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813 Off. Gaz. Pat. Office 1 (1965)

handle is hein.intprop/uspagaz0550 and id is 1 raw text is: U.S. DEPARTMENT OF COMMERCE OFFICIAL GAZETTE of the UNITED STATES PATENT OFFICE April 6, 1965 Volume 813 Number 1 PATENTS NOTICES Board of Appeals Decisions Rendered in the Month of February 1965 Examiner affirmed ---------------------------------333 Examiner affirmed in part ---------------------------45 Examiner reversed ---------------------------------95 Total --------------------------------------473 Informal Applications of Foreign Applicants This Notice Is of special interest to attorneys and agents prosecuting applications on inventions originating abroad. Many applications filed in this Office correspond in form and substance to the requirements (regulations) of countries foreign to the United States. Since they were not originally drafted to comply with our Rules of Practice, especially those based on 35 U.S.C. 112, the first examination cannot be the full and complete one contemplated under current examining procedures. This first examination is necessarily limited, un- der MPEP 702.01, to pointing out the informalities and citing the results of a search, the search being based upon the inven- tion so far as it can be understood from the foreign type of claims, often coupled with a somewhat generalized disclosure. Since U.S. Patent Office policy is to accord equal treatment to all cases regardless of origin, current examining procedures, as explained in the address reprinted in 803 O.G. 893, subject these applications to final determination on the second action. It is obviously to applicant's advantage to file the applica- tion with an adequate disclosure and with claims which con- form to U.S. Patent Office usages and requirements. This should be done whenever possible. If, however, due to the pressure of a Convention deadline or other reasons, this is not possible, applicants are urged to submit promptly, pref- erably within three months alter filing, a preliminary amend- ment which corrects the obvious informalities. The infor- malities should be corrected to the extent that the disclosure is readily understood and the claims to be initially examined are in proper form, particularly as to dependency, and other- wise clearly define the invention. New matter must be excluded from these amendments since preliminary amend- ments do not enjoy original disclosure status, section 608.04(b), MPEP. Mar. 4, 1965. EDWARD J BRENNER, Commisesioner of Patents. Practice Under Rule 147 In view of the frequent misunderstandings which have arisen as to the filing of applications under Rule 147, it is considered advisable to issue the following statement as to the practice under that rule. The rule is clearly restricted by its terms to divisional applications directed to nonelected inventions, those not elected after a requirement for restriction. It is thus more limited than 35 U.S.C. 121, on which it is based, and applies only to divisional applications which are necessitated by a requirement for restriction in the parent case. It is further to be noted that a Rule 147 application com- prises (1) a copy of the original application as filed, prepared and certified by the Patent Office and (2) a proposed amend- ment canceling the irrelevant claims or other matter. The sole justification for the use of unexecuted copies in the di- visional application is that their subject matter has already been executed in the parent case. Accordingly, an application under Rule 147 should'not, either as filed or by a preliminary amendment prior to the time when it is accorded a filing date, contain anything whatever that was not present in the parent application as filed. The Patent Office cannot undertake, prior to giving a filing date, to decide whether differences between the parent and divisional case Involve matters of substance or of form only. It follows that any proposed amendments to the divisional application should be withheld until it has received a filing date. Since a Rule 147 application must be based on the parent case as filed and must be directed to nonelected inventions, the claims which it is sought to include in such an application must be original claims of the parent case and must have been present in that case in their original form when the re- striction requirement was made; but if that condition is satis- fied, it is not material that other claims were amended or new claims were added prior to the requirement so long as no such amended or added claim is to be included in the Rule 147 application. An amendment stating that the Rule 147 application is a division of the parent case may accompany the application, but no other amendments to the specification or drawing should be req\ ested until the application has received its serial number a d filing date. Since Rule 14 is limited by its terms to cases in which the parent application is still pending when the divisional case is filed, it is necessary that all requirements of the rule be satisfied prior to abandonment or patenting of the parent application. Mar. 11, 1965. EDWIN L. REYNOLDS, First Assistant Commissioner. New Applications Received During February 1965 Patents ---------------------------------------6,557 Designs ---------------------------------------365 Plant Patents ---------------------------------- 6 Reissues ---------------------------------------13 Total ----------------------------------- 6,941 Issue-April 6, 1965 Patents - 1----- l184-No. 3,176,314 to No. 3,177,497, incl. Designs ------- 87-No. 200,755 to No. 200,841, incl. Plant Patents-- 2-No. 2,490 to No. 2,491, incl. Reissues ------ 10-No. 25,751 to No. 25,760, incl. Total ----- 1283

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