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M.P.E.P. Section 2309.02, Preparation of Papers

This document contains one section of the Manual of Patent Examining Procedure (the "MPEP"), Seventh Edition (July 1998). This page was last updated in April 2000. All of the sections of the MPEP are found in the section index.

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2309.02 Preparation of Papers

INTERFERENCE INITIAL MEMORANDUM

The "Interference Initial Memorandum" (Form PTO - 850) prepared by the examiner and addressed to the Board, provides authorization for preparation of the declaration notices, which are prepared in the Service Branch of the Board.

If the proposed interference will involve a patent, the examiner should first determine whether the maintenance fees have been paid, by using the patent number with PALM Intranet, PALM screen 2970, or contacting the PTO Status and Entity Division. See MPEP Section 1730. If fees are due and they have not been paid, the interference cannot be declared since it would involve an expired patent (35 U.S.C. 135(a); 37 CFR 1.606).

A sample of a filled-out Form PTO-850 is shown below.

A separate form is used for each count of the interference. The form need not be typed. If the count is identical to a claim of one of the parties, the number of that claim is circled. If the count is not identical to any claim of any of the parties, the count should be typed on a plain sheet and attached to the form.

The files to be included in the interference should be listed by last name (of the first listed inventor if application is joint), application number, filing date, and, if applicable, patent number and issue date.

The sequence in which the parties are listed on the form is completely immaterial. If the examiner has determined that a party is entitled to the benefit of the filing date of one or more applications (or patents) as to the counts, the blanks provided on the form for indicating this fact should be filled in as to all such applications. It is particularly important to list all intermediate applications necessary to provide continuity of pendency to the earliest benefit application to which a party is entitled.

An applicant will be accorded the benefit of a foreign application on the Form PTO-850 and the declaration notices only if the papers required by 37 CFR 1.55, including a translation, have been filed and the primary examiner has determined that the applicant is in fact entitled to the benefit of such application. A patentee may be accorded the benefit of the filing date of a foreign application in the notice of interference provided he or she has complied with the requirements of 37 CFR 1.55, has filed a translation, and the primary examiner has determined that at least one species within the count involved in the interference is supported by the disclosure of the foreign application. Note, however, that a patentee should not be accorded the benefit of a foreign application if an application in the interference has an effective filing date subsequent to the filing date of the foreign application. See MPEP Section 2308.01.

All claims in each party's application or patent must be listed in the spaces provided on the form as either corresponding or not corresponding to the count. A claim corresponds to a count if, considering the count as prior art, the claim would be unpatentable over the count under 35 U.S.C. 102 or 35 U.S.C. 103. If the examiner is in doubt as to whether a party's claim does or does not correspond to a count, it should be listed as corresponding to the count. If the party disagrees with this listing, a motion may be filed under 37 CFR 1.633(c)(4) during the interference to designate the claim as not corresponding to the count.

Note that for each count, every claim in a party's application or patent must be designated as either corresponding or not corresponding to the count; this includes any claims of the application which may be under rejection. For every claim of an application which is listed on the form, the examiner must indicate whether or not that claim is allowable by writing its number in either the "patented or patentable pending claims" box or the "unpatentable pending claims" box on the form. All patent claims and at least one of the application claims designated as corresponding to the count must be listed in the "patented or patentable pending claims" box.

If an involved application or patent contains multiple dependent claims, the examiner should be careful to indicate which embodiments of each multiple dependent claim correspond or do not correspond to each count. An embodiment of a multiple dependent claim should not be circled on form PTO-850 as being the count, but rather, the embodiment should be written out in independent form in the space provided.

After Form PTO-850 is filled out for each count of the proposed interference, it must be signed by the primary examiner in the space provided. The form must also be signed by the Group Director, if the Director's approval is required (as when the interference involves two applications whose effective filing dates are more than 6 months apart).

STATEMENT UNDER 37 CFR 1.609(b)

In addition to filling out Form PTO-850, the examiner must attach to the form a statement under 37 CFR 1.609(b). This statement must contain the following:

(A) For each claim of each of the involved applications or patents which is designated as corresponding to a count (except for a claim which is identical to the count), an explanation of why that claim is directed to the same patentable invention (37 CFR 1.601(n)) as the count. In other words, for each such claim the examiner must explain why it would be the same invention as (35 U.S.C. 102), or obvious over (35 U.S.C. 103), the count. Explanations of obviousness should where possible be supported by evidence in the form of patents or publications, copies of which should be attached to the statement.

(B) For each claim of each of the involved applications or patents which is designated as not corresponding to the count, an explanation of why that claim defines a different patentable invention from the count, i.e., why it is not directed to the same patentable invention (37 CFR 1.601(n)) as the count.

(C) If there is more than one proposed count, an explanation of why each proposed count defines a different patentable invention, i.e., is not directed to the same patentable invention (37 CFR 1.601(n)), as the other count or counts.

Statements explaining the designation of claims as corresponding or not corresponding to the count, or why a count defines a separate patentable invention, should be supported by reference to prior art of record whenever possible. A copy of any prior art cited in the statement should be attached. Some examples of explanations of the designation of claims as corresponding or not corresponding to the count appear below.

Example 1:

Claim 1 is directed to a reactor, and is identical to the count. Dependent claim 2, drawn to a liner, is designated as not corresponding to the count. Dependent claims 3 to 7 are designated as corresponding to the count. A possible statement explaining the designations of claims 2 to 7 as corresponding or not corresponding to the count is:

"Claim 2 does not correspond to the count because the liner recited therein has a composition not previously known and nonobvious in the art.

"Claims 3-7 are designated to correspond to the count because they recite features that are conventionally used and would have been obvious in the general class of reactors recited in claim 1 (see the Watson et al. reference which shows that the riser 44, separator 56, and catalyst member 34 are conventionally used in the type of reactor recited in claim 1)."

Note:

1. No explanation is required for claim 1, since it is identical to the count.

2. Attach a copy of the cited reference to the statement.

Example 2:

Claim 1, which is identical to the count, recites a combination of features A-F (an internal combustion engine), wherein all features except feature B (a catalytic element) are conventional. Feature B (the catalytic element) renders the claim patentable. Feature C is a filter. Claims 2-3 are dependent from claim 1 and further define feature C (the filter). A possible statement explaining the designation of claims 2-3 as corresponding to the count is:

"Claims 2-3 are designated to correspond to the count because they further define the filter recited in claim 1 as containing apertures ranging from 0.5-0.10 microns. In view of the disclosure of a filter having this aperture size in Figure 3 of Englewood, its use in the internal combustion engine of claim 1 would have been obvious."

Note: See Example 1 Notes.

Example 3

The count is drawn to composition "A or B". Independent claim 10 recites composition A, in which radical R is defined as a lower alkyl. Claim 15, dependent from claim 10, recites that R is methyl. A possible statement explaining the designation of claims 10 and 15 as corresponding to the count would be:

"Claim 10 is designated as corresponding to the count because it recites one of the two alternative compositions recited in the count.

"Claim 15 is designated to correspond to the count because methyl is a species of the lower alkyl genus of composition A, and thus obvious over the genus. Applicant has shown no evidence that the substitution of methyl in the lower alkyl group would provide any unexpected results."

FORWARDING OF PAPERS

After the PTO-850 form or forms are signed, they are forwarded to the Board together with the statement under 37 CFR 1.609(b) and the file of each U.S. application or patent listed on the form(s), including all U.S. applications or patents of which benefit is being accorded. The examiner should keep a copy of the form or forms and all attachments for his/her records.

If two of the parties have the same attorney or agent, the examiner will in a separate memorandum call the attention of the Board to that fact when the Interference Initial Memorandum is forwarded. The administrative patent judge, when the interference is declared, can then take such action as may be appropriate under 37 CFR 1.613(b).

Form PTO-850. Interference Initial Memorandum[GRAPHIC]

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