`
`Original Sixth Edition, January1995 _
`Latest Revision September 1995
`
`
`
`U.S. DEPARTMENT OF COMMERCE >
`Patent and Trademark Office
`
`Rew. 1, Sept, 1995 -
`
`Papst Licensing GmbH & Co. KG - Exhibit 2003, p.1
`
`Papst Licensing GmbH & Co. KG - Exhibit 2003, p.1
`
`

`

`MANUAL OF PATENTEXAMINING PROCEDURE
`
`608.04(a)
`NOTE—Newmatter in reissue application, MPEP
`§ 1411.02. New matterin substitute specification, MPEP
`§ 714.20.
`os
`7
`>NOTE—No amendmentis permitted in a provi-
`sional application after it receives a filing date.<
`608.04(a). Matter Not im Original
`Specification, Claims, or Drawings
`Matter not ‘in the original specification, claims, or
`drawings is usually new matter. Depending on circum-
`stances such as the adequacy ofthe original disclosure,
`the addition of inherent characteristics such as chemical
`or physical properties, a new structural formula or a new
`use may be new matter. See Ex parte Vander Wal, et al,
`1956 C.D. 11; 705 O.G. 5 (physical properties), Exparie
`Fox, 1960 C.D. 28; 761 O.G. 906(new formula) and Ex
`parte Ayers, et al, 108 USPQ 444 (new use).
`Forrejection of claim involving new matter, see MPEP |
`§ 706.03(0).
`disclosure, MPEP
`of
`NOTE—Completeness
`§ 608.01(p);
`‘Trademarks and tradenames, MPEP
`§ 608.01(v).
`
`608.04(b) New Matter by Preliminary
`Amendment
`
`An amendmentis sometimes filed along with thefil-
`ing of the application. Such amendment does not enjoy
`the status as part of the original disclosure in an applica-
`tion filed under 37 CFR 1.53 unless it is referred to in the
`oath or declaration filedtherewith. Once an oath or dec-
`laration is submitted in an application filed under
`37 CFR 1.53 identifying the papers which the inventor(s)
`has “reviewed and understands”as required by 37 CFR
`1.63,the original disclosure of the application is defined
`and cannot be altered merely by filing of a subsequent
`oath or declaration referring to different papers. If the
`applicationis filed without an executed oath or declara-
`tion pursuant to 37 CFR 1.53(b), the original oath or
`declaration submitted later than thefiling date must re-
`fer to the preliminary amendmentfiled along with the
`application in order to comply with 37 CFR 1.63.
`An amendment which adds additional disclosure
`filed with a request for a continuation—in—part applica-
`tion under 37 CFR 1.62 is automatically considered a
`part of the original disclosure of the application byvirtue
`of the rule. Therefore, the oath or declaration filed in
`
`such an application must identifythe amendment adding
`additional disclosureas one of the papers which the in-
`ventor(s) has “reviewed and understands” in order to
`complywith 37 CFR 1.63. Ifthe original oath or declara-
`tion submitted in a continuation—in~-part application
`filed under 37 CFR 1.62 does not contain a reference to
`the amendmentfiled with the request for an application
`under 37 CFR 1.62, the examiner must require a supple-
`mental oath or declaration referring to the amendment.
`608.04(c) Review ofExaminer’s Holding of
`New Matter
`
`Where the new matteris confined to amendments to
`the specification, review of the examiner’s requirement
`for cancelation is by way of petition. But where the al-
`leged new matteris introduced intooraffects the claims,
`_ thus necessitating their rejection on this ground, the
`question becomes an appealable one, and should not be
`considered on petition even though that new matter has
`been introduced into the specification also. 37 CFR
`1.181 and 1.191 afford the explanation ofthis seemingly
`inconsistent practice as affecting new matter in the spec-
`ification.
`
`608.05 Deposit of Computer Program Listings
`
`37 CFR 1.96. Submission ofcomputerprogram listings.
`Descriptions of the operation and general content of computer
`program listings showld appear in the description portion of the
`specification. Acomputerprogram listing for the purpose of these rules
`is defined asa prinoutthat lists in appropriate sequence the instructions,
`routines, and other contents ofa program for a computer. The program
`listing may be either in machine or machine—independent (object or
`source) language which will cause a computer to perform a desired
`procedureor task such as solve a problem,regulate theflowofworkina
`computer, or control or monitor events, Computerprogramlistingsmay
`be submitted in patent applications in the following forms:
`(a) Material which will be printed in the patent. If the computer
`program listing is contained on 10 printout pages or less, it must be
`submitted either as drawings or as part of the specification.
`(1) Drawings. The listing may be submitted in the manner and
`complying with the requirements for drawings ss provided in § 1.84. At
`least one figure numeral is required on each sheet of drawing.
`(2) Specification.(i) The listing may be submitted as partof the
`specification in accordancewith theprovisionsof§ 1.52, at theendofthe
`description but before the claims.
`(ii) ‘Thelisting may be submitted as part ofthe specification in
`the form ofcomputerprintout sheets (commonty 14by 11 inches in size)
`foruse ascamera readycopywhenapatentissubsequentlyprinted. Such
`computer printout sheets must be original copies from the computer
`with dark solid black letters not less than 0.21 cm high, on white,
`unshaded and unlined paper, the printingon each sheet mustbe limited
`
`Rev. 1, Sept. 1995
`
`600 — 82
`
`Papst Licensing GmbH & Co. KG - Exhibit 2003, p.2
`
`Papst Licensing GmbH & Co. KG - Exhibit 2003, p.2
`
`

`

`PARTS, FORM, AND CONTENTOFAPPLICATION
`
`to an area 9 inches high by 13 inches wide, and the sheets should be
`submittedin, a protective cover. When. printed in patents, such
`computerprintoutsheets will appear at the end of the description but
`before the claimsandwillusuallybe reduced about 1/2 in sizewith two
`printout sheetsbeingprinted az one patent specification page. Any
`amendmentsmust be made bywayofsubmission ofa substitute sheet. if
`the copyis tobe used for camera readycopy.
`©) Asanappendixwhich‘wildnotbeprinted. Ifacomputerprogram
`listing printout is 11 of 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
`referredtoasamicroficheappendix.Themicroficheappendixwillnotbe
`pattoftheprintedpatent. Referenceintheapplication tothemicrofiche
`appendix should be made at the bepinning 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) Availabilityofappendix. Such computer program listings on
`microfiche will be available to the public for inspection, and microfiche -
`copies thereofwill be available for purchase with the file wrapper and
`contents, aftera patent based on such an application is granted or the
`application is otherwise made publicly available.
`(2). Submission requirements. Computer—generated informa-
`tion submitted as.an appendixto an application for patentshall be in the
`form of microfiche in accordance with the standards set forth in the
`followingAmericanNational (ANSI)orNationalMicrographicsAssoci-
`ation (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 Photographic Film for
`Archival Records, Siiver—Gelatin Type, on Polyester Base.
`NMA-~MSI (1971) Quality Standards for Computer Output
`Microfilm.
`ANSI/NMA MS2 (1978) Format and Coding Standards for
`Computer Output Microfilm.
`NMA MSS(ANSI PH 5.9-1975) Microfiche of Documents.
`ANSI PH 2.19 (1959)—Diffuse Transmission Density.
`except as madified orclarified 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 MS2apply; in the latter case, standard
`MSS applies.
`(ii) Film submitted shail be first generation (camera film)
`negative appearing microfiche(withemulsion onthebacksideofthefilm
`when viewed with the images right reading).
`(iii) Reductionratio ofmicrofiche submitted should be 24:1 ora
`similar ratiowhere variation from said ratiois required in orderto fit the
`documents into the image area of the microfiche format used.
`(iv0 Film submitted shall have a thickness ofat least .005 inches
`(0.13 mm) and not more than .009 inches (0.23 mm) foreither cellulose
`acetate base or polyester base type.
`(v) Both microfiche formats Al (98 frames, 14 columns x
`7 rows) and A3 (63 frames, 9 columns x 7 rows) which are described in
`NMAstandard MS2(A1isalsodescribed in MSS5) areacceptable for use
`in preparation of microfiche submitted.
`(vi) Atleast the left—most 1/3 (S0mmx 12mm)ofthe header or
`title area of each microfiche submitted shall be clear or positive
`appearing so that the Patent and Trademark Office cam apply serial
`
`_
`
`|
`
`608.05
`number and filing datethereto in un eye—readable form. The middie
`portion of the header shall be used by applicent to apply an eye~read-
`able application identification such asthe Gtleand/orthefirstinventot’s
`fame. The attomey’s docket number. may be included. The final
`righthand portion ofthe microfiche shall contain sequence informa-
`tion for the microfiche, such as 1of4,2 of 4, etc.
`(vii) Additional rezsirements which apply specifically to mi-
`crofiche of filmed paper copy:
`(A) Thefirstframeofeachmicrofichesubmittedshalloontain
`a standard testtargetwhichcontainsfive NBSMicsa~copy Resolution
`‘Test Charts (No. 1010A), one in the center and onein eack comer.See»
`illustration on page2ofNMA Recommended Practice MS104, Inspec-
`ton and Quality Control of First Generation Silver Halide Microfilm.
`See also paragraph 7 ofNMA—MSS. ©
`,
`_(B) The second frame of each microfiche submittedmust
`contain a fally descriptive title and theinventor'sname as filed.
`-
`(C) The pages or lines appearingon the.microfiche:frames
`should be consecutively numbered.
`(D) Pagination of the microfiche frames shall be from left to
`tight and from top to bottom.
`(E) Ata reductionof24:1 resolutionoftheoriginalmicrofilm
`shallbeat least 120 lines permm (5.0 target) so that reproduction copies
`maybe expected tocomplywith provisionsofparagraph 7.7.1.40fNMA
`Standard MSS.
`(F) Background density of negative appearing camera master
`microfiche offilmed paperdocuments shall be within the range of0.9 to
`1.2. and line density shouldbe 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 thelast frame
`(lowerrighthandcormerwhen dataisright—reading) ofeachmicrofiche.
`See NMA-MSS,paragraph 6.6.
`(viii) Microfiche generated by Computer Output Microfilm
`(COM).
`
`.
`
`(A) Background density of negative-appearing COM—gen-
`erated camera master microfiche shall be within the range of 1.5 to 2.0
`and linedensityshould beno greaterthan0.2. The density shall bevisual
`diffuse density as described in ANSI PH2.19.
`(B) The first frame of cach microfiche submitted should
`contain aregolutiontestframeinconformancewith NMAstandard MS1.
`(C) The second frame of each microfiche submitted must
`containa fully descriptive title and the inventor's name as filed.
`(D) The pages orlines appearing on the microfiche frames
`should be consecutively numbered.
`(E)
`itis preferred that pagination ofthe microfiche frames be
`from lefé to right and top to bottom butthe alternative, i.e., from tep te
`bottom and from left to right, is also zoceptable.
`(F) Anindex, when included, should appearon the lastframe
`(lower sight hand comerwhendata is right reading) ofcach microfiche.
`(G) Amendment of microfiche must be made by way of
`replacement microfiche.
`
`Special procedures for presentation of computer
`program listings in the form ofmicrofiche in U.S. nation-
`al patent applications are set forth in 37 CFR 1.96. Use
`of microficheis desirable in view of the number of com-
`puter program listings being submitted as part of the dis-
`
`600 — 83
`
`Rev. 1, Sept. 1995
`
`Papst Licensing GmbH & Co. KG - Exhibit 2003, p.3
`
`Papst Licensing GmbH & Co. KG - Exhibit 2003, p.3
`
`

`

`MANUAL OF PATENT EXAMINING PROCEDURE
`
`608.05
`closure in patent:applications. ‘Such listings are often
`several hundredpages in length. By filing and publishing
`such computer programlistings on ‘microficherather .
`than on paper, substantial cost savings can result to the
`applicants, the public, and thePatent andTrademark
`Office.
`
`BACKGROUND
`A computer program listing, as usediin these rules,
`means the printoutthatlists, in proper sequence,the in-
`structions, routines, and other contents of a program for
`a computer. Thelisting may be either in machine or ma-
`chine—independent (object or source) programming
`language which will cause a computer to perform a de-
`sired task, such as solving a problem, regulating the flow
`of work in computer, or controlling or monitoring
`events. The general description of the computer pro-
`gram listing will appear in the specification while com-
`puter program listing may appear either directly or as a
`microfiche as appendix to the specification and be incor-
`porated into the specification by reference.
`
`DISCUSSION OF THE BACKGROUND AND
`MAJORISSUES INVOLVED
`
`The provisions of 37 CFR 1.52 and 1.84 for submit-
`ting specifications and drawings on paper have been
`found suitable for most patent applications. However,
`when lengthy computer program listings must be dis-
`closed in a patent application in order to provide a com-
`plete disclosure, use ofpaper copies can become burden-
`some.
`
`The cost of printing long computer programs in pat-
`ent documents is also very expensive to the Patent and
`Trademark Office.
`in thepast,all disclosures forming part ofa patent ap-
`plication were presented on paper with the exception of
`microorganisms. Under 37 CFR 1.96, several different
`methods for submitting computer program listings, in-
`cluding the use of microfiche, are set forth.
`Relatively short computer program listings (10 pages
`or less) must be submitted on paperand will be printed as
`part of the patent. If the computer program listing is 11
`or more pages in length, it may be submitted on either
`paper or microfiche,although microfiche is preferred.
`Copies of publicly available computer program list-
`ings are available from the Patent and Trademark Office
`
`on paperand on microfiche atthe cos et forth in 37
`CFR 1.19(a)(5) and (6).
`OTHER INFORMATION
`The micrographic standardsreferred to in.37 CFR
`1.96(b)(2) may be obtained from either the National
`Micrographic Association, 8719 Colesville Road, Silver
`Spring, Masyland, 20910 or the AmericanNational Stan-
`dards Institute, 1430 Broadway, New York, New York
`10018.
`|
`Theeffect of 37 CFR 1.96 is that ifa computer pro-
`gram listing (printout) is 11 or more pages long,the ap-
`plicant may submit suchlisting in the form ofmicrofiche.
`Relatively short computer program listings (10 pages or
`fewer) must be submitted on paper andwill be printed as
`part of the patent, as in the past. When the computer |
`program listing is 11 or more pagesin length, it may be
`submitted on either paper or microfiche, although mi-
`crofiche is preferred. A microfichefiled with a patentap-
`plication will be referred to as a “Microfiche Appendix,”
`and will be identified as such on the front page ofthe pat-
`ent butwill not be part of the printed patent.“Microfiche
`Appendix,” denotes the total microfiche, whether only
`one or two or more. One microfiche is equivalent to a
`maximum of either 63 (9x7) or 98 (14x7) frames (pages),
`orless.
`The face of the file jacket will bear a label to denote
`that a Microfiche Appendix is included in the applica-
`tion. A statement must be included in the specification to
`the effect that a microfiche appendix is included in the
`application. The specification entry must appear at the
`beginningofthe specification immediately following any
`crossreference to related applications, 37 CFR
`1.77(c)(2}. The patentfront page and the OfficialGazette
`entry wili both contain information as to the number of
`microfiche and frames of computer programlistings ap-
`pearing in the microfiche appendix.
`When an application containing microfiche is re-
`ceived in the Correspondence and Mail Division, a spe-
`cial pocket will be affixed to the center section of the in-
`side of the file wrapper underneath all papers, and the
`microfiche inserted therein. The application file will
`then proceed onits normal course, and when it reaches
`the Application Branch,a label whichsticks up above the
`file wrapper will be placed at the center section of the
`face of the wrapper. When the application file reaches
`the Micrographics Division, the Microfiche Appendix
`
`Rev. 1, Sept. 1995
`
`600 — 84
`
`Papst Licensing GmbH & Co. KG - Exhibit 2003, p.4
`
`Papst Licensing GmbH & Co. KG - Exhibit 2003, p.4
`
`

`

`7 PARTS,FORM,ANDCONTENTOFAPPLICATION—
`labelwillbeplacedoonthefaceofthefile wwrapper.When
`the Allowed Files.and Assembly Brasich ofthe Office of ©
`Publications receives the ‘application ‘file, the person.
`placing the:patent:‘umberonthe face ofthe.file; upon
`seeing theMicrofiche.Appendixlabel,willgiveithe file to
`the Supervisorwho willcall Micrographics Division and
`give the serial number and patentnumber, and request
`copies of the: microfiche. Micrographics Division per-.
`sonnel will then put.the’‘patent number on the micro-
`fiche(s), making certain each microfiche is the most re-
`cent, and numbering each correctly; €.g., 1 of 1, 1 of2, etc
`Upon completion, twocopies will be produced and pro-
`vided to AllowedandAssemblyBranch Files — one for
`the grant head and onefor. thefile wrapper.
`At thetimeof assembly, the Microfiche Appendix
`will be placedinside the grant head behind the patent
`grantfor eyeletting, ribboning, and mailing to the paten-
`tee/attorney, Duringthe signing ofthe grant headsby the.
`Attesting Officer, the patent will be checked to assure
`proper assembly prior tomailing.
`609 Information Disclosure Statement [R—1]
`
`.
`
`:
`
`(iii)The petition fee set forth in § 1.1700).
`—
`_(@) A certification under thissection must state cither:
`41eenaataterm
`(1) ‘Theat each item of information contained in the information
`officeinacounterpartforeignapplicationnotmore thanthreemonths
`prior to thefilingof the statement, or
`aon
`@ That noitem of informationcontained inthe information ,
`disclosurestatementwascitedinacommunicationfromaforeignpatent
`- office in a counterpartforeignapplication ér, tothe knowledge ofthe
`"person signing the ceitification aftermaking reasonable inquiry, was
`knowntoanyindividualdesignatedin§ 1.56(e)morethanthreemonths S
`- prior to the filing of the statement,
`.
`~~
`.
`@) No extensions of time forfiling aninformation disclosure i
`statementarepermittedunder § 1.136. Ifabonafideattempt ismadeto
`comply with
`§ 1.98; but part of the required content is inadvertently
`omitted, additional time may be given to enable fullcompliance.
`(g) An information disclosure statement filed in accordancewith ...
`thissectionshallnotbeconstruedasarepresentationthatasearchhas a
`been made.
`(h) Thefilingofan informationdisclosurestatementshall Hotbe
`construedto be an admission thatthe informationcitedinthestatement°
`is,orisconsidered tobe,materialtopatentabilityasdefinedin §1.56(b).
`(i)
`Information disclosurestatements, filedbeforethegrantofa
`patent,whichdonotcomplywiththissectionand § 1.98willbeplacedin
`thefile, but will nat be considered by the Office.
`37 CFR 1.98. Content ofinformation disclosure statement,
`(a) Any information disclosure statementfiled under § 1.97 shall
`include:
`(1) A fist of all patents, publications or other information
`submitted for consideration by the Office;
`(2) Alegible copy of:
`(@) Each US.and foreign patent;
`(ii) Eachpublication or thatportionwhichcaused it to belisted;
`
`37 CFR 1.97. Filing ofinformation disclosure statement.
`(a) In orderto have information considered by the Office during
`the pendency of a patent application, an information disclosure state-
`mentin compliance with § 1.98 should be filed in accordance with this
`section.
`
`(b) An information disclosure statement shall be considered by
`the Office if filed:
`(1) Within three months ofthefiling date of a national applica-
`
`tion;
`
`(2) Within three monthsofthe date ofentryofthe national stage
`asset forth in § 1.491 in an international application; or
`(3) Before the mailing date ofa first Office action on the merits,
`whichever event occurs last.
`(c) An information disclosure statement shall be considered by
`the Office if filed after the period specified in paragraph (b) of this
`section, but before the mailing date of either:
`(1) A final action under § 1.113 or
`(2) Anotice of allowance under § 1.311,
`whicheveroccursfirst,provided thestatementisaccompaniedbycithera
`certification as specified in paragraph (e) ofthis section or the fee set
`forthin § 1.17(p).
`(d) An information disclosure statement shall be considered by
`the Office if filed after the mailing date of either:
`(1) A final action under § 1.113 or
`(2) Anotice of allowance under § 1.311,
`whicheveroccurs first, but before paymentofthe issue fee, provided the
`statementis accompanied by:
`(i) A certification as specified in paragraph (e) ofthis section,
`(ii) A petition requesting consideration of the information
`disclosure statement, and
`
`and
`
`(iii) All other information or that portion which caused it to be
`listed, except that no copyofa U.S. patent application nced be included;
`and
`
`(3) A concise explanation of the relevance, as it is presently
`understood by the individual designated in § 1.56(c) most knowledge-
`able about thecontentofthe infermation, ofeachpatent,publication,or
`other informationlisted that is notin the English language. Theconcise
`explanation may be either separate from the specification or incorpo-
`rated therein.
`(b) Each U.S. patentlisted in an information disclasurestatement
`shall be identified by patentee, patent number and issue date. Each
`foreignpatentorpublished foreign patentapplication shallbe identified
`by the country or patentoffice which issued the patent or published the
`application, an appropriate document number,and thepublication date
`indicated on the patentor published application. Each publication shall
`be identified by author (if any), title, relevant pages of the publication,
`date and place of publication.
`(c) When the disclosures of two or more patents or publications
`listed in an information disclosure statement are substantively cumula-
`tive, a copy of one of the patents or publications may be submitted
`without copies of the other patents or publications provided that a
`statementis made that these other patents or publications are cumula-
`tive. If a written English-language translation of a non-English
`language document,orportion thereof,iswithinthepossession,custady
`
`GO = 85
`
`Rev. 1, Sept. 1995
`
`Papst Licensing GmbH & Co. KG - Exhibit 2003, p.5
`
`Papst Licensing GmbH & Co. KG - Exhibit 2003, p.5
`
`