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903.08(e) General Guidelines Governing the Assignment of Nonprovisional Applications for Examination [R-5] - 900 Prior Art, Classification, and Search
903.08(e) General Guidelines Governing the Assignment of Nonprovisional Applications for Examination [R-5]
This section applies only to nonprovisional applications. It does not apply to provisional applications since such applications are not examined.
The following are only general guides, and exceptions frequently arise because of some unusual condition. Patent examiners are confronted with an already existing classification made up of newly revised classes, those revised years ago and which have somewhat outgrown their definitions and limits, and still others made a generation ago and never changed. Also, these classes are based on different theories and plans, some on art, some on structure, some on functions, some on the material worked upon, and some apparently on no theory or plan at all. The patent examiners cannot change this existing condition as each application comes up for assignment, but must seek to place the cases into this patchwork and try to get the applications where they are appropriately assigned. An application will be assigned as follows:
(A) The assignment of nonprovisional applications follows, as far as possible, the rules or principles governing the classification of patents. Applications are generally assigned on the basis of where the application would have an original classification, if the claims it contains were in a patent.
(B) The criteria by which the original classification is determined are set forth in MPEP § 903.07.
(C) The claims and statement of invention are generally taken as they read; however, claims must be read in light of the disclosure (claimed disclosure). Any attempt to go behind the record and decide the case upon what is deemed the "real invention" would, it is believed, introduce more errors than such action would cure. Supervisory patent examiners (SPEs) cannot possess the specific knowledge of the state of the art in all the classes that the patent examiners collectively possess. Further, such questions are matters of merit for the examiners to determine and are often open to argument and are subject for appeal.
(D) Within a class, looking down from the top of the schedule, the OR subclass is chosen from among the classifications of the claimed disclosure according to whichever one is the most indented subclass of the first subclass array.
(E) As stated in MPEP § 903.07, the location of the United States patents constituting the prior art is generally controlling over all else. (Note: Where time permits, obvious misplacements of the patents constituting the prior art are corrected, but to straighten all lines as the cases come up for assignment would require the time of several people and would often involve a reclassification of an entire class.)
(F) Ordinarily, an application cannot be assigned to a class which includes one element or part only of several claimed in combination. The claim is treated in its entirety.
(G) The classification dispute TC representative panel is authorized in all cases, where they evaluate the facts as warranting it, to assign applications for examination to the TC best able to examine the same. Since assignment for examination on this basis will at times be contrary to classification of patents containing the same character of claims, the classification dispute TC representative panel will indicate the proper classification of the patent, if such claims are allowed. Thus, in cases where there is a claim drawn to hybrid or mixed subject matter and the **>SPE< in one discipline *>determines< that the application requires consideration by, or may be best examined by, a TC in one of the other technical disciplines, chemical, electrical, or mechanical, he or she may request a transfer of the application on a "best examinable" basis, in accordance with this subsection. Some examples of applications which may be thus submitted include the following:
(1) An application containing a hybrid claim wherein, for instance, a product is defined merely in terms of the process for producing it. See MPEP § 705.01(e), situation (A).
(2) Where an application properly assigned to a mechanical or electrical class contains at least one claim to mixed subject matter, a part of which is chemical, the application may be assigned to the appropriate chemical art unit for examination; or where the application is properly assigned to a mechanical class and a claim therein contains electrical subject matter, the application may be assigned to the appropriate electrical art unit for examination.
As indicated earlier, when an application which had been assigned for examination in accordance with this subsection ultimately is allowed, it will be classified according to the controlling claim. In effect, assignment for examination may be on a "best examinable" basis, but the patent will issue and be classified according to the rules of superiority in classification; thus, the search file will have a constant set of rules governing placement of patents therein. Where an application is being reassigned from one examining discipline to another, under the provisions of the "best examinable" practice, the person requesting the transfer is ordinarily required to cite references pertinent to the claimed features falling under the jurisdiction of the art within his or her discipline. In those cases wherein the application of the reference(s) is not evident or clear, the transferring examiner should include a brief statement explaining the relation and possible application of the reference(s) to the claim(s); in case of dispute as to the necessity of this procedure, the classification dispute TC representative panel has power to require the statement.(H) See MPEP § 903.08(b) for a discussion of how to properly assign PCT international applications and U.S. national applications associated therewith.
(I) When an application has been taken up by an examiner for action and a requirement to restrict is found necessary, a part of the claims being directed to matter classifiable in the TC where the case is being examined, an action requiring restriction should be made without seeking a transfer of the case to another TC. The action of the applicant in reply to the requirement for restriction may result in making a transfer of the application unnecessary.
(J) Ordinarily, where all the claims of an application are for an article made of a specific composition or alloy with no other structure of the article recited, the application will be assigned to the composition or alloy class.
(K) A class of cases exists in which either no art or a divided art is found and in which no rule or principle is involved. Such cases are placed where, in the judgment of the classification TC representative panel, they will be best searched and adjudicated. It is often impossible to so explain a decision in this class of cases as to satisfy, or in any way aid, the examiners interested. Indeed, the reasons for or against sending such cases one place or another may be so evenly balanced that no reason of any value can be given.
(L) An examiner seeking the transfer of a case may make a search, both of his or her own class and the class to which he or she thinks the case should be transferred, and the examiner in charge of the art unit should ensure the record includes the result of the search.
(M) When an application is received by the classification dispute TC representative panel in which there is a matter under dispute which is not related to the classification of a claim but which is in the purview of the TCs, e.g., propriety of a restriction requirement, timeliness of submission for transfer, etc., as well as a dispute over the classification of claims, the application will be returned to the originating TC for resolution on the issues unrelated to the classification.
It is important that newly received applications be immediately screened for these situations so that, if necessary, the applications may be promptly returned to the originating TC.
If after resolution of the issues unrelated to the classification, there is still a dispute as to which TC should examine the application, the originating application may be returned to the classification dispute TC representative panel for assignment.
I. UNDOCKETED APPLICATIONS RECEIVED FROM THE OFFICE OF INITIAL PATENT EXAMINATION (OIPE)
The *>flowchart< below shows the routing of undocketed applications between TCs after receipt from OIPE. (For routing of undocketed applications between art units within the same TC, see MPEP § 903.08(d).) The application should be considered by the receiving art unit in the TC (TC1), which will accept the application and assign it to an examiner, or forward it to an art unit in another TC (TC2) for consideration. An art unit in TC2 will classify and assign the application to an examiner, return the application to the SPE of the originating art unit, or forward it to an art unit in another TC (TC3). If the art unit in TC2 is not aware of any other likely classification, the application may be returned directly to the SPE of the originating art unit in TC1. In any of these scenarios, the decisions concerning the transfer must be recorded in PALM EXPO and in the case of an image file wrapper (IFW) application, eDAN messaging should also be used.
Where the application is forwarded to an art unit in TC3 and the art unit in TC3 declines to accept the application, the application should be returned to the SPE of the originating art unit in TC1.
If an art unit in TC2 or TC3 declines to accept the application and the application is returned to the SPE of the originating art unit in TC1, the SPE of the art unit in TC1 may forward the application to a classification dispute TC representative panel for resolution. The SPE of the art unit in TC1 may contact a TC classification panel representative within his or her TC. The application will be given to the TC classification panel representative and the representative will contact either the TC2 or TC3 representative (forming a classification dispute TC representative panel) to set up a conference. The classification dispute TC representative panel will evaluate any evidence presented by the disputing TCs, and make a decision on the proper classification and assignment of the application. The decision of the classification dispute TC representative panel will be final and binding.
II. PALM EXPO
SPEs and examiners must use the EXPO Transfer Inquiry function, which creates a record of the transfer inquiry history of each application and facilitates tracking of applications.
PALM EXPO will provide a routing sheet to be included in the application file when a transfer inquiry is created.