608.01(o)
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`¶ 7.43 Objection to Claims, Allowable Subject Matter
`
`608.01(p) Completeness
`
`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 interven-
`ing claims.
`
`608.01(o) Basis for Claim Terminology
`in Description
`
`The meaning of every term used in any of the
`claims should be apparent from the descriptive por-
`tion of the specification with clear disclosure as to its
`import; and in mechanical cases, it should be identi-
`fied 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 descrip-
`tion. No term may be given a meaning repugnant to
`the usual meaning of the term.
`Usually the terminology of the original claims fol-
`lows the nomenclature of the specification, but some-
`times 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 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 appro-
`priate 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,
`Ex parte Kotler, 1901 C.D. 62, 95 O.G. 2684
`(Comm’r Pat. 1901). See 37 CFR 1.75, MPEP §
`608.01(i) and § 1302.01.
`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]
`
`Newly filed applications obviously failing to dis-
`close an invention with the clarity required are dis-
`cussed in MPEP § 702.01.
`A disclosure in an application, to be complete, must
`contain such description and details as to enable any
`person skilled in the art or science to which the inven-
`tion pertains to make and use the invention as of its
`filing date. In re Glass, 492 F.2d 1228, 181 USPQ 31
`(CCPA 1974).
`While the prior art setting may be mentioned in
`general terms, the essential novelty, the essence of the
`invention, must be described in such details, including
`proportions and techniques, where necessary, as to
`enable those persons skilled in the art to make and uti-
`lize the invention.
`Specific operative embodiments or examples of the
`invention must be set forth. Examples and description
`should be of sufficient scope as to justify the scope of
`the claims. Markush claims must be provided with
`support in the disclosure for each member of the
`Markush group. Where the constitution and formula
`of a chemical compound is stated only as a probability
`or speculation, the disclosure is not sufficient to sup-
`port claims identifying the compound by such compo-
`sition or formula.
`A complete disclosure should include a statement
`of utility. This usually presents no problem in
`mechanical cases. In chemical cases, varying degrees
`of specificity are required.
`A disclosure involving a new chemical compound
`or composition must teach persons skilled in the art
`how to make the compound or composition. Incom-
`plete teachings may not be completed by reference to
`subsequently filed applications.
`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 Rejec-
`tions,” see MPEP § 2107.01.
`For a discussion of the utility requirement under
`35 U.S.C. 112, first paragraph, in drug cases, see
`MPEP § 2107.03 and § 2164.06(a).
`For “Procedural Considerations Related to Rejec-
`tions for Lack of Utility,” see MPEP § 2107.02.
`For “Special Considerations for Asserted Thera-
`peutic or Pharmacological Utilities,” see MPEP
`§ 2107.03.
`
`August 2001
`
`600-78
`
`

`

`PARTS, FORM, AND CONTENT OF APPLICATION
`
`608.01(p)
`
`I.
`
`INCORPORATION BY REFERENCE
`
`The Commissioner 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). 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 Commissioner has elected to exercise that discre-
`tion. Section A provides the guidance for incorpora-
`tion by reference in applications which are to issue as
`U.S. patents. Section B provides guidance for incor-
`poration 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.
`
`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 never-
`theless may be incorporated by reference, Ex parte
`Schwarze, 151 USPQ 426 (Bd. App. 1966). An appli-
`cation for a patent when filed may incorporate “essen-
`tial material” by reference to (1) a U.S. patent, (2) a
`U.S. patent application publication, or (3) a pending
`U.S. application, subject to the conditions set forth
`below.
`“Essential material” is defined as that which is nec-
`essary to (1) describe the claimed invention, (2) pro-
`vide an enabling disclosure of the claimed invention,
`or (3) describe the best mode (35 U.S.C. 112). In any
`application which is to issue as a U.S. patent, essential
`material may not be incorporated by reference to (1)
`patents or applications published by foreign countries
`or a regional patent office, (2) non-patent publica-
`tions, (3) a U.S. patent or application which itself
`incorporates “essential material” by reference, or (4) a
`foreign application.
`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 filed, commonly owned U.S.
`applications, or (3) non-patent publications however,
`hyperlinks and/or other forms of browser executable
`code cannot be incorporated by reference. See MPEP
`§ 608.01. Nonessential subject matter is subject mat-
`ter referred to for purposes of indicating the back-
`ground of the invention or illustrating the state of the
`art.
`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,
`first paragraph. In re de Seversky, 474 F.2d 671, 177
`USPQ 144 (CCPA 1973). In addition to other require-
`ments for an application, the referencing application
`should include an identification of the referenced
`patent, application, or publication. Particular attention
`should be directed to specific portions of the refer-
`enced document where the subject matter being incor-
`porated may be found. Guidelines for situations where
`applicant is permitted to fill in a number for Applica-
`tion 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 refer-
`ence to the same extent as copending applications;
`both types are open to the public upon the referencing
`application issuing as a patent. See 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 an
`earlier filed pending U.S. application. The amend-
`ment must be accompanied by an affidavit or declara-
`tion 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.
`If an application as filed incorporates essential
`material by reference to a U.S. patent or a pending
`and commonly owned U.S. application, applicant may
`be required prior to examination to furnish the Office
`with a copy of the referenced material together with
`an affidavit or declaration executed by the applicant,
`or a practitioner representing the applicant, stating
`that the copy consists of the same material incorpo-
`rated by reference in the referencing application.
`
`600-79
`
`August 2001
`
`

`

`608.01(p)
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`However, if a copy of a printed U.S. patent is fur-
`nished, no affidavit or declaration is required.
`Prior to allowance of an application that incorpo-
`rates essential material by reference to a pending U.S.
`application, the examiner shall determine if the refer-
`enced application has been published or issued as a
`patent. If the referenced application has been pub-
`lished or issued as a patent, the examiner shall enter
`the U.S. Patent Application Publication No. or the
`U.S. Patent No. of the referenced application in the
`specification of the referencing application (see
`MPEP § 1302.04). If the referenced application has
`not been published or issued as a patent, applicant will
`be required to amend the disclosure of the referencing
`application to include the material incorporated by
`reference. The amendment must be accompanied by
`an affidavit or declaration executed by the applicant,
`or a practitioner representing the applicant, stating the
`amendatory material consists of the same material
`incorporated by reference in the referencing applica-
`tion.
`
`2.
`
`Improper Incorporation
`
`The filing date of any application wherein essential
`material is improperly incorporated by reference to a
`foreign application or patent or to a publication will
`not be affected because of the reference. In such a
`case, the applicant will be required to amend the spec-
`ification to include the material incorporated by refer-
`ence. The following form paragraphs may be used.
`
`¶ 6.19 Incorporation by Reference, Foreign Patent or
`Application
`The incorporation of essential material in the specification by
`reference to a foreign application or patent, or to a publication is
`improper. Applicant is required to amend the disclosure to include
`the material incorporated by reference. The amendment must be
`accompanied by an affidavit or declaration executed by the appli-
`cant, or a practitioner representing the applicant, stating that the
`amendatory material consists of the same material incorporated by
`reference in the referencing application. 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).
`
`¶ 6.19.01 Improper Incorporation by Reference, General
`The attempt to incorporate subject matter into this application
`by reference to [1] is improper 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 why it is improper.
`
`The amendment must be accompanied by an affida-
`vit or declaration executed by the applicant, or a prac-
`titioner representing the applicant, stating that the
`amendatory material consists of the same material
`incorporated by reference in the referencing applica-
`tion. 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).
`Reliance on a commonly assigned copending appli-
`cation by a different inventor may ordinarily be made
`for the purpose of completing the disclosure. 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 con-
`structive reduction to practice or an enabling disclo-
`sure 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 incor-
`porated by reference in U.S. patent applications which
`are to issue as U.S. patents do not apply to applica-
`tions relied on only to establish an earlier effective fil-
`ing 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, first paragraph.
`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 disclo-
`sure which minimizes the public’s burden to search
`for and obtain copies of documents incorporated by
`
`August 2001
`
`600-80
`
`

`

`PARTS, FORM, AND CONTENT OF APPLICATION
`
`608.01(q)
`
`reference which may not be readily available.
`Through the Office’s incorporation by reference pol-
`icy, the Office ensures that reasonably complete dis-
`closures 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 for-
`eign application is to establish an earlier filing date.
`Incorporation by reference in the earlier application of
`(1) patents or applications published by foreign coun-
`tries or regional patent offices, (2) nonpatent publica-
`tions, (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 reexami-
`nation 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 transla-
`tion. A review can then be made of the foreign appli-
`cation and all material incorporated by reference to
`determine whether the foreign application discloses
`the invention sought to be patented in the manner
`required by the first paragraph of 35 U.S.C. 112 so
`that benefit may be accorded. In re Gosteli, 872 F.2d
`1008, 10 USPQ2d 1614 (Fed. Cir. 1989).
`
`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 exam-
`ples should not be represented as work actually done.
`No results should be represented as actual results
`unless they have actually been achieved. Paper exam-
`ples should not be described using the past tense.
`
`For problems arising from the designation of mate-
`rials by trademarks and trade names, see MPEP §
`608.01(v).
`
`608.01(q) Substitute or Rewritten
`Specification
`
`37 CFR 1.125. Substitute specification.
`(a)
`If the number or nature of the amendments or the leg-
`ibility 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.
`
`A substitute specification, excluding the claims, may
`(b)
`be filed at any point up to payment of the issue fee if it is accom-
`panied by:
`
`that
`
`the substitute specification
`
`A statement
`(1)
`includes no new matter; and
`(2) A marked up version of the substitute specification
`showing all the changes (including the matter being added to and
`the matter being deleted from) to the specification of record.
`Numbering the paragraphs of the specification of record is not
`considered a change that must be shown pursuant to this para-
`graph.
`(c) A substitute specification submitted under this section
`must be submitted in clean form without markings as to amended
`material. The paragraphs of any substitute specification, other
`than the claims, should be individually numbered in Arabic
`numerals so that any amendment to the specification may be made
`by replacement paragraph in accordance with § 1.121(b)(1).
`(d) A substitute specification under this section is not per-
`mitted 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 speci-
`fication 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 substi-
`tute specification filed must be accompanied by a statement that it
`contains no new matter.
`
`37 CFR 1.125(a) applies to a substitute specifica-
`tion 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.
`
`600-81
`
`August 2001
`
`