the claims and will usually be reduced about 2 in size with two printout sheets being printed as one patent specification page. Any amendments must be made by way of submission of a substitute sheet if the copy is to be used for camera ready copy. (b) As an appendix which will not be printed. If a computer program listing printout is 11 or more pages long, applicants may submit such listing in the form of microfiche, referred to in the specification (see § 1.77 (c)(2)). Such microfiche filed with a patent application is to be referred to as a "microfiche appendix." The "microfiche appendix" will not be part of the printed patent. Reference in the application to the "microfiche appendix" should be made at the beginning of the specification at the location indicated in § 1.77(c)(2). Any amendments thereto must be made by way of revised microfiche. All computer program listings submitted on paper will be printed as part of the patent. (1) Availability of appendix. Such computer program listings on microfiche will be available to the public for inspection, and paper or microfiche copies thereof will be separately available for purchase, after a patent based on such an application is granted or the application is otherwise made publicly available. (2) Submission requirements. Computer-generated information submitted as an appendix to an application for patent shall be in the form of microfiche in accordance with the standards set forth in the following American National (ANSI) or National Micrographics Association (NMA) Standards (Note: As new editions of these standards are published, the latest shall apply): ANSI PH 1.28-1976-Specifications for Photographic Film for Archival Records, Silver-Gelatin Type, on Cellulose Ester Base. ANSI PH 1.41-1976 Specifications for Pho- NMA MS5 (ANSI PH 5.9-1975) Microfiche of Documents. ANSI PH 2.19 (1959)-Diffuse Transmission Density. except as modified or clarified below: (i) Either Computer-Output-Microfilm (COM) output or copies of photographed paper copy may be submitted. In the former case, NMA standards MS1 and MS2 apply; in the latter case, standard MS5 applies. (ii) Film submitted shall be first generation (camera film) negative appearing microfiche (with emulsion on the back side of the film when viewed with the images right reading). (iii) Reduction ratio of microfiche submitted should be 24:1 or a similar ratio where variation from said ratio is required in order to fit the documents into the image area of the microfiche format used. (iv) Film submitted shall have a thickness of at least .005 inches (0.13 mm) and not more than .009 inches (0.23 mm) for either cellulose acetate base or polyester base type. (v) Both microfiche formats A1 (98 frames, 14 columns x 7 rows) and A3 (63 frames, 9 columns x 7 rows) which are described in NMA standard MS2 (A1 is also described in MS5) are acceptable for use in preparation of microfiche submitted. (vi) At least the left-most 1/3 (50 mm x 12 mm) of the header or title area of each microfiche submitted shall be clear or positive appearing so that the Patent and Trademark Office can apply serial number and filing date thereto in an eye-readable form. The middle portion of the header shall be used by applicant to apply an eye-readable application identification such as the title and/or the first inventor's name. The attorney's docket number may be included. The final right-hand portion of the microfiche shall contain sequence information for the microfiche, such as 1 of 4, 2 of 4, etc. (vii) Additional requirements which apply specifically to microfiche of filmed paper copy: (A) The first frame of each microfiche submitted shall contain a standard test target which contains five NBS Micro-copy Resolution Test Charts (No. 1010A), one in the center and one in each corner. See illustra tion on page 2 of NMA Recommended Practice MS104, Inspection and Quality Control of First Generation Silver Halide Microfilm. See also paragraph 7 of NMA-MS5. (B) The second frame of each microfiche submitted must contain a fully descriptive title and the inventor's name as filed. (C) The pages or lines appearing on the microfiche frames should be consecutively numbered. (D) Pagination of the microfiche frames shall be from left to right and from top to bottom. (E) At a reduction of 24:1 resolution of the original microfilm shall be at least 120 lines per mm (5.0 target) so that reproduction copies may be expected to comply with provisions of paragraph 7.1.4 of NMA Standard MS5. (F) Background density of negative appearing camera master microfiche of filmed paper documents shall be within the range 0.9 to 1.2 and line density should be no greater than 0.08. The density shall be visual diffuse density as measured using the method described in ANSI Standard PH 2.19. (G) An index, when included, should appear in the last frame (lower right hand corner when data is right-reading) of each microfiche. See NMAMS5, paragraph 6.6. (viii) Microfiche generated by Computer Output Microfilm (COM). (A) Background density of negativeappearing COM-generated camera master microfiche shall be within the range of 1.5 to 2.0 and line density should be no greater than 0.2. The density shall be visual diffuse density as described in ANSI PH 2.19. (B) The first frame of each microfiche submitted should contain a resolution test frame in conformance with NMA standard MS1. (C) The second frame of each microfiche submitted must contain a fully descriptive title and the inventor's name as filed. (D) The pages or lines appearing on the microfiche frames should be consecutively numbered. (E) It is preferred that pagination of the microfiche frames be from left to right and top to bottom but the alter native, i.e., from top to bottom and from left to right, is also acceptable. (F) An index, when included, should appear on the last frame (lower right hand corner when data is right reading) of each microfiche. (G) Amendment of microfiche must be made by way of replacement microfiche. (35 U.S.C. 6 and 41) [46 FR 2612, Jan. 12, 1981] INFORMATION DISCLOSURE STATEMENT 8 1.97 Filing of information disclosure statement. (a) As a means of complying with the duty of disclosure set forth in § 1.56, applicants are encouraged to file an information disclosure statement at the time of filing the application or within the later of three months after the filing date of the application or two months after applicant receives the filing receipt. If filed separately, the disclosure statement should, in addition to the identification of the application, include the Group Art Unit to which the application is assigned as indicated on the filing receipt. The disclosure statement may either be separate from the specification or may be incorporated therein. (b) A disclosure statement filed in accordance with paragraph (a) of this section shall not be construed as a representation that a search has been made or that no other material information as defined in § 1.56(a) exists. (35 U.S.C. 6, Pub. L. 97-247) [48 FR 2712, Jan. 20, 1983] § 1.98 Content of information disclosure statement. (a) Any disclosure statement filed under § 1.97 or § 1.99 shall include: (1) A listing of patents, publications or other information; and (2) A concise explanation of the relevance of each listed item. The disclosure statement shall be accompanied by a copy of each listed patent or publication or other item of information in written form or of at least the portions thereof considered by the person filing the disclosure statement to be pertinent. § 1.78 Claiming benefit of earlier filing date and cross references to other applications. (a) An application may claim an invention disclosed in a prior filed copending national application or international application designating the United States of America. In order for an application to claim the benefit of a prior filed copending national application, the prior application must name as an inventor at least one inventor named in the later filed application and disclose the named inventor's invention claimed in at least one claim of the later filed application in the manner provided by the first paragraph of 35 U.S.C. 112. In addition, the prior application must be (1) complete as set forth in § 1.51, or (2) entitled to a filing date as set forth in § 1.53(b) and include the basic filing fee set forth in § 1.16; or (3) entitled to a filing date as set forth in § 1.53(b) and have paid therein the processing and retention fee set forth in § 1.21(1) within the time period set forth in § 1.53(d). Any application claiming the benefit of a prior filed copending national or international application must contain or be amended to contain in the first sentence of the specification following the title a reference to such prior application, identifying it by serial number and filing date or international application number and international filing date and indicating the relationship of the applications. Cross-references to other related applications may be made when appropriate. (See § 1.14(b)). (b) Where two or more applications filed by the same applicant contain conflicting claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. (c) Where two or more applications, or an application and a patent naming different inventors and owned by the same party contain conflicting claims, and there is no statement of record indicating that the claimed inventions were commonly owned or subject to an obligation of assignment to the same person at the time the later invention was made, the assignee may be called upon to state whether the claimed inventions were commonly owned or subject to an obligation of assignment to the same person at the time the later invention was made, and if not, indicate which named inventor is the prior inventor. In addition to making said statement, the assignee may also explain why an interference should or should not be declared. (d) Where an application claims an invention which is not patentably distinct from an invention claimed in a commonly owned patent with the same or a different inventive entity, a double patenting rejection will be made in the application. An obviousness-type double patenting rejection may be obviated by filing a terminal disclaimer in accordance with § 1.321(b). (Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247) [36 FR 7312, Apr. 17, 1971 and 50 FR 9380, Mar. 7, 1985; 50 FR 11366, Mar. 21, 1985] § 1.79 Reservation clauses not permitted. A reservation for a future application of subject matter disclosed but not claimed in a pending application will not be permitted in the pending application, but an application disclosing unclaimed subject matter may contain a reference to a later filed application of the same applicant or owned by a common assignee disclosing and claiming that subject matter. THE DRAWINGS AUTHORITY: Secs. 1.81 to 1.88 also issued under 35 U.S.C. 113. § 1.81 Drawings required in patent application. (a) The applicant for a patent is required to furnish a drawing of his or her invention where necessary for the understanding of the subject matter sought to be patented; this drawing, or a high quality copy thereof, must be filed with the application. Since corrections are the responsibility of the applicant, the original drawing(s) should be retained by the applicant for any necessary future correction. (b) Drawings may include illustrations which facilitate an understanding of the invention (for example, flow tion on page 2 of NMA Recommended Practice MS104, Inspection and Quality Control of First Generation Silver Halide Microfilm. See also paragraph 7 of NMA-MS5. (B) The second frame of each microfiche submitted must contain a fully descriptive title and the inventor's name as filed. (C) The pages or lines appearing on the microfiche frames should be consecutively numbered. (D) Pagination of the microfiche frames shall be from left to right and from top to bottom. (E) At a reduction of 24:1 resolution of the original microfilm shall be at least 120 lines per mm (5.0 target) so that reproduction copies may be expected to comply with provisions of paragraph 7.1.4 of NMA Standard MS5. (F) Background density of negative appearing camera master microfiche of filmed paper documents shall be within the range 0.9 to 1.2 and line density should be no greater than 0.08. The density shall be visual diffuse density as measured using the method described in ANSI Standard PH 2.19. (G) An index, when included, should appear in the last frame (lower right hand corner when data is right-reading) of each microfiche. See NMAMS5, paragraph 6.6. (viii) Microfiche generated by Computer Output Microfilm (COM). (A) Background density of negativeappearing COM-generated camera master microfiche shall be within the range of 1.5 to 2.0 and line density should be no greater than 0.2. The density shall be visual diffuse density as described in ANSI PH 2.19. (B) The first frame of each microfiche submitted should contain a resolution test frame in conformance with NMA standard MS1. (C) The second frame of each microfiche submitted must contain a fully descriptive title and the inventor's name as filed. (D) The pages or lines appearing on the microfiche frames should be consecutively numbered. (E) It is preferred that pagination of the microfiche frames be from left to right and top to bottom but the alter native, i.e., from top to bottom and from left to right, is also acceptable. (F) An index, when included, should appear on the last frame (lower right hand corner when data is right reading) of each microfiche. (G) Amendment of microfiche must be made by way of replacement microfiche. (35 U.S.C. 6 and 41) [46 FR 2612, Jan. 12, 1981] INFORMATION DISCLOSURE STATEMENT § 1.97 Filing of information disclosure statement. (a) As a means of complying with the duty of disclosure set forth in § 1.56, applicants are encouraged to file an information disclosure statement at the time of filing the application or within the later of three months after the filing date of the application or two months after applicant receives the filing receipt. If filed separately, the disclosure statement should, in addition to the identification of the application, include the Group Art Unit to which the application is assigned as indicated on the filing receipt. The disclosure statement may either be separate from the specification or may be incorporated therein. (b) A disclosure statement filed in accordance with paragraph (a) of this section shall not be construed as a representation that a search has been made or that no other material information as defined in § 1.56(a) exists. (35 U.S.C. 6, Pub. L. 97-247) [48 FR 2712, Jan. 20, 1983] § 1.98 Content of information disclosure statement. (a) Any disclosure statement filed under 1.97 or § 1.99 shall include: (1) A listing of patents, publications or other information; and (2) A concise explanation of the relevance of each listed item. The disclosure statement shall be accompanied by a copy of each listed patent or publication or other item of information in written form or of at least the portions thereof considered by the person filing the disclosure statement to be pertinent. All United States patents listed should be identified by their patent numbers, patent dates and names of the patentees. Each foreign published application or patent should be cited by identifying the country or office which issued it, the document number and publication date indicated on the document. Each printed publication should be identified by author (if any), title of the publication, pages, date and place of publication. (b) When two or more patents or publications considered material are substantially identical, a copy of a representative one may be included in the statement and others merely listed. A translation of the pertinent portions of foreign language patents or publications considered material should be transmitted if an existing translation is readily available to the applicant. (35 U.S.C. 6, Pub. L. 97-247) [42 FR 5594, Jan. 28, 1977, as amended at 48 FR 2712, Jan. 20, 1983] § 1.99 Updating of information disclosure statement. If prior to issuance of a patent an applicant, pursuant to his or her duty of disclosure under § 1.56, wishes to bring to the attention of the Office additional patents, publications or other information not previously submitted, the additional information should be submitted to the Office with reasonable promptness. It may be included in a supplemental information disclosure statement or may be incorporated into other communications to be considered by the examiner. Any transmittal of additional information shall be accompanied by explanations of relevance and by copies in accordance with the requirements of § 1.98. (35 U.S.C. 6, Pub. L. 97-247) [48 FR 2712, Jan. 20, 1983] EXAMINATION OF APPLICATIONS AUTHORITY: Secs. 1.101 to 1.108 also issued under 35 U.S.C. 131, 132. § 1.101 Order of examination. (a) Applications filed in the Patent and Trademark Office and accepted as complete applications are assigned for examination to the respective examining groups having the classes of inven tions to which the applications relate. Applications shall be taken up for examination by the examiner to whom they have been assigned in the order in which they have been filed except for those applications in which examination has been advanced pursuant to § 1.102. See § 1.496 for order of examination of international applications in the national stage. (b) Applications which have been acted upon by the examiner, and which have been placed by the applicant in condition for further action by the examiner (amended applications) shall be taken up for action in such order as shall be determined by the Commissioner. (35 U.S.C. 6, Pub. L. 97-247) [29 FR 13470, Sept. 30, 1964, as amended at 52 FR 20046, May 28, 1987] § 1.102 Advancement of examination. (a) Applications will not be advanced out of turn for examination or for further action except as provided by this part, or upon order of the Commissioner to expedite the business of the Office, or upon filing of a request under paragraph (b) of this section or upon filing a petition under paragraphs (c) or (d) of this section with a verified showing which, in the opinion of the Commissioner, will justify so advancing it. (b) Applications wherein the inventions are deemed of peculiar importance to some branch of the public service and the head of some department of the Government requests immediate action for that reason, may be advanced for examination. (c) A petition to make an application special may be filed without a fee if the basis for the petition is the applicant's age or health or that the invention will materially enhance the quality of the environment or materially contribute to the development or conservation of energy resources. (d) A petition to make an application special on grounds other than those referred to in paragraph (c) of this section must be accompanied by the petition fee set forth in § 1.17(i)(2). (36 U.S.C. 6; 15 U.S.C. 1113, 1123) |