cation on its merits; and in such case he must, if possible, in his first letter to the applicant, state all his objections, whether formal or otherwise, and until the formal objections are disposed of, further action will not be taken upon the merits without the order of the Commissioner. REJECTIONS AND REFERENCES. Rev. Stat., sec. Notice of rejec mation and refer 65. Whenever, on examination, any claim of an applica- 1887-64. tion is rejected for any reason whatever, the applicant will 4903. be notified thereof. The reasons for such rejection will be tion, with infor fully and precisely stated, and such information and refer- ences. ences will be given as may be useful in aiding the applicant to judge of the propriety of prosecuting his application or of altering his specification; and if, after receiving such notice, he shall persist in his claim, with or without altering his specification, the application will be reëxamined. If upon reëxamination the claim shall be again rejected, the reasons therefor will be fully and precisely stated. Reexamina 1887-65. On rejection 66. Upon the rejection of an application for want of novelty, the examiner must cite the best references at his com- for want of novelty best refermand. When the reference shows or describes inventions ences to be cited. Requisites of other than that claimed by the applicant, the particular notices of rejec part relied on will be designated as nearly as practicable. The pertinence of the reference, if not obvious, must be clearly explained and the anticipated claim specified. tion. patents. If domestic patents be cited, their dates and numbers, Citation of the names of the patentees, and the classes of invention must be stated. If foreign patents be cited, their dates and numbers must be stated, and such other data must be fur. nished as will enable the applicant to identify the patents cited. In citing the patents of any country, as references, the name of the patentee and the title of the invention shall be indicated. If printed publications be cited, the title, date, page, or plate, and place of publication, or place where a copy can be found, will be given. When reference is made to facts within the personal knowledge of an em ployé of the office, the data will be as specific as possible, and the reference must be supported, when called for, by the affidavit of such employé (Rule 76); such affidavit shall Affidavits. be subject to contradiction, explanation, or corroboration by the affidavits of the applicant and other persons. If the patent, printed matter, plates, or drawings so referred to are in the possession of the office, copies will be furnished at the rate specified in Rule 218, upon the order of the applicant. 1887-66. Adverse decis. 67. Whenever, in the treatment of an ex parte application. ions on prelimi- an adverse decision is made upon any preliminary or internary questions in ex parte cases. mediate question, without the rejection of any claim, notice thereof, together with the reasons therefor, will be given to the applicant, in order that he may judge of the propriety of the action. If, after receiving such notice, he traverse Reconsidera the propriety of the action, the matter will be reconsidered. tion. 1887-67. Right to amend. amendments. AMENDMENTS AND ACTIONS BY APPLICANTS. 68. The applicant has a right to amend before or after the first rejection or action; and he may amend as often as the examiner presents new references or reasons for rejection. Requisites of In so amending, the applicant must clearly point out all the patentable novelty which he thinks the case presents in view of the state of the art disclosed by the references cited or the objections made. He must also show how the amend ments avoid such references or objections. after claims After such action upon an application as will entitle the Amendment applicant to an appeal to the examiners-in-chief (Rule 134). ready for appeal. Or after such appeal has been taken, amendments canceling claims or presenting those rejected in better form for consideration on appeal may be admitted; but the admission of such an amendment or its refusal, and any proceedings relative thereto, shall not operate to relieve the application from its condition as subject to appeal, or to save it from abandonment under Rule 171. If amendments touching the merits of the application are presented after the case is in condition for appeal, or after appeal has been taken, they may be admitted upon a showing duly verified of good and sufficient reasons why they were not earlier presented. From the refusal of the primary examiner to admit an amend ment a petition will lie to the Commissioner under Rule 145. No amendment can be made in appealed cases between the filing of the examiner's statement of the grounds of his decision (Rule 135) and the decision of the appellate tribunal. After decision on appeal amendments can only be made as provided in Rule 142. 1887-68. Request for reconsideration. 1887-69. Amendments 69. In order to be entitled to the reconsideration provided for in Rules 65 and 67, the applicant must make request therefor in writing, and he must distinctly and specifically point out the supposed errors in the examiner's action. The mere allegation that the examiner has erred will not be received as a proper reason for such reconsideration. 70. In original applications which are capable of illustra to correspond to tion by drawing or model all amendments of the model, drawing, or speci- drawings, or specification, and all additions thereto, must original model, fication. conform to at least one of them as it was at the time of the filing of the application. Matter not found in either, involving a departure from the original invention can be shown or claimed only in a separate application. Inaccuracies 71. The specification and drawing must be amended and 1887-70. revised, when required, for the purposes of correcting inac- or prolixity. curacies of description or unnecessary prolixity, and of securing correspondence between the claim, the specification, and the drawing. Specification If not to be turned. 72. After the completion of the application the office will 1887-71. not return the specification for any purpose whatever. applicants have not preserved copies of the papers which they wish to amend, the office will furnish them on the usual terms. re The model or drawing, but not both at the same time, Model or drawing returned for may be withdrawn for correction. But a drawing can not correction. be withdrawn unless a model has been filed and accepted by the examiner as a part of the application. Amendments 73. In every amendment the exact word or words to be 1887-72. stricken out or inserted in the application must be specified, must be specific. and the precise point indicated where the erasure or insertion is to be made. All such amendments must be on sheets of paper separate from the papers previously filed, and written on but one side of the paper. Erasures, additions, How written. insertions, or mutilations of the papers and records must not be made by the applicant. amendments. Amendments and papers requiring the signature of the Signature applicant must also, in case of assignment of an undivided part of the invention, be signed by the assignee. (Rules 6, 107.) rewritten. 74. When an amendatory clause is amended it must be Specification wholly rewritten, so that no interlineation or erasure shall appear in the clause, as finally amended, when the application is passed to issue. If the number or nature of the amendments shall render it otherwise difficult to consider the case, or to arrange the papers for printing or copying, the examiner or Commissioner may require the entire specification to be rewritten. 1887-74. Patents show ing invention. 75. When an original or reissue application is rejected on reference to an expired or unexpired domestic patent which ing but not claim substantially shows or describes but does not claim the rejected invention, or on reference to a foreign patent or to a printed publication, and the applicant shall make oath to Oath. facts showing a completion of the invention in this country before the filing of the application on which the domestic 1887-75. Application patent issued, or before the date of the foreign patent, or before the date of the printed publication, and shall also make oath that he does not know and does not believe that the invention has been in public use or on sale in this country for more than two years prior to his application, and that he has never abandoned the invention, then the patent or publication cited will not bar the grant of a patent to the applicant. 76. When an application is rejected on reference to an rejected on refer- expired or unexpired domestic patent which shows or deences showing but not claiming scribes but does not claim the invention, or on reference invention, etc. to a foreign patent, or to a printed publication, or to facts within the personal knowledge of an employé of the office, set forth in an affidavit (when requested) of such employé (Rule 66), or when rejected on the ground of public use or sale, or upon a mode or capability of operation attributed to a reference, or because the alleged invention is held to be inoperative, or frivolous, or injurious to public health or morals, affidavits or depositions supporting or traversing Affidavits sup these references or objections may be received; but affidaersing such refer- vits will not be received in other cases without special pertions may be re- mission of the Commissioner. (See Rule 141.) porting and trav. ences or objec ceived. Abandonment. Suspension of application. 1887-77. Amendment after notice of al 77. If an applicant neglect to prosecute his application for two years after the date when the last official notice of any action by the office was mailed to him, the application will be held to be abandoned, as set forth in Rule 171. Whenever action upon an application is suspended upon request of an applicant, and whenever an applicant has been called upon to put his application in condition for interference, the period of two years running against such application shall be considered as beginning at the date of the last official action preceding such actions. Acknowledgment of the filing of an application is an official action. Suspensions will only be granted for good and sufficient cause, and for a reasonable time specified. 78. Amendments will not be permitted after the notice and jurisdiction of allowance of an application, and the examiner will exercise jurisdiction over such an application only by special authority from the Commissioner. lowance. Amendment without with sue. Amendments not affecting the merits may be made after drawal from is the allowance of an application, and after payment of the final fee, if the specification has not been printed, on the recommendation of the primary examiner, approved by the Commissioner, without withdrawing the case from issue. (See Rule 165.) DESIGNS. 1887-78. Rev.Stat.,secs. Design patents, 79. A patent for a design may be granted to any person in the cases specified in Rule 24, upon payment of the fee 4929 to 4933. required by law and other due proceedings had, as in cases to whom granted. of inventions or discoveries. Rev. Stat., sec. 80. Patents for designs are granted for the term of three 1887-79. and one-half years, or for seven years, or for fourteen as the applicant may, in his application, elect. 4931. years, 81. The proceedings in applications for patents for designs are substantially the same as in applications for other patents. The specification must distinctly point out the characteristic features of the design, and carefully distinguish between what is old and what is believed to be new. The claims also, when the design admits of it, should be as distinct and specific as in the case of other applications. The following order of arrangement should be observed in framing the specification: Terms of design patents. of specification. (1) Preamble, stating name and residence of the appli- Arrangement cant, title of the design, and the name of the article for which the design has been invented. (2) Detailed description of the design, as it appears in used. (3) Claim or claims. (4) Signature of inventor. (5) Signatures of two witnesses. 82. When the design can be sufficiently represented by 1887-81. drawings a model will not be required. 83. The design must be represented by a drawing made to conform to the rules laid down for drawings of mechanical inventions. In case the nature of the design is such that it can not properly be represented by such a drawing, upon the recommendation of the examiner a photograph may be employed. Rev. Stat., sec. 4930. Model. 1887-82. Engravings. Photographs.. Drawing. 84. Whenever a photograph is employed to illustrate the 1887-83 design it must be mounted upon bristol-board ten by fifteen inches in size, having a single marginal line one inch from its edges, and properly signed and witnessed. The applicant will be required to furnish twenty-five extra copies of such photograph (not mounted) of a size not exceeding seven and a half inches by eleven. (For forms to be used in applications for design patents, see Appendix.) |