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903.08(e) General Guidelines Governing the Assignment of Non- provisional Applications for Examination - 900 Prior Art, Classification, Search
903.08(e) General Guidelines Governing the Assignment of Non- provisional Applications for Examination
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. Post classifiers as well as the 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 post classifiers 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 will be best handled. 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 assigned, as far as possible, on the basis of the original classification of the application.
(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 of a post classifier 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. The post classifiers 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, the first coordinate subclass that will take any claim controls classification.
(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. The question of aggregation is not reviewed by the post classifiers.
(G) The post classifiers are authorized in all cases, where they evaluate the facts as warranting it, to assign applications for examination to the Technology Center (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 post classifiers 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 supervisory patent examiner in one discipline feels 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 submit the application to his or her post classifier who may assign 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 post classifiers are authorized to require the first or transferring examiner 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 post classifier 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 post classifiers, 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 exhibit the result of such search to the appropriate Classification Unit. This is the way the expert knowledge of the examiners involved is utilized.
(M) When an application is received in the Classification Unit 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 examining corps, 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 treated as follows.
The classifier will check the appropriate box on the PTO-447A indicating that the application is being returned (but not assigned) to the TC that originated the transfer in order to resolve the nonclassifying issues involved. The classifier will indicate on the PTO-447A the proper classification of any claims under dispute. If any claims under dispute are outside the jurisdiction of the classifier associated with the originating TC, that classifier will obtain concurrence of an SPE or designated examiner/classifier having jurisdiction of the claims in question, who will sign the PTO-447A as the concurring classifier. Multiple concurrences may be required for an application with claims classifiable in different art areas.
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 nonclassifying issues there is still a dispute as to which TC should examine the application, the originating application may be returned to classification for assignment.
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