Referenced Statutes
`
`37 C.F.R. § 1.78(a)(1) (MPEP E7, July 1998)
`
`Manual of Patent Examining Procedure 201.11(F)
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`3
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`1
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`HP 1003
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`PATENT RULES
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`§ 1.78
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`construed to include all the limitations of the ciaim
`incorporated by reference into the dependent claim. A
`multiple dependent claim shall be construed to incorpo-
`rate by reference all the limitations of each of the
`particular claims in relation to which it is being consid-
`ered.
`
`(d)(1) The ciaim or claims must conform to the
`invention as set forth in the remainder of the specifica~
`tion 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 descrip-
`tion 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/0r relationships
`which constitute that portion of the claimed combina-
`tion which the applicant considers as the new or
`improved portion.
`they shall be
`(f)
`If there are several claims,
`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.
`(It) The claim or claims must commence on a
`separate sheet.
`(i) Where a claim sets forth a plurality of ele-
`ments or steps, each element or step of the claim should
`be separated by a line indentation.
`
`[31 FR 12922, Oct. 4, 1966; 36 FR 12690, Juiy 3, 1971; 37 FR
`21995, Oct. 18, 1972; 43 FR 4015, Jan. 31, 1978; para. (c), 47 FR
`41276, Sept. 17, 1982, effective Oct. 1, 1982; para. (g) amended,
`paras. (h) and (i) added, 61. FR 42790, Aug. 19, 1996, effective
`Sept 23, 1996]
`
`(2) Fee Transmittal Form.
`(3) 'Title of the invention; or an introductory
`portion stating the name,-citizenship, and residence of
`the applicant, and the title of the invention.
`'
`(4) Cross-wreference to related applications.
`(5) Statement regarding federally sponsored
`research or development;
`
`(6) Reference to a “Microfiche appendix.” (See
`§ 1.96 (c)). The total number of'rnicrofiche and total
`number of frames should be specified.
`(’7) Background of the invention.
`(8) Brief summary of the invention.
`(9) Brief description of the several views of the
`drawing.
`'
`(10) Detailed description'o‘f the invention.
`(11) Claim or claims.
`(12) Abstract of the Disclosure.
`(13) Drawings.
`(14) Executed oath or declaration.
`(15) Sequence Listing (see §§ 1.821 through
`
`1.825).
`(b) The elements set forth in paragraphs (a)(3)
`through (a)(5), (a)(7) through (a)( 12) and (a)(15) of this
`section should appear in upper case, without underlining
`
`or boid type, as section headings. If no text follows the
`section heading, the phrase “Not Applicable” should
`follow the section heading.
`
`[43 FR 20464, May 11, 1978; 216 'FR 2612, Jan. 12, 1981;
`paras. (h) and (i), 48 FR 2712, Jan. 21}, 1983, effective Feb. 27,
`1983; revised, 61 FR 42790,. Aug._1__9,_ 1996, effective Sept. 23,
`1996]
`‘
`
`§ 1.78 Ctaiming benefit of earlier filing date and
`cross-"references to other applications.
`(a)(1) A nonprovisional application may claim an
`invention disclosed in one or more prior filed copending
`nonprovisional applications or copending international
`applications designating the United States of America.
`in order for a nonprovisionalapplication to claim the
`benefit of a prior filed :copending nonprovisional ap~
`plication or copending international application desig»
`nating the United States of America, each prior applica-
`tion must name as an inventor at least one inventor
`
`§ 1.77 Arrangement of application elements.
`
`(a) The elements of the application, if appiicable,
`should appear in the following order:
`(1) Utiiity Application Transmittal Form.
`
`named in the later filed nonprovisional application and
`disclose the named inventor’s invention claimed in at
`
`least one claim of the later filed nonprovisional applica~
`tion in the manner provided by the first paragraph of
`
`2
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`July E998
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`

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`' § 1.79
`
`MANUAL 0? PATENT EXAMINiNG PROCEDURE
`
`35 U.S.C. 112. in addition, each prior application must
`be:
`
`(i) An international application entitled to a
`filing date in accordance with I E’CT Article 11 and
`designating the United States of America; or
`(ii) Complete as set forth in § 1.516)); or
`(iii) Entitled to a filing date as set forth in
`
`§ 1.53(b) or § 1.5303) and include the basic filing fee set
`forth in § 1.16; or
`
`(iv) Entitled to a filing date as set forth in
`§ 1.53(b) and have paid therein the processing and
`retention fee set forth in § 122(1) within the time period
`
`set forth in § 1.53(f).
`(2) Except for a continued prosecution applica-
`tion filed under § 1.53(d), any nonprovisional applica—
`tion claiming the benefit of one or more prior filed
`copending nonprovisionai applications or international
`applications designatingthe United States of America
`must contain or bei-arnended to contain in the first
`sentence of the specification following the title a
`reference to each such prior application, identifying it by
`
`application number (consisting of the series code and
`serial number) or international application number and
`international filing date and indicating the relationship
`
`of the applications. The request for a continued prosecu-
`
`tion application under § 1.53(d) is the specific reference
`required by 35 11.3.0. 120 to theprior application. The
`identification of an application by application number
`under this section is the specific reference required by
`35 U.S.C. 120 to every application assigned that ap‘
`plication number. Crossereferences to other related
`
`applications may be ‘ made When appropriate (see
`§ 1.14(a)).
`(3) A nonprovisional application other than for
`
`a design patent may claim an invention disclosed in one
`or more prior filed copending provisional applications.
`Since a provisional applicationcan be pending for no
`more than twelve months, the last day of pendency may
`occur on a Saturday, Sunday, or Federal holiday within
`the District of Columbia which for copendency would
`require the nonprovisional application to he filed on or
`prior to the Saturday, Sunday, or Federal holiday.
`In
`order for a nonprovisional application to claim the
`benefit of one or more prior‘filed copending provisional
`applications, each prior provisional application must
`name as an inventor at least one inventor named in the
`
`later filed nonprovisional application and disclose the
`
`named inventor’s invention claimed in at least one claim
`
`of the later filed nonprovisional application in the
`manner provided by the first paragraph of 35 U.S.C.
`1 12. In addition, each prior provisional application must
`be:
`
`(i) Complete as set forth in § l_.51(c); or
`(ii) Entitled to a filing date as set forth in
`§ 1.53(c) and include the basic filing fee set forth in
`§ 1.16(k).
`(4) Any nonprovisional application claiming
`the benefit of one or more prior filed copending
`provisional applications must contain or be amended to
`contain in the first sentence of the specification follow-
`ing the title a reference to each such prior provisional
`application, identifying it as a provisional application,
`and including the provisional application number (con—
`sisting of series code and serial number).
`(b) Where We 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 an application or a patent under
`reexamination and at least one other application naming
`different inventors are owned. by the same party and
`contain conflicting claims, and there is no statement of
`record indicating that
`the claimed inventions were
`commonly owned or subject to an obligation of assign
`ment 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.
`
`{36 FR 7312, Apr. 17, 1971; 49 FR 555, 3an. 4, 1984; paras.
`(a), (c) & (d),50 FR 9380, Mar. 7, 1985, effective May 8, 1985; 50
`FR 11366, Mar. 21, 1985; para. (a) revised 58 FR 54504, Oct. 22,
`1993, effective Jan. 3, 1994; paras. (a)(1) and (a)(2) revised and
`paras. (a)(3) and (a)(4) added, 60 FR 20195, Apr. 25, 1995,
`effective June 8, 1995; para. (0) revised and para. (ti) deleted, 61
`FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a)
`revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 2, 1997]
`
`§ 1.79
`
`Reservation clauses not permitted.
`
`A reservation for a future application of subject mat
`ter 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
`
`C
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`July 1998
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`3
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`

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`201.11
`
`MANUAL OF PATENT EXAMINING PROCEDURE
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`Office of Petitions, Box DAC, Assistant Commissioner for Pat-
`ents, Washington, DC 20231.
`
`Examiner Note:
`
`In a continued prosecution application (CPA) filed under 37
`CFR 1.53(d), a specific reference in the first sentence of the spec-
`ification, or in an application data sheet, to the prior application is
`n_ot required and may fit be made. The specific reference require-
`ment of 35 U.S.C. 120 is met by the transmittal request for the
`CPA which is considered to be part of the CPA.
`37 CFR
`1.53(d)(2)(iv) and (a)(7).
`
`<
`
`If the examiner is aware of a prior application he or
`she should note it in an Office action, as indicated
`
`above, but should not require the applicant to call
`attention to the prior application.
`
`In an application filed under former 37 CFR 1.60
`applicant, in the amendment canceling the nonelected
`claims, should include directions to enter “This is a
`
`(continuation) of application No.
`*>divisional<
`.......... , filed ”as the first sentence. Where
`
`the applicant has inadvertently failed to do this the
`wording of form paragraph 2.17 should be used.
`Where the application filed under former 37 CFR 1.60
`is otherwise ready for allowance, the examiner should
`insert the quoted sentence by examiner’s amendment.
`Applications are sometimes filed with a division,
`continuation, or continuation-impart oath or declara-
`tion, in which the oath or declaration refers back to a
`
`prior application. If there is no reference in the speci-
`fication of an application filed under former 37 CFR
`1.60, in such cases, the examiner should merely call
`attention to this fact in his or her Ofi‘ice action, utiliz-
`
`ing the wording of form paragraph 2.17.
`
`1[ 2.17 Reference in Continuation/Divisional Applications
`Under Former 3 7 CFR 1.60
`
`This application filed under former 37 CFR 1.60 lacks the nec-
`essary reference to the prior application. A statement reading
`“This is a [1] of Application No. [2], filed [3].” should be entered
`following the title of the invention or as the first sentence of the
`specification. Also, the current status of all nonprovisioual parent
`applications referenced should be included.
`
`Examiner Note:
`
`In bracket 1, insert either --division—- or --continuation—-.
`1.
`2. Use only in former 37 CFR 1.60 applications. For File
`Wrapper Continuing applications under former 37 CFR 1.62, use
`form paragraph 2.28.
`3. Do not use if the prior application is a provisional applica-
`tion.
`
`4. Do not use if the application is a continued prosecution appli-
`cation (CPA) filed under 37 CFR 1.53(d).
`
`Where the applicant has inadvertently failed to
`make a reference to the parent application in an appli-
`cation filed under former 37 CFR 1.60 or 1.62 which
`
`the examiner should
`is otherwise ready for issue,
`insert the required reference by a formal examiner’s
`amendment.
`*3?
`
`For notations to be placed on the file wrapper in the
`case of continuing applications, see MPEP § 202.02
`and § 1302.09.
`>
`
`E
`
`Correcting or Adding a Benefit Claim Afler
`Filing
`
`The Office will not grant a request for a corrected
`filing receipt to include a benefit claim unless the
`proper reference to the prior application is included in
`the first sentence of the specification or an ADS
`within the time period required by 37 CFR 1.78(a). If
`the proper reference was previously submitted, a copy
`of the amendment, the first page of the specification,
`or the ADS containing the benefit claim should be
`included with the request for a corrected filing receipt.
`The Ofi'ice plans to notify applicants on or with the
`filing receipt that a benefit claim may not have been
`recognized because the benefit claim was improper
`but applicants are advised that only the benefit claims
`that are listed on the filing receipt have been recog-
`nized by the Office. Therefore, applicants should
`carefully and promptly review their filing receipts in
`order to avoid the need for a petition (37 CFR
`1.78(a)(3) or (a)((6)) and the surcharge.
`
`If a benefit claim is added after the time period
`required by 37 CFR 1.78(a), a petition and the sur-
`charge are required. See
`subsection V. “TIME
`PERIOD FOR MAKING A CLAIM FOR BENEFIT
`
`37 CFR 1.78(a)(2) AND (a)(5).” Any petition under
`37 CFR 1.78(a)(3) or (a)(S) must be accompanied by
`an amendment to the specification or an ADS unless
`the proper reference was previously submitted.
`
`An incorporation by reference statement added
`afier an application’s filing date is not effective
`because no new matter can be added to an application
`afier its filing date (see 35 U.S.C. 132(a)). If an incor-
`poration by reference statement is included in an
`amendment to the specification to add a benefit claim
`after the filing date of the application, the amendment
`would not be proper. When a benefit claim is submit-
`
`Rev. 1, Feb. 2003
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`200-72
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`4
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`TYPES, CROSS-NOTING, AND STATUS OF APPLICATION
`
`201.11
`
`the
`In the CPA,
`(Note:
`same application number.
`request is the specific reference required by 35 U.S.C.
`120 and 37 CFR 1.78(a)(2) to every application
`assigned the same application number identified in
`the request. Further, in a CPA, a specific reference in
`the first sentence of the specification following the
`title, or in an application data sheet, to a prior applica-
`tion assigned the same application number is not
`required and should not be made.) Upon entry of the
`amendment, the examiner must return the application
`to the Office of Initial Patent Examination (OIPE),
`accompanied by a completed OIPE Data Base Rout-
`ing Slip, for correction of the file wrapper label and
`for updating the PALM data base. For 09/ >or 1ater<
`series applications, it will not be necessary to forward
`the application to OIPE for correction of the parent
`application data in PALM. The correction or entry of
`the data in the PALM data base can be made by tech-
`nical support staff of the TC. Upon entry of the data, a
`new PALM bib-data sheet should be printed and
`placed in the file wrapper. See also MPEP § 707.05
`and § 1302.09.
`
`> I
`
`V.
`
`< SAME INVENTOR 0R INVENTORS
`
`the applications
`The statute also requires that
`claiming benefit of the earlier filing date under
`35 U.S.C. 119(e) or 120 be filed by an inventor or
`inventors named in the previously filed application or
`provisional application.
`
`< TIME PERIOD FOR MAKING A CLAIM
`
`FOR BENEFIT 37 CFR 1.78(a)(2) AND
`(10(5))
`
`> v
`
`.
`
`The time period requirement under 37 CFR
`1.78(a)(2) and (a)(5) is only applicable to utility or
`plant applications filed on or after November 29,
`2000.
`
`The American Inventors Protection Act of 1999
`
`(AIPA), Public Law 106-113, amended 35 U.S.C. 119
`and 120 to provide that the Office may set a time
`period for the filing of benefit claims and establish
`procedures to accept an unintentionally delayed bene-
`fit claim. The Office has implemented these statutory
`changes,
`in part, by amending 37 CFR 1.78 to
`include: (A) a time period within which a benefit
`claim to a prior nonprovisional or provisional applica-
`
`ted after the filing of an application, the reference to
`the prior application cannot include an incorporation
`by reference statement of the prior application. See
`Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273
`(C.A.D.C. 1980).
`
`G
`
`Deleting Benefit Claims<
`
`Effective June 8, 1995, Public Law 103-465
`amended 35 U.S.C. 154 to change the term of a patent
`to 20 years measured from the filing date of the earli-
`est U.S. application for which benefit under 35 U.S.C.
`120, 121, or 365(c) is claimed. The 20-year patent
`term applies to all utility and plant patents issued on
`applications filed on or after June 8, 1995. As a result
`of the 20-year patent term, it is expected, in certain
`circumstances, that applicants may cancel their claim
`to priority by amending the specification or submit-
`ting a new application data sheet (no supplemental
`declaration is necessary) to delete any references to
`prior applications.
`
`>The examiner should consider whether any new
`prior art may now be available if a benefit claim is
`deleted. If an applicant is submitting an amendment
`to the specification or an ADS to delete a benefit
`claim after final rejection or action, the amendment or
`ADS will be treated under 37 CFR 1.116 (see MPEP §
`714.12 and § 714.13).
`If the amendment or ADS to
`delete a benefit claim is submitted after the applica-
`tion has been allowed, the amendment or ADS will be
`
`treated under 37 CFR 1.312 (see MPEP § 714.16). A
`deletion of a benefit claim will not delay the publica-
`tion of the application unless the amendment or ADS
`is recognized by the Office within nine weeks prior to
`the projected publication date that was originally cal-
`culated based on the benefit claim.
`
`A cancelation of a benefit claim to a prior applica-
`tion may be considered as a showing that the appli-
`cant is intentionally waiving the benefit claim to the
`prior application in the instant application.
`If the
`applicant later files a petition to accept an uninten-
`tionally delayed claim to add the benefit claim to the
`prior application in the same application from which
`the benefit claim was canceled, the Ofiice may refuse
`to accept such benefit claim because the delay was not
`unintentional.<
`
`In a continued prosecution application (CPA) filed
`under 37 CFR 1.53(d), no amendment may delete the
`specific reference to a prior application assigned the
`
`200-73
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`5
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`Rev. 1, Feb. 2003
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