Completeness of Specification

Newly filed applications obviously failing to disclose an invention

with the clarity required are discussed in

MPEP § 702.01

.

The contents of an application, to be complete, must include a

specification containing a written description of the invention using such

description and details as to enable any person skilled in the art or science to

which the invention pertains to make and use the invention as of its filing date. See

35 U.S.C.

112

. At least one specific operative embodiment or example of

the invention must be set forth. The example(s) and description should be of

sufficient scope as to justify the scope of the claims.

For the written description requirement, an applicant’s specification

must reasonably convey to those skilled in the art that the applicant was in

possession of the claimed invention as of the date of invention. See

MPEP §

2163

et seq.

for further guidance with respect to the evaluation of a

patent application for compliance with the written description requirement.

An applicant’s specification must enable a person

skilled in the art to make and use the claimed invention without undue

experimentation. The fact that experimentation is complex, however, will not make it

undue if a person of skill in the art typically engages in such complex

experimentation. See

MPEP § 2164

et seq.

for detailed guidance with regard to the enablement

requirement of

35 U.S.C. 112

.

See also

MPEP § 2161.01

regarding computer

programming and

35 U.S.C. 112

; and

MPEP § 2181

and

§

2185

regarding

35 U.S.C. 112

in the context of

functional claims.

The specification should include a statement which

identifies a specific and substantial credible utility for the claimed invention.

This usually presents no problem in mechanical or electrical cases. Questions

regarding compliance with the utility requirement arise more often in

biotechnological or chemical cases.

For “Guidelines For Examination Of Applications For Compliance With

The Utility Requirement of

35 U.S.C. 101

,” see

MPEP §

2107

which

identifies a specific and substantial credible utility for the claimed invention.

This usually presents no problem in mechanical or electrical cases. Questions

regarding compliance with the utility requirement arise more often in

biotechnological or chemical cases.

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 Rejections,” see

MPEP §

2107.01

.

For a discussion of the utility requirement under

35 U.S.C.

111(a)

in drug cases, see

MPEP § 2107.03

and

§

2164.06(a)

.

For “Procedural Considerations Related to Rejections for Lack of

Utility,” see

MPEP §

2107.02

.

For “Special Considerations for Asserted Therapeutic or

Pharmacological Utilities,” see

MPEP § 2107.03

.

I.

INCORPORATION BY REFERENCE

37 CFR 1.57  Incorporation by reference.

[Editor Note: Paragraph (a) below is only applicable to patent

applications filed under

35 U.S.C. 111(a)

on or

after December 18, 2013.]

(a) Subject to the conditions and requirements

of this paragraph, a reference made in the English language in an

application data sheet in accordance with

§

1.76

upon the filing of an application under

35 U.S.C. 111(a)

to a

previously filed application, indicating that the specification and any

drawings of the application under

35 U.S.C.

111(a)

are replaced by the reference to the

previously filed application, and specifying the previously filed

application by application number, filing date, and the intellectual

property authority or country in which the previously filed application

was filed, shall constitute the specification and any drawings of the

application under

35 U.S.C. 111(a)

for

purposes of a filing date under

§ 1.53(b)

.

(a)

are replaced by the reference to the

previously filed application, and specifying the previously filed

application by application number, filing date, and the intellectual

property authority or country in which the previously filed application

was filed, shall constitute the specification and any drawings of the

application under

35 U.S.C. 111(a)

for

purposes of a filing date under

§ 1.53(b)

.

(1) If the applicant has provided a

correspondence address (

§ 1.33(a)

), the

applicant will be notified and given a period of time within which

to file a copy of the specification and drawings from the

previously filed application, an English language translation of

the previously filed application, and the fee required by

§ 1.17(i)

if it

is in a language other than English, and pay the surcharge required

by

§ 1.16(f)

, to

avoid abandonment. Such a notice may be combined with a notice

under

§ 1.53(f)

.

(2) If the applicant has not provided a

correspondence address (

§ 1.33(a)

), the

applicant has three months from the filing date of the application

to file a copy of the specification and drawings from the

previously filed application, an English language translation of

the previously filed application, and the fee required by

§ 1.17(i)

if it

is in a language other than English, and pay the surcharge required

by

§ 1.16(f)

, to

avoid abandonment.

(3) An application abandoned under

paragraph (a)(1) or (a)(2) of this section shall be treated as

having never been filed, unless:

ion and drawings from the

previously filed application, an English language translation of

the previously filed application, and the fee required by

§ 1.17(i)

if it

is in a language other than English, and pay the surcharge required

by

§ 1.16(f)

, to

avoid abandonment.

(3) An application abandoned under

paragraph (a)(1) or (a)(2) of this section shall be treated as

having never been filed, unless:

(i) The application is revived

under

§ 1.137

;

and

(ii) A copy of the specification and

any drawings of the previously filed application are filed in

the Office.

(4) A certified copy of the previously

filed application must be filed in the Office, unless the

previously filed application is an application filed under

35 U.S.C. 111

or

363

, or the

previously filed application is a foreign priority application and

the conditions set forth in

§

1.55(i)

are satisfied with respect to such

foreign priority application. The certified copy of the previously

filed application, if required by this paragraph, must be filed

within the later of four months from the filing date of the

application or sixteen months from the filing date of the

previously filed application, or be accompanied by a petition

including a showing of good and sufficient cause for the delay and

the petition fee set forth in

§

1.17(g)

.

(b) Subject to the conditions and requirements of this

paragraph, if all or a portion of the specification or drawing(s) is

inadvertently omitted from an application, but the application contains a

claim under

§ 1.55

for priority

of a prior-filed foreign application, or a claim under

§

1.78

for the benefit of a prior-filed provisional,

nonprovisional, international application, or international design

application, that was present on the filing date of the application, and

the inadvertently omitted portion of the specification or drawing(s) is

completely contained in the prior-filed application, the claim under

§ 1.55

or

1.78

shall also be

considered an incorporation by reference of the prior-filed application

as to the inadverte

onprovisional, international application, or international design

application, that was present on the filing date of the application, and

the inadvertently omitted portion of the specification or drawing(s) is

completely contained in the prior-filed application, the claim under

§ 1.55

or

1.78

shall also be

considered an incorporation by reference of the prior-filed application

as to the inadvertently omitted portion of the specification or

drawing(s).

(1) The application must be amended to include the

inadvertently omitted portion of the specification or drawing(s)

within any time period set by the Office, but in no case later than

the close of prosecution as defined by

§

1.114(b)

, or abandonment of the application,

whichever occurs earlier. The applicant is also required to:

(i) Supply a copy of the prior-filed application,

except where the prior-filed application is an application

filed under

35 U.S.C.

111

;

(ii) Supply an English language translation of any

prior-filed application that is in a language other than

English; and

(iii) Identify where the inadvertently omitted

portion of the specification or drawings can be found in the

prior-filed application.

(2) Any amendment to an international application

pursuant to paragraph (b)(1) of this section shall be effective

only as to the United States, and shall have no effect on the

international filing date of the application. In addition, no

request under this section to add the inadvertently omitted portion

of the specification or drawings in an international application

designating the United States will be acted upon by the Office

prior to the entry and commencement of the national stage

(

§ 1.491

) or the

filing of an application under

35 U.S.C.

111(a)

which claims benefit of the

international application. Any omitted portion of the international

application which applicant desires to be effective as to all

designated States, subject to

PCT Rule

20.8(b)

, must be submitted in accordance with

PCT Rule 20

.

pon by the Office

prior to the entry and commencement of the national stage

(

§ 1.491

) or the

filing of an application under

35 U.S.C.

111(a)

which claims benefit of the

international application. Any omitted portion of the international

application which applicant desires to be effective as to all

designated States, subject to

PCT Rule

20.8(b)

, must be submitted in accordance with

PCT Rule 20

.

(3) If an application is not otherwise entitled to a

filing date under

§ 1.53(b)

, the

amendment must be by way of a petition pursuant to

§ 1.53(e)

accompanied by the fee set forth in

§

1.17(f)

.

(4) Any amendment to an international

design application pursuant to paragraph (b)(1) of this section

shall be effective only as to the United States and shall have no

effect on the filing date of the application. In addition, no

request under this section to add the inadvertently omitted portion

of the specification or drawings in an international design

application will be acted upon by the Office prior to the

international design application becoming a nonprovisional

application.

(c) Except as provided in paragraphs (a) or (b) of this

section, an incorporation by reference must be set forth in the

specification and must:

(1) Express a clear intent to incorporate by reference

by using the root words “incorporat(e)” and “reference” (

e.g.

,

“incorporate by reference”);

and

(2) Clearly identify the referenced patent,

application, or publication.

a nonprovisional

application.

(c) Except as provided in paragraphs (a) or (b) of this

section, an incorporation by reference must be set forth in the

specification and must:

(1) Express a clear intent to incorporate by reference

by using the root words “incorporat(e)” and “reference” (

e.g.

,

“incorporate by reference”);

and

(2) Clearly identify the referenced patent,

application, or publication.

(d) “Essential material” may be incorporated by reference,

but only by way of an incorporation by reference to a U.S. patent or U.S.

patent application publication, which patent or patent application

publication does not itself incorporate such essential material by

reference. “Essential material” is material that is necessary to:

(1) Provide a written description of the claimed

invention, and of the manner and process of making and using it, in

such full, clear, concise, and exact terms as to enable any person

skilled in the art to which it pertains, or with which it is most

nearly connected, to make and use the same, and set forth the best

mode contemplated by the inventor of carrying out the invention as

required by

35 U.S.C.

112(a)

;

(2) Describe the claimed invention in terms that

particularly point out and distinctly claim the invention as

required by

35 U.S.C.

112(b)

; or

(3) Describe the structure, material, or acts that

correspond to a claimed means or step for performing a specified

function as required by

35

U.S.C. 112(f)

.

(e) Other material (“Nonessential material”) may be

incorporated by reference to U.S. patents, U.S. patent application

publications, foreign patents, foreign published applications, prior and

concurrently filed commonly owned U.S. applications, or non-patent

publications. An incorporation by reference by hyperlink or other form of

browser executable code is not permitted.

red by

35

U.S.C. 112(f)

.

(e) Other material (“Nonessential material”) may be

incorporated by reference to U.S. patents, U.S. patent application

publications, foreign patents, foreign published applications, prior and

concurrently filed commonly owned U.S. applications, or non-patent

publications. An incorporation by reference by hyperlink or other form of

browser executable code is not permitted.

(f) The examiner may require the applicant to supply a copy

of the material incorporated by reference. If the Office requires the

applicant to supply a copy of material incorporated by reference, the

material must be accompanied by a statement that the copy supplied

consists of the same material incorporated by reference in the

referencing application.

(g) Any insertion of material incorporated by reference into

the specification or drawings of an application must be by way of an

amendment to the specification or drawings. Such an amendment must be

accompanied by a statement that the material being inserted is the

material previously incorporated by reference and that the amendment

contains no new matter.

(h) An incorporation of material by reference that does not

comply with paragraphs (c), (d), or (e) of this section is not effective

to incorporate such material unless corrected within any time period set

by the Office, but in no case later than the close of prosecution as

defined by

§ 1.114(b)

, or

abandonment of the application, whichever occurs earlier. In

addition:

(1) A correction to comply with paragraph (c)(1) of

this section is permitted only if the application as filed clearly

conveys an intent to incorporate the material by reference. A mere

reference to material does not convey an intent to incorporate the

material by reference.

(2) A correction to comply with paragraph (c)(2) of

this section is only permitted for material that was sufficiently

described to uniquely identify the document.

aph (c)(1) of

this section is permitted only if the application as filed clearly

conveys an intent to incorporate the material by reference. A mere

reference to material does not convey an intent to incorporate the

material by reference.

(2) A correction to comply with paragraph (c)(2) of

this section is only permitted for material that was sufficiently

described to uniquely identify the document.

(i) An application transmittal

letter limited to the transmittal of a copy of the

specification and drawings from a previously filed

application submitted under paragraph (a) or (b) of this

section may be signed by a juristic applicant or patent

owner.

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). In 2004, the Office codified in

37 CFR 1.57(b) – (g)

existing

practice with respect to explicit incorporations by reference with a few changes

to reflect the eighteen-month publication of applications. In addition, in 2004,

37 CFR

1.57(a)

was added to provide a safeguard for applicants when

a page(s) of the specification, or a portion thereof, or a sheet(s) of the

drawing(s), or a portion thereof, is inadvertently omitted from an application,

such as through a clerical error. In 2013, the Office moved the provisions of

former

37

CFR 1.57(a)

to

37 CFR 1.57(b)

in order to

provide for reference filing in

37 CFR 1.57(a)

, which is a new

procedure provided by the implementation of section 201(a) of the Patent Law

Treaties Implementation Act of 2012 (PLTIA) (Public Law 112-211).

37

CFR 1.57(b)

permits inadvertently omitted material to be

added to the application by way of a later filed amendment if the inadvertently

omitted portion of the specification or drawing(s) is completely contained in a

prior-filed application (for which priority/benefit is claimed) even though there

is no explicit incorporation by reference of the prior-filed application

IA) (Public Law 112-211).

37

CFR 1.57(b)

permits inadvertently omitted material to be

added to the application by way of a later filed amendment if the inadvertently

omitted portion of the specification or drawing(s) is completely contained in a

prior-filed application (for which priority/benefit is claimed) even though there

is no explicit incorporation by reference of the prior-filed application. See

MPEP § 217

for discussion regarding

37 CFR

1.57(b)

.

As mentioned above,

37 CFR

1.57

was revised, effective December 18, 2013, to implement

the reference filing provisions in title II of the PLTIA, which amended the patent

laws in accordance with the Patent Law Treaty. As provided in

35 U.S.C.

111(c)

, as amended by the PLTIA, a nonprovisional

application filed under

35 U.S.C. 111(a)

on or after

December 18, 2013, may be filed by a reference to a previously filed application

(foreign, international, provisional, or nonprovisional) indicating that the

specification and any drawings of the application are replaced by the reference to

the previously filed application. See

MPEP § 601.01(a)

, subsection III,

for information on the conditions, including the payment of a surcharge, under

which a reference made upon the filing of an application under

35 U.S.C.

111(a)

to a previously filed application shall constitute

the specification and any drawings of the subsequent application for purposes of a

filing date.

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 discretion

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 discretion. Section A provides the

guidance for incorporation by reference in applications which are to issue as U.S.

patents. Section B provides guidance for incorporation 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 determination of whether applicant has complied

with the requirements of

35 U.S.C. 112(b)

when

35

U.S.C. 112(f)

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 nevertheless may be incorporated

by reference. An application for a patent when filed may incorporate “essential

material” by reference to (1) a U.S. patent, or (2) a U.S. patent application

publication, which patent or patent application publication does not itself

incorporate such essential material by reference. See

37 CFR

1.57(d)

.

“Essential material” is defined in

37 CFR

1.57(d)

as that which is necessary to (1) provide a

written description of the claimed invention, and of the manner and process of

making and using it, in such full, clear, concise, and exact terms as to enable

any person skilled in the art to which it pertains, or with which it is most

nearly connected, to make and use the same, and set forth the best mode

contemplated by the inventor of carrying out the invention as required by

35 U.S.C

provide a

written description of the claimed invention, and of the manner and process of

making and using it, in such full, clear, concise, and exact terms as to enable

any person skilled in the art to which it pertains, or with which it is most

nearly connected, to make and use the same, and set forth the best mode

contemplated by the inventor of carrying out the invention as required by

35 U.S.C. 112(a)

; (2) describe the claimed invention in

terms that particularly point out and distinctly claim the invention as

required by

35 U.S.C. 112(b)

; or (3)

describe the structure, material, or acts that correspond to a claimed means or

step for performing a specified function as required by

35 U.S.C.

112(f)

. In any application that is to issue as a U.S.

patent, essential material may only be incorporated by reference to a U.S.

patent or patent application publication.

Other material (“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 and

concurrently filed, commonly owned U.S. applications, or (3) non-patent

publications. Nonessential subject matter is subject matter referred to for

purposes of indicating the background of the invention or illustrating the

state of the art. See

37 CFR 1.57(e)

.

An incorporation by reference by hyperlink or other form of

browser executable code is not permitted. See

37 CFR

1.57(e)

and

MPEP § 608.01

.

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

.

In re de Seversky,

474 F.2d 671,

177 USPQ 144 (CCPA 1973)

ion by reference by hyperlink or other form of

browser executable code is not permitted. See

37 CFR

1.57(e)

and

MPEP § 608.01

.

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

.

In re de Seversky,

474 F.2d 671,

177 USPQ 144 (CCPA 1973).

37 CFR 1.57(c)(1)

limits a

proper incorporation by reference (except as provided in

37 CFR

1.57(b)

) to instances only where the perfecting words

“incorporated by reference” or the root of the words “incorporate” (e.g.,

incorporating, incorporated) and “reference” (e.g., referencing) appear. The

requirement for specific root words will bring greater clarity to the record

and provide a bright line test as to where something is being referred to is an

incorporation by reference. The Office intends to treat references to documents

that do not meet this “bright line” test as noncompliant incorporations by

reference and may require correction pursuant to

37 CFR

1.57(h)

. If a reference to a document does not clearly

indicate an intended incorporation by reference, examination will proceed as if

no incorporation by reference statement has been made and the Office will not

expend resources trying to determine if an incorporation by reference was

intended. In addition to other requirements for an application, the referencing

application must include an identification of the referenced patent,

application, or publication. See

37 CFR 1.57(c)(2)

.

Particular attention should be directed to specific portions of the referenced

document where the subject matter being incorporated may be found. Guidelines

for situations where applicant is permitted to fill in a number for Application

No

ts for an application, the referencing

application must include an identification of the referenced patent,

application, or publication. See

37 CFR 1.57(c)(2)

.

Particular attention should be directed to specific portions of the referenced

document where the subject matter being incorporated may be found. Guidelines

for situations where applicant is permitted to fill in a number for Application

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 reference

to the same extent as copending applications; both types are open to the public

upon the referencing application issuing as a patent.). See

37 CFR 1.14(a)(i), (iv), and

(vi)

, and

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 a U.S. patent application publication. The

amendment must be accompanied by a statement 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 and no new matter has been included (see

37 CFR

1.57(g)

). The same procedure is available for

nonessential material.

If an application as filed incorporates material by

reference, a copy of the incorporated by reference material may be required

to be submitted to the Office even if the material is properly incorporated

by reference. The examiner may require a copy of the incorporated material

to review and to understand what is being incorporated or to put the

description of the material in its proper context

l.

If an application as filed incorporates material by

reference, a copy of the incorporated by reference material may be required

to be submitted to the Office even if the material is properly incorporated

by reference. The examiner may require a copy of the incorporated material

to review and to understand what is being incorporated or to put the

description of the material in its proper context. Another instance where a

copy of the incorporated material may be required is where the material is

being inserted by amendment into the body of the application to replace an

improper incorporation by reference statement so that the Office can

determine that the material being added by amendment in lieu of the

incorporation is the same material as was attempted to be incorporated. If

the Office requires the applicant to supply a copy of the material

incorporated by reference, the material must be accompanied by a statement

that the copy supplied consists of the same material incorporated by

reference in the referencing application. See

37 CFR

1.57(f)

.

2.

Improper Incorporation

37 CFR

1.57(g)

addresses corrections of incorporation by

reference by inserting the material previously incorporated by reference. A

noncompliant incorporation by reference statement may be corrected by an

amendment.

37 CFR 1.57(g)

. However, the amendment must not

include new matter. Incorporating by reference material that was not

incorporated by reference on filing of an application may introduce new

matter. An incorporation by reference of essential material to an

unpublished U.S. patent application, a foreign application or patent, or to

a publication is improper under

37 CFR 1.57(d)

. The

improper incorporation by reference is not effective to incorporate the

material unless corrected by the applicant (

37 CFR

1.57(h)

). Any underlying objection or rejection (e.g.,

under

35

U.S.C

roduce new

matter. An incorporation by reference of essential material to an

unpublished U.S. patent application, a foreign application or patent, or to

a publication is improper under

37 CFR 1.57(d)

. The

improper incorporation by reference is not effective to incorporate the

material unless corrected by the applicant (

37 CFR

1.57(h)

). Any underlying objection or rejection (e.g.,

under

35

U.S.C. 112

) should be made by the examiner until

applicant corrects the improper incorporation by reference by submitting an

amendment to amend the specification or drawings to include the material

incorporated by reference. A statement that the material being inserted is

the material previously incorporated by reference and that the amendment

contains no new matter is also required.

37 CFR 1.57(g)

. See also

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).

Improper incorporation by reference statements and late corrections thereof

require expenditure of unnecessary examination resources and slow the

prosecution process. Applicants know (or should know) whether they want

material incorporated by reference, and must timely correct any

incorporation by reference errors. Correction must be done within the time

period set forth in

37 CFR 1.57(h)

.

An incorporation by reference that does not comply with

37 CFR

1.57(c), (d), or (e)

is not effective to incorporate

such material unless corrected within any time period set by the Office

(should the noncompliant incorporation by reference be first noticed by the

Office and applicant informed thereof), but in no case later than the close

of prosecution as defined by

37 CFR 1.114(b)

(should

applicant be the first to notice the noncompliant incorporation by reference

and the Office informed thereof), or abandonment of the application,

whichever occurs earlier

period set by the Office

(should the noncompliant incorporation by reference be first noticed by the

Office and applicant informed thereof), but in no case later than the close

of prosecution as defined by

37 CFR 1.114(b)

(should

applicant be the first to notice the noncompliant incorporation by reference

and the Office informed thereof), or abandonment of the application,

whichever occurs earlier. The phrase “or abandonment of the application” is

included in

37 CFR 1.57(h)

to

address the situations where an application is abandoned prior to the close

of prosecution, e.g., the situation where an application is abandoned after

a non-final Office action.

37 CFR

1.57(h)(1)

authorizes the correction of noncompliant

incorporation by reference statements that do not use the root of the words

“incorporate” and “reference” in the incorporation by reference statement

when the application as filed clearly conveys an intent to incorporate the

material by reference. This correction can usually be made, for example,

when an originally filed claim of an application identifies an amino acid or

nucleotide sequence by database accession number. In making the

determination of clear intent the examiner should consider the language used

in referencing the sequence, the context in which it is disclosed, and any

additional arguments or evidence presented by applicants.

37 CFR

1.57(h)(2)

states that a citation of a document can be

corrected where the document is sufficiently described to uniquely identify

the document. Correction of a citation for a document that cannot be

identified as the incorporated document may be new matter and is not

authorized by

37 CFR 1.57(h)(2)

. An

example would be where applicant intended to incorporate a particular

journal article but supplied the citation information for a completely

unrelated book by a different author, and there is no other information to

identify the correct journal article

a citation for a document that cannot be

identified as the incorporated document may be new matter and is not

authorized by

37 CFR 1.57(h)(2)

. An

example would be where applicant intended to incorporate a particular

journal article but supplied the citation information for a completely

unrelated book by a different author, and there is no other information to

identify the correct journal article. Since it cannot be determined from the

citation originally supplied what article was intended to be incorporated,

it would be improper (e.g., new matter) to replace the original

incorporation by reference with the intended incorporation by reference. A

citation of a patent application by attorney docket number, inventor name,

filing date and title of invention may sufficiently describe the document,

but even then correction should be made to specify the application

number.

A petition under

37 CFR 1.183

to suspend

the time period requirement set forth in

37 CFR 1.57(h)

will not

be appropriate. After the application has been abandoned, applicant must

file a petition to revive under

37 CFR 1.137

for the

purpose of correcting the incorporation by reference. After the application

has issued as a patent, applicant may correct the patent by filing a reissue

application. Correcting an improper incorporation by reference with a

certificate of correction is not an appropriate means of correction because

it may alter the scope of the claims. The scope of the claims may be altered

because

37

CFR 1.57(h)

provides that an incorporation by

reference that does not comply with paragraph (c), (d), or (e) is not an

effective incorporation. For example, an equivalent means omitted from a

patent disclosure by an ineffective incorporation by reference would be

outside the scope of the patented claims. Hence, a correction of an

incorporation by reference pursuant to

37 CFR 1.57

may alter

the scope of the claims by adding the omitted equivalent means. Changes

involving the scope of the claims should be done via the reissue process

ation. For example, an equivalent means omitted from a

patent disclosure by an ineffective incorporation by reference would be

outside the scope of the patented claims. Hence, a correction of an

incorporation by reference pursuant to

37 CFR 1.57

may alter

the scope of the claims by adding the omitted equivalent means. Changes

involving the scope of the claims should be done via the reissue process.

Additionally, the availability of the reissue process for corrections would

make a successful showing required under

37 CFR 1.183

unlikely.

The following examples show when an improper incorporation by reference is

required to be corrected:

Example 1:

Upon review of the specification, the examiner noticed

that the specification included an incorporation by reference statement

incorporating essential material disclosed in a foreign patent. In a

non-final Office action, the examiner required the applicant to amend the

specification to include the essential material.

In reply to the non-final Office action, applicant must

correct the improper incorporation by reference by filing an amendment to

add the essential material disclosed in the foreign patent and a

statement in compliance with

37 CFR 1.57(g)

within

the time period for reply set forth in the non-final Office action.

Example 2:

Upon review of the specification, the examiner determined

that the subject matter incorporated by reference from a foreign patent

was “nonessential material” and therefore, did not object to the

incorporation by reference. In reply to a non-final Office action,

applicant filed an amendment to the claims to add a new limitation that

was supported only by the foreign patent. The amendment filed by the

applicant caused the examiner to re-determine that the incorporated

subject matter was “essential material” under

37 CFR

1.57(d)

. The examiner rejected the claims that

include the new limitation under

35 U.S.C.

112(a)

in a final Office action.

Since the rejection under

35 U.S.C

mendment to the claims to add a new limitation that

was supported only by the foreign patent. The amendment filed by the

applicant caused the examiner to re-determine that the incorporated

subject matter was “essential material” under

37 CFR

1.57(d)

. The examiner rejected the claims that

include the new limitation under

35 U.S.C.

112(a)

in a final Office action.

Since the rejection under

35 U.S.C.

112(a)

was necessitated by the applicant’s

amendment, the finality of the Office action is proper. If the applicant

wishes to overcome the rejection under

35 U.S.C.

112(a)

by filing an amendment under

37

CFR 1.57(g)

to add the subject material disclosed

in the foreign patent into the specification, applicant may file the

amendment as an after final amendment in compliance with

37

CFR 1.116

. Alternatively, applicant may file an RCE

under

37 CFR 1.114

accompanied by the appropriate fee,

and an amendment per

37 CFR 1.57(g)

within

the time period for reply set forth in the final Office action.

The following form paragraphs may be used: