained), animals, plants, in vivo imaging,
 thin layer chromatography plates, crystalline structures, metallurgical
 microstructures, textile fabrics, grain structures and, in a design patent
 application, 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.
 

 Black and white photographs submitted in lieu of ink drawings must
 comply with 37
 CFR 1.84(b) . There is no requirement for a petition or
 petition fee, and only one set of photographs is required. See 37 CFR
 1.84(b)(1) .
 

 To be acceptable, such photographs must be of sufficient quality
 so that all details in the photographs are reproducible in the printed patent. If
 several photographs are used to make one sheet of drawings, the photographs must
 be contained on a single sheet.
 

 See MPEP § 608.02(c) for information
 relating to the location of drawings in IFW applications. See
 MPEP §
 1503.02 for discussion of photographs used in design
 patent applications.
 

 VIII. COLOR DRAWINGS OR COLOR PHOTOGRAPHS 
 37 CFR 1.84 Standards for drawings. 

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

 (2) Color. Color drawings are permitted in design
 applications. Where a design application contains color drawings, the
 application must include the number of sets of color drawings required
 by paragraph (a)(2)(ii) of this section and the specification must
 contain the reference required by paragraph (a)(2)(iii) of this
 section. 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. The color drawings
 must be of sufficient quality such that all details in the drawings
 are reproducible in black and white in the printed patent. Color
 drawings are not permitted in international applications (see
 PCT Rule 11.13 ). The Office will accept color
 drawings in utility patent applications 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 § 1.17(h) ;
 

 (ii) One (1) set of color drawings if submitted via
 the USPTO patent electronic filing system, or three (3) sets of
 color drawings if not submitted via the USPTO patent electronic
 filing system; and 
 

 (iii) An amendment to the specification to insert
 (unless the specification contains or has been previously
 amended to contain) the following language as the first
 paragraph of the brief description of the drawings:
 
 The patent or application
 file contains at least one drawing executed in color. Copies
 of this patent or patent application publication with color
 drawing(s) will be provided by the Office upon request and
 payment of the necessary fee.
 

 
 

 
 

 
 

 (b) Photographs . 
 *****

 (2) Color photographs. Color photographs will be
 accepted in utility and design patent applications if the conditions
 for accepting color drawings and black and white photographs have been
 satisfied. See paragraphs (a)(2) and (b)(1) of this section.
 

 
 

 
 *****

 

 Color drawings and color photographs are permitted in
 design applications without the need for a petition. However, the specification of
 design applications filed under 35 U.S.C. 111(a) must include, or
 be amended to include, the reference to a drawing executed in color as provided for
 in 37 CFR
 1.84(a)(2)(iii) . Note that the drawing requirements set forth
 in 37 CFR
 1.84 do not apply to nonprovisional international design
 applications, except for those set forth in 37 CFR 1.84(c) . See
 37 CFR
 1.1061(b) .
 

 Color drawings and color photographs are not accepted
 in utility applications filed under 35 U.S.C. 111 unless a petition
 filed under 37 CFR
 1.84(a)(2) or (b)(2) is granted. Color drawings and color
 photographs are not permitted in international applications (see PCT Rule
 11.13 ). 
 

 Unless a petition is filed and granted, color drawings
 or color photographs will not be accepted in a utility patent application filed under
 35 U.S.C.
 111 . 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. Color drawings and photographs must be of sufficient quality
 such that all details in the drawings are reproducible in black and white in the
 printed patent. Color photographs may be acceptable if the conditions for accepting
 color drawings and black and white photographs are met. One set of color drawings or
 color photographs is required if submitted via the USPTO patent electronic filing
 system, or three sets of color drawings or color photographs are required if not
 submitted via the USPTO patent electronic filing system ( 37 CFR
 1.84(a)(2)(ii) ). The petition is decided by a Supervisory
 Patent Examiner. See MPEP § 1002.02(d) . 
 

 Color photographs or color drawings will be stored in a content
 management system and a black and white copy thereof will be placed in the file
 wrapper along with a placeholder sheet. Color drawings or color photographs submitted
 in paper are also maintained in an artifact folder.
 

 Where color drawings or color photographs are filed in a continuing
 utility 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 in the utility patent application as being
 improper.
 

 Utility patents granted prior to April 18, 2023, were published in
 paper. The patent copies printed at that time depict the drawings in black and white
 only. However, a set of color drawings or color photographs was attached to the
 Letters Patent. Utility patents granted on or after April 18, 2023 are issued as an
 electronic grant (egrant) which will include color drawings or color photographs. See
 MPEP §
 1309 . Copies of any patent with color drawings or color
 photographs attached thereto will be provided by the U.S. Patent and Trademark Office
 upon special request and payment of the fee necessary to recover the actual costs
 associated therewith.
 

 All issued utility patents are presented with black and white
 drawings or photographs in the USPTO search systems. 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 patent or application file contains at least one drawing
 executed in color. Copies of this patent or patent application publication with
 color drawing(s) will be provided by the Office upon request and payment of the
 necessary fee.
 

 
 If color drawings or color photographs have been filed, but the
 required petition has not, form paragraph 6.24.01 may be used
 to notify applicant that a petition is needed.
 

 ¶ 6.24.01 Color Photographs and Color Drawings, Petition
 Required
 

 Color photographs and color drawings are not accepted in utility
 applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such
 petition must be accompanied by the appropriate fee set forth in 37 CFR
 1.17(h) , one set of color drawings or color photographs, as appropriate,
 if submitted via the USPTO patent electronic filing system or three sets of color drawings or
 color photographs, as appropriate, if not submitted via the USPTO patent electronic filing
 system, and, unless already present, an amendment to include the following language as the
 first paragraph of the brief description of the drawings section of the specification:
 

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

 
 Color photographs will be accepted if
 the conditions for accepting color drawings and black and white photographs have been
 satisfied. See 37 CFR
 1.84(b)(2). 

 Examiner Note:
 
 1. This form paragraph should be used only if the application
 contains color photographs or color drawings as the drawings required by
 37 CFR
 1.81. 

 2. This form paragraph should not be used in design
 applications.
 
 
 

 It is anticipated that such a petition will be granted only when the
 U.S. 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 ).
 

 See MPEP § 608.02(c) for information
 relating to the location of drawings in IFW applications.
 

 IX. 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 American National Standards Institute (ANSI)
 ( www.ansi.org ) and the
 International Organization for Standardization (ISO) ( www.iso.org ) are organizations whose
 numerous publications include some that pertain to graphical symbols; the symbols
 therein are considered to be generally acceptable in patent drawings. Although ANSI
 and ISO documents and other published sources may be used as guides during the
 selection of graphic symbols for patent drawings, the Office will not “approve” any
 published collection of symbols as a group because their use and clarity must be
 decided on a case-by-case basis. Overly specific symbols should be avoided. Symbols
 with unclear meanings should be labeled for clarification.
 

 Since design patents protect the appearance of an
 article, graphic drawing symbols in design patent applications should be used
 judiciously, as the drawing symbol may interfere with a clear showing of the design.
 See MPEP §
 1503.02 , subsection V. In addition, because color drawings
 may now be filed in a design application without the need for a petition, applicants
 may prefer to represent color using color drawings instead of using graphic symbols.
 See MPEP §
 1503.02 , subsection V, and MPEP § 608.02 ,
 subsection VIII, for the submission of color drawings in design applications. 
 

 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. 
 

 

 

 
 608.02(a) New Drawing — When Replacement is Required Before
 Examination [R-07.2015]
 

 See MPEP § 608.02 for the procedure to follow when drawings
 have not been filed, but a drawing will aid in the understanding of the invention.
 See MPEP §
 601.01(f) or 601.01(g) for the procedures to
 follow when applications appear to be missing drawing(s). Drawings in utility and
 plant applications will be reviewed by the Office of Patent Application Processing
 (OPAP) for compliance with certain requirements of 37 CFR 1.84 .
 OPAP will send a Notice to File Corrected Application Papers if the drawings are
 unacceptable for purposes of publication. The notice will give applicant a time
 period of two (2) months from the mailing date of the notice to file acceptable
 drawings. This time period for reply is extendable under 37 CFR
 1.136(a) . OPAP will not release applications to the Technology
 Centers until acceptable drawings are filed in the applications.
 

 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 drawings to be of such a condition as to not
 permit reasonable examination of the application, applicant should be required to
 immediately submit corrected drawings. However, if the drawings do permit reasonable
 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 corrected drawings and a
 rejection of the claims as not being in compliance with 35 U.S.C.
 112(a) being made.
 

 If the drawings have been indicated by the applicant as "informal,"
 but the drawings are considered acceptable by OPAP, the examiner should not require
 replacement of the drawings. If the examiner does make objections to the drawings,
 the examiner should require correction in reply to the Office action and not permit
 the objection to be held in abeyance. See MPEP § 608.02(b) ,
 §
 608.02(d) - § 608.02(h) and
 §
 608.02(p) for further information on specific grounds for
 finding drawings informalities.
 

 I. UNTIMELY FILED DRAWINGS If a drawing is not timely received in reply to a notice from the
 Office or a letter from the examiner who requires a drawing, the application
 becomes abandoned for failure to reply.
 

 For the handling of replacement drawings, see
 MPEP §
 608.02(h) .
 

 

 
 608.02(b) Acceptability of Drawings [R-10.2019]

 
 37 CFR 1.85 Corrections to drawings. 

 
 (a) A utility or plant application will not be placed on the
 files for examination until objections to the drawings have been corrected.
 Except as provided in § 1.215(c) , any patent
 application publication will not include drawings filed after the
 application has been placed on the files for examination. Unless applicant
 is otherwise notified in an Office action, objections to the drawings in a
 utility or plant application will not be held in abeyance, and a request to
 hold objections to the drawings in abeyance will not be considered a
 bona fide attempt to advance the application to final
 action ( §
 1.135(c) ). If a drawing in a design application meets
 the requirements of § 1.84(e), (f), and
 (g) and is suitable for reproduction, but is not otherwise
 in compliance with § 1.84 , the drawing may
 be admitted for examination.
 

 (b) The Office will not release drawings for purposes of
 correction. If corrections are necessary, new corrected drawings must be
 submitted within the time set by the Office.
 

 (c) If a corrected drawing is required or if a drawing does not
 comply with § 1.84 or an amended
 drawing submitted under § 1.121(d) in a
 nonprovisional international design application does not comply with
 § 1.1026 at the time an
 application is allowed, the Office may notify the applicant in a notice of
 allowability and set a three-month period of time from the mail date of the
 notice of allowability within which the applicant must file a corrected
 drawing in compliance with § 1.84 or
 1.1026 , as applicable,
 to avoid abandonment. This time period is not extendable under
 §
 1.136 (see § 1.136(c) ).
 

 
 

 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 in an examiner’s action, and that the drawing is admitted for
 examination purposes only (see MPEP § 707.07(a) ). To be fully
 responsive, an amendment must include corrected drawings. See 37 CFR 1.85(c) 
 and 37 CFR
 1.121(d) . The objection to the drawings will not be held in
 abeyance.
 

 I. ACCEPTABILITY OF DRAWINGS The Office no longer considers drawings as formal or informal.
 Drawings are either acceptable or unacceptable. Drawings will be accepted by the
 Office of Patent Application Processing (OPAP) if the drawings are readable and
 reproducible for publication purposes. See MPEP § 507 .
 

 Examiners should review the drawings for disclosure of the claimed
 invention and for proper use of reference numerals. Unless applicant is otherwise
 notified in an Office action, objections to the drawings in a utility or plant
 application will not be held in abeyance. A request to hold objections to the
 drawings in abeyance will not be considered a bona fide attempt
 to advance the application to final action ( 37 CFR 1.135(c) ). Drawing
 corrections should be made promptly before allowance of the application in order
 to avoid delays in issuance of the application as a patent or a reduction to any
 term adjustment. See 37 CFR 1.704(c)(10) . 
 

 II. NOTIFYING APPLICANT If the original drawings are unacceptable, applicant will be
 notified and informed of what the objections are and that new corrected drawings
 are required. In either case, the drawings will be accepted as satisfying the
 requirements of 37 CFR 1.51 . The examiners are directed to advise the
 applicants (see MPEP
 § 707.07(a) ) in the first Office action of the reasons
 why the drawings are unacceptable. If the examiner discovers a defect in the
 content of the drawing, one or more of the form paragraphs reproduced below may be
 used to notify applicant.
 

 ¶ 6.21 New Drawings, Competent Draftsperson

 New corrected drawings in compliance with 37 CFR 1.121(d) are
 required in this application because [1] . Applicant is advised to employ the
 services of a competent patent draftsperson outside the Office, as the U.S. Patent and
 Trademark Office does not prepare new drawings. The corrected drawings are required in reply
 to the Office action to avoid abandonment of the application. The requirement for corrected
 drawings will not be held in abeyance.
 

 

 ¶ 6.22 Drawings Objected To

 The drawings are objected to because
 [1] . Corrected drawing sheets in compliance with 37 CFR 1.121(d) are
 required in reply to the Office action to avoid abandonment of the application. Any amended
 replacement drawing sheet should include all of the figures appearing on the immediate prior
 version of the sheet, even if only one figure is being amended. The figure or figure number of
 an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled,
 the appropriate figure must be removed from the replacement sheet, and where necessary, the
 remaining figures must be renumbered and appropriate changes made to the brief description of
 the several views of the drawings for consistency. Additional replacement sheets may be
 necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after
 the filing date of an application must be labeled in the top margin as either “Replacement
 Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d) . If the changes are not
 accepted by the examiner, the applicant will be notified and informed of any required
 corrective action in the next Office action. The objection to the drawings will not be held in
 abeyance. 
 

 Examiner Note:
 
 1. In bracket 1, insert the reason
 for the objection, for example, --the drawings do not show every feature of the
 invention specified in the claims-- or --the unlabeled rectangular box(es) shown in the
 drawings should be provided with descriptive text labels--. 
 

 2. Unless applicant is otherwise
 notified in an Office action, objections to the drawings in a utility or plant
 application will not be held in abeyance, and a request to hold objections to the
 drawings in abeyance will not be considered a bona fide attempt to advance the
 application to final action. See 37 CFR 1.85(a) .
 

 3. This form paragraph may be
 followed by form paragraph 6.27 to require a marked up copy of the amended drawing
 figure(s) including annotations indicating the changes made in the corrected
 drawings.
 
 
 

 ¶ 6.26 Drawings Do Not Permit Examination

 The drawings are not of sufficient
 quality to permit examination. Accordingly, replacement drawing sheets in compliance with
 37 CFR
 1.121(d) are required in reply to this Office action. The replacement
 sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c) ) so as
 not to obstruct any portion of the drawing figures. If the changes are not accepted by the
 examiner, the applicant will be notified and informed of any required corrective action in the
 next Office action.
 

 Applicant is given a shortened statutory period of TWO (2)
 MONTHS 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) but in no case can any
 extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set
 by statute ( 35 U.S.C.
 133 ). Failure to timely submit replacement drawing sheets 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 Requirement for Marked-up Copy of Drawing Corrections

 In addition to Replacement Sheets
 containing the corrected drawing figure(s), applicant is required to submit a marked-up copy
 of each Replacement Sheet including annotations indicating the changes made to the previous
 version. The marked-up copy must be clearly labeled as “Annotated Sheet” and must be presented
 in the amendment or remarks section that explains the change(s) to the drawings. See
 37 CFR
 1.121(d)(1) . Failure to timely submit the corrected drawing and
 marked-up copy will result in the abandonment of the application. 
 

 Examiner Note:
 
 1. When this form paragraph is used
 by the examiner, the applicant must provide a marked-up copy of any amended drawing
 figure, including annotations indicating the changes made in the drawing replacement
 sheets. See 37 CFR
 1.121(d)(2) .
 

 2. Applicants should be encouraged
 to submit corrected drawings before allowance in order to avoid having any term
 adjustment reduced pursuant to 37 CFR 1.704(c)(10) .
 
 
 
 III. HANDLING OF REPLACEMENT DRAWINGS In those situations where an application is filed with
 unacceptable drawings, applicants will be notified by OPAP to file new acceptable
 drawings complying with 37 CFR 1.84 and
 1.121(d) or 37 CFR 1.1026 , as applicable.
 If the requirement for corrected drawings appears on the notice of allowability
 (PTOL-37), the drawings must be filed within three months of the date of mailing
 of the notice of allowability. Also, each sheet of the drawing should include the
 application number and the art unit in the upper center margin ( 37 CFR
 1.84(c) ) and labeled, in the header, “Replacement Sheet.” 
 

 In utility applications, the examination will normally be
 conducted using the originally presented drawings. The sufficiency of disclosure,
 as concerns the subject matter claimed, will be made by the examiner utilizing the
 original drawings. IT IS APPLICANT’S RESPONSIBILITY TO SEE THAT NO NEW MATTER IS
 ADDED when submitting replacement drawings after allowance since they will
 not normally be reviewed by an examiner. Of course, if
 the examiner notices new matter in the replacement drawings, appropriate action to
 have the new matter deleted should be undertaken.
 

 

 
 608.02(c) Location of Drawings [R-01.2024]

 Black and white line drawings submitted in: (i)
 provisional applications under 35 U.S.C. 111(b) ; (ii)
 nonprovisional utility patent applications under 35 U.S.C.
 111(a) , including reissue utility patent applications; (iii)
 international applications (PCT) and national stage applications under
 35 U.S.C.
 371 ; and (iv) reexamination proceedings for utility patents
 will be converted into TIFF images and stored in IFW. 
 

 Black and white line drawings in design applications,
 including reissue design patent applications, international design applications, and
 reexamination proceedings for design patents will be stored in a content management
 system, and a black and white copy will be placed in the file wrapper along with a
 placeholder sheet.
 

 Black and white photographs and grayscale drawings in:
 (i) provisional applications under 35 U.S.C. 111(b) ; (ii)
 nonprovisional utility and design patent applications under 35 U.S.C.
 111(a) , including reissue utility and design patent
 applications; (iii) national stage applications under 35 U.S.C. 371 ;
 (iv) international applications (PCT); (v) international design applications; (vi)
 reexamination proceedings for utility patents and design patents; and (vii)
 supplemental examination proceedings will be stored in a content management system,
 and a black and white copy will be placed in the file wrapper along with a
 placeholder sheet.
 

 Color drawings and color photographs are not permitted
 in international applications (see PCT Rule 11.13 ). Except for
 international applications, color photographs and color drawings in utility and
 design applications and proceedings will be stored in a content management system and
 a black and white copy thereof will be placed in the file wrapper along with a
 placeholder sheet.
 

 Originally submitted drawings on paper that are
 photographs or in color may be maintained in an artifact folder. 
 

 

 
 608.02(d) Complete Illustration in Drawings [R-07.2015]

 
 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). In addition, tables that are included in the specification
 and sequences that are included in sequence listings should not be
 duplicated in the drawings.
 

 (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 §
 1.81(d) .
 

 
 

 If an application filed under 35 U.S.C. 111 or under
 35 U.S.C.
 371 includes a sequence listing or a table, such a sequence
 listing or table should not be included in both the drawings and the descriptive
 portion of the specification. 37 CFR 1.83(a) and
 1.58(a) .
 

 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 OG 739 (Comm’r Pat. 1911).)
 

 Form paragraph 6.22.01 , 6.22.04 , or
 6.36 , where appropriate, may be used to require
 illustration.
 

 ¶ 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 §
 608.02(d) . Corrected drawing sheets in compliance with 37 CFR 1.121(d) are
 required in reply to the Office action to avoid abandonment of the application. Any amended
 replacement drawing sheet should include all of the figures appearing on the immediate prior
 version of the sheet, even if only one figure is being amended. The figure or figure number of
 an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled,
 the appropriate figure must be removed from the replacement sheet, and where necessary, the
 remaining figures must be renumbered and appropriate changes made to the brief description of
 the several views of the drawings for consistency. Additional replacement sheets may be
 necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after
 the filing date of an application must be labeled in the top margin as either
 
 "Replacement Sheet"
 
 
 or
 
 "New Sheet"
 
 
 pursuant to
 37 CFR
 1.121(d) . If the changes are not accepted by the examiner, the applicant
 will be notified and informed of any required corrective action in the next Office action. The
 objection to the drawings will not be held in abeyance.
 

 Examiner Note:
 
 1. In bracket 1, identify the
 structural details not shown in the drawings.
 

 2. Unless applicant is otherwise
 notified in an Office action, objections to the drawings in a utility or plant
 application will not be held in abeyance, and a request to hold objections to the
 drawings in abeyance will not be considered a bona fide attempt to advance the
 application to final action. See 37 CFR 1.85(a) .
 

 3. This form paragraph may be
 followed by form paragraph 6.27 to require a marked up copy of the amended drawing
 figure(s) including annotations indicating the changes made in the corrected
 drawings.
 
 
 

 ¶ 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.
 

 
 Corrected drawing sheets in compliance
 with 37 CFR
 1.121(d) are required in reply to the Office action to avoid abandonment
 of the application. Any amended replacement drawing sheet should include all of the figures
 appearing on the immediate prior version of the sheet, even if only one figure is being
 amended. The figure or figure number of an amended drawing should not be labeled as “amended.”
 If a drawing figure is to be canceled, the appropriate figure must be removed from the
 replacement sheet, and where necessary, the remaining figures must be renumbered and
 appropriate changes made to the brief description of the several views of the drawings for
 consistency. Additional replacement sheets may be necessary to show the renumbering of the
 remaining figures. Each drawing sheet submitted after the filing date of an application must
 be labeled in the top margin as either 
 "Replacement
 Sheet"
 
 
 or 
 "New
 Sheet"
 
 
 pursuant to 37 CFR 1.121(d) . If the changes are not
 accepted by the examiner, the applicant will be notified and informed of any required
 corrective action in the next Office action. The objection to the drawings will not be held in
 abeyance.
 

 Examiner Note:
 
 1. Supply a full explanation, if it
 is not readily apparent how the drawings are incomplete.
 

 2. Unless applicant is otherwise
 notified in an Office action, objections to the drawings in a utility or plant
 application will not be held in abeyance, and a request to hold objections to the
 drawings in abeyance will not be considered a bona fide attempt to advance the
 application to final action. See 37 CFR 1.85(a) .
 

 3. This form paragraph may be
 followed by form paragraph 6.27 to require a marked up copy of the amended drawing
 figure(s) including annotations indicating the changes made in the corrected
 drawings.
 
 
 

 

 ¶ 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.
 

 Corrected drawing sheets in compliance
 with 37 CFR
 1.121(d) are required in reply to the Office action to avoid abandonment
 of the application. Any amended replacement drawing sheet should include all of the figures
 appearing on the immediate prior version of the sheet, even if only one figure is being
 amended. The figure or figure number of an amended drawing should not be labeled as “amended.”
 If a drawing figure is to be canceled, the appropriate figure must be removed from the
 replacement sheet, and where necessary, the remaining figures must be renumbered and
 appropriate changes made to the brief description of the several views of the drawings for
 consistency. Additional replacement sheets may be necessary to show the renumbering of the
 remaining figures. Each drawing sheet submitted after the filing date of an application must
 be labeled in the top margin as either 
 "Replacement
 Sheet"
 
 
 or 
 "New
 Sheet"
 
 
 pursuant to 37 CFR 1.121(d) . If the changes are not
 accepted by the examiner, the applicant will be notified and informed of any required
 corrective action in the next Office action. The objection to the drawings will not be held in
 abeyance.
 

 Examiner Note:

 In bracket 1, insert the features
 that must be shown.
 

 

 See also MPEP § 608.02 .
 

 

 
 608.02(e) Examiner Determines Completeness and Consistency of
 Drawings [R-07.2015]
 

 The examiner should ensure 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.
 

 One or more of the following form paragraphs may be used to require
 correction.
 

 ¶ 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 §
 608.02(d) . Corrected drawing sheets in compliance with 37 CFR 1.121(d) are
 required in reply to the Office action to avoid abandonment of the application. Any amended
 replacement drawing sheet should include all of the figures appearing on the immediate prior
 version of the sheet, even if only one figure is being amended. The figure or figure number of
 an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled,
 the appropriate figure must be removed from the replacement sheet, and where necessary, the
 remaining figures must be renumbered and appropriate changes made to the brief description of
 the several views of the drawings for consistency. Additional replacement sheets may be
 necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after
 the filing date of an application must be labeled in the top margin as either
 
 "Replacement Sheet"
 
 
 or
 
 "New Sheet"
 
 
 pursuant to
 37 CFR
 1.121(d) . If the changes are not accepted by the examiner, the applicant
 will be notified and informed of any required corrective action in the next Office action. The
 objection to the drawings will not be held in abeyance.
 

 Examiner Note:
 
 1. In bracket 1, identify the
 structural details not shown in the drawings.
 

 2. Unless applicant is otherwise
 notified in an Office action, objections to the drawings in a utility or plant
 application will not be held in abeyance, and a request to hold objections to the
 drawings in abeyance will not be considered a bona fide attempt to advance the
 application to final action. See 37 CFR 1.85(a) .
 

 3. This form paragraph may be
 followed by form paragraph 6.27 to require a marked up copy of the amended drawing
 figure(s) including annotations indicating the changes made in the corrected
 drawings.
 
 
 

 ¶ 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] . Corrected drawing
 sheets in compliance with 37
 CFR 1.121(d) are required in reply to the Office action to avoid
 abandonment of the application. Any amended replacement drawing sheet should include all of
 the figures appearing on the immediate prior version of the sheet, even if only one figure is
 being amended. Each drawing sheet submitted after the filing date of an application must be
 labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to
 37 CFR
 1.121(d) . If the changes are not accepted by the examiner, the applicant
 will be notified and informed of any required corrective action in the next Office action. The
 objection to the drawings will not be held in abeyance.
 

 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. Unless applicant is
 otherwise notified in an Office action, objections to the drawings in a utility or plant
 application will not be held in abeyance, and a request to hold objections to the
 drawings in abeyance will not be considered a bona fide attempt to advance the
 application to final action. See 37 CFR 1.85(a) .
 

 4. This form paragraph may
 be followed by form paragraph 6.27 to require a marked up copy of the amended drawing
 figure(s) including annotations indicating the changes made in the corrected
 drawings.
 
 
 

 ¶ 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] . Corrected drawing sheets in compliance with
 37 CFR
 1.121(d) are required in reply to the Office action to avoid abandonment
 of the application. Any amended replacement drawing sheet should include all of the figures
 appearing on the immediate prior version of the sheet, even if only one figure is being
 amended. Each drawing sheet submitted after the filing date of an application must be labeled
 in the top margin as either 
 "Replacement Sheet
 "
 
 
 or 
 "New
 Sheet"
 
 
 pursuant to 37 CFR 1.121(d) . If the changes are not
 accepted by the examiner, the applicant will be notified and informed of any required
 corrective action in the next Office action. The objection to the drawings will not be held in
 abeyance.
 

 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. Unless applicant is otherwise
 notified in an Office action, objections to the drawings in a utility or plant
 application will not be held in abeyance, and a request to hold objections to the
 drawings in abeyance will not be considered a bona fide attempt to advance the
 application to final action. See 37 CFR 1.85(a) .
 

 4. This form paragraph may be
 followed by form paragraph 6.27 to require a marked up copy of the amended drawing
 figure(s) including annotations indicating the changes made in the corrected
 drawings.
 
 
 

 ¶ 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] . Corrected drawing sheets in compliance
 with 37 CFR
 1.121(d) are required in reply to the Office action to avoid abandonment
 of the application. Any amended replacement drawing sheet should include all of the figures
 appearing on the immediate prior version of the sheet, even if only one figure is being
 amended. Each drawing sheet submitted after the filing date of an application must be labeled
 in the top margin as either 
 "Replacement
 Sheet"
 
 
 or 
 "New
 Sheet"
 
 
 pursuant to 37 CFR 1.121(d) . If the changes are not
 accepted by the examiner, the applicant will be notified and informed of any required
 corrective action in the next Office action. The objection to the drawings will not be held in
 abeyance.
 

 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. This form paragraph may be
 modified to require or allow the applicant to delete the reference character(s) from the
 description instead of adding them to the drawing(s).
 

 3. Unless applicant is otherwise
 notified in an Office action, objections to the drawings in a utility or plant
 application will not be held in abeyance, and a request to hold objections to the
 drawings in abeyance will not be considered a bona fide attempt to advance the
 application to final action. See 37 CFR 1.85(a) .
 

 4. This form paragraph may be
 followed by form paragraph 6.27 to require a marked up copy of the amended drawing
 figure(s) including annotations indicating the changes made in the corrected
 drawings.
 
 
 

 ¶ 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 character(s)
 not mentioned in the description: [1] . Corrected drawing sheets in compliance
 with 37 CFR
 1.121(d) , or amendment to the specification to add the reference
 character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to
 the Office action to avoid abandonment of the application. Any amended replacement drawing
 sheet should include all of the figures appearing on the immediate prior version of the sheet,
 even if only one figure is being amended. Each drawing sheet submitted after the filing date
 of an application must be labeled in the top margin as either 
 "Replacement Sheet"
 
 
 or 
 "New Sheet"
 
 
 pursuant to 37 CFR 1.121(d) If the
 changes are not accepted by the examiner, the applicant will be notified and informed of any
 required corrective action in the next Office action. The objection to the drawings will not
 be held in abeyance.
 

 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. Unless applicant is otherwise
 notified in an Office action, objections to the drawings in a utility or plant
 application will not be held in abeyance, and a request to hold objections to the
 drawings in abeyance will not be considered a bona fide attempt to advance the
 application to final action. See 37 CFR 1.85(a) .
 

 3. This form paragraph may be
 followed by form paragraph 6.27 to require a marked up copy of the amended drawing
 figure(s) including annotations indicating the changes made in the corrected
 drawings.
 
 
 

 

 
 608.02(f) Modifications in Drawings [R-08.2012]

 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 OG 1596 (Comm’r Pat. 1901).
 

 All modifications described must be illustrated, or the text
 canceled. ( Ex parte Peck, 1901 C.D. 136, 96 OG 2409 (Comm’r Pat.
 1901).) This requirement does not apply to a mere reference to minor variations nor
 to well-known and conventional parts.
 

 Form paragraph 6.22.05 may be used to require
 correction.
 

 ¶ 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. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are
 required in reply to the Office action to avoid abandonment of the application. Any amended
 replacement drawing sheet should include all of the figures appearing on the immediate prior
 version of the sheet, even if only one figure is being amended. The figure or figure number of
 an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled,
 the appropriate figure must be removed from the replacement sheet, and where necessary, the
 remaining figures must be renumbered and appropriate changes made to the brief description of
 the several views of the drawings for consistency. Additional replacement sheets may be
 necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after
 the filing date of an application must be labeled in the top margin as either
 
 "Replacement Sheet"
 
 
 or
 
 "New Sheet"
 
 
 pursuant to
 37 CFR
 1.121(d) . If the changes are not accepted by the examiner, the applicant
 will be notified and informed of any required corrective action in the next Office action. The
 objection to the drawings will not be held in abeyance.
 

 Examiner Note:
 
 1. In bracket 1, insert the
 appropriate Figure number(s).
 

 2. Unless applicant is otherwise
 notified in an Office action, objections to the drawings in a utility or plant
 application will not be held in abeyance, and a request to hold objections to the
 drawings in abeyance will not be considered a bona fide attempt to advance the
 application to final action. See 37 CFR 1.85(a) .
 

 3. This form paragraph may be
 followed by form paragraph 6.27 to require a marked up copy of the amended drawing
 figure(s) including annotations indicating the changes made in the corrected
 drawings.
 
 
 

 

 
 608.02(g) Illustration of Prior Art [R-08.2012]

 Figures showing the prior art are usually unnecessary and should be
 canceled. Ex parte Elliott, 1904 C.D. 103, 109 OG 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 §
 608.02(g) . Corrected drawings in compliance with
 37 CFR
 1.121(d) are required in reply to the Office action to avoid
 abandonment of the application. The replacement sheet(s) should be labeled “Replacement
 Sheet” in the page header (as per 37 CFR 1.84(c) ) so as not to obstruct
 any portion of the drawing figures. If the changes are not accepted by the examiner, the
 applicant will be notified and informed of any required corrective action in the next Office
 action. The objection to the drawings will not be held in abeyance.
 

 

 

 
 608.02(h) Replacement Drawings [R-10.2019]

 

 All sheets of replacement drawings will be routinely entered into the
 contents of the application. However, the examiner should not overlook such factors
 as new matter, the necessity for the replacement sheets and consistency with other
 sheets. If the examiner decides that the sheets should not be entered, the examiner
 should provide the applicant with the complete, explicit reasoning for the denial of
 entry. The entries previously made will be marked "not entered."
 

 Form paragraph 6.37 may be used to acknowledge
 replacement drawing sheets.
 

 ¶ 6.37 Acknowledgment of Replacement Drawing Sheets

 The drawings were received on
 [1] . These drawings are [2] .
 

 Examiner Note:
 
 1. In bracket 2, insert either
 --acceptable-- or --unacceptable--.
 

 2. Identify any drawing(s) not entered because they contain new
 matter and explain the correction(s) necessary to obtain entry upon resubmission.
 

 3. If unacceptable because of noncompliance with 37 CFR 1.121(d) ,
 an explanation must be provided. Form PTOL-324 may be used instead of this form
 paragraph to provide the explanation.
 
 
 

 Alternatively, PTOL-326 Office Action Summary includes a block for
 acknowledgment of replacement drawings.
 

 When an amendment is filed stating that replacement
 sheets of drawings are filed with the amendment and such drawings are not in the IFW,
 in the next communication by the examiner, the applicant must be notified that
 replacement drawings do not appear to have been received and thus have not been
 entered in the application. 
 

 Note that drawings will not be returned to the applicant. See
 MPEP §
 608.02(y) .
 

 

 
 608.02(i) Transfer of Drawings From Prior Applications [R-11.2013]

 Drawings cannot normally be transferred from a first pending
 application to another as the Office no longer considers drawings as formal or
 informal. Drawings that do not comply with all of the form requirements of
 37 CFR
 1.84 may be acceptable for the purposes of publication and
 examination if the drawings are readable and reproducible for publication purposes.
 
 

 

 
 608.02(j) - 608.02(o) [Reserved]

 

 

 
 608.02(p) Correction of Drawings [R-07.2015]

 
 37 CFR 1.121 Manner of making amendments in applications. 

 *****

 
 (d) Drawings. One or more application drawings shall be amended in the
 following manner: Any changes to an application drawing must be in
 compliance with § 1.84 or, for a
 nonprovisional international design application, in compliance with
 §§
 1.84(c) and 1.1026 and must be submitted on a replacement sheet
 of drawings which shall be an attachment to the amendment document and, in
 the top margin, labeled “Replacement Sheet.” Any replacement sheet of
 drawings shall include all of the figures appearing on the immediate prior
 version of the sheet, even if only one figure is amended. Any new sheet of
 drawings containing an additional figure must be labeled in the top margin
 as “New Sheet.” All changes to the drawings shall be explained, in detail,
 in either the drawing amendment or remarks section of the amendment
 paper.
 
 (1) A marked-up copy of any amended drawing figure,
 including annotations indicating the changes made, may be included.
 The marked-up copy must be clearly labeled as “Annotated Sheet” and
 must be presented in the amendment or remarks section that explains
 the change to the drawings.
 

 (2) A marked-up copy of any amended drawing figure,
 including annotations indicating the changes made, must be provided
 when required by the examiner.
 

 
 

 
 *****

 

 
 37 CFR 1.85 Corrections to drawings. 

 
 (a) A utility or plant application will not be placed on the
 files for examination until objections to the drawings have been corrected.
 Except as provided in § 1.215(c) , any patent
 application publication will not include drawings filed after the
 application has been placed on the files for examination. Unless applicant
 is otherwise notified in an Office action, objections to the drawings in a
 utility or plant application will not be held in abeyance, and a request to
 hold objections to the drawings in abeyance will not be considered a
 bona fide attempt to advance the application to final
 action ( §
 1.135(c) ). If a drawing in a design application meets
 the requirements of § 1.84(e), (f), and (g) 
 and is suitable for reproduction, but is not otherwise in compliance with
 §
 1.84 , the drawing may be admitted for examination.
 

 (b) The Office will not release drawings for purposes of
 correction. If corrections are necessary, new corrected drawings must be
 submitted within the time set by the Office.
 

 (c) If a corrected drawing is required or if a drawing does not
 comply with § 1.84 or an amended
 drawing submitted under § 1.121(d) in a
 nonprovisional international design application does not comply with
 § 1.1026 at the time an
 application is allowed, the Office may notify the applicant in a notice of
 allowability and set a three-month period of time from the mail date of the
 notice of allowability within which the applicant must file a corrected
 drawing in compliance with § 1.84 or
 1.1026 , as applicable,
 to avoid abandonment. This time period is not extendable under
 §
 1.136 (see § 1.136(c) ).
 

 
 

 See also MPEP § 608.02(b) . For correction at
 allowance and issue, see MPEP § 608.02(w) and
 MPEP §
 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.
 

 The following form paragraphs may be used to notify applicants of
 drawing corrections.
 

 ¶ 6.39 USPTO Does Not Make Drawing Changes

 The United States Patent and Trademark
 Office does not make drawing changes. 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 form 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
 CHANGESReplacement Drawing Sheets
 Drawing changes must be made by
 presenting replacement sheets which incorporate the desired changes and which comply with
 37 CFR
 1.84 . An explanation of the changes made must be presented either in
 the drawing amendments section, or remarks, section of the amendment paper. Each drawing
 sheet submitted after the filing date of an application must be labeled in the top margin
 as either 
 "Replacement Sheet"
 
 
 
 or 
 "New Sheet"
 
 
 pursuant to
 37 CFR
 1.121(d) . A replacement sheet must include all of the figures
 appearing on the immediate prior version of the sheet, even if only one figure is being
 amended. The figure or figure number of the amended drawing(s) must not be labeled as
 “amended.” If the changes to the drawing figure(s) are not accepted by the examiner,
 applicant will be notified of any required corrective action in the next Office action. No
 further drawing submission will be required, unless applicant is notified. 
 

 Identifying indicia, if provided,
 should include the title of the invention, inventor’s name, and application number, or
 docket number (if any) if an application number has not been assigned to the application.
 If this information is provided, it must be placed on the front of each sheet and within
 the top margin.
 

Annotated Drawing Sheets 
 A marked-up copy of any amended
 drawing figure, including annotations indicating the changes made, may be submitted or
 required by the examiner. The annotated drawing sheets must be clearly labeled as
 “Annotated Sheet” and must be presented in the amendment or remarks section that explains
 the change(s) to the drawings.
 

Timing of Corrections
 Applicant is required to submit
 acceptable corrected drawings within the time period set in the Office action. See
 37 CFR
 1.85(a) . Failure to take corrective action within the set period will
 result in ABANDONMENT of the application.
 

 If corrected drawings are required
 in a Notice of Allowability (PTOL-37), the new drawings MUST be filed within the THREE
 MONTH shortened statutory period set for reply in the “Notice of Allowability.” Extensions
 of time may NOT be obtained under the provisions of 37 CFR 1.136 for filing the corrected
 drawings after the mailing of a Notice of Allowability. 
 

 

 ¶ 6.41 Reminder That USPTO Does Not Make Drawing Changes

 Applicant is reminded that the U.S.
 Patent and Trademark Office does not make drawing changes and that it is applicant’s
 responsibility to ensure that the drawings are corrected in accordance with the instructions
 set forth in the paper mailed on [1] .
 

 Examiner Note:

 This form paragraph is to be used
 when the applicant has been previously provided with information on how to effect drawing
 changes.
 

 

 ¶ 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 the paper mailed on [1] .
 

 Examiner Note:

 This form paragraph is to be used
 when allowing the application and when applicant has previously been provided with
 information on how to effect drawing changes.
 

 

 ¶ 6.43 Drawings Contain Informalities, Application Allowed

 The drawings filed on [1] are acceptable subject to correction of the informalities indicated below. In order to avoid abandonment of this application,
 correction is required in reply to the Office action. The correction will not be held in abeyance.
 

 Examiner Note:
 
 1. Use this form paragraph when allowing the application, particularly at time of first action issue. Supply an explanation of
 drawings informalities (see 
 MPEP § 608.02(b) , § 608.02(d) - § 608.02(h) and § 608.02(p) ).
 

 2. Form paragraph 6.40 or 6.41 must follow.
 
 
 

 ¶ 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.
 
 
 

 

 
 608.02(q) - 608.02(s) [Reserved]

 

 

 
 608.02(t) Cancelation of Figures [R-08.2012]

 If a drawing figure is canceled, a replacement sheet of drawings must
 be submitted without the figure (see 37 CFR 1.121(d) ). If the canceled
 drawing figure was the only drawing on the sheet, then only a marked-up copy of the
 drawing sheet including an annotation showing that the drawing has been cancelled is
 required. The marked-up (annotated) copy must be clearly labeled as "Annotated Sheet"
 and must be presented in the amendment or remarks section of the amendment document
 which explains the changes to the drawings (see 37 CFR 1.121(d)(1) ). The brief
 description of the drawings should also be amended to reflect this change.
 

 

 
 608.02(u) [Reserved]

 

 

 
 608.02(v) Drawing Changes Which Require Annotated Sheets [R-08.2012]

 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 marked-up copy of the drawing should be filed with a replacement
 drawing. The marked-up copy must be clearly labeled as “Annotated Sheet.” See
 37 CFR
 1.84(c) and 1.121(d) . Ordinarily, broken
 lines may be changed to full without a sketch.
 

 Annotated sheets filed by an applicant and used for correction of the
 drawing will not be returned. All such annotated sheets must be in ink or permanent
 prints.
 

 

 
 608.02(w) Drawing Changes Which May Be Made Without Applicant’s
 Annotated Sheets [R-11.2013]
 

 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 to
 the applicant indicating the change to be made and may include a marked-up copy of
 the drawing showing the addition or alteration to be made. The marked-up copy of the
 drawing should be attached to the letter to the applicant made of record in the
 application file.
 

 As a guide to the examiner, the following corrections are
 illustrative of those that may be suggested without requiring annotated sheets from
 the applicant:
 

 
 (A) Adding two or three reference characters or exponents.

 (B) Changing one or two numerals or figure ordinals.

 (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.

 
 

 
 608.02(x) Drawing Corrections or Changes Accepted Unless Notified
 Otherwise [R-08.2012]
 

 Drawing corrections or changes will be entered at the time they are
 presented, unless applicant is notified to the contrary by the examiner in the action
 following the amended drawing submission.
 

CORRECTION OR CHANGE NOT ACCEPTED
 Where the corrected or changed drawing is not accepted, for
 example, because the submitted corrections or changes are erroneous, or involve
 new matter or do not include all necessary corrections, the applicant will be
 notified and informed of any required corrective action in the next Office action.
 The examiner should explicitly and clearly set forth all the reasons for not
 approving the corrections to the drawings in the next communication to the
 applicant. See MPEP
 § 608.02(p) for suggested form paragraphs that may be
 used by examiners to notify applicants of drawing corrections.
 

 

 
 608.02(y) Return of Drawing [R-08.2012]

 Drawings will not be returned to the applicant.

 

 
 608.02(z) Allowable Applications Needing Drawing Corrections or
 Corrected Drawings [R-07.2015]
 

 If the drawings submitted in an application have been indicated by
 the applicant as “informal,” but the drawings are considered acceptable by OPAP, the
 examiner should not require replacement of the drawings.
 

 In IFW applications, generally, the most recently filed
 drawings will be used for printing, unless they have been indicated as “Not Entered.” 
 

 If the examiner makes an objection to the drawings, the
 examiner should require correction in reply to the Office action that sets forth the
 objection. If an application is being allowed, and corrected drawings have not been
 filed, form PTOL-37 provides an appropriate check box for requiring corrected
 drawings.
 

 Extensions of time to provide acceptable drawings in response to a
 notice of allowability are not permitted. If the Office of Data Management receives
 drawings that cannot be scanned or are otherwise unacceptable for publication, the
 Office of Data Management will mail a requirement for corrected drawings, giving
 applicant a shortened statutory period of two months to reply. The drawings will
 ordinarily not be returned to the examiner for corrections.
 

 I. UTILITY PATENT APPLICATIONS RECEIVING REPLACEMENT DRAWINGS AFTER THE NOTICE
 OF ALLOWABILITY Where replacement drawings are received in utility
 patent applications after the Notice of Allowability was mailed, the replacement
 drawings are handled by the Office of Data Management. Submission to the examiner
 is not necessary unless an amendment to the specification accompanies the
 drawings, such as an amendment where the description of figures is added or
 canceled. It is applicant’s responsibility to see that no new matter is added when
 submitting replacement drawings after allowance because they will not normally be
 reviewed by an examiner.
 

 II. 37 CFR 1.312 AMENDMENTS For information on handling amendments to drawings filed under
 37 CFR
 1.312 , see MPEP § 714.16 .
 

 

 

 
 608.03 Models, Exhibits, Specimens [R-08.2012]

 
 35 U.S.C. 114 
 Models, specimens. 

 The Director 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 Director
 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
 § 1.52 or § 1.84 ;
 

 (2) Is specifically required by the Office; or

 (3) Is filed with a petition under this section
 including:
 
 (i) The fee set forth in § 1.17(h) ; 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.
 

 (c) Unless the model or exhibit substantially conforms to the
 requirements of § 1.52 or § 1.84 
 under paragraph (a)(1) of this section, it must be accompanied by photographs
 that show multiple views of the material features of the model or exhibit and
 that substantially conform to the requirements of §
 1.84 .
 

 
 

 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 operability of a device. If
 operability 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.
 

 Models or exhibits that are required by the Office or filed with a
 petition under 37 CFR
 1.91(a)(3) must be accompanied by photographs that (A) show
 multiple views of the material features of the model or exhibit, and (B) substantially
 conform to the requirements of 37 CFR 1.84 . See 37 CFR 1.91(c) .
 Material features are considered to be those features which represent that portion(s) of
 the model or exhibit forming the basis for which the model or exhibit has been
 submitted. Where a video or DVD or similar item is submitted as a model or exhibit,
 applicant must submit photographs of what is depicted in the video or DVD (the content
 of the material such as a still image single frame of a movie) and not a photograph of a
 video cassette, DVD disc, or compact disc.
 

 
 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 biological deposits.
 

 
 608.03(a) Handling of Models, Exhibits, and Specimens [R-07.2015]

 All models and exhibits received in the U.S. Patent and Trademark
 Office should be taken to the Technology Center (TC) 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 an artifact sheet.
 

 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. The Office may return the model, exhibit, or
 specimen, at any time once it is no longer necessary for the conduct of business
 before the Office and return of the model or exhibit is appropriate. See
 37 CFR
 1.94 .
 

 If the model or exhibit cannot be conveniently stored in an artifact
 folder, 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 §
 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. 

 
 (a) Models, exhibits, or specimens may be returned to the
 applicant if no longer necessary for the conduct of business before the
 Office. When applicant is notified that a model, exhibit, or specimen is no
 longer necessary for the conduct of business before the Office and will be
 returned, applicant must arrange for the return of the model, exhibit, or
 specimen at the applicant’s expense. The Office will dispose of perishables
 without notice to applicant unless applicant notifies the Office upon
 submission of the model, exhibit or specimen that a return is desired and
 makes arrangements for its return promptly upon notification by the Office
 that the model, exhibit or specimen is no longer necessary for the conduct
 of business before the Office.
 

 (b) Applicant is responsible for retaining the actual model,
 exhibit, or specimen for the enforceable life of any patent resulting from
 the application. The provisions of this paragraph do not apply to a model or
 exhibit that substantially conforms to the requirements of § 1.52 
 or §
 1.84 , where the model or exhibit has been described by
 photographs that substantially conform to §
 1.84 , or where the model, exhibit or specimen is
 perishable.
 

 (c) Where applicant is notified, pursuant to paragraph (a) of
 this section, of the need to arrange for return of a model, exhibit or
 specimen, applicant must arrange for the return within the period set in
 such notice, to avoid disposal of the model, exhibit or specimen by the
 Office. Extensions of time are available under §
 1.136 , except in the case of perishables. Failure to
 establish that the return of the item has been arranged for within the
 period set or failure to have the item removed from Office storage within a
 reasonable amount of time notwithstanding any arrangement for return, will
 permit the Office to dispose of the model, exhibit or specimen.
 

 
 

 When applicant is notified that a model, exhibit, or specimen is no
 longer necessary for the conduct of business before the Office and will be returned,
 applicant must make arrangements for the return of the model, exhibit, or specimen at
 applicant’s expense. The Office may return the model, exhibit, or specimen at any
 time once it is no longer necessary for the conduct of business and need not wait
 until the close of prosecution or later. Where the model, exhibit, or specimen is a
 perishable, the Office will be presumed to have permission to dispose of the item
 without notice to applicant, unless applicant notifies the Office upon submission of
 the item that a return is desired and arrangements are promptly made for the item’s
 return upon notification by the Office.
 

 For models, exhibits, or specimens that are returned, applicant is
 responsible for retaining the actual model, exhibit, or specimen for the enforceable
 life of any patent resulting from the application except where: (A) the model or
 exhibit substantially conforms to the requirements of 37 CFR 1.52 or
 1.84 ; (B) the model or exhibit has been described by
 photographs that substantially conform to 37 CFR 1.84 ; or (C) the model,
 exhibit, or specimen is perishable. Applicant may be called upon to resubmit such
 returned model, exhibit, or specimen under appropriate circumstances, such as where a
 continuing application is filed. 
 

 The notification to applicant that a model, exhibit, or specimen is
 no longer necessary for the conduct of business before the Office will set a time
 period within which applicant must make arrangements for a return of a model,
 exhibit, or specimen. The time period is normally two months from the mailing date of
 the notification, unless the item is perishable, in which case the time period will
 be shorter. Extensions of time are available under 37 CFR 1.136 ,
 except in the case of perishables. Failure by applicant to establish that
 arrangements for the return of a model, exhibit, or specimen have been made within
 the time period set in the notice will result in the disposal of the model, exhibit,
 or specimen by the Office.
 

 Form paragraph 6.48 may be used to notify applicant that the model,
 exhibit, or specimen is no longer necessary for the conduct of business before the
 Office and that applicant must make arrangement for the return of the model, exhibit,
 or specimen.
 

 ¶ 6.48 Model, Exhibit, or Specimen - Applicant Must Make Arrangements
 for Return
 

 The [1] is no longer
 necessary for the conduct of business before the Office. Applicant must arrange for the return
 of the model, exhibit or specimen at the applicant’s expense in accordance with
 37 CFR
 1.94(a) . 
 

 Applicant is given TWO MONTHS from the mailing date of this letter to
 make arrangements for return of the above-identified model, exhibit, or specimen to avoid its
 disposal in accordance with 37 CFR 1.94(c) . Extensions of time are available under
 37 CFR
 1.136 , except in the case of perishables.
 

 Applicant is responsible for retaining
 the actual model, exhibit, or specimen for the enforceable life of any patent resulting from
 the application unless one of the exceptions set forth in 37 CFR 1.94(b) applies.
 

 Examiner Note:
 
 1. In bracket 1, identify the
 model, exhibit, or specimen that is no longer needed by the Office.
 

 2. The Office will dispose of
 perishables without notice to Applicant unless applicant notifies the
 Office upon submission of the model, exhibit or specimen that a return is desired and
 makes arrangements for its return promptly upon notification by the Office that the
 model, exhibit or specimen is no longer necessary for the conduct of business before the
 Office. 
 
 
 

 For plant specimens, see MPEP § 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 Director.
 

 

 

 

 
 608.04 New Matter [R-10.2019]

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

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

 
 *****

 

 
 37 CFR 1.121 Manner of making amendments in applications. 

 *****

 
 (f) No new matter. 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 claims present on the filing date of
 the application if their content justifies it. See MPEP § 608.01(l) .
 

 While amendments to the specification and claims involving new matter
 are ordinarily entered, such matter (i.e., subject matter not present in the
 specification, claims, or drawings on the application filing date) is required to be
 canceled from the descriptive portion of the specification, and the claims affected are
 rejected under 35 U.S.C. 112(a) .
 

 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(a) 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
 provisionally entered by the TC technical support staff. See MPEP § 608.02(h) .
 

 The examiner’s holding of new matter may be petitionable or appealable.
 See MPEP §
 608.04(c) .
 

 For new matter in reissue application, see MPEP § 1411.02 . For
 new matter in substitute specification, see MPEP § 608.01(q) . For new matter in a
 continuation or divisional application, see MPEP §
 211.05 .
 

 Note: No amendment is permitted in a provisional application after it
 receives a filing date.
 

 
 608.04(a) Matter Not Present in Specification, Claims, or Drawings on
 the Application Filing Date [R-10.2019]
 

 Matter not present on the filing date of the application in the
 specification, claims, or drawings that is added after the application filing is
 usually new matter. See MPEP §§ 2163.06 and
 2163.07 for guidance in determining whether an amendment
 adds new matter, and for a discussion of the relationship of new matter to
 35
 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first
 paragraph . See MPEP § 2163.07(a) to determine
 whether added characteristics such as chemical or physical properties, a new
 structural formula or a new use are inherent characteristics that do not introduce
 new matter.
 

 New matter includes not only the addition of wholly unsupported
 subject matter, but may also include adding specific percentages or compounds after a
 broader original disclosure, or even the omission of a step from a method. See
 In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) and
 MPEP
 § 2163.05 for guidance in determining whether the addition
 of specific percentages or compounds after a broader original disclosure constitutes
 new matter.
 

 In the examination of an application following amendment thereof, the
 examiner must be on the alert to detect new matter. 35 U.S.C.
 132(a) should be employed as a basis for objection to
 amendments to the abstract, specification, or drawings attempting to add new
 disclosure to that originally disclosed on filing. If new matter is added to the
 specification, it should be objected to by using Form Paragraph
 7.28 .
 

 ¶ 7.28 Objection to New Matter Added to Specification

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

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

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

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

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

 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(a) or pre-AIA 35 U.S.C. 112, first
 paragraph , on the ground that it recites elements without
 support in the original disclosure. See Waldemar Link, GmbH & Co. v.
 Osteonics Corp., 32 F.3d 556, 559, 31 USPQ2d 1855, 1857 (Fed. Cir.
 1994); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d
 1111, 1114 (Fed. Cir. 1991)(A written-description question often arises when an
 applicant, after filing a patent application, subsequently adds “new matter” not
 present in the original application.); In re Rasmussen, 650 F.2d
 1212, 211 USPQ 323 (CCPA 1981). 
 

 If subject matter capable of illustration is originally claimed and
 it is not shown in the drawing, the claim is not rejected but applicant is required
 to add it to the drawing. See MPEP § 608.01(l) . Replacement
 drawings containing new matter should not be entered and the corrections necessary to
 obtain entry of the drawing(s) should be explained using form paragraph
 6.37 . See
 MPEP §
 608.02(h) .
 

 For completeness of specification, see MPEP § 608.01(p) .
 For trademarks and trade names, see MPEP § 608.01(v) .
 

 

 
 608.04(b) New Matter by Preliminary Amendment [R-10.2019]

 A preliminary amendment present on the filing date of the application
 (e.g., filed along with the filing of the application) is considered a part of the
 original disclosure. See MPEP § 714.01(e) and
 §
 602 . A preliminary amendment filed after the filing date of
 the application is not part of the original disclosure of the application. See
 MPEP §
 608.04(a) . For applications filed on or after September 21,
 2004, the Office will automatically treat any preliminary amendment under
 37 CFR
 1.115(a)(1) that is present on the filing date of the
 application as part of the original disclosure. Applicants can avoid the need to file
 a preliminary amendment by incorporating any desired amendments into the text of the
 specification, even where the application is a continuation or divisional application
 of a prior-filed application. Applicants are strongly encouraged to avoid submitting
 any preliminary amendments so as to minimize the burden on the Office in processing
 preliminary amendments and reduce delays in processing the application.
 

 

 
 608.04(c) Review of Examiner’s Holding of New Matter [R-11.2013]

 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. See also MPEP § 2163.06 .
 

 

 

 
 608.05 “Sequence Listing,” “Large Tables,” or “Computer Program Listing
 Appendix” Submitted in ASCII Plain Text or a “Sequence Listing XML” Submitted as XML
 File Text [R-01.2024]
 

 
 37 CFR 1.52 Language, paper, writing, margins, read-only optical disc
 specifications. 

 
 (a) 
 
 *****

 (5) Papers that are submitted electronically to
 the Office must be formatted and transmitted in compliance with the USPTO
 patent electronic filing system requirements.
 

 
 

 
 *****

 
 (e) Electronic documents submitted on a read-only optical disc that are to
 become part of the permanent United States Patent and Trademark Office
 records in the file of a patent application, reexamination, or supplemental
 examination proceeding. 
 (1) The following documents may be submitted to the Office
 on a read-only optical disc in compliance with this paragraph (e):
 
 (i) A “Computer Program Listing Appendix”
 ( see § 1.96(c) );
 

 (ii) A “Sequence Listing” (submitted under §
 1.821(c) in
 compliance with §§ 1.822 through
 1.824 ) or a
 “Sequence Listing XML” (submitted under § 1.831(a) in compliance with §§
 1.832 through
 1.834 ); or
 

 (iii) “Large Tables” ( see §
 1.58(c) ).
 

 
 

 (2) Read-only optical disc as used in this part means a
 finalized disc, in conformance with International Organization for
 Standardization (ISO) 9660, on which the data is recorded so it is
 permanent and cannot be changed or erased, and is one of:
 
 (i) Compact Disc-Read-Only Memory (CD–ROM)
 or a Compact Disc-Recordable (CD–R); or 
 

 (ii) Digital Video Disc-Recordable (DVD–R
 or DVD+R);
 

 
 

 (3) Each read-only optical disc must conform to
 the following requirements:
 
 (i) Computer compatibility: PC or
 Mac ® ; 
 

 (ii) Operating system compatibility:
 MS–DOS ® ,
 MS–Windows ® ,
 MacOS ® , or
 Unix ® /Linux ® ;
 

 (iii) The contents of each read-only optical
 disc must be in American Standard Code for Information Interchange
 (ASCII) plain text and if compressed, must be compressed in
 accordance with § 1.58 for
 “Large Tables,” with § 1.96 for a
 “Computer Program Listing Appendix,” or § 1.824 for a “Sequence Listing” or Computer
 Readable Form (CRF) of the “Sequence Listing,” as applicable;
 and
 

 
 

 (iv) The contents of each read-only optical disc
 for a “Sequence Listing XML” must be in eXtensible Markup Language (XML)
 file format, and if compressed, must be compressed in accordance with §
 1.834 .
 

 (4) Each read-only optical disc must be enclosed in a hard
 case within an unsealed, padded, and protective mailing envelope, and
 must be accompanied by a transmittal letter in accordance with paragraph
 (a) of this section, including the following information:
 
 (i) First-named inventor (if known); 

 (ii) Title of the invention; 

 (iii) Attorney docket or file reference
 number (if applicable); 
 

 (iv) Application number and filing date (if
 known); 
 

 (v) The operating system
 (MS–DOS ® ,
 MS-Windows ® , Mac
 OS ® , or
 Unix ® /
 Linux ® ) used to produce the disc; and
 
 

 (vi) The file(s) contained on the read-only
 optical disc, including the name of the file, the size of the file
 in bytes, and the date of creation.
 

 
 

 (5) Each read-only optical disc must have a label
 permanently affixed thereto on which the following information has been
 hand-printed or typed: 
 
 (i) First-named inventor (if known); 

 (ii) Title of the invention; 

 (iii) Attorney docket or file reference
 number (if applicable); 
 

 (iv) Application number and filing date (if
 known); 
 

 (v) Date on which the data were recorded
 on the read-only optical disc; and 
 

 (vi) Disc order ( e.g., 
 “1 of X”), if multiple read-only optical discs are submitted.
 

 
 

 (6) Read-only optical discs will not be returned to the
 applicant and may not be retained as part of the patent application
 file.
 

 (7) Any amendment to the information on a read-only optical
 disc must be by way of a replacement read-only optical disc, in
 compliance with § 1.58(g) for “Large
 Tables,” § 1.96(c)(5) for a
 “Computer Program Listing Appendix,” § 1.825(b) for a “Sequence Listing” or CRF of a
 “Sequence Listing,” and § 1.835(b) for a
 “Sequence Listing XML.”
 

 (8) The specification must contain an
 incorporation by reference of the material on each read-only optical disc
 in a separate paragraph (§ 1.77(b)(5) ),
 identifying the name of each file, their date of creation, and their size
 in bytes, except for an international application in the international
 stage. The Office may require the applicant to amend the specification to
 include the material incorporated by reference. 
 

 (9) If a file is unreadable, it will be treated
 as not having been submitted, and a notice will be issued to require a
 compliant submission.
 

 
 

 (f) Determining application size fees for
 applications containing electronic documents submitted on a read-only
 optical disc or via the USPTO patent electronic filing system— 
 (1) Submission on read-only optical
 discs. The application size fee required by §
 1.16(s) or § 1.492(j) , for an
 application component submitted in part on a read-only optical disc in
 compliance with paragraph (e) of this section, shall be determined such
 that each three kilobytes of content submitted on a read-only optical
 disc shall be counted as a sheet of paper. Excluded from this
 determination is any ASCII plain text file or any XML file (as
 applicable) submitted on a read-only optical disc under paragraph (e) of
 this section containing:
 
 (i) Any “Sequence Listing” or CRF of a
 “Sequence Listing” in compliance with § 1.821(c) or (e) , or any “Sequence Listing XML” in
 compliance with § 1.831(a) ;
 or
 

 (ii) Any “Computer Program Listing
 Appendix” in compliance with § 1.96(c) .
 

 
 

 (2) Submission via the USPTO patent electronic filing
 system. The application size fee required by §
 1.16(s) or § 1.492(j) , for an
 application submitted in whole or in part via the USPTO patent electronic
 filing system, shall be determined such that the paper size equivalent
 will be considered to be 75% of the number of sheets of paper present in
 the specification and drawings for the application when entered into the
 Office records after being rendered by the USPTO patent electronic filing
 system. Excluded from this determination is any ASCII plain text file or
 any XML file (as applicable) submitted via the USPTO patent electronic
 filing system containing: 
 
 (i) Any “Sequence Listing” or CRF of a
 “Sequence Listing” in compliance with § 1.821(c)(1) or (e) , or any “Sequence Listing XML” in
 compliance with § 1.831(a) ; or
 
 

 (ii) Any “Computer Program Listing
 Appendix” in compliance with § 1.96(c) .
 

 
 

 (3) Oversized submission. Any
 submission of a “Sequence Listing” in electronic form or a “Sequence
 Listing XML” of 300 MB–800 MB filed in an application under
 35 U.S.C. 111 or
 371 will be subject to the fee set forth in §
 1.21(o)(1) . Any
 submission of a “Sequence Listing” in electronic form or a “Sequence
 Listing XML” that exceeds 800 MB filed in an application under
 35 U.S.C. 111 or
 371 will be subject to the fee set forth in §
 1.21(o)(2) .
 

 
 

 
 

 
 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) Application data sheet (see §
 1.76 ).
 

 (4) Specification.

 (5) Drawings.

 (6) The inventor’s oath or declaration.

 
 

 (b) The specification should include the following sections in
 order:
 
 (1) Title of the invention, which may be accompanied by an
 introductory portion stating the name, citizenship, and residence of the
 applicant (unless included in the application data sheet).
 

 (2) Cross-reference to related applications.

 (3) Statement regarding federally sponsored research or
 development.
 

 (4) The names of the parties to a joint research
 agreement.
 

 (5) An incorporation by reference statement regarding the
 material in:
 
 (i) One or more ASCII plain text files,
 submitted via the USPTO patent electronic filing system or on one
 or more read-only optical discs ( see §
 1.52(e)(8) ),
 identifying the names of each file, the date of creation of each
 file, and the size of each file in bytes, for the following
 document types:
 
 (A) A “Computer Program Listing
 Appendix” ( see § 1.96(c) ); 
 

 (B) A “Sequence Listing”
 ( see § 1.821(c) ); or 
 

 (C) “Large Tables”
 ( see § 1.58(c) ).
 

 
 

 (ii) An XML file for a “Sequence Listing
 XML” ( see § 1.831(a) ), submitted via the USPTO patent
 electronic filing system or on one or more read-only optical discs
 ( see § 1.52(e)(8) ), identifying the names of each
 file, the date of creation of each file, and the size of each file
 in bytes.
 

 (iii)

 
 

 (6) Statement regarding prior disclosures by the inventor or
 a joint inventor.
 

 (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) A claim or claims.

 (12) Abstract of the disclosure.

 (13) "Sequence Listing," required by §
 1.821(c) , that is submitted as a Portable Document
 Format (PDF) file (as set forth in § 1.821(c)(2) ) via the USPTO patent electronic
 filing system or on physical sheets of paper (as set forth in §
 1.821(c)(3) ).
 

 
 

 (c) The text of the specification sections defined in paragraphs
 (b)(1) through (b)(12) of this section, if applicable, should be preceded by a
 section heading in uppercase and without underlining or bold type.
 

 
 

 In view of lengthy data listings being submitted as part of the
 disclosure in some patent applications, the Office has established procedures for the
 presentation of “Large Tables ( 37 CFR 1.58 ), a "Computer Program
 Listing Appendix" ( 37
 CFR 1.96(c) ), a "Sequence Listing" and a Computer Readable Form
 (CRF) of a “Sequence Listing” ( 37 CFR1.821(c) and (e) ), and a
 “Sequence Listing XML” ( 37 CFR 1.831(a) ) in electronic form.
 Such listings are often several hundred pages or more in length. By filing and
 publishing such data listings in electronic form, substantial cost savings can result to
 the applicants, the public, and the U.S. Patent and Trademark Office.
 

 The following document types may be submitted as ASCII
 text files with a “.txt” extension via the USPTO patent electronic filing system or on
 read-only optical discs in compliance with 37 CFR 1.52(e) and 1.58 ,
 1.96(c) , or 1.821 et seq. provided the specification contains a statement in a separate
 paragraph that incorporates by reference the material in the ASCII text file identifying
 the name of the ASCII text file, the date of creation, and the size of the ASCII text
 file in bytes (except that an incorporation by reference statement is not required for a
 “Sequence Listing” properly submitted as an ASCII plain text file in an international
 application (PCT) during the international stage regardless of whether the application
 is currently in the international stage or the national stage):
 

 
 (1) A “Computer Program Listing Appendix” (see
 37 CFR
 1.96(c) ). It is noted that a “Computer Program Listing
 Appendix” cannot be filed in ASCII plain text in an international application
 (PCT) during the international stage;
 

 (2) A “Sequence Listing” (see 37 CFR
 1.821(c)(1) ). Note that a CRF of a “Sequence Listing” filed
 pursuant to 37
 CFR 1.821(e) must be filed as an ASCII plain text file, but
 an incorporation by reference statement is required because a CRF is not part of
 the specification; or
 

 (3) “Large Tables” (see 37 CFR
 1.58(c) ). 
 

 
 It is noted that “Large Tables” cannot be filed in ASCII
 plain text in an international application (PCT) during the international stage (see
 37 CFR
 1.58(c) ). 
 

 A “Sequence Listing XML” may be submitted as a XML file
 with a “.xml” extension via the USPTO patent electronic filing system or as read-only
 optical discs in compliance with 37 CFR 1.52(e) and 1.831 et seq. Such submission requires that applicant provide a statement
 in a separate paragraph that incorporates by reference the material in the XML file
 identifying the name of the XML file, the date of creation, and the size of the XML file
 in bytes (except that an incorporation by reference statement is not required for a
 Sequence Listing properly submitted as an XML file in an international application
 during the international stage regardless of whether the application is currently in the
 international stage or the national stage).
 

 The granted patent or pre-grant publication of an
 application that includes an ASCII plain text file or XML file, whether submitted on
 optical read-only discs or via the USPTO patent electronic filing system, may not
 include the actual contents of the ASCII plain text file or XML file in the printed
 document. The incorporation by reference is necessary to treat the material in the ASCII
 plain text file or XML file as part of the patent or publication and to alert the public
 that the granted patent or the pre-grant publication includes additional material that
 constitutes part of the patent or publication. See 37 CFR
 1.52(e)(8) , 1.58(d)(5) , 1.77(b)(5) ,
 1.96(c) , 1.821(c)(1) , and 1.834(c)(1) (provides the incorporation by reference
 requirement). 
 

 I. TEXT FILES SUBMITTED VIA THE USPTO PATENT ELECTRONIC FILING SYSTEM A “Sequence Listing” under 37 CFR
 1.821 through 1.825 may be submitted as an
 ASCII plain text file only in applications filed before July 1, 2022. The applicable
 filing date is either the filing date under 37 CFR 1.53 for applications
 submitted under 35 U.S.C. 111 or the
 international filing date under PCT Article 11 for applications submitted under
 35 U.S.C.
 371 . For information on a “Sequence Listing XML” under
 37 CFR
 1.831 through 1.839 for applications filed on
 or after July 1, 2022, see subsection II below. 
 

 “Large Tables” (see 37 CFR
 1.58(c) ), a “Computer Program Listing Appendix” (see
 37 CFR
 1.96(c) ), a “Sequence Listing” (see 37 CFR
 1.821(c)(1) ), and a CRF of a “Sequence Listing” (see
 37
 CFR 1.821(e)(1) or (e)(2) ), and “Large Tables” (see 37 CFR 1.58(c) )
 may be submitted as ASCII text files via the USPTO patent electronic filing system.
 Each plain text file must be in compliance with ASCII and have a file name with a
 “.txt” extension. See 37 CFR 1.58(d)(4) ,
 1.96(c)(2) , and 1.824(a)(3) , which provide all
 requirements for the file name. 
 

 Further, the specification must contain an
 incorporation by reference statement of the material in the ASCII plain text file in
 a separate paragraph identifying the name of the ASCII plain text file, the date of
 creation, and the size of the ASCII text file in bytes (except for a “Sequence
 Listing” submitted in an international application (PCT) during the international
 stage regardless of whether the application is currently in the international stage
 or the national stage and a CRF of a “Sequence Listing” submitted in compliance with
 37 CFR
 1.821(e) . See 37 CFR 1.52(e)(8) ,
 1.58(d)(5) , 1.77(b)(5) , 1.96(c) , and
 1.821(c)(1) . 
 

 Form paragraphs 6.61.02 and
 6.71.02 
 (reproduced in subsection II., below) may be used to indicate the need to add or
 amend an incorporation by reference statement for text files submitted via the USPTO
 patent electronic filing system.
 

 A. Information Specific to a “Sequence Listing” The Office recommends that a “Sequence Listing”
 filed via the USPTO patent electronic filing system be submitted in an ASCII plain
 text file ( 37 CFR 1.821(c)(1) ). It is
 noted that while submission of the “Sequence Listing” as a PDF file
 ( 37 CFR 1.821(c)(2) ) or on physical sheets of paper
 ( 37 CFR 1.821(c)(3) ) is permitted, the inclusion of such
 would be part of the specification and would count toward the calculation for
 application size fee in accordance with 37 CFR 1.16(s) . Should
 applicant file the “Sequence Listing” as a PDF file ( 37 CFR
 1.821(c)(2) ) or on physical sheets of paper
 ( 37 CFR 1.821(c)(3) ) in an application submitted under
 35
 U.S.C. 111(a) or file the “Sequence Listing” as a PDF file
 ( 37 CFR 1.821(c)(2) ) or on physical sheets of paper
 ( 37 CFR 1.821(c)(3) ) and not also as an ASCII plain text
 file ( 37 CFR 1.821(c)(1) ) in a
 national stage application submitted under 35 U.S.C. 371 , a separate
 submission of a computer readable form (CRF) of the “Sequence Listing” would be
 required ( 37 CFR 1.821(e)(1) or
 (e)(2) ). When a separate CRF is required under
 37
 CFR 1.821(e)(1) or (e)(2) , a statement that the sequence information contained
 in the CRF and the information in the “Sequence Listing” submitted as a PDF or on
 physical sheets of paper are identical is required ( 37 CFR
 1.821(e)(1)(ii) or 37 CFR
 1.821(e)(2)(ii) ). It is noted that an applicant can no
 longer request a CRF transfer from a parent application when applicant submitted a
 “Sequence Listing” under 37 CFR 1.821(c)(2) or
 1.821(c)(3) (see “ Electronic Submission of a
 Sequence Listing, a Large Table, or a Computer Program Listing Appendix in
 Patent Applications, ” 86 FR 57035, 57038 (October 14, 2021)). Checker
 software that may be used to check a sequence listing for compliance with the
 requirements of 37 CFR 1.824 is available on the USPTO website at
 www.uspto.gov/Checker4 . 
 

 In situations where an applicant is adding a
 “Sequence Listing” via the USPTO patent electronic filing system in accordance
 with 37 CFR
 1.825(a) after the application filing date, the Office
 recommends submitting the “Sequence Listing” as an ASCII plain text file along
 with a request that the amendment be entered using an incorporation by reference
 statement ( 37 CFR 1.825(a)(2)(i) ). The
 “Sequence Listing” must be accompanied by a statement that the submission does not
 include any new matter which goes beyond the disclosure of the application as
 filed ( 37 CFR 1.825(a)(4) ) and a
 statement that identifies the basis for the amendment with specific references to
 particular parts of the application (specification, claims, drawings) for all
 sequence data in the “Sequence Listing” in the application as originally filed
 ( 37 CFR 1.825(a)(3) ). 
 

 In situations where an applicant is filing an
 amendment to a “Sequence Listing” via the USPTO patent electronic filing system in
 accordance with 37 CFR 1.825(b) , the Office recommends filing a replacement
 “Sequence Listing” as an ASCII plain text file where the applicant requests that
 the replacement “Sequence Listing” text file be entered using an incorporation by
 reference statement ( 37 CFR 1.825(b)(2)(i) ). The
 replacement “Sequence Listing” must be accompanied by: (1) a statement that the
 submission does not include any new matter ( 37 CFR
 1.825(b)(5) ); (2) a statement that identifies the basis for
 the amendment with specific references to particular parts of the application
 (specification, claims, drawings) as originally filed for all amended sequence
 data in the replacement “Sequence Listing” ( 37 CFR
 1.825(b)(4) ); and (3) a statement that identifies the
 location of all deletions, replacements, or additions to the “Sequence Listing”
 ( 37 CFR 1.825(b)(3) ). See generally 37 CFR
 1.825 . 
 

 For international applications that contain a
 disclosure of one or more nucleotide and/or amino acid sequences,
 PCT Rule
 5.2(a) requires a sequence listing as a separate part of the
 description. When filing a sequence listing in an international application (PCT)
 that was filed before July 1, 2022 using the USPTO patent electronic filing
 system, the sequence listing part of the description may be submitted either as a
 single ASCII plain text file with a ".txt" extension (e.g., "seqlist.txt") or as a
 PDF image file. Note that 100 megabytes is the size limit for submitting a
 sequence listing ASCII plain text file via the USPTO patent electronic filing
 system. See MPEP § 2422.03(a)(IV) for further
 information regarding filing a sequence listing in international applications via
 the USPTO patent electronic filing system. 
 

 B. Application Size Fee Any “Sequence Listing” or CRF of a “Sequence
 Listing” submitted as an ASCII plain text file via the USPTO patent electronic
 filing system that is otherwise in compliance with 37 CFR
 1.821(c) or (e) , will be excluded when
 determining the application size fee required by 37 CFR
 1.16(s) or 1.492(j) as per
 37 CFR 1.52(f)(1)(i) . A “Sequence Listing” submitted as a
 PDF image file via the USPTO patent electronic filing system will not be excluded
 when determining the application size fee. 
 

 Any “Computer Program Listing Appendix” submitted
 as an ASCII plain text file via the USPTO patent electronic filing system that is
 otherwise in compliance with 37 CFR 1.96(c) will be
 excluded when determining the application size fee required by 37 CFR
 1.16(s) or 1.492(j) as per
 37
 CFR 1.52(f)(1)(ii) .
 

 For “Large Tables” submitted as an ASCII plain text
 file via the USPTO patent electronic filing system, the “Large Tables” will be
 considered as part of the rest of the specification and drawings such that the
 paper size equivalent will be considered to be 75% of the number of sheets of
 paper present in the specification and drawings in the application when entered
 into the electronic file wrapper after being rendered by the USPTO patent
 electronic filing system. See 37 CFR 1.52(f)(2) and
 MPEP §
 607 , subsection II.
 

 C. Size Limit for Text Files One hundred (100) megabytes is the size limit for a
 “Sequence Listing” or a CRF of a “Sequence Listing” submitted as an ASCII plain
 text file via the USPTO patent electronic filing system; for nearly all other file
 types, 25 megabytes is the size limit. This includes a 25 megabytes size limit for
 ASCII plain text files for a “Computer Program Listing Appendix” and “Large
 Tables” (see 37
 CFR 1.58(c) and 1.96(c) ). This limit, however,
 may not prevent an entirely electronic submission. According to the Legal
 Framework for Patent Electronic System ( www.uspto.gov/PatentLegalFramework ), a user may be able to
 break up a file of a ‘‘Computer Program Listing Appendix’’ or ‘‘Large Tables’’
 that is larger than 25 MB into multiple files that are no larger than 25 MB each
 and submit those smaller files via the USPTO patent electronic filing system. If
 the user chooses to break up a large ‘‘Computer Program Listing Appendix’’ or
 ‘‘Large Tables’’ file so it may be submitted electronically, the file names must
 indicate their order (e.g., ‘‘1 of X,’’ ‘‘2 of X’’). Files above the 25 MB limit
 for ‘‘Large Tables’’ and a ‘‘Computer Program Listing Appendix’’ (unless capable
 of being divided) and above 100 MB for a ‘‘Sequence Listing’’ must be submitted on
 read-only optical discs. 
 

 Submission of a ‘‘Sequence Listing’’ or a CRF of a
 “Sequence Listing” as an ASCII plain text file, if it exceeds 100 MB, cannot be
 divided like a submission of a ‘‘Large Table’’ or a ‘‘Computer Program Listing
 Appendix.’’ Thus, any “Sequence Listing” or CRF of a “Sequence Listing” greater
 than 100 MB must be submitted on read-only optical discs. If a user submits an
 electronic copy of a file that exceeds these size limits on a read-only optical
 disc(s), it is recommended that the read-only optical disc(s) be submitted via
 Priority Mail Express® from the USPS in accordance with 37 CFR 1.10 ,
 or hand delivery, on the date of the corresponding USPTO patent electronic filing
 system filing in accordance with 37 CFR 1.52(e) if the user
 wishes the electronic copy to be considered to be part of the application as
 filed. 
 

 See MPEP §
 2422.03(a)(III) et seq. for further guidance on “Sequence Listing” size limits.
 See the Legal Framework for Patent Electronic System ( www.uspto.gov/PatentLegalFramework ) for additional information
 pertaining to limits on the number and size of files submitted via the USPTO
 patent electronic filing system. See also MPEP § 502.05 . 
 

 II. XML FILES SUBMITTED VIA THE USPTO PATENT ELECTRONIC FILING SYSTEM A “Sequence Listing XML” may be submitted as a XML file with a “.xml”
 extension via the USPTO patent electronic filing system or as read-only optical discs
 in compliance with 37 CFR 1.52(e) and 1.831(a) . Such submission requires that applicant provide a
 statement in a separate paragraph that incorporates by reference the material in the
 XML file identifying the name of the XML file, the date of creation, and the size of
 the XML file in bytes (except that an incorporation by reference statement is not
 required for a sequence listing properly submitted as an XML file in an international
 application during the international stage regardless of whether the application is
 currently in the international stage or the national stage). A “Sequence Listing XML”
 under 37
 CFR 1.831 through 1.839 may be submitted as an XML
 file only in applications filed on or after July 1, 2022. See 2022 Standard
 for Presentation of Nucleotide and Amino Acid Sequence Listings Using eXtensible
 Markup Language (XML) in Patent Applications To Implement WIPO Standard ST.26;
 Incorporation by Reference, 87 FR 30806 (May 20, 2022). The applicable
 filing date is either the filing date under 37 CFR 1.53 for applications
 submitted under 35 U.S.C. 111 or the
 international filing date under PCT Article 11 for applications
 submitted under 35
 U.S.C. 371 . For information on a “Sequence Listing” under
 37
 CFR 1.821 through 1.825 for applications filed
 before July 1, 2022, see subsection I above. 
 

 Applications filed on or after July 1, 2022 that
 contain disclosures of nucleotide and/or amino acid sequences as defined in
 37
 CFR 1.831(b) must provide such sequence information as a
 “Sequence Listing XML” submitted as an XML file ( 37 CFR
 1.831(a) ), where the “Sequence Listing XML” complies with the
 requirements of 37 CFR 1.831 - 1.834 . The “Sequence Listing XML” may be filed via the USPTO
 patent electronic filing system using Patent Center which is available at
 www.uspto.gov/PatentCenter .
 

 In situations where an applicant is adding a “Sequence Listing XML”
 via the USPTO patent electronic filing system in accordance with 37 CFR
 1.835(a) after the application filing date, such as when a
 patent applicant receives a notice under 37 CFR
 1.835(d)(1) , to comply with the “Sequence Listing XML”
 regulations ( 37 CFR 1.831 - 1.834 ), the applicant must submit the “Sequence Listing XML” as
 an XML file either via the USPTO patent electronic system or on read-only optical
 disc. Submission of a “Sequence Listing XML” after the filing date requires that the
 applicant provide: (1) a request to amend the specification to include an updated
 incorporation by reference statement of the material in the “Sequence Listing XML”
 ( 37
 CFR 1.835(a)(2) ); (2) a statement that identifies the basis for
 the amendment with specific references to particular parts of the application as
 originally filed (specification, claims, drawings) for all sequence data in the
 “Sequence Listing XML” in the application as originally filed ( 37 CFR
 1.835(a)(3) ); and (3) a statement of no new matter
 ( 37
 CFR 1.835(a)(4) ).
 

 If the notice pursuant to 37 CFR
 1.835(d)(1) identifies an error in a previously submitted
 “Sequence Listing XML,” or applicant needs to revise the “Sequence Listing XML,”
 applicant can submit a replacement “Sequence Listing XML” along with: (1) a request
 to amend the specification to include an incorporation by reference statement of the
 material in the replacement “Sequence Listing XML” ( 37 CFR
 1.835(b)(2) ); (2) a statement that identifies the location of
 all additions, deletions, or replacements of sequence information relative to the
 replaced “Sequence Listing XML” ( 37 CFR 1.835(b)(3) ); (3) a
 statement that identifies the basis for the additions, deletions, or replacements of
 the sequence information with specific references to particular parts of the
 application as originally filed (specification, claims, drawings) for all amended
 sequence data in the replacement “Sequence Listing XML” ( 37 CFR
 1.835(b)(4) ); and (4) a statement of no new matter
 ( 37
 CFR 1.835(b)(5) ). See generally 37 CFR
 1.835 .
 

 A. Application Size Fee Any “Sequence Listing XML” submitted as an XML file
 via the USPTO patent electronic filing system that is otherwise in compliance with
 37
 CFR 1.831(a) will be excluded when determining the application
 size fee required by 37 CFR 1.16(s) or
 1.492(j) as per 37 CFR
 1.52(f)(2)(i) .
 

 B. Size Limit for XML Files One hundred (100) megabytes is the size limit for a
 “Sequence Listing XML” submitted as an XML file via the USPTO patent electronic
 filing system. 
 

 III. SUBMISSIONS ON READ-ONLY OPTICAL DISC A read-only optical disc submitted under
 37 CFR
 1.52(e) is a finalized disc, in conformance with International
 Organization for Standardization (ISO) 9660, on which the data is recorded so it is
 permanent and cannot be changed or erased. A read-only optical disc must be one of a
 CD-ROM a CD-R, a DVD-R, or a DVD+R. A CD-ROM is made by a process of pressing the
 disc from a master template; the data cannot be erased or rewritten. A CD-R, DVD-R,
 and DVD+R are read-only optical discs that have recording medium only capable of
 writing once. CD-RW, DVD-RW, and DVD+RW types of media are not acceptable because
 they are erasable and rewriteable. Limiting the media types to CD-ROM CD-R, DVD-R,
 and DVD+R media will ensure the longevity and integrity of the data submitted.
 Additionally, the rules permit the use of DVD-R and DVD+R and non-self-extracting
 file compression (see 37 CFR 1.52(e)(3)(iii) ) to allow
 for higher-capacity read-only optical discs and to significantly reduce the number of
 physical media required to accommodate large files. 
 

 For “Large Tables,” a “Computer Program Listing
 Appendix,” a “Sequence Listing,” or a CRF of a “Sequence Listing,” the contents of
 each read-only optical disc must be in ASCII plain text file format. No non-ASCII
 characters or proprietary file formats are permitted. A text viewer is recommended
 for viewing ASCII plain text files. While virtually any word processor may be used to
 view an ASCII plain text file, care must be taken since a word processor will often
 not distinguish ASCII and non-ASCII files when displayed. For example, a word
 processor normally does not display hidden proprietary non-ASCII characters used for
 formatting when viewing a non-ASCII word processor file. Also, each text file must
 have a file name with a “.txt” extension. See 37 CFR
 1.58(d)(4) , 1.96(c)(2) , and 1.824(a)(3) 
 (providing the requirements for the file name). For a “Sequence Listing XML,” the
 contents of each read-only optical must be in XML file format, and if compressed,
 must be compressed in accordance with 37 CFR 1.834 . A “Sequence Listing
 XML” must be encoded using Unicode UTF–8. All permitted printable characters
 (including the space character) and non-printable (control) characters are defined in
 paragraph 40 of the WIPO Standard ST.26 available at www.wipo.int/export/sites/ www/standards/en/pdf/03-26-01.pdf .
 Also, each XML file must have a file name with a “.xml” extension. See
 37
 CFR 1.834(a) (providing the requirements for the file name). 
 

 Material on read-only optical disc(s) filed on the
 date that the application is accorded a filing date are generally to be treated as
 part of the originally filed disclosure even if the requisite “incorporation by
 reference” statement (see 37 CFR 1.77(b)(5) ) is omitted.
 However, in certain instances, the material on the read-only optical disc may not be
 treated as a part of the disclosure. For example, if a file is unreadable, it is
 treated as not having been submitted, and thus, it will not be treated as a part of
 the disclosure. It is noted that an incorporation by reference statement is not
 required for a “Sequence Listing” submitted as an ASCII plain text file or as an XML
 file (as applicable) in an international application during the international stage
 regardless of whether the application is currently in the international stage or the
 national stage. Also, an incorporation by reference statement is not required for a
 CRFs of a “Sequence Listings” submitted in compliance with 37 CFR
 1.821(e) . See 37 CFR 1.52(e)(8) . The material
 on the read-only optical disc(s) is considered part of the original disclosure by
 virtue of its inclusion with the application on the date the application is accorded
 a filing date. If required, the incorporation by reference statement of the material
 on the read-only optical disc will need to be added via an amendment to be part of
 the specification so it is clear to the Office, the printer, and the public that the
 application as originally filed includes material on the read-only optical disc. The
 examiner should require applicant(s) to insert this statement if it is omitted. See
 37
 CFR 1.58(h) , 1.96(c)(6) , 1.825(c) , and
 1.835(c) . However, if the application would otherwise be in
 condition for allowance, the examiner may insert the statement by examiner’s
 amendment with a notice of allowance after receiving authorization from the
 applicant. See MPEP §
 1302.04 and 37 CFR 1.121(g) . 
 

 Each read-only optical disc must be compatible with PC
 or Mac ® computers and with
 MS-DOS ® , MS-Windows ® , Mac
 OS ® , or
 Unix ® /Linux ® operating
 systems. The files contained on each read-only optical disc must be in ASCII plain
 text format (“Computer Program Listing Appendix’’, ‘‘Large Tables’’ or “Sequence
 Listing”) or XML file format (“Sequence Listing XML”). If the ASCII plain text file
 is compressed, the file must be compressed in accordance with 37 CFR 1.58 ,
 1.96 , and 1.824 . If the “Sequence Listing
 XML” file is compressed, the file must be compressed in accordance with
 37 CFR
 1.834 . See 37 CFR 1.52(e)(3) . 
 

 37 CFR 1.52(e)(4) requires that
 each read-only optical disc must be enclosed in a hard case within an unsealed padded
 and protective mailing envelope and accompanied by a transmittal letter in accordance
 with 37 CFR
 1.52(e)(4) . The transmittal letter must include the following
 information: 1) first-named inventor (if known); 2) title of the invention; 3)
 attorney docket or file reference number (if applicable); 4) application number and
 filing date (if known); 5) the operating system (MS-DOS ® ,
 MS-Windows ® , Mac OS ® , or
 Unix ® /Linux ® ) used to
 produce the disc; and 6) the files contained on the read-only optical disc, including
 the name of the file, the size of the file in bytes, and the date of creation. Each
 read-only optical disc must have a permanent label affixed thereto on which the
 following information has been hand-printed or typed: 1) first-named inventor (if
 known); 2) title of the invention; 3) attorney docket or file reference number (if
 applicable); 4) application number and filing date (if known); 5) date on which the
 data were recorded on the read-only optical disc; and 6) disc order (e.g., “1 of X”)
 if multiple read-only optical discs are submitted. 
 

 Read-only optical discs submitted to the Office will
 not be returned to the applicant and may not be retained as part of the patent
 application file. See 37 CFR 1.52(e)(6) . Read-only
 optical discs containing submitted “Large Tables” or a “Computer Program Listing
 Appendix” must be submitted in duplicate and labeled as “Copy 1” and “Copy 2,”
 respectively. See 37 CFR 1.58(i) and
 1.96(c)(7) . Read-only optical discs submitted for a “Sequence
 Listing,” CRF of a “Sequence Listing,” or a “Sequence Listing XML” are not required
 to be submitted in duplicate because a “Sequence Listing,” CRF of a “Sequence
 Listing,” or a “Sequence Listing XML” is processed differently than “Large Tables” or
 a “Computer Program Listing Appendix”. 
 

 If more than one read-only optical disc is required to
 hold all of the information, each read-only optical disc must have a label
 permanently affixed thereto with the disc order (e.g., “1 of X”). See
 37 CFR
 1.52(e)(5) (includes other labeling requirements). Read-only
 optical disc(s) copies containing “Large Tables” and/or a “Computer Program Listing
 Appendix” should initially be routed to the Office of Patent Application Processing
 (OPAP), and read-only optical disc(s) discs containing a “Sequence Listing”, a CRF of
 a “Sequence Listing”, or a “Sequence Listing XML” Listings” should initially be
 routed to the Patent Legal Research Center (PLRC). Depending on the content in the
 read-only optical discs, the read-only optical discs will be checked by either OPAP
 or PLRC for viruses, readability, the presence of non-ASCII or non-XML files, and
 compliance with the file and disc labeling requirements. For “Large Tables” and a
 “Computer Program Listing Appendix” where duplicate disc copies are required, OPAP
 will retain one copy of the disc(s) and place the other copy in an artifact folder
 associated with the Office file wrapper. For a “Sequence Listing”, a CRF of a
 “Sequence Listing”, or a “Sequence Listing XML”, PLRC loads the “Sequence Listing”,
 the CRF of the “Sequence Listing”, or the “Sequence Listing XML” into the USPTO’s
 Sequence Listing Information Control (SLIC) system, and the physical media may be
 retained by PLRC. In the event that a file is unreadable, then the USPTO will treat
 the submission as not ever having been submitted. See 37 CFR
 1.52(e)(9) . A file is unreadable if, for example, it is of a
 format that does not comply with the requirements of 37 CFR
 1.52(e)(2) , it is corrupted, or it is written onto a defective
 read-only optical disc. In such a case, OPAP will issue a notice indicating that the
 file is unreadable, and a replacement will be required. 
 

 Any amendment to the information on a read-only
 optical disc must be by way of a replacement read-only optical disc, in compliance
 with 37
 CFR 1.58(g) for “Large Tables”, 37 CFR
 1.96(c)(5) for a “Computer Program Listing Appendix”, and
 37 CFR
 1.825(b) for a “Sequence Listing” or a CRF of a “Sequence
 Listing”, and 37 CFR 1.835(b) for a “Sequence
 Listing XML”. See 37 CFR 1.52(e)(7) . When the information is filed on a
 read-only optical disc initially, amendments cannot be made to the information using
 the USPTO patent electronic filing system, but instead must be made using a
 replacement read-only optical disc. The amendment should include a corresponding
 amendment to the description of the incorporation by reference statement in the
 specification when an incorporation by reference is necessary or present. A
 replacement read-only optical disc containing the amended file(s) must also contain
 all of the files of the original read-only optical disc that were not amended (if
 any). This will ensure that the Office, printer, and public can quickly access all of
 the current files in an application or patent by referencing only the latest
 electronic version of the file(s) provided in the replacement read-only optical disc. 
 

 The following form paragraphs may be used to notify applicant of
 corrections needed with respect to read-only optical disc submissions.
 

 ¶ 6.60.01 Read-only Optical Disc Requirements (No Statement that discs are
 Identical)
 

 This application is objected to under 37 CFR
 1.58(i) for “Large Tables” or 1.96(c)(7) 
 for a “Computer Program Listing Appendix” because it does not contain a statement in the
 transmittal letter that the two read-only optical discs are identical. Correction is
 required.
 

 

 ¶ 6.60.02 Read-only Optical Disc Requirements (No Listing in Transmittal
 Letter)
 

 This application is objected to because it contains a data file on one
 or more read-only optical disc(s), however, the transmittal letter does not list for each
 read-only optical disc, the first named inventor(if known), the title of the invention,
 the attorney docket or file reference number (if applicable), the operating system used to
 produce the disc, a list of files contained on the read-only optical disc(s) including
 their names, sizes in bytes, and dates of creation, plus any other special information
 that is necessary to identify, maintain, and interpret the information on the read-only
 optical disc as required by 37 CFR 1.52(e)(4) . A statement
 listing the required information is required.
 

 

 ¶ 6.61.01 Specification Lacking List of Read-only Optical Disc(s) and /or
 Associated Files
 

 Portions of this application are contained on read-only optical disc(s).
 When portions of an application are contained on a read-only optical disc, the paper portion
 of the specification must identify the read-only optical disc(s) and list the files including
 the name of the ASCII text file, the date of creation, and the size of the ASCII text file on
 each of the read-only optical discs, or the name of the XML file, the date of creation of the
 XML, and the size of the XML on each read-only optical disc (as applicable). See
 37 CFR
 1.52(e) . Read-only optical disc labeled [1] is not
 identified in the paper portion of the specification with a listing of all of the files
 contained on the disc. Applicant is required to amend the specification to identify each disc
 and the files contained on each disc including ASCII text file name or XML file name (as
 applicable), the date of creation and the size of the ASCII text file or XML file (as
 applicable).
 

 Examiner Note:

 In bracket 1, insert the name on the label of the read-only optical
 disc.
 

 

 ¶ 6.61.02 Specification Lacking An Incorporation By Reference Statement
 for Read-only Optical Disc or Text File Submitted Via the USPTO Patent Electronic Filing
 System
 

 This application contains read-only optical disc(s) or text file(s)
 submitted via the USPTO patent electronic filing system as part of the originally filed
 subject matter, but does not contain an incorporation by reference statement for the
 read-only optical discs or text files. See 37 CFR 1.77(b)(5) 
 and MPEP §
 502.05 . Applicant(s) is required to insert in the
 specification an appropriate incorporation-by-reference statement that includes the name
 of the ASCII text file or XML file (as applicable), the date of creation, and the size of
 the ASCII text file or XML files (as applicable). 
 

 

 ¶ 6.62 Data File on Read-only Optical Disc Not in ASCII File Format or
 XML File Format (only for a “Sequence Listing XML”)
 

 This application contains a data file on a read-only optical disc that is
 not in an ASCII file format or an XML file format (only for “Sequence Listing XML”).
 See 37 CFR
 1.52(e) . File [1] is not in an ASCII format or XML format.
 Applicant is required to resubmit file(s) in ASCII format or XML format. No new matter may be
 introduced in presenting the file(s) in ASCII format or XML format.
 

 Examiner Note:
 
 1. This form paragraph must be used to indicate whenever a data file
 (“Large Table”, ”Computer Program Listing Appendix” or “Sequence Listing”) is submitted
 in a non-ASCII file format. The file may be in a file format that is proprietary, e.g.,
 a Microsoft Word, Excel or Word Perfect file format; and/or the file may contain
 non-ASCII characters.
 

 2. In bracket 1, insert the name of the file and whether the file is a
 non-text proprietary file format and/or contains non-ASCII characters.
 
 
 

 The following form paragraphs should be used to respond to amendments
 which include amended or substituted read-only optical discs.
 

 ¶ 6.70.01 Read-only Optical Disc Requirements (Amendment Does Not Include
 Statement that Discs are Identical) 
 

 The amendment filed [1] is objected to under
 37 CFR
 1.58(i) for “Large Tables” or 1.96(c)(7) 
 for a “Computer Program Listing Appendix” because it does not contain a statement in the
 transmittal letter that the two read-only optical discs are identical. Correction is
 required.
 

 

 ¶ 6.70.02 Read-only Optical Disc Requirements (No Listing in Transmittal
 Letter Submitted With Amendment) 
 

 The amendment filed [1] contains data on read-only optical
 disc(s). Read-only optical disc labeled [2] is not identified in the
 transmittal letter and/or the transmittal letter does not list for each read-only optical
 disc, the first named inventor(if known), the title of the invention, the attorney docket or
 file reference number (if applicable), the operating system used to produce the disc, a list
 of files contained on the read-only optical disc including their names, sizes in bytes, and
 dates of creation, plus any other special information that is necessary to identify, maintain,
 and interpret the information on the read-only optical disc as required by 37 CFR 1.52(e)(4) . A
 statement listing the specified information is required.
 

 Examiner Note:
 
 1. Use this form paragraph when the transmittal letter does not
 include a listing of the files and required information.
 

 2. In bracket 1, insert the date of the amendment.

 3. In bracket 2, insert the name on the label of the read-only optical
 disc.
 
 
 

 ¶ 6.71.01 Specification Lacking List of Read-only optical Disc(s) and/or
 Associated Files (Amendment Filed With Read-only optical Disc(s))
 

 The amendment filed [1] contains data on read-only optical
 disc(s). Read-only optical disc labeled [2] is not identified in the paper
 portion of the specification with a listing of all of the files contained on the disc.
 Applicant is required to amend the specification to identify each disc and the files contained
 on each disc including the ASCII text file name, the date of creation and the size of the
 ASCII text file on each of the read-only optical discs. See 37 CFR 1.52(e) .
 

 Examiner Note:
 
 1. In bracket 1, insert the date of the amendment.

 2. In bracket 2, insert the name on the label of the read-only optical
 disc.
 
 
 

 ¶ 6.71.02 Specification Lacking Incorporation By Reference Statement for
 Amended or Added Read-only Optical Disc or Text File or XML File
 

 The amendment filed [1] amends or adds read-only optical
 disc(s) or text file(s) or XML file(s) (as applicable) submitted via the USPTO patent
 electronic filing system, but does not include an incorporation by reference statement for the
 read-only optical discs or the text files or XML files (as applicable). Applicant is required
 to update or insert an appropriate incorporation by reference statement in the specification
 that includes the name of the ASCII text file or XML file (as applicable), the date of
 creation, and the size of the ASCII text file or XML file (as applicable). See
 37 CFR
 1.77(b)(5) and 1.52(e)(8) and MPEP § 502.05 .
 

 Examiner Note:
 
 1. Use this form paragraph when a read-only optical disc or text file
 submitted via the USPTO patent electronic filing system is filed with an amendment, but
 the required incorporation-by-reference statement is neither amended nor added to the
 specification.
 

 2. In bracket 1, insert the date of the amendment.
 
 

 ¶ 6.72.01 Read-only Optical Disc Requirements (Discs Not
 Identical)
 

 The amendment filed [1] is objected to
 under 37 CFR
 1.58(i) for “Large Tables” or 1.96(c)(7) 
 for a “Computer Program Listing Appendix” because the two read-only optical discs are not
 identical. Providing a correct duplicate copy is required.
 

 Examiner Note:
 
 1. Use this form paragraph when the two read-only optical discs are
 not identical.
 

 2. See also form paragraph 6.70.01 where the transmittal letter
 does not include a statement that the two read-only optical discs are identical.
 
 
 

 ¶ 6.72.02 Data File, Submitted With Amendment, on Read-only Optical Disc
 Not in ASCII File Format or XML File Format (only for a “Sequence Listing XML”
 submission)
 

 The amendment filed [1] contains a data file on read-only
 optical disc that is not in an ASCII file format or an XML file format (only for a “Sequence
 Listing XML” submission). File [2] is not in an ASCII format or an XML file
 format. Applicant is required to resubmit file(s) in ASCII format or XML format as required by
 37 CFR
 1.52(e)(3)(iii) . No new matter may be introduced in presenting the
 file(s) in ASCII format or XML format.
 

 Examiner Note:
 
 1. This form paragraph must be used whenever a data file (“Large
 Tables,” a “Computer Program Listing Appendix,” a “Sequence Listing,” or a “Sequence
 Listing XML” (as applicable) is submitted in a non-ASCII file format or a non-XML file
 format (as applicable). The file may be in a file format that is proprietary, e.g., a
 Microsoft Word, Excel or Word Perfect file format; and/or the file contains non-ASCII
 characters or fails to comply with the requirements for a “Sequence Listing XML”
 submitted under 1.52(e) .
 

 2. In bracket 1, insert the date of the amendment.

 3. In bracket 2, insert the name of the file and whether the file is a
 non-text proprietary file format and/or contains non-ASCII characters and/or contains
 non-XML characters (as applicable).
 
 
 

 ¶ 6.72.03 Read-only Optical Discs Are Not Readable

 The amendment filed [1] contains a data file on read-only
 optical disc that is unreadable. Applicant is required to resubmit the file(s) in
 International Organization for Standardization (ISO) 9660 standard and American Standard
 Code for Information Interchange (ASCII) format as required by 37 CFR 1.52(e)(2) and
 1.52(e)(3)(iii) , respectively. No new matter may be introduced in
 presenting the file in ISO 9660 and ASCII format.
 

 

 ¶ 6.72.04 Read-only Optical Disc Contains Viruses 

 The amendment filed [1] is objected to because the read-only
 optical disc contains at least one virus. Correction is required.
 

 

 ¶ 6.72.05 Read-only Optical Disc Requirements (Missing Files On Amended
 Read-only Optical Disc)
 

 The amendment to the application filed [1] is objected to
 because the newly submitted read-only optical disc(s) do not contain all of the unamended data
 file(s) together with the amended data file(s) that were on the original read-only optical
 disc. Since amendments to a read-only optical disc can only be made by providing a replacement
 read-only optical disc, the replacement disc must include all of the files, both amended and
 unamended, to be a complete replacement in accordance with 37 CFR 1.52(e)(7) .
 

 Examiner Note:

 Use this form paragraph when a replacement read-only optical disc is
 submitted that fails to include all of the files on the original read-only optical disc(s)
 that have not been cancelled by amendment.
 

 

 For greater detail on submission of a read-only optical
 disc in a “Sequence Listing”, a “Sequence Listing XML,” “Large Tables”, or a
 “Computer Program Listing Appendix”, see MPEP § 608.05(a)-(c). 
 

 
 608.05(a) Submission of a “Computer Program Listing Appendix” [R-01.2024]

 
 37 CFR 1.96 Submission of computer program listings. 

 
 (a) General. Descriptions 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 document 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 that will cause a computer to perform a desired
 procedure or task such as solving a problem, regulating the flow of work in
 a computer, or controlling or monitoring 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 in 300 lines or fewer, with each line
 of 72 characters or fewer, it may 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 § 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 § 1.52 .
 

 (ii) Any listing having more than 60 lines of code
 that is submitted as part of the specification must be
 positioned at the end of the description but before the claims.
 Any amendment must be made by way of submission of a substitute
 sheet.
 

 
 

 
 

 (c) As an appendix that will not be printed: Any computer
 program listing may, and any computer program listing having over 300 lines
 (up to 72 characters per line) must, be submitted as an electronic document
 in ASCII plain text, whether submitted via the USPTO patent electronic
 filing system or on a read-only optical disc, in compliance with §
 1.52(e) . An electronic document containing such a
 computer program listing is to be referred to as a “Computer Program Listing
 Appendix.” The “Computer Program Listing Appendix” will not be part of the
 printed patent. The specification must include an incorporation by reference
 of the “Computer Program Listing Appendix,” in accordance with §
 1.77(b)(5) .
 
 (1) A “Computer Program Listing Appendix” must conform
 to the following requirements:
 
 (i) Computer compatibility: PC or
 Mac ® ;
 

 (ii) Operating system compatibility:
 MS–DOS ® ,
 MS-Windows ® , Mac
 OS ® , or
 Unix ® /Linux ® ;
 
 

 (iii) Line terminator: ASCII CRLF or LF only;
 and
 

 (iv) Control codes: The data must not be dependent
 on control characters or codes that are not defined in the ASCII
 character set.
 

 
 

 (2) Each file must be named as *.txt, where
 “*” is one character or a combination of characters limited to upper-
 or lowercase letters, numbers, hyphens, and underscores and does not
 exceed 60 characters in total, excluding the extension. No spaces or
 other types of characters are permitted in the file name. 
 

 (3) Each file containing a “Computer Program
 Listing Appendix” submitted via the USPTO patent electronic filing
 system must not exceed 25 MB, and file compression is not
 permitted.
 

 (4) A "Computer Program Listing Appendix"
 submitted in compliance with § 1.52(e) must
 conform to the following requirements:
 
 (i) A separate read-only optical disc
 containing a "Computer Program Listing Appendix" must be
 submitted for each applicable application;
 

 (ii) Multiple computer program listings
 for a single application may be placed on a single read-only
 optical disc;
 

 (iii) Multiple read-only optical discs,
 containing one or more computer program listings, may be
 submitted for a single application, if necessary; 
 

 (iv) Any computer program listing may,
 and a computer program listing having a nested file structure
 must, when submitted in compliance with § 1.52(e) , be compressed into a single file
 using WinZip ® , 7-Zip, or
 Unix ® /
 Linux ® Zip; 
 

 (v) Any compressed file must not be
 self-extracting; and 
 

 (vi) A compressed ASCII plain text file
 that does not fit on a single read-only optical disc may be
 split into multiple file parts, in accordance with the target
 read-only optical disc size and labeled in compliance with §
 1.52(e)(5)(vi) . 
 

 
 

 (5) Any amendments to a "Computer Program
 Listing Appendix" in electronic form in ASCII plain text format must
 include: 
 
 (i) A replacement ASCII plain text file,
 in accordance with the requirements of this paragraph (c),
 submitted via the USPTO patent electronic filing system, or on a
 read-only optical disc, in compliance with § 1.52(e) , where the replacement read-only
 optical disc must be submitted in duplicate, and the read-only
 optical discs must be labeled “COPY 1 REPLACEMENT MM/DD/YYYY”
 (with the month, day, and year of creation indicated) and “COPY
 2 REPLACEMENT MM/DD/YYYY”;
 

 (ii) A request that the amendment be
 made by incorporation by reference of the material in the
 replacement ASCII plain text file, in a separate paragraph of
 the specification (replacing any prior such paragraph)
 identifying the name of the file, the date of creation, and the
 size of the file in bytes ( see §
 1.77(b)(5) );
 
 

 (iii) A statement that identifies the
 location of all deletions, replacements, or additions to the
 ASCII plain text file; and 
 

 (iv) A statement that the replacement
 ASCII plain text file contains no new matter. 
 

 
 

 (6) The specification of a complete
 application with a “Computer Program Listing Appendix” as an ASCII
 plain text file, filed on the application filing date, without an
 incorporation by reference of the material contained in the ASCII
 plain text file, must be amended to contain a separate paragraph
 incorporating by reference the material contained in the ASCII plain
 text file, in accordance with § 1.77(b)(5) . 
 

 (7) Any read-only optical disc for a
 “Computer Program Listing Appendix” must be submitted in duplicate.
 The read-only optical disc and duplicate copy must be labeled “Copy 1”
 and “Copy 2,” respectively. The transmittal letter that accompanies
 the read-only optical discs must include a statement that the two
 read-only optical discs are identical. In the event that the two
 read-only optical discs are not identical, the Office will use the
 read-only optical disc labeled “Copy 1” for further processing. Any
 amendment to the information on a read-only optical disc must be by
 way of a replacement read-only optical disc, in compliance with §
 1.96(c)(5) .
 

 
 

 
 

 Special procedures for presentation of computer program listings as a
 “Computer Program Listing Appendix in the form of ASCII plain text files in U.S.
 national patent applications are set forth in 37 CFR 1.96 . Submission via the
 USPTO patent electronic filing system or the use of read-only optical disc files 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 in
 electronic form rather than on physical sheets of paper, substantial cost savings can
 result to the applicants, the public, and the U.S. Patent and Trademark Office.
 

 See MPEP § 608.05 , subsection I., for
 details pertaining to submission of ASCII plain text files via the USPTO patent
 electronic filing system, and subsection II., for details pertaining to submissions
 on read-only optical disc. Also, substantial details regarding submitting ASCII plain
 text files are incorporated into 37 CFR 1.96(c) , which are
 discussed more below in subsection III.
 

 I. BACKGROUND A “computer program listing”, as used in these rules, means the
 document that lists, in proper order, 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 procedure or task, such as solving a problem,
 regulating the flow of work in a 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 in the
 specification or as a “Computer Program Listing Appendix” to the specification,
 submitted in an ASCII text file via the USPTO patent electronic filing system or
 on a read-only optical disc. The specification must include an incorporation by
 reference statement of the “Computer Program Listing Appendix” in accordance with
 37 CFR 1.96(c)(6) according to the arrangement of
 application elements as outlined in 37 CFR 1.77(b)(5) . 
 

 Copies of publicly available computer program listings (including
 any “Computer Program Listing Appendix”) are available via Patent Center. The U.S.
 Patent and Trademark Office also provides publicly available computer program
 listings (including any “Computer Program Listing Appendix”) at the cost set forth
 in 37 CFR
 1.19 .
 

 II. DISCUSSION OF THE BACKGROUND AND MAJOR ISSUES INVOLVED The USPTO prefers that specifications and drawings are submitted
 electronically via the USPTO patent electronic filing system. However, any
 specification and/or drawings submitted on physical sheets of paper should conform
 to the applicable provisions of 37 CFR 1.52 and
 37 CFR
 1.84 , and will be subject to a non-electronic filing fee.
 See 37
 CFR 1.16(t) . 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 U.S. Patent and Trademark
 Office. In accordance with 37 CFR 1.96 , a computer
 program listing contained on three hundred printout lines or less may be submitted
 either as drawings (in compliance with 37 CFR 1.84 ), as part of the
 written specification (in compliance with 37 CFR 1.52 ), as an ASCII text
 file on a read-only optical disc (in compliance with 37 CFR
 1.52(e) ), or as an ASCII text file via the USPTO patent
 electronic filing system (in compliance with the Legal Framework for Patent
 Electronic System (see MPEP § 502.05 )). A computer
 program listing contained on three hundred and one (301) printout lines or more
 must be submitted as an ASCII plain text file on a read-only optical disc (in
 compliance with 37 CFR 1.52(e) ) or submitted via the USPTO patent
 electronic filing system. See 37 CFR 1.96(c) . Regardless of
 the number of printout lines a computer program listing has, any computer program
 listing which is filed as an ASCII plain text file on a read-only optical disc or
 submitted via the USPTO patent electronic filing system is referred to as a
 “Computer Program Listing Appendix”, and the “Computer Program Listing Appendix”
 will not be printed in any patent application or part of the printed patent. See
 37 CFR
 1.96(c) .
 

 Form paragraph 6.64.01 or
 6.64.02 may be used to notify the applicant of
 this requirement.
 

 ¶ 6.64.01 Computer Program Listing Appendix of More Than 300 Lines in
 Specification
 

 The specification of this application contains a computer program listing
 consisting of more than three hundred (300) lines. In accordance with 37 CFR 1.96(c) , a
 computer program listing of more than three hundred lines must be submitted as an
 appendix in text format. The “Computer Program Listing Appendix” may be submitted as a text
 file via the USPTO patent electronic filing system or on a read-only optical disc conforming
 to the standards set forth in 37 CFR 1.96(c)(1) . The “Computer Program
 Listing Appendix” must be appropriately referenced in the specification (see 37 CFR 1.77(b)(5) ).
 Accordingly, applicant is required to cancel the current computer program listing, file a
 ”Computer Program Listing Appendix” as a text file via the USPTO patent electronic filing
 system or on a read-only optical disc in compliance with 37 CFR 1.96(c) , and insert an appropriate
 reference to the newly added “Computer Program Listing Appendix” at the beginning of the
 specification.
 

 Examiner Note:
 
 1. This form paragraph must be
 used whenever a computer program listing consisting of more than three hundred lines is
 included as part of the descriptive portion of the specification if the computer program
 listing was filed on or after September 8, 2000. See MPEP § 608.05(a) .
 
 

 2. In bracket 1, insert the range
 of page numbers of the specification which include the computer program
 listing.
 
 
 

 ¶ 6.64.02 Computer Program Listing as Printout Within the Specification
 (More Than 60 Lines And Not More Than Three Hundred Lines)
 

 This application contains a computer program listing of over sixty (60)
 lines and less than three hundred and one (301) lines within the written specification. In
 accordance with 37 CFR
 1.96(b) , a computer program listing contained on over sixty (60) lines
 and less than three hundred-one (301) lines must, if submitted as part
 of the specification, be positioned at the end of the specification and before the claims.
 Accordingly, applicant is required to cancel the computer program listing and either
 incorporate such listing in a text file submitted via the USPTO patent electronic filing
 system or on read-only optical disc in compliance with 37 CFR 1.96 , or insert the computer
 program listing after the detailed description of the invention but before the claims.
 

 Examiner Note:

 This form paragraph must be used
 whenever a computer program listing consisting of a paper printout of more than 60 lines
 and no more than three hundred lines is included as part of the
 descriptive portion of the specification and the computer program listing was filed on or
 after September 8, 2000. See MPEP § 608.05(a) .
 

 
 III. REQUIREMENTS FOR A “COMPUTER PROGRAM LISTING APPENDIX” 37 CFR 1.96(c) lists several requirements of a “Computer
 Program Listing Appendix”. Specifically, a “Computer Program Listing Appendix”
 must be compatible with PC or Mac ® computers and with
 MS-DOS ® , MS-Windows ® , Mac
 OS ® , or
 Unix ® /Linux ® operating
 systems. Also, a “Computer Program Listing Appendix” may only have ASCII CRLF or
 LF line terminators, and the data must not be dependent on control characters or
 codes that are not defined in the ASCII character set. See 37 CFR
 1.96(c)(1) ). Also, a “Computer Program Listing Appendix”
 must have a file name with a “.txt” extension. See 37 CFR
 1.96(c)(2) (provides the requirements for the file name). 
 

 There is a 25 MB size limit for “Computer Program
 Listing Appendix” files submitted via the USPTO patent electronic filing system
 with file compression not being permitted. See 37 CFR
 1.96(c)(3) . It is noted that it may be possible to break up
 a “Computer Program Listing Appendix” file that is larger than 25 MB into multiple
 files that are 25 MB or less in size and submit those smaller files via the USPTO
 patent electronic filing system, as per the Legal Framework for Patent Electronic
 System ( www.uspto.gov ).
 See also MPEP §
 608.05(I)(C) .
 

 A “Computer Program Listing Appendix” submitted on
 a read-only optical disc in compliance with 37 CFR 1.52(e) must be
 submitted as a separate read-only optical disc for each applicable application,
 and multiple computer program listings for a single application may be placed on a
 single read-only optical disc. Multiple read-only optical discs, containing one or
 more computer program listings, may be submitted for a single application. Any
 computer program listing may be compressed using
 WinZip ® , 7-Zip, or
 Unix ® /Linux ® Zip, and the
 compressed file must not be self-extracting. However, a computer program listing
 which has a nested file structure is required to be compressed. If after
 compression, a compressed ASCII plain text file still does not fit on a single
 read-only optical disc, the compressed file may be split into multiple file parts
 in accordance with the target read-only optical disc size and labeled in
 compliance with 37 CFR 1.52(e)(5)(vi) . See
 37
 CFR 1.96(c)(4) .
 

 Read-only optical discs containing a “Computer
 Program Listing Appendix” must be submitted in duplicate and labeled as “Copy 1”
 and “Copy 2” respectively. The transmittal letter that accompanies the read-only
 optical discs must include a statement that the two read-only optical discs are
 identical. In the event that the two read-only optical disc copies are not
 identical, the Office will use the read-only optical disc labeled “Copy 1” for
 further processing. See 37 CFR 1.96(c)(7) . Two discs
 would be considered not identical when, e.g., the files contained on those discs
 are not the same. Duplicate copies for a “Computer Program Listing Appendix” are
 required to be submitted since the OPAP keeps a first copy for record retention
 purposes and a second copy in an artifact folder for use by the examiner during
 the patent examination process. Any amendment to the information on a read-only
 optical disc must be by way of a replacement read-only optical disc in compliance
 with 37 CFR 1.96(c)(5) , as discussed immediately below.
 

 In order to amend a “Computer Program Listing
 Appendix”, a replacement ASCII plain text file, in accordance with
 37 CFR
 1.96(c) , must be submitted via the USPTO patent electronic
 filing system or on a read-only optical disc, in compliance with 37 CFR
 1.52(e) . Any replacement ASCII plain text file submitted on
 read-only optical discs must be submitted in duplicate and must be labeled as
 “COPY 1 REPLACEMENT MM/DD/YYYY” (with the month, day, and year of creation
 indicated) and “COPY 2 REPLACEMENT MM/DD/YYYY”. When the information is filed on a
 read-only optical disc initially, amendments cannot be made to the information
 using the USPTO patent electronic filing system, but instead must be made using a
 replacement read-only optical disc. See 37 CFR 1.52(e)(7) . Also, a
 request must be made that the material in the replacement ASCII plain text file be
 incorporated by reference in a separate paragraph of the specification (replacing
 any prior such paragraph, as applicable) identifying the name of the file, the
 date of creation, and the size of the file in bytes. See 37 CFR
 1.77(b)(5) . A statement must be provided that identifies the
 location of all deletions, replacements, or additions to the ASCII plain text file
 so that the changes made to the information contained in the submission can be
 more easily and accurately identified. Another statement that the replacement
 ASCII plain text file contains no new matter must also be provided. See
 37 CFR 1.96(c)(5) . The Office may also require that a
 replacement ASCII plain text file be submitted if, for example, the information on
 a read-only optical disc is corrupted.
 

 A “Computer Program Listing Appendix” filed as an
 ASCII plain text file on the date that the application was accorded a filing date
 is to be treated as part of the originally filed disclosure even if the required
 “incorporation by reference” statement (see 37 CFR 1.77(b)(5) ) is omitted.
 Similarly, if a preliminary amendment accompanies the application when it is filed
 in the Office and the preliminary amendment includes a “Computer Program Listing
 Appendix” as an ASCII plain text file, the “Computer Program Listing Appendix”
 will be treated as part of the original disclosure. The “Computer Program Listing
 Appendix” is considered part of the original disclosure by virtue of its inclusion
 with the application on the date the application is accorded a filing date. The
 incorporation by reference statement of the material in the ASCII plain text file
 is required to be part of the specification so it is clear to the Office, the
 printer, and the public that the application as originally filed includes the
 “Computer Program Listing Appendix”. The examiner should require applicant(s) to
 insert this statement if it is omitted. See 37 CFR
 1.96(c)(6) . Also, if the application would otherwise be in
 condition for allowance, the examiner may insert the statement by examiner’s
 amendment with a notice of allowance after receiving authorization from the
 applicant. See MPEP
 § 1302.04 and 37 CFR 1.121(g) .
 

 

 
 608.05(b) ASCII Plain Text Submissions of “Large Tables” and Treatment
 of Lengthy Tables in a Specification for Patents and Patent Application Publications [R-01.2024]
 

 
 37 CFR 1.58 Chemical and mathematical formulas and tables. 

 *****

 
 (b) Chemical and mathematical formulas and tables must be
 presented in compliance with § 1.52(a) and (b) , except
 that chemical and mathematical formulas or tables may be placed in a
 landscape orientation if they cannot be presented satisfactorily in a
 portrait orientation. Typewritten characters used in such formulas and
 tables must be chosen from a block (nonscript) type font or lettering style
 having capital letters that should be at least 0.422 cm (0.166 inches) high
 ( e.g., preferably Arial, Times Roman, or Courier, with
 a font size of 12 points), but may be no smaller than 0.21 cm (0.08 inches)
 high ( e.g., a font size of 6 points). A space at least
 0.64 cm (0.25 inches) high should be provided between complex formulas and
 tables and the text. Chemical and mathematical formulas must be configured
 to maintain the proper positioning of their characters when displayed in
 order to preserve their intended meaning. Tables should have the lines and
 columns of data closely spaced to conserve space, consistent with a high
 degree of legibility.
 

 (c) The following “Large Tables” may be submitted
 in electronic form in ASCII plain text via the USPTO patent electronic
 filing system or on a read-only optical disc, in compliance with §
 1.52(e) , excluding an international application
 during the international stage: 
 
 (1) Any individual table that is more than 50
 pages in length; or 
 

 (2) Multiple tables, if the total number of
 pages of all the tables in an application exceeds 100 pages in length,
 where a table page is a page printed on paper, in conformance with
 paragraph (b) of this section. 
 

 
 

 (d) “Large Tables” submitted in electronic form in
 ASCII plain text must conform to the following requirements: 
 
 (1) Must maintain the spatial relationships
 ( e.g., alignment of columns and rows) of the
 table elements when displayed to visually preserve the relational
 information they convey; 
 

 (2) Must have the following compatibilities: 
 
 (i) Computer compatibility: PC or
 Mac ® ;
 

 (ii) Operating system compatibility:
 MS–DOS ® ,
 MS-Windows ® , Mac
 OS ® , or
 Unix ® /Linux ® .
 

 
 

 (3) Must be in ASCII plain text, where: 
 
 (i) All printable characters (including
 the space character) are permitted; 
 

 (ii) No nonprintable (ASCII control)
 characters are permitted, except ASCII Carriage Return plus
 ASCII Line Feed (CRLF) or Line Feed (LF) as line terminators.
 
 

 
 

 (4) Must be named as *.txt, where “*” is one
 character or a combination of characters limited to upper- or
 lowercase letters, numbers, hyphens, and underscores and does not
 exceed 60 characters in total, excluding the extension. No spaces or
 other types of characters are permitted in the file name; and 
 

 (5) Must be incorporated by reference in a
 separate paragraph of the specification, in accordance with §
 1.77(b)(5) . 
 

 
 

 (e) “Large Tables” submitted via the USPTO patent
 electronic filing system must not exceed 25 MB, and file compression is not
 permitted. 
 

 (f) “Large Tables” submitted in compliance with §
 1.52(e) via read-only optical disc must meet the
 following requirements: 
 
 (1) The ASCII plain text file may be
 compressed using WinZip ® , 7-Zip, or
 Unix ® /Linux ® 
 Zip; 
 

 (2) A compressed file must not be
 self-extracting; and
 

 (3) A compressed ASCII plain text file that
 does not fit on a single read-only optical disc may be split into
 multiple file parts in accordance with the target read-only optical
 disc size and labeled in compliance with § 1.52(e)(5)(vi) .
 

 
 

 (g) Any amendments to “Large Tables” in
 electronic form in ASCII plain text format must include: 
 
 (1) A replacement ASCII plain text file, in
 accordance with the requirements of paragraphs (d) through (f) of this
 section, submitted via the USPTO patent electronic filing system or on
 a read-only optical disc, in compliance with § 1.52(e) , labeled as “REPLACEMENT MM/DD/YYYY”
 (with the month, day, and year of creation indicated); 
 

 (2) A request that the amendment be made by
 incorporation by reference of the material in the replacement ASCII
 plain text file, in a separate paragraph of the specification
 (replacing any prior such paragraph, as applicable) identifying the
 name of the file, the date of creation, and the size of the file in
 bytes ( see § 1.77(b)(5) );
 

 (3) A statement that identifies the location
 of all deletions, replacements, or additions to the ASCII plain text
 file; and 
 

 (4) A statement that the replacement ASCII
 plain text file contains no new matter. 
 

 
 

 (h) The specification of an application with “Large
 Tables” as an ASCII plain text file, present on the application filing date,
 without an incorporation by reference of the material contained in the ASCII
 plain text file, must be amended to contain a separate paragraph
 incorporating by reference the material contained in the ASCII plain text
 file, in accordance with § 1.77(b)(5) .
 

 (i) Any read-only optical disc for “Large Tables”
 must be submitted in duplicate. The read-only optical disc and duplicate
 copy must be labeled “Copy 1” and “Copy 2,” respectively. The transmittal
 letter that accompanies the read-only optical discs must include a statement
 that the two read-only optical discs are identical. In the event that the
 two read-only optical disc copies are not identical, the Office will use the
 read-only optical disc labeled “Copy 1” for further processing. 
 

 (j) Any amendment to the information on a
 read-only optical disc must be by way of a replacement read-only optical
 disc, in compliance with paragraph (g) of this section, where the
 replacement read-only optical disc and copy must be labeled “COPY 1
 REPLACEMENT MM/ DD/YYYY” (with the month, day, and year of creation
 indicated), and “COPY 2 REPLACEMENT MM/DD/YYYY,” respectively.
 

 
 

 The USPTO prefers that specifications having tables are submitted
 electronically via the USPTO patent electronic filing system. However, any
 specification and/or tables submitted on physical sheets of paper should conform to
 the applicable provisions of 37 CFR 1.52 and 37 CFR 1.58 and
 will be subject to a non-electronic filing fee. See 37 CFR 1.16(t). When tables must
 be disclosed in a patent application in order to provide a complete disclosure, use
 of paper copies can become burdensome. In the past, all disclosures forming part of a
 patent application were presented on paper with the exception of “Sequence Listings”
 and a “Computer Program Listing Appendix”. Under 37 CFR 1.58(c) et seq., several different methods for submitting “Large Tables”
 are set forth, including submitting ASCII plain text files on read-only optical
 disc(s) in the form of CD-ROM, CD-R, DVD-R, or DVD+R. Applicant(s) may also submit
 “Large Tables” as ASCII plain text files via the USPTO patent electronic filing
 system.
 

 See MPEP § 608.05 , subsection I., for
 details pertaining to submission of ASCII plain text files via the USPTO patent
 electronic filing system, and subsection III., for details pertaining to submissions
 on read-only optical disc(s). Also, substantial details regarding submitting ASCII
 plain text files are incorporated into 37 CFR 1.58(c) et seq., which are discussed more in subsection I below, and
 subsection II below discusses the treatment of lengthy tables in a specification for
 patents and patent application publications.
 

 

 I. “LARGE TABLES” FILED IN ASCII PLAIN TEXT VIA THE USPTO PATENT ELECTRONIC
 FILING SYSTEM OR ON READ-ONLY OPTICAL DISC As defined in 37 CFR 1.58(c) , “Large Tables”
 that may be submitted in electronic form in ASCII plain text are 1) any individual
 table that is more than 50 pages in length, or 2) multiple tables, if the total
 number of pages of all the tables in an application exceeds 100 pages in length. A
 table page is a page printed on paper, in conformance with 37 CFR
 1.58(b) . The presentation of a subheading to divide a large
 table into smaller sections of less than 51 pages should not be used to prevent an
 applicant from submitting the table in electronic form in ASCII plain text unless
 the subdivided tables are presented as numerous files so as to lose their
 relationship to the overall large table. A single table contained on 50 pages or
 less and multiple tables contained on 100 pages or less must be submitted either
 as drawings (in compliance with 37 CFR 1.84 ) or as part of the
 specification on physical sheets of paper (in compliance with 37 CFR 1.52 )
 or via the USPTO patent electronic filing system (in compliance with the Legal
 Framework for Patent Electronic System (see MPEP § 502.05 )). When submitting
 “Large Tables” as ASCII plain text files, each table should be submitted as a
 separate text file. Further, the file name for each table should indicate which
 table is contained therein. It is noted that “Large Tables” cannot be filed in
 ASCII plain text in an international application during the international stage
 (see 37 CFR
 1.58(c) ). 
 

 The text files submitted via the USPTO patent
 electronic filing system or stored on read-only optical disc(s) containing the
 “Large Tables” must contain only ASCII characters. All printable characters
 (including the space character) are permitted, but no nonprintable (ASCII control)
 characters are permitted, except ASCII Carriage Return plus ASCII Line FEED (CRLF)
 or Line Feed (LF) as line terminators. No special formatting characters or
 proprietary file formats are permitted. Accordingly, great care must be taken so
 that the spatial arrangement of the data in rows and columns is maintained in the
 table when the file is opened for viewing at the Office. This will allow the table
 to be viewed with virtually any text viewer. See 37 CFR
 1.58(d) . “Large Tables” submitted in ASCII plain text must
 be compatible with PC or Mac ® computers and with
 MS-DOS ® , MS-Windows ® , Mac
 OS ® , or
 Unix ® /Linux ® operating
 systems. See 37 CFR 1.58(d)(2) . Also,
 “Large Tables” submitted in ASCII plain text must have a file name with a “.txt”
 extension. See 37 CFR 1.58(d)(4) , provides
 all the requirements for the file name. Further, “Large Tables” submitted in ASCII
 plain text must be incorporated by reference in a separate paragraph of the
 specification, in accordance with 37 CFR 1.77(b)(5) . See
 37 CFR 1.58(d)(5) .
 

 There is a 25 MB size limit for “Large Tables”
 files submitted in ASCII plain text via the USPTO patent electronic filing system
 with file compression not being permitted. See 37 CFR
 1.58(e) . It is noted that it may be possible to break up a
 “Large Tables” file that is larger than 25 MB into multiple files that are 25 MB
 or less in size and submit those smaller files via the USPTO patent electronic
 filing system, as per the Legal Framework for Patent Electronic System
 ( www.uspto.gov ). See
 also MPEP §
 608.05(I)(C) .
 

 While “Large Tables” files submitted in ASCII plain
 text via the USPTO patent electronic filing system cannot be compressed, “Large
 Tables” submitted in compliance with 37 CFR 1.52(e) via read-only
 optical disc(s) are now able to be compressed. See 37 CFR
 1.58(f) . Compression was allowed to significantly reduce the
 number of physical media required to accommodate large files. The “Large Tables”
 file may be compressed using WinZip ® , 7-Zip, or
 Unix ® /Linux ® Zip, and the
 compressed file must not be self-extracting. If after compression, a compressed
 “Large Tables” file still does not fit on a single read-only optical disc, the
 compressed file may be split into multiple file parts in accordance with the
 target read-only optical disc size and labeled in compliance with
 37 CFR 1.52(e)(5)(vi) . 
 

 In order to amend “Large Tables” in ASCII plain
 text format, a replacement ASCII plain text file, in accordance with
 37 CFR 1.58(d) - (f) , must be submitted via the USPTO patent electronic
 filing system or on a read-only optical disc, in compliance with 37 CFR
 1.52(e) . Any read-only optical disc with a replacement ASCII
 plain text file must be labeled as “REPLACEMENT MM/DD/YYYY” with the month, day,
 and year of creation indicated. When the information is filed on a read-only
 optical disc initially, amendments cannot be made to the information using the
 USPTO patent electronic filing system, but instead must be made using a
 replacement read-only optical disc. See 37 CFR 1.52(e)(7) and
 1.58(j) . Also, a request must be made that the material in
 the replacement ASCII plain text file be incorporated by reference in a separate
 paragraph of the specification (replacing any prior such paragraph, as applicable)
 identifying the name of the file, the date of creation, and the size of the file
 in bytes. See 37
 CFR 1.77(b)(5) . A statement must be provided that identifies
 the location of all deletions, replacements, or additions to the ASCII plain text
 file so that the changes made to the information contained in the submission can
 be more easily and accurately identified. Another statement that the replacement
 ASCII plain text file contains no new matter must also be provided. See
 37 CFR 1.58(g) . The Office may also require that a
 replacement ASCII plain text file be submitted if, for example, the information on
 a read-only optical disc is corrupted.
 

 “Large Tables” filed as an ASCII plain text file on
 the date that the application was accorded a filing date are to be treated as part
 of the originally filed disclosure even if the requisite “incorporation by
 reference” statement (see 37 CFR 1.77(b)(5) ) is omitted.
 Similarly, if a preliminary amendment accompanies the application when it is filed
 in the Office and the preliminary amendment includes “Large Tables” as an ASCII
 plain text file, the “Large Tables” will be treated as part of the original
 disclosure. The “Large Tables” are considered part of the original disclosure by
 virtue of its inclusion with the application on the date the application is
 accorded a filing date. The incorporation by reference statement of the material
 in the ASCII plain text file is required to be part of the specification so it is
 clear to the Office, the printer, and the public that the application as
 originally filed includes the “Large Tables” in the ASCII plain text file. The
 examiner should require applicant(s) to insert this statement if it is omitted.
 See 37 CFR 1.58(h) . Also, if the application would otherwise be
 in condition for allowance, the examiner may insert the statement by examiner’s
 amendment with a notice of allowance after receiving authorization from the
 applicant. See MPEP
 § 1302.04 and 37 CFR 1.121(g) .
 

 Read-only optical discs containing “Large Tables”
 must be submitted in duplicate and labeled as “Copy 1” and “Copy 2” respectively.
 The transmittal letter that accompanies the read-only optical discs must include a
 statement that the two read-only optical discs are identical. In the event that
 the two read-only optical disc copies are not identical, the Office will use the
 read-only optical disc labeled “Copy 1” for further processing. See
 37 CFR 1.58(i) . Two discs would be considered not identical
 when, e.g., the files contained on those discs are not the same. Duplicate copies
 for “Large Tables” are required to be submitted since the OPAP keeps a first copy
 for record retention purposes and a second copy in an artifact folder for use by
 the examiner during the patent examination process.
 

 Any amendment to the information on a read-only
 optical disc containing “Large Tables” must be by way of replacement read-only
 optical discs submitted in duplicate in compliance with 37 CFR
 1.58(g) . The replacement read-only optical disc and copy
 must be labeled “COPY 1 REPLACEMENT MM/DD/YYY” (with the month, day, and year of
 creation indicated), and “COPY 2 REPLACEMENT MM/DD/YYYY,” respectively. When the
 information is filed on a read-only optical disc initially, amendments cannot be
 made to the information using the USPTO patent electronic filing system, but
 instead must be made using a replacement read-only optical disc. See
 37 CFR
 1.52(e)(7) and 1.58(j) .
 

 While most tables filed with patent applications are
 intended to be rendered in portrait mode, “Large Tables” are permitted to be in
 landscape orientation if they cannot be presented satisfactorily in portrait
 orientation. Viewing documents in Patent Center or by examiners in their desktop
 examination tools permit rotating pages from portrait to landscape and vice
 versa.
 

 II. TREATMENT OF LENGTHY TABLES IN A SPECIFICATION FOR PATENTS OR PATENT
 APPLICATION PUBLICATIONS The cost of printing long tables in patent documents
 is very expensive to the U.S. Patent and Trademark Office. Accordingly, if tables
 on more than two hundred consecutive pages, or large numbers of tables (lengthy
 tables) are submitted on a read-only optical disc or as text files submitted via
 the USPTO patent electronic filing system as provided in 37 CFR
 1.52(e) and 1.58(c) , or in an electronic
 format (XML, tab-delimited text, Microsoft Excel, Microsoft Work, Corel
 WordPerfect) in response to a “Request to Voluntarily Supply Lengthy Table(s) in
 Electronic Format” from the Office of Data Management, these lengthy tables will
 not be published as part of a patent document (e.g., patent or patent application
 publication. The lengthy tables will be published separately on the sequence
 homepage of the USPTO website ( https://seqdata.uspto.gov ). See, for example, patent
 application publication nos. US 20030235811 A1 and US 20030237110 A9.
 

 Should an applicant need to include numerous tables
 in the specification, and such tables are on more than two hundred consecutive
 pages or large numbers of tables (lengthy tables) are present in the
 specification, such tables may be submitted as “Large Tables” in ASCII plain text
 in accordance with 1.58(c) . If a lengthy table is
 embedded in the specification of a patent application, and if the lengthy table is
 available in an electronic form (either XML or a format convertible to XML), when
 the patent or patent application publication is published, the following
 single-column statement will be inserted in place of each replaced table in the
 document.
 

 
 LENGTHY TABLE 

 Lengthy table referenced here [Insert File Name].
 Please refer to the end of the specification for access instructions.
 

 

 When the lengthy tables are separately published on the USPTO
 website, there will be a standardized lengthy table statement, in the patent
 document following the detailed description (see 37 CFR
 1.77(b)(10) ). 
 

 For a patent application publication, the following page-wide text
 would appear:
 

 
 LENGTHY TABLES 

 The patent application contains a lengthy table section. A copy
 of the table is available in electronic form from the USPTO web site
 ( https://seqdata.uspto.gov/?pageRequest=docDetail& DocID=[publication
 number] ). An electronic copy of the table will also be
 available from the USPTO upon request and payment of the fee set forth in
 37 CFR
 1.19(b)(3) .
 

 

 For a patent, the following page-wide text would appear:

 
 LENGTHY TABLES 

 The patent contains a lengthy table section. A copy of the
 table is available in electronic form from the USPTO web site ( https://seqdata.uspto.gov/?pageRequest=doc Detail&DocID=[patent
 number] ). An electronic copy of the table will also be
 available from the USPTO upon request and payment of the fee set forth in
 37 CFR
 1.19(b)(3) .
 

 

 

 Form paragraphs 6.63.01 and
 6.63.02 may be used to notify applicant of
 corrections needed to comply with the requirements of 37 CFR
 1.52(e) and 37 CFR 1.58(c) et seq. with respect to tables.
 

 ¶ 6.63.01 Table Less Than 51 Pages Submitted Only as Text File 

 The description portion of this application contains a table consisting
 of less than fifty one (51) pages only in ASCII text format submitted either via the USPTO
 patent electronic filing system or on read-only optical disc. In accordance
 with 37 CFR
 1.58(c)(1) , only a table of at least fifty one (51) pages may be
 submitted as an ASCII text file. Accordingly, applicant is required to cancel the references
 to the table in text format appearing in the specification on pages [1] , file a
 paper version of the table in compliance with 37 CFR 1.52 or file a PDF version via the
 USPTO patent electronic filing system, and change all appropriate references to the former
 table in text format to the newly added paper or PDF version of the table in the remainder of
 the specification.
 

 Examiner Note:
 
 1. This form paragraph must be used whenever a table on a read-only
 optical disc or submitted as a text file via the USPTO patent electronic filing system
 consisting of less than fifty one (51) pages as part of the descriptive portion of the
 specification is filed on or after September 8, 2000. See MPEP § 608.05(b) . 
 

 2. In bracket 1, insert the range
 of page numbers of the specification which reference the table.
 
 
 

 ¶ 6.63.02 Table Column/Row Relationship Not Maintained

 This application contains a table in ASCII text format submitted either
 via the USPTO patent electronic filing system or on read-only optical disc. “Large Tables”
 submitted as an ASCII text file in compliance with 37 CFR
 1.58(d)(1) must maintain the spatial orientation of the cell entries.
 The table submitted does not maintain the data within each table cell in its proper row/column
 alignment. The data is misaligned in the table as follows: [1] . Applicant is
 required to submit a replacement text file via the USPTO patent electronic filing system or on
 read-only optical disc with the table data properly aligned.
 

 Examiner Note:
 
 1. This form paragraph must be used
 whenever the data in a table cannot be accurately read because the data in the table
 cells do not maintain their row and column alignments.
 

 2. In bracket 1, insert the area of
 the table that does not maintain the row and column alignments.
 
 
 

 

 
 608.05(c) Submissions of Biological Sequence Listings [R-07.2022]

 Applications disclosing nucleotide and/or amino acid sequences, as
 defined in 37 CFR
 1.821(a) for applications filed before July 1, 2022 or as
 defined in 37 CFR 1.831(b) for applications
 filed on or after July 1, 2022, are required to provide the biological sequence
 information in a sequence listing. 
 

 For applications filed before July 1, 2022, the
 sequence listing can be a “Sequence Listing” (as an ACSII plain text file in
 compliance with 37 CFR 1.821 - 1.824 )
 submission must be submitted via the USPTO patent electronic filing system or on
 read-only optical disc. See MPEP §§ 2420 et seq. for detailed information. 
 

 For applications filed on or after July 1, 2022, the
 sequence listing must be a “Sequence Listing XML” (as an XML file in compliance with
 37 CFR
 1.831 - 1.834 ) submission can be
 submitted via the USPTO patent electronic filing system or on read-only optical disc.
 See MPEP
 §§ 2412 - 2419 
 for detailed information. 
 

 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 601-Content of Provisional and Nonprovisional Applications 
 601.01-Complete Application 
 601.01(a)-Nonprovisional Applications Filed Under 35 U.S.C. 111(a) 

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

 601.01(c)-Conversion to or from a Provisional Application 

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

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

 601.01(f)-Applications Filed Without Drawings 

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

 
 

 601.02-Power of Attorney 

 601.03-Correspondence Address 
 601.03(a)-Change of Correspondence Address in Applications Filed On or After September 16, 2012 

 601.03(b)-Change of Correspondence Address in Applications Filed Before September 16, 2012 

 
 

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

 601.05-Bibliographic Information - Application Data Sheet (ADS) 
 601.05(a)-Application Data Sheet (ADS) -- Application Filed On or After September 16, 2012 

 601.05(b)-Application Data Sheet (ADS) in Application Filed Before September 16, 2012 

 
 

 
 

 602-Oaths and Declarations 
 602.01-Naming the Inventor; Inventor's Oath or Declaration 
 602.01(a)-Inventor’s Oath or Declaration in Application Filed On or After September 16, 2012 

 602.01(b)-Inventor’s Oath or Declaration in Application Filed Before September 16, 2012 

 602.01(c)-Correction of Inventorship, Name of Inventor, and Order of Names in an Application 
 602.01(c)(1)-Correction of Inventorship in an Application – Request Filed On or After September 16, 2012 

 602.01(c)(2)-Correcting or Updating Inventor Name 37 CFR 1.48(f) – Request Filed On or After September 16, 2012 

 602.01(c)(3)-[Reserved] 

 
 

 
 

 602.02-New Oath or Substitute for Original 

 602.03-Office Finds the Inventor’s Oath or Declaration Defective 

 602.04-Foreign Executed Oath 

 602.05-Oath or Declaration in Continuing Applications 
 602.05(a)-Oath or Declaration in Continuing Applications Filed On or After September 16, 2012 

 602.05(b)-Oath or Declaration in Continuing Applications Filed Before September 16, 2012 

 
 

 602.06-Non-English Oath or Declaration 

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

 602.08-Inventor and Application Information 
 602.08(a)-Inventor Bibliographic Information 

 602.08(b)-Inventor Signature and Name 

 602.08(c)-Identification of Application 

 
 

 602.09-Joint Inventors 

 
 

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

 
 

 604-Substitute Statements 

 605-Applicant 
 605.01-Applicant for Application filed on or after September 16, 2012 

 605.02-Applicant for Application Filed Before September 16, 2012 

 
 

 606-Title of Invention 
 606.01-Examiner May Require Change in Title 

 
 

 607-Filing Fee 
 607.01-[Reserved] 

 607.02-Returnability of Fees 

 
 

 608-Disclosure 
 608.01-Specification 
 608.01(a)-Arrangement of Application 

 608.01(b)-Abstract of the Disclosure 

 608.01(c)-Background of the Invention 

 608.01(d)-Brief Summary of Invention 

 608.01(e)-[Reserved] 

 608.01(f)-Brief Description of Drawings 

 608.01(g)-Detailed Description of Invention 

 608.01(h)-Mode of Operation of Invention 

 608.01(i)-Claims 

 608.01(j)-Numbering of Claims 

 608.01(k)-Statutory Requirement of Claims 

 608.01(l)-Claims Present on the Application Filing Date 

 608.01(m)-Form of Claims 

 608.01(n)-Dependent Claims 

 608.01(o)-Basis for Claim Terminology in Description 

 608.01(p)-Completeness of Specification 

 608.01(q)-Substitute or Rewritten Specification 

 608.01(r)-Derogatory Remarks About Prior Art in Specification 

 608.01(s)-Restoration of Canceled Matter 

 608.01(t)-Use in Subsequent Application 

 608.01(u)-[Reserved] 

 608.01(v)-Marks Used in Commerce and Trade Names 

 608.01(w)-Copyright and Mask Work Notices 

 
 

 608.02-Drawing 
 608.02(a)-New Drawing — When Replacement is Required Before Examination 

 608.02(b)-Acceptability of Drawings 

 608.02(c)-Location of Drawings 

 608.02(d)-Complete Illustration in Drawings 

 608.02(e)-Examiner Determines Completeness and Consistency of Drawings 

 608.02(f)-Modifications in Drawings 

 608.02(g)-Illustration of Prior Art 

 608.02(h)-Replacement Drawings 

 608.02(i)-Transfer of Drawings From Prior Applications 

 608.02(j) - 608.02(o)-[Reserved] 

 608.02(p)-Correction of Drawings 

 608.02(q) - 608.02(s)-[Reserved] 

 608.02(t)-Cancelation of Figures 

 608.02(u)-[Reserved] 

 608.02(v)-Drawing Changes Which Require Annotated Sheets 

 608.02(w)-Drawing Changes Which May Be Made Without Applicant’s Annotated Sheets 

 608.02(x)-Drawing Corrections or Changes Accepted Unless Notified Otherwise 

 608.02(y)-Return of Drawing 

 608.02(z)-Allowable Applications Needing Drawing Corrections or Corrected Drawings 

 
 

 608.03-Models, Exhibits, Specimens 
 608.03(a)-Handling of Models, Exhibits, and Specimens 

 
 

 608.04-New Matter 
 608.04(a)-Matter Not Present in Specification, Claims, or Drawings on the Application Filing Date 

 608.04(b)-New Matter by Preliminary Amendment 

 608.04(c)-Review of Examiner’s Holding of New Matter 

 
 

 608.05-“Sequence Listing,” “Large Tables,” or “Computer Program Listing Appendix” Submitted in ASCII Plain Text or a “Sequence Listing
 XML” Submitted as XML File Text 
 608.05(a)-Submission of a “Computer Program Listing Appendix” 

 608.05(b)-ASCII Plain Text Submissions of “Large Tables” and Treatment of Lengthy Tables in a Specification for Patents and Patent Application
 Publications 

 608.05(c)-Submissions of Biological Sequence Listings 

 
 

 
 

 609-Information Disclosure Statement 
 609.01-Examiner Checklist for Information Disclosure Statements 

 609.02-Information Disclosure Statements in Continued Examinations or Continuing Applications 

 609.03-Information Disclosure Statements in National Stage Applications 

 609.04-Content and Timing Requirements for an Information Disclosure Statement 
 609.04(a)-Content Requirements for an Information Disclosure Statement 

 609.04(b)-Timing Requirements for an Information Disclosure Statement 

 
 

 609.05-Examiner Handling of Information Disclosure Statements 
 609.05(a)-Noncomplying Information Disclosure Statements 

 609.05(b)-Complying Information Disclosure Statements 

 609.05(c)-Documents Submitted as Part of Applicant’s Reply to Office Action 

 
 

 609.06-Information Printed on Patent 

 609.07-IDSs Electronically Submitted (eIDS) Using Patent Center 

 609.08-Electronic Processing of Information Disclosure Statement 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:50:52