Chapter 600 Parts, Form, and Content of Application
`
`
`601
`
`Content of Provisional and Nonprovisional
`Applications
`Complete Application
`601.01
`601.01(a) Nonprovisional Applications Filed Under
`35 U.S.C. 111(a)
`601.01(b) Provisional Applications Filed Under
`35 U.S.C. 111(b)
`601.01(c) Conversion to or from a Provisional
`Application
`601.01(d) Application Filed Without All Pages of
`Specification
`601.01(e) Nonprovisional Application Filed Without
`At Least One Claim
`601.01(f) Applications Filed Without Drawings
`601.01(g) Applications Filed Without All Figures of
`Drawings
`601.01(h) Forms
`601.02
`Power of Attorney **
`601.03
`Change of Correspondence Address
`601.04
`National Stage Requirements of the United
`States as a Designated Office
`Bibliographic Information — Application Data
`Sheet (ADS)
`Original Oath or Declaration
`602
`Oath Cannot Be Amended
`602.01
`602.02
`New Oath or Substitute for Original
`Defective Oath or Declaration
`602.03
`Foreign Executed Oath
`602.04
`602.04(a) Foreign Executed Oath Is Ribboned to
`Other Application Papers
`602.05
`Oath or Declaration — Date of Execution
`602.05(a) Oath or Declaration in Continuation and
`Divisional Applications
`Non-English Oath or Declaration
`Oath or Declaration Filed in United States
`as a Designated Office
`Supplemental Oath or Declaration
`Supplemental Oath or Declaration Filed
`After Allowance
`Administration or Execution of Oath
`604
`Seal
`604.01
`Venue
`604.02
`604.03(a) Notarial Powers of Some Military Officers
`604.04
`Consul
`604.04(a) Consul – Omission of Certificate
`604.06
`By Attorney in Application
`605
`Applicant
`605.01
`Applicant’s Citizenship
`605.02
`Applicant’s Residence
`605.03
`Applicant’s Mailing or Post Office Address
`605.04(a) Applicant’s Signature and Name
`
`601.05
`
`602.06
`602.07
`
`603
`603.01
`
`605.04(b)
`605.04(c)
`605.04(d)
`605.04(e)
`605.04(f)
`
`605.04(g)
`605.05
`
`605.07
`606
`606.01
`607
`607.02
`608
`608.01
`608.01(a)
`608.01(b)
`608.01(c)
`608.01(d)
`608.01(e)
`608.01(f)
`608.01(g)
`608.01(h)
`608.01(i)
`608.01(j)
`608.01(k)
`608.01(l)
`608.01(m)
`608.01(n)
`608.01(o)
`608.01(p)
`608.01(q)
`608.01(r)
`
`608.01(s)
`608.01(t)
`608.01(u)
`608.01(v)
`608.02
`608.02(a)
`
`608.02(b)
`608.02(c)
`608.02(d)
`608.02(e)
`
`608.02(f)
`608.02(g)
`608.02(h)
`608.02(i)
`608.02(m)
`
`One Full Given Name Required
`Inventor Changes Name
`Applicant Unable to Write
`May Use Title With Signature
`Signature on Joint Applications - Order
`of Names
`Correction of Inventorship
`Administrator, Executor, or Other Legal
`Representative
`Joint Inventors
`Title of Invention
`Examiner May Require Change in Title
`Filing Fee
`Returnability of Fees
`Disclosure
`Specification
`Arrangement of Application
`Abstract of the Disclosure
`Background of the Invention
`Brief Summary of Invention
`Reservation Clauses Not Permitted
`Brief Description of Drawings
`Detailed Description of Invention
`Mode of Operation of Invention
`Claims
`Numbering of Claims
`Statutory Requirement of Claims
`Original Claims
`Form of Claims
`Dependent Claims
`Basis for Claim Terminology in Description
`Completeness
`Substitute or Rewritten Specification
`Derogatory Remarks About Prior Art
`in Specification
`Restoration of Canceled Matter
`Use in Subsequent Application
`Use of Formerly Filed Incomplete Application
`Trademarks and Names Used in Trade
`Drawing
`New Drawing — When Replacement is
`Required Before Examination
`Informal Drawings
`Drawing Print Kept in File Wrapper
`Complete Illustration in Drawings
`Examiner Determines Completeness and
`Consistency of Drawings
`Modifications in Drawings
`Illustration of Prior Art
`**>Replacement< Drawings
`Transfer of Drawings From Prior Applications
`Drawing Prints
`
`600-1
`
`Rev. 2, May 2004
`
`
`
`Page 1 of 6
`
`PHILIPS EXHIBIT 2017
`WAC v. PHILIPS
`IPR2016-01455
`
`

`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`Duplicate Prints in Patentability Report
`Applications
`Notations Entered on Drawing
`Correction of Drawings
`Conditions Precedent to Amendment of
`Drawing
`
`601
`
`608.02(n)
`
`608.02(o)
`608.02(p)
`608.02(q)
`
`**
`608.02(t)
`608.02(v)
`
`ing the payment of a surcharge, as may be prescribed by the
`Director.
`(4) FAILURE TO SUBMIT.—Upon failure to submit the
`fee and oath within such prescribed period, the application shall
`be regarded as abandoned, unless it is shown to the satisfaction of
`the Director that the delay in submitting the fee and oath was
`unavoidable or unintentional. The filing date of an application
`shall be the date on which the specification and any required
`drawing are received in the Patent and Trademark Office.
`(b) PROVISIONAL APPLICATION.—
`(1) AUTHORIZATION.—A provisional application for
`patent shall be made or authorized to be made by the inventor,
`except as otherwise provided in this title, in writing to the Direc­
`tor. Such application shall include—
`(A) a specification as prescribed by the first paragraph
`of section 112 of this title; and
`(B) a drawing as prescribed by section 113 of this title.
`(2) CLAIM.—A claim, as required by the second through
`fifth paragraphs of section 112, shall not be required in a provi­
`sional application.
`(3) FEE.—
`(A) The application must be accompanied by the fee
`required by law.
`(B) The fee may be submitted after the specification
`and any required drawing are submitted, within such period and
`under such conditions, including the payment of a surcharge, as
`may be prescribed by the Director.
`(C) Upon failure to submit the fee within such pre­
`scribed period, the application shall be regarded as abandoned,
`unless it is shown to the satisfaction of the Director that the delay
`in submitting the fee was unavoidable or unintentional.
`(4) FILING DATE.—The filing date of a provisional
`application shall be the date on which the specification and any
`required drawing are received in the Patent and Trademark Office.
`(5) ABANDONMENT.—Notwithstanding the absence of
`a claim, upon timely request and as prescribed by the Director, a
`provisional application may be treated as an application filed
`under subsection (a). Subject to section 119(e)(3) of this title, if no
`such request is made, the provisional application shall be regarded
`as abandoned 12 months after the filing date of such application
`and shall not be subject to revival after such 12-month period.
`(6) OTHER BASIS FOR PROVISIONAL APPLICA-
`TION.—Subject to all the conditions in this subsection and sec­
`tion 119(e) of this title, and as prescribed by the Director, an
`application for patent filed under subsection (a) may be treated as
`a provisional application for patent.
`(7) NO RIGHT OF PRIORITY OR BENEFIT OF EAR­
`LIEST FILING DATE.—A provisional application shall not be
`entitled to the right of priority of any other application under sec­
`tion 119 or 365(a) of this title or to the benefit of an earlier filing
`date in the United States under section 120, 121, or 365(c) of this
`title.
`
`(8) APPLICABLE PROVISIONS.—The provisions of
`this title relating to applications for patent shall apply to provi­
`sional applications for patent, except as otherwise provided, and
`except that provisional applications for patent shall not be subject
`to sections 115, 131, 135, and 157 of this title.
`
`608.02(w)
`
`608.02(x)
`
`608.02(y)
`608.02(z)
`
`608.03
`608.03(a)
`608.04
`608.04(a)
`
`608.04(b)
`608.04(c)
`608.05
`
`Cancelation of Figures
`Drawing Changes Which Require
`*>Annotated Sheets<
`Drawing Changes Which May Be Made
`Without Applicant’s *>Annotated Sheets<
`** Drawing Corrections >or Changes Accepted
`Unless Notified Otherwise<
`Return of Drawing
`Allowable Applications Needing Drawing
`Corrections or Corrected Drawings
`Models, Exhibits, Specimens
`Handling of Models, Exhibits, and Specimens
`New Matter
`Matter Not in Original Specification, Claims,
`or Drawings
`New Matter by Preliminary Amendment
`Review of Examiner’s Holding of New Matter
`Sequence Listing Table, or Computer Program
`Listing Appendix Submitted on a Compact
`Disc
`608.05(a)
`Deposit of Computer Program Listings
`608.05(b)
`Compact Disc Submissions of Large Tables
`608.05(c)
`Compact Disc Submissions of Biosequences
`609
`Information Disclosure Statement
`
`
`601
`
`Content of Provisional and Non-
`provisional Applications [R-2]
`
`35 U.S.C. 111. Application
`(a) IN GENERAL.—
`(1) WRITTEN APPLICATION.—An application for
`patent shall be made, or authorized to be made, by the inventor,
`except as otherwise provided in this title, in writing to the Direc­
`tor.
`
`(2) CONTENTS.—Such application shall include—
`(A) a specification as prescribed by section 112 of this
`
`title;
`
`and
`
`(B) a drawing as prescribed by section 113 of this title;
`
`(C) an oath by the applicant as prescribed by section
`115 of this title.
`(3) FEE AND OATH.—The application must be accom­
`panied by the fee required by law. The fee and oath may be sub­
`mitted after the specification and any required drawing are
`submitted, within such period and under such conditions, includ-
`
`Rev. 2, May 2004
`
`600-2
`
`
`
`Page 2 of 6
`
`

`
`608.01(p)
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`comply with 37 CFR 1.75(d)(1), applicant will be
`required to make appropriate amendment to the
`description to provide clear support or antecedent
`basis for the terms appearing in the claims provided
`no new matter is introduced.<
`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]
`
`608.01(p) Completeness [R-2]
`
`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.
`
`I.
`
`INCORPORATION BY REFERENCE
`
`The *>Director< 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 *>Director< 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. >See MPEP § 2181 for the
`impact of incorporation by reference on the determi­
`nation of whether applicant has complied with the
`requirements of 35 U.S.C. 112, second paragraph
`when 35 U.S.C. 112, sixth paragraph is invoked.<
`
`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
`
`Rev. 2, May 2004
`
`600-82
`
`
`
`Page 3 of 6
`
`

`
`PARTS, FORM, AND CONTENT OF APPLICATION
`
`608.01(p)
`
`*>Schwarze<, 151 USPQ 426 (Bd. Ape. 1966). An
`application for a patent when filed may incorporate
`“essential 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,
`aperients 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.
`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-
`
`600-83
`
`Rev. 2, May 2004
`
`
`
`Page 4 of 6
`
`

`
`608.01(p)
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`ification to include the material incorporated by refer­
`ence. The following form paragraphs may be used.
`
`B. Review of Applications Which Are Relied on
`To Establish an Earlier Effective Filing Date.
`
`¶ 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).
`
`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
`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-
`
`Rev. 2, May 2004
`
`600-84
`
`
`
`Page 5 of 6
`
`

`
`PARTS, FORM, AND CONTENT OF APPLICATION
`
`608.01(q)
`
`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).
`
`>As a safeguard against the omission of a portion
`of a prior application for which priority is claimed
`under 35 U.S.C. 119(a)-(d) or (f), or for which benefit
`is claimed under 35 U.S.C. 119(e) or 120, applicant
`may include a statement at the time of filing of the
`later application incorporating by reference the prior
`application. See MPEP § 201.06(c) where domestic
`benefit is claimed. See MPEP § 201.13 where foreign
`priority is claimed. The inclusion of such an incorpo­
`ration by reference statement in the later-filed applica­
`tion will permit applicant to include subject matter
`from the prior application into the later-filed applica­
`tion without the subject matter being considered as
`new matter. For the incorporation by reference to be
`effective as a proper safeguard, the incorporation by
`reference statement must be filed at the time of filing
`of the later-filed application. An incorporation by ref­
`erence statement added after an application’s filing
`date is not effective because no new matter can be
`added to an application after its filing date (see 35
`U.S.C. 132(a).<
`
`II.
`
`SIMULATED OR PREDICTED TEST RE(cid:173)
`SULTS 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.
`>Hoffman-La Roche, Inc. v. Promega Corp., 323 F.3d
`1354, 1367, 66 USPQ2d 1385, 1394 (Fed. Cir.
`2003).<
`
`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 Specifi(cid:173)
`cation [R-2]
`
`37 CFR 1.125. Substitute specification.
`(a) If the number or nature of the amendments or the legibil­
`ity 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.
`**>
`(b) Subject to § 1.312, a substitute specification, excluding
`the claims, may be filed at any point up to payment of the issue
`fee if it is accompanied by a statement that the substitute specifi­
`cation includes no new matter.
`(c) A substitute specification submitted under this section
`must be submitted with markings showing all the changes relative
`to the immediate prior version of the specification of record. The
`text of any added subject matter must be shown by underlining the
`added text. The text of any deleted matter must be shown by
`strike-through except that double brackets placed before and after
`the deleted characters may be used to show deletion of five or
`fewer consecutive characters. The text of any deleted subject mat­
`ter must be shown by being placed within double brackets if
`strike-through cannot be easily perceived. An accompanying
`clean version (without markings) must also be supplied. Number­
`ing the paragraphs of the specification of record is not considered
`a change that must be shown pursuant to this paragraph.<
`(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.
`
`600-85
`
`Rev. 2, May 2004
`
`
`
`Page 6 of 6