Editing MPEP 705

<noinclude>{{MPEP Section|704|700|706}}</noinclude>

==[[MPEP 705|705 Patentability Reports]]==

<noinclude>__TOC__</noinclude>

Where an application, properly assigned to one 
Technology Center (TC), is found to contain one or 
more claims, per se, classifiable in one or more other 
TCs, which claims are not divisible ''inter se'' or 
from the claims which govern classification of the 
application in the first TC, the application may be 
referred to the other TC(s) concerned for a report as to 
the patentability of certain designated claims. This 
report is known as a Patentability Report (P.R.) and is 
signed by the primary examiner in the reporting TC.

Note that the Patentability Report practice is only 
to be used in extraordinary circumstances. See [[MPEP_705#705.01.28e.29_Limitation_as_to_Use|MPEP § 705.01(e)]].

===705.01 Instructions re Patentability Reports===

When an application comes up for any action and 
the primary examiners involved (i.e., from both the 
requesting and the requested Technology Center 
(TC)) agree that a Patentability Report is necessary, 
and if the TC Director of the requesting TC approves, 
the application is forwarded to the proper TC with a 
memorandum attached, for instance, “For Patentability 
Report from TC -- as to claims --.” For Image 
File Wrapper (IFW) processing, see IFW Manual.

====705.01(a) Nature of P.R., Its Use and Disposal====

The primary examiner in the Technology Center 
(TC) from which the Patentability Report is 
requested, if he or she approves the request, will 
direct the preparation of the Patentability Report. This 
Patentability Report is in memorandum form 
and will include the citation of all pertinent references 
and a complete action on all claims involved. The 
field of search covered should be endorsed on the file 
wrapper by the examiner making the report. For 
Image File Wrapper (IFW) processing, see IFW Manual. 
When an examiner to whom an application has 
been forwarded for a Patentability Report is of the 
opinion that final action is in order as to the referred 
claims, he or she should so state. The Patentability 
Report when signed by the primary examiner in the 
reporting TC will be returned to the TC to which the 
application is regularly assigned and placed in the file 
wrapper.

The examiner preparing the Patentability Report 
will be entitled to receive an explanation of the disclosure 
from the examiner to whom the case is assigned 
to avoid duplication of work. 

If the primary examiner in a reporting TC is of the 
opinion that a Patentability Report is not in order, he 
or she should so advise the primary examiner in the 
forwarding TC.

======I. DISAGREEMENT AS TO CLASSIFICATION======

Conflict of opinion as to classification may be 
referred to a classification dispute TC representative 
panel for decision.

If the primary examiner in the TC having jurisdiction 
of the application agrees with the Patentability 
Report, he or she should incorporate the substance 
thereof in his or her action, which action will be complete 
as to all claims. The Patentability Report in such 
a case is not given a paper number but is allowed to 
remain in the file until the application is finally disposed 
of by allowance or abandonment, at which time 
it should be removed. For Image File Wrapper (IFW) 
processing, see IFW Manual.

======II. DISAGREEMENT ON PATENTABILITY REPORT======

If the primary examiner does not agree with the 
Patentability Report or any portion thereof, he or she 
may consult with the primary examiner responsible 
for the report. If agreement as to the resulting action 
cannot be reached, the primary examiner having jurisdiction 
of the application need not rely on the Patentability 
Report but may make his or her own action on 
the referred claims, in which case the Patentability 
Report should be removed from the file.

III. APPEAL TAKEN

When an appeal is taken from the rejection of 
claims, all of which are examinable in the TC preparing 
a Patentability Report, and the application is otherwise 
allowable, formal transfer of the application to 
said TC should be made for the purpose of appeal 
only. For Image File Wrapper (IFW) processing, see 
IFW Manual section 3.1. The receiving TC will take 
jurisdiction of the application and prepare the examiner’s 
answer. At the time of allowance, the application 
may be sent to issue by said TC with its 
classification determined by the controlling claims 
remaining in the application.


====705.01(b) Sequence of Examination====

In the event that the supervisory patent examiners 
concerned in a P.R. case cannot agree as to the order 
of examination by their Technology Centers (TCs), 
the supervisory patent examiner having jurisdiction of 
the application will direct that a complete search be 
made of the art relevant to his or her claims prior to 
referring the application to another TC for report. The 
TC to which the application is referred will be advised 
of the results of this search.

If the supervisory patent examiners are of the opinion 
that a different sequence of search is expedient, 
the order of search should be correspondingly modified.

====705.01(c) Counting and Recording P.R.s====

The forwarding of the application for a Patentability 
Report is not to be treated as a transfer by the forwarding 
Technology Center (TC). When the P.R. is 
completed and the application is ready for return to 
the forwarding TC, it is not counted either as a receipt 
or action by transfer. Credit, however, is given for the 
time spent.

The date status of the application in the reporting 
TC will be determined on the basis of the dates in the 
TC of original jurisdiction. To ensure orderly progress 
in the reported dates, a timely reminder should be furnished 
to the TC making the P.R.

====705.01(d) Duplicate Prints of Drawings====

In Patentability Report applications having drawings, 
the examiner to whom the case is assigned will 
furnish to the Technology Center (TC) to which the 
application is referred, prints of such sheets of the 
drawings as are applicable, for interference search 
purposes. For Image File Wrapper (IFW) processing, 
see IFW Manual section 3.1. That this has been 
done may be indicated by a pencil notation on the file 
wrapper. For Image File Wrapper (IFW) processing, 
see IFW Manual.

When an application that has had Patentability 
Report prosecution is passed for issue or becomes 
abandoned, NOTIFICATION of this fact will AT 
ONCE be given by the TC having jurisdiction of the 
application to each TC that submitted a Patentability 
Report. The examiner of each such reporting TC will 
note the date of allowance or abandonment on the 
duplicate set of prints. At such time as these prints 
become of no value to the reporting TC, they may be 
destroyed.

====705.01(e) Limitation as to Use====

The above outlined Patentability Report practice is 
not obligatory and should be resorted to only where it 
will save total examiner time or result in improved 
quality of action due to specialized knowledge. A saving 
of total examiner time that is required to give a 
complete examination of an application is of primary 
importance. Patentability Report practice is based on 
the proposition that when plural, indivisible inventions 
are claimed, in some instances either less time is 
required for examination, or the results are of better 
quality, when specialists on each character of the 
claimed invention treat the claims directed to their 
specialty. However, in many instances a single examiner 
can give a complete examination of as good quality 
on all claims, and in less total examiner time than 
would be consumed by the use of the Patentability 
Report practice.

Where claims are directed to the same character of 
invention but differ in scope only, prosecution by Patentability 
Report is never proper.

Exemplary situation where Patentability Reports 
are ordinarily not proper are as follows:

(A) Where the claims are related as a manufacturing 
process and a product defined by the process of 
manufacture. The examiner having jurisdiction of the 
process can usually give a complete, adequate examination 
in less total examiner time than would be consumed 
by the use of a Patentability Report.

(B) Where the claims are related as product and a 
process which involves merely the fact that a product 
having certain characteristics is made. The examiner 
having jurisdiction of the product can usually make a 
complete and adequate examination.

(C) Where the claims are related as a combination 
distinguished solely by the characteristics of a subcombination 
and such subcombination, per se. The 
examiner having jurisdiction of the subcombination 
can usually make a complete and adequate examination.

Where it can be shown that a Patentability Report 
will save total examiner time, one is permitted with 
the approval of the Director of the Technology Center 
to which the application is assigned. The “Approved” 
stamp should be impressed on the memorandum 
requesting the Patentability Report. For Image File 
Wrapper (IFW) processing, see IFW Manual.

====705.01(f) Interviews With Applicants====

In situations where an interview is held on an application 
in which a Patentability Report has been 
adopted, the reporting Technology Center may be 
called on for assistance at the interview when it concerns 
claims treated by them. See MPEP § 713 to 
§ 713.10 regarding interviews in general.